`Trials@uspto.gov
`571-272-7822
`
` Entered: October 15, 2014
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`
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
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`FUJITSU SEMICONDUCTOR LIMITED and
`FUJITSU SEMICONDUCTOR AMERICA, INC.,
`Petitioner,
`
`v.
`
`ZOND, LLC,
`Patent Owner.
`____________
`
`Cases IPR2014-00849
`Patent 7,604,716 B2
`____________
`
`
`
`
`Before KEVIN F. TURNER, DEBRA K. STEPHENS, JONI Y. CHANG,
`SUSAN L.C. MITCHELL, and JENNIFER M. MEYER,
`Administrative Patent Judges.
`
`
`MEYER, Administrative Patent Judge.
`
`DECISION
`Granting Revised Motion for Joinder
`37 C.F.R. § 42.122
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`IPR2014-00849
`Patent 7,604,716 B2
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`INTRODUCTION
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`Fujitsu Semiconductor Limited and Fujitsu Semiconductor America,
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`Inc. (collectively, “Fujitsu”) filed a Petition requesting inter partes review of
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`claims 19–24 of U.S. Patent No. 7,604,716 B2 (Ex. 1301, “the ’716 patent”).
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`Paper 1 (“Pet.”). Pursuant to 37 C.F.R. § 42.122(b), Fujitsu also filed a
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`revised Motion for Joinder, seeking to join the instant proceeding with
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`Taiwan Semiconductor Manuf. Co. v. Zond, LLC., Case IPR2014-00808
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`(PTAB) (“IPR2014-00808”). Paper 9 (“Mot.”).
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`Taiwan Semiconductor Manufacturing Company, Ltd. and TSMC
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`North America Corp. (collectively, “TSMC”), the Petitioner in IPR2014-
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`00808, does not oppose Fujitsu’s revised Motion for Joinder. Mot. 2. Patent
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`Owner, Zond, LLC (“Zond”), filed a Preliminary Response to the Petition
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`(Paper 8, “Prelim. Resp.”), and an Opposition to Fujitsu’s revised Motion for
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`Joinder (Paper 10, “Opp.”). In a separate decision, we institute inter partes
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`review as to the same claims on the same grounds of unpatentability for
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`which we instituted trial in IPR2014-00808. For the reasons set forth below,
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`Fujitsu’s revised Motion for Joinder is granted.
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`ANALYSIS
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`The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat.
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`284 (2011) (“AIA”) permits joinder of like review proceedings. The Board,
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`acting on behalf of the Director, has the discretion to join an inter partes
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`review with another inter partes review. See 35 U.S.C. § 315(c). Joinder
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`may be authorized when warranted, but the decision to grant joinder is
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`discretionary. 35 U.S.C. § 315(c); 37 C.F.R. § 42.122. When exercising its
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`discretion, the Board is mindful that patent trial regulations, including the
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`2
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`IPR2014-00849
`Patent 7,604,716 B2
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`rules for joinder, must be construed to secure the just, speedy, and
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`inexpensive resolution of every proceeding. See 35 U.S.C. § 316(b);
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`37 C.F.R. § 42.1(b). The Board considers the impact of both substantive
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`issues and procedural matters on the proceedings.
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`As the moving party, Fujitsu bears the burden to show that joinder is
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`appropriate. 37 C.F.R. §§ 42.20(c), 42.122(b). In its revised Motion for
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`Joinder, Fujitsu contends that joinder, in this particular situation, is
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`appropriate because: (1) “it is the most expedient way to secure the just,
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`speedy, and inexpensive resolution of the related proceedings” (Mot. 5);
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`(2) Fujitsu’s Petition is substantively identical to TSMC’s Petition filed in
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`IPR2014-00808 (id. at 5–6); (3) Fujitsu agrees to consolidated filings and
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`discovery (id. at 6–7); (4) joinder would not affect the schedule in
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`IPR2014-00808 (id. at 7–8); (5) joinder would streamline the proceedings,
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`reduce the costs and burdens on the parties, and increase efficiencies for the
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`Board without any prejudice to Zond (id. at 8).
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`We agree that the substantive issues in IPR2014-00808 would not be
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`affected by joinder, because Fujitsu’s Petition is substantively identical to
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`TSMC’s Petition filed in IPR2014-00808. Notably, Fujitsu’s Petition asserts
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`identical grounds of unpatentability, challenging the same claims of the ’716
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`patent. Compare Pet. 15–56, with IPR2014-00808, Paper 1 (“’808 Pet.”),
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`15–56. Fujitsu also submits identical proposed claim constructions, as well
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`as the same Declaration of Dr. Uwe Kortshagen. Compare Pet. 13–15, with
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`’808 Pet. 13–15; compare Ex. 1302, with ’808 Ex. 1302. Moreover, we
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`institute the instant trial based on the same grounds for which we instituted
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`trial in IPR2014-00808. Therefore, Fujitsu’s Petition raises no new issues
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`beyond those already before us in IPR2014-00808.
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`3
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`IPR2014-00849
`Patent 7,604,716 B2
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`In its Opposition, Zond indicates that it is not opposed to joinder.
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`Opp. 1. Rather, Zond proposes a procedure for the joined proceeding to
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`consolidate the schedule, filings, and discovery. Opp. 2–3.
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`We agree with the parties that conducting a single joined proceeding
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`for reviewing claims 19–24 of the ’716 patent is more efficient than
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`conducting multiple proceedings, eliminating duplicate filings and
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`discovery. As previously indicated, Fujitsu agrees to consolidated filings for
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`all substantive papers. Mot. 6–7. Fujitsu further indicates that it will not file
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`any paper with arguments separate from those advanced by the consolidated
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`filings, eliminating duplicate briefing. Id. at 7. Fujitsu further agrees to
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`consolidated discovery, as each Petitioner proffers the same Declaration of
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`Dr. Kortshagen. Id. Fujitsu indicates that Petitioners collectively will
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`designate an attorney to conduct the cross-examination of any witnesses
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`produced by Zond and the redirect of any witnesses produced by Petitioners,
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`within the timeframe normally allotted by the rules for one party. Id.
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`Moreover, joinder will not require any change to the trial schedule in
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`IPR2014-00808, allowing the trial still to be completed within one year. Id.
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`at 7–8. Given that Fujitsu’s Petition raises no new issues, and Petitioners
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`agree to consolidated filings and discovery, the impact of joinder on
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`IPR2014-00808 will be minimal, and joinder will streamline the
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`proceedings, reducing the costs and burdens on the parties and the Board.
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`For the foregoing reasons, Fujitsu has met its burden of demonstrating
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`that joinder of the instant proceeding with IPR2014-00808 is warranted
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`under the circumstances.
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`4
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`IPR2014-00849
`Patent 7,604,716 B2
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`Accordingly, it is:
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`
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`ORDER
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`ORDERED that Fujitsu’s Motion for Joinder with IPR2014-00808 is
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`granted;
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`FURTHER ORDERED that the instant proceeding is joined with
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`IPR2014-00808;
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`FURTHER ORDERED that the grounds of unpatentability on which a
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`trial was instituted in IPR2014-00808 are unchanged;
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`FURTHER ORDERED that the Scheduling Order for IPR2014-00808
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`(Paper 10) shall govern the joined proceeding; the initial conference call for
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`the joined proceeding is scheduled on November 20, 2014 at 3:00 PM ET;
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`FURTHER ORDERED that the instant proceeding is instituted,
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`joined, and terminated under 37 C.F.R. § 42.72, and all further filings in the
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`joined proceeding shall be made only in IPR2014-00808;
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`FURTHER ORDERED that, throughout IPR2014-00808, Petitioners
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`(TSMC and Fujitsu) will file papers, except for motions which do not
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`involve the other parties, as consolidated filings1; TSMC will identify each
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`such filing as a consolidated filing and will be responsible for completing all
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`consolidated filings; the page limits set forth in 37 C.F.R. § 42.24 will apply
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`to all consolidated filings; no individual Petitioner will receive any
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`additional pages in addition to the page limits set forth in 37 C.F.R. § 42.24
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`for one party;
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`1 The parties are directed to the Board’s website, in particular FAQs C3, D5,
`and G8, for information regarding filings in the Patent Review Processing
`System (PRPS). See http://www.uspto.gov/ip/boards/bpai/prps.jsp.
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`5
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`IPR2014-00849
`Patent 7,604,716 B2
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`FURTHER ORDERED that Zond will conduct the cross-examination
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`of witnesses, as well as the redirect examination of any witness it produces,
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`in the timeframes set forth in 37 C.F.R. § 42.53(c);
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`FURTHER ORDERED that Petitioners collectively will designate
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`attorneys to conduct the cross-examination of any witnesses produced by
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`Zond and the redirect examination of any witnesses produced by Petitioners,
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`within the timeframes set forth in 37 C.F.R. § 42.53(c) for one party; no
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`individual Petitioner will receive any cross-examination or redirect
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`examination time in addition to the time normally allotted by 37 C.F.R.
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`§ 42.53(c) for one party;
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`FURTHER ORDERED that Petitioners collectively will designate
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`attorneys to present at the oral hearing (if requested) as a consolidated
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`presentation;
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`FURTHER ORDERED that the case caption in IPR2014-00808 shall
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`be changed to reflect the joinder with the instant proceeding in accordance
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`with the attached example; and
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`FURTHER ORDERED that a copy of this Decision be entered into
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`the file of IPR2014-00808.
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`6
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`IPR2014-00849
`Patent 7,604,716 B2
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`For PETITIONER:
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`
`
`
`
`David McCombs
`david.mccombs.ipr@haynesboone.com
`
`David M. O’Dell
`david.odell.ipr@haynesboone.com
`
`Richard C. Kim
`rckim@duanemorris.com
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`
`PATENT OWNER:
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`Gregory J. Gonsalves
`gonsalves@gonsalveslawfirm.com
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`Bruce J. Barker
`bbarker@chsblaw.com
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`7
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`
`TAIWAN SEMICONDUCTOR MANUFACTURING COMPANY, LTD.,
`TSMC NORTH AMERICA CORP., FUJITSU SEMICONDUCTOR
`LIMITED, and FUJITSU SEMICONDUCTOR AMERICA, INC.,
`Petitioner,
`
`v.
`
`ZOND, LLC,
`Patent Owner.
`____________
`
`Case IPR2014-008081
`Patent 7,604,716 B2
`____________
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`1 Case IPR2014-00849 has been joined with the instant proceeding.