`IPR2014-00808 (U.S. 7,604,716)
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`Paper No.
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________________________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________________________________
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`TAIWAN SEMICONDUCTOR MANUFACTURING COMPANY, LTD.,
`TSMC NORTH AMERICA CORPORATION,
`FUJITSU SEMICONDUCTOR LIMITED,
`FUJITSU SEMICONDUCTOR AMERICA, INC.,
`ADVANCED MICRO DEVICES, INC., RENESAS ELECTRONICS
`CORPORATION, RENESAS ELECTRONICS AMERICA, INC.,
`GLOBALFOUNDRIES U.S., INC., GLOBALFOUNDRIES DRESDEN
`MODULE ONE LLC & CO. KG, GLOBALFOUNDRIES DRESDEN
`MODULE TWO LLC & CO. KG, TOSHIBA AMERICA ELECTRONIC
`COMPONENTS, INC., TOSHIBA AMERICA INC., TOSHIBA
`AMERICA INFORMATION SYSTEMS, INC.,
`TOSHIBA CORPORATION, and
`THE GILLETTE COMPANY,
`Petitioners,
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`v.
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`ZOND, LLC,
`Patent Owner
`____________________________________________
`
`Case IPR2014-008081
`Patent 7,604,716 B2
`____________________________________________
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`PETITIONERS’ MOTION FOR PRO HAC VICE ADMISSION
`PURSUANT TO 37 C.F.R. § 42.10(C)
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`1 Cases IPR 2014-00849, IPR 2014-00975, and IPR 2014-01067 have been joined
`with the instant proceeding.
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`Petitioners’ Motion for Pro Hac Vice Admission
`IPR2014-00808 (U.S. 7,604,716)
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`This Motion for Pro Hac Vice admission is filed solely on behalf of Taiwan
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`Semiconductor Manufacturing Company, Ltd. and TSMC North America
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`Corporation (collectively “TSMC” or “Petitioner”). TSMC respectfully moves
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`that the Board recognize Mr. Anthony J. Fitzpatrick as counsel pro hac vice during
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`this proceeding.
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`1. Time for Filing
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`This Motion for Pro Hac Vice Admission is being filed no sooner than
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`twenty one (21) days after service of the petition. (IPR2013-00639, Paper No. 7).
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`2. Statement of Facts Showing Good Cause for Counsel Pro Hac Vice
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`Petitioner has been authorized to file motions seeking admission pro hac
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`vice under 37 C.F.R. 42.10(c). (Paper No. 3). Petitioner’s lead and back-up
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`counsel are registered practitioners:
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`Lead Counsel: David M. O’Dell, USPTO Reg. No. 42,044; and
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`Backup Counsel: David L. McCombs, USPTO Reg. No. 32,271.
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`The following statement of facts shows that there is good cause for the
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`Board to recognize Mr. Fitzpatrick pro hac vice on behalf of Petitioner.
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` In summary, Mr. Fitzpatrick is an experienced litigator, has established
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`familiarity with the subject matter at issue in this proceeding from his participation
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`in co-pending litigation involving the subject patent, and if admitted, will be
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`Petitioners’ Motion for Pro Hac Vice Admission
`IPR2014-00808 (U.S. 7,604,716)
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`involved in the depositions that occur in this proceeding. Specifically, U.S. Patent
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`No. 7,604,716 is currently asserted against Petitioner in co-pending litigation, in
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`the District of Massachusetts, 1:13-cv-11634-WGY (Zond v. Fujitsu, et al.) (“the
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`co-pending litigation”). Mr. Fitzpatrick is a member of the Massachusetts bar in
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`good standing, and is representing the Petitioner, in the co-pending litigation.
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`Mr. Fitzpatrick has analyzed prior art references and claim charts in
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`connection with invalidity contentions and has been involved in forming claim
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`construction positions related to the claimed inventions, all of which are relevant to
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`the petition requesting inter partes review of U.S. Patent No. 7,604,716. Petitioner
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`wishes to apply Mr. Fitzpatrick’s knowledge of the patent by employing him as
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`counsel in this proceeding. Admission of Mr. Fitzpatrick pro hac vice will enable
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`Petitioner to avoid unnecessary expense and duplication of work between this
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`proceeding and the co-pending litigation.
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`Petitioner’s lead and backup counsel are registered practitioners and Mr.
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`Fitzpatrick is an experienced litigation attorney having familiarity with the subject
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`matter at issue in this proceeding. Therefore, Petitioners respectfully submit that
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`there is good cause for the Board to recognize Mr. Fitzpatrick as counsel pro hac
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`vice during this proceeding.
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`Petitioners’ Motion for Pro Hac Vice Admission
`IPR2014-00808 (U.S. 7,604,716)
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`3. Affidavit of Individual Seeking to Appear
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`This Motion for Pro Hac Vice Admission is supported by an Affidavit of
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`Respectfully submitted,
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`/David M. O’Dell/
`David M. O’Dell
`Lead Counsel for Petitioner TSMC
`Registration No. 42,044
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`Mr. Fitzpatrick (Ex. 1328).
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`Date: October 28, 2014
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`Petitioners’ Motion for Pro Hac Vice Admission
`IPR2014-00808 (U.S. 7,604,716)
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`Petitioner’s Updated Exhibit List
`October 28, 2014
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`Description
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`U.S. Patent No. 7,604,716 (“’716 Patent”)
`Kortshagen Declaration (“Kortshagen Decl.”)
`D.V. Mozgrin, et al, High-Current Low-Pressure Quasi-
`Stationary Discharge in a Magnetic Field: Experimental
`Research, Plasma Physics Reports, Vol. 21, No. 5, pp. 400-
`409, 1995 (“Mozgrin”)
`U.S. Pat. No. 6,413,382 (“Wang”)
`A. A. Kudryavtsev and V.N. Skerbov, Ionization relaxation in
`a plasma produced by a pulsed inert-gas discharge, Sov. Phys.
`Tech. Phys. 28(1), pp. 30-35, January 1983 (“Kudryavtsev”)
`U.S. Pat. No. 6,190,512 (“Lantsman”)
`Certified Translation of D.V. Mozgrin, High-Current Low-
`Pressure Quasi-Stationary Discharge in a Magnetic Field:
`Experimental Research, Thesis at Moscow Engineering
`Physics Institute, 1994 (“Mozgrin Thesis”)
`Mozgrin Thesis (Original Russian)
`Catalogue Entry at the Russian State Library for the Mozgrin
`Thesis
`U.S. Pat. No. 6,853,142 (“ ‘142 Patent”)
`File History for U.S. Pat. No. 7,604,716, Office Action dated
`March 27, 2008 (“03/27/08 Office Action”)
`File History for U.S. Pat. No. 7,604,716, Response dated
`September 24, 2008 (“09/24/08 Response”)
`File History for U.S. Pat. No. 7,604,716, Notice of Allowance
`dated June 11, 2009 (“06/11/09 Allowance”)
`European Patent Application 1560943, Response of April 21,
`2008 (“04/21/08 Response in EP 1560943”)
`U.S. Patent No. 7,147,759 (“’759 Patent”)
`File History for U.S. Pat. No. 7,147,759, Response dated May
`2, 2006 (“05/02/06 Response of ‘759 Patent File History”)
`Plasma Etching: An Introduction, by Manos and Flamm,
`Academic Press (1989) (“Manos”)
`Gas Discharge Physics, by Raizer, Table of Contents, pp. 1-
`35, Springer 1997 (“Raizer”)
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`Exhibit
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`1301
`1302
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`1303
`1304
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`1305
`1306
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`1307
`1308
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`1309
`1310
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`1311
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`1312
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`1313
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`1314
`1315
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`1316
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`1317
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`1318
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`1319
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`1320
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`1321
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`1322
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`1323
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`1324
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`1325
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`1326
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`1327
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`1328
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`U.S. Pat. No. 6,306,265 (“Fu”)
`The Materials Science of Thin Films, by Ohring M.,
`Academic Press (1992) (“Ohring”)
`Thin-Film Deposition: Principles & Practice by Smith, D.L.,
`McGraw Hill (1995) (“Smith”)
`Claim Chart Based on Mozgrin and Kudryavtsev as used in
`1:13-cv-11570-RGS (“Claim Chart based on Mozgrin and
`Kudryavtsev”)
`Claim Chart Based on Mozgrin, Kudryavtsev and Lantsman
`as used in 1:13-cv-11570-RGS (“Claim Chart based on
`Mozgrin, Kudryavtsev and Lantsman”)
`Claim Chart Based on Mozgrin, Kudryavtsev and the
`Mozgrin Thesis as used in 1:13-cv-11570-RGS (“Claim Chart
`based on Mozgrin, Kudryavtsev and the Mozgrin Thesis”)
`Claim Chart Based on Wang and Kudryavtsev as used in
`1:13-cv-11570-RGS (“Claim Chart based on Wang and
`Kudryavtsev”)
`Claim Chart Based on Wang, Kudryavtsev and Lantsman as
`used in 1:13-cv-11570-RGS (“Claim Chart based on Wang,
`Kudryavtsev and Lantsman”)
`Claim Chart Based on Wang, Kudryavtsev and Mozgrin as
`used in 1:13-cv-11570-RGS (“Claim Chart based on Wang,
`Kudryavtsev and Mozgrin”)
`Affidavit of Mr. Fitzpatrick in Support of Motion for Pro Hac
`Vice Admission
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. §§ 42.6(e) and 42.105(a), this is to certify that I
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`caused to be served a true and correct copy of the foregoing “PETITIONERS’
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`MOTION FOR PRO HAC VICE ADMISSION PURSUANT TO 37 C.F.R. §
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`42.10(C)” as detailed below:
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`Date of service October 28, 2014
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`Manner of service Email: gonsalves@gonsalveslawfirm.com;
`bbarker@chsblaw.com; kurt@rauschenbach.com
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`Documents served PETITIONERS’ MOTION FOR PRO HAC VICE
`ADMISSION PURSUANT TO 37 C.F.R. § 42.10(C);
`Updated Petitioner’s Exhibit List; and
`Exhibit 1328.
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`Persons Served Dr. Gregory J. Gonsalves
`2216 Beacon Lane
`Falls Church, Virginia 22043
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`Bruce Barker
`Chao Hadidi Stark & Barker LLP
`176 East Mail Street, Suite 6
`Westborough, MA 01581
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`/David M. O’Dell/
`David M. O’Dell
`Lead Counsel for Petitioner TSMC
`Registration No. 42,044
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`–6–