Trials@uspto.gov Paper 20
`571-272-7822 Entered: November 26, 2014
`
`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, 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,
`Petitioner,
`
`v.
`
`ZOND, LLC,
`Patent Owner.
`____________
`
`Cases IPR2014-00818, IPR2014-00819, IPR2014-0821,
`IPR2014-0827, and IPR2014-010981
`Patent 6,853,142 B2
`____________
`
`
`Before KEVIN F. TURNER, JONI Y. CHANG, and JENNIFER M. MEYER,
`Administrative Patent Judges.
`
`TURNER, Administrative Patent Judge.
`
`
`
`
`
`1 IPR2014-00866, IPR2014-01012, and IPR2014-01075 have been joined with
`IPR2014-00818; IPR2014-00867, IPR2014-01014, and IPR2014-01046 have been
`joined with IPR2014-00819; IPR2014-00863, IPR2014-01013, and IPR2014-
`01057 have been joined with IPR2014-00821; IPR2014-00865, IPR2014-01015,
`and IPR2014-01063 have been joined with IPR2014-00827; and IPR2014-01016
`has been joined with IPR2014-01098.
`
`
`571-272-7822 Entered: November 26, 2014
`
`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, 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,
`Petitioner,
`
`v.
`
`ZOND, LLC,
`Patent Owner.
`____________
`
`Cases IPR2014-00818, IPR2014-00819, IPR2014-0821,
`IPR2014-0827, and IPR2014-010981
`Patent 6,853,142 B2
`____________
`
`
`Before KEVIN F. TURNER, JONI Y. CHANG, and JENNIFER M. MEYER,
`Administrative Patent Judges.
`
`TURNER, Administrative Patent Judge.
`
`
`
`
`
`1 IPR2014-00866, IPR2014-01012, and IPR2014-01075 have been joined with
`IPR2014-00818; IPR2014-00867, IPR2014-01014, and IPR2014-01046 have been
`joined with IPR2014-00819; IPR2014-00863, IPR2014-01013, and IPR2014-
`01057 have been joined with IPR2014-00821; IPR2014-00865, IPR2014-01015,
`and IPR2014-01063 have been joined with IPR2014-00827; and IPR2014-01016
`has been joined with IPR2014-01098.
`
`
`
`IPR2014-00818, IPR2014-00819, IPR2014-0821,
`IPR2014-0827, and IPR2014-01098
`Patent 6,853,142 B2
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`We instituted inter partes review in each of the above-identified proceedings
`
`to review the claims of U.S. Patent No. 6,853,142 (“the ’142 Patent”). Paper 9.2 A
`
`list of Joinder Cases is provided in the Appendix of the instant Order. For
`
`efficiency, we synchronized the Scheduling Orders that set forth the due dates for
`
`the parties to take action for each of the above-identified reviews, ensuring that the
`
`reviews will be completed within one year of institution. See Paper 10. An initial
`
`conference call was held on November 25, 2014, between respective counsel for
`
`the parties3 for the above-identified reviews and Judges Turner, Chang, and Meyer.
`
`The purpose of the call was to discuss any proposed changes to the Scheduling
`
`Orders, as well as any motions that the parties intend to file, and to address
`
`questions that the parties might have.
`
`Trial Schedule
`
`The parties indicated that they do not, at this time, foresee any problems
`
`with meeting the due dates set forth in the Scheduling Orders. We remind the
`
`parties that they may stipulate to different dates for Due Dates 1–5. If the parties
`
`decide to stipulate to different due dates, the parties should file a notice of
`
`stipulation that includes a copy of the due date appendix of the Scheduling Order,
`
`showing the new due dates next to the original due dates.
`
`
`2 For the purpose of clarity and expediency, we treat IPR2014-00818 as
`representative, and all citations are to IPR2014-00818 unless otherwise noted.
`3 We note that Petitioner in IPR2014-01098 is limited to GLOBALFOUNDRIES
`U.S., Inc., GLOBALFOUNDRIES Dresden Module One LLC & Co. KG, and
`GLOBALFOUNDRIES Dresden Module Two LLC & Co. KG, and The Gillette
`Company.
`
`
`
`2
`
`
`
`IPR2014-00818, IPR2014-00819, IPR2014-0821,
`IPR2014-0827, and IPR2014-01098
`Patent 6,853,142 B2
`
`
`We noted that the oral hearings for each of the above-identified reviews are
`
`scheduled on the same day. The parties may request a single-combined oral
`
`hearing in their requests for oral hearing on or before Due Date 4. Given the
`
`similarity in claimed subject matter and overlapping asserted prior art, the
`
`transcript from the combined oral hearing could be usable across all of the above-
`
`identified reviews.
`
`The Procedure for Consolidated Filings and Discovery
`
`As we noted during the conference call, the Decisions on the Motions for
`
`Joinder (“the Joinder Decisions”) did not change the grounds of unpatentability on
`
`which a trial was instituted or the Scheduling Orders, in each of the original
`
`reviews. The Joinder Decisions set forth a procedure for consolidated filings and
`
`discovery. The parties stated that they are in agreement with the procedure.
`
`Given the similarity in claimed subject matter and overlapping asserted prior
`
`art and that Petitioner submitted declarations from the same expert witness in each
`
`review, the parties may coordinate and combine discovery for these proceedings,
`
`as well as other proceedings involving the parties, but different patents. For
`
`example, cross-examination of Petitioners’ declarant may be combined and useable
`
`in each of the above-identified reviews, for efficiency and consistency. Should the
`
`parties combine discovery of the above-identified reviews, which involve the
`
`’142 Patent, with other proceedings that involve another patent, the parties are
`
`encouraged to keep the record clear as to each proceeding and each patent.
`
`The parties indicated that there were no issues with the upcoming cross-
`
`examination of Petitioners’ declarant, Dr. Kortshagen, scheduled to occur on
`
`December 3 and 4, 2014.
`
`
`
`3
`
`
`
`IPR2014-00818, IPR2014-00819, IPR2014-0821,
`IPR2014-0827, and IPR2014-01098
`Patent 6,853,142 B2
`
`
`Motions for Pro Hac Vice Admission
`
`During the conference call, Zond indicated that it did not oppose the pending
`
`motions for pro hac vice admission by Petitioners. We also reminded the parties
`
`that indicating to the Board whether identical or similar motions are being filed in
`
`particular proceedings allows for those motions to be decided concordantly. We
`
`also counseled that agreements between the parties, in particular indications of
`
`opposition or non-opposition to particular motions and/or papers, assist the Board
`
`in making speedy decisions on such motions and/or papers.
`
`Incorporation by Reference is Prohibited
`
`During the conference call, we reminded the parties that incorporation by
`
`reference from one document to another is not permitted under our rules. See
`
`37 C.F.R. § 42.6(a)(3). We observed that, in a family of cases challenging the
`
`same patent, as here, briefing papers may cross-reference between different inter
`
`partes reviews, but incorporation by reference is still prohibited. For example, the
`
`Patent Owner Response or Reply to a Patent Owner Response filed in one
`
`proceeding may not incorporate by reference arguments submitted in another
`
`proceeding. Each briefing paper must stand on its own, with appropriate
`
`supporting evidence.
`
`Objections and Motions to Exclude Evidence
`
`We remind the parties that while certain due dates are set forth in the
`
`Scheduling Orders, the times for serving objections to evidence are set forth in
`
`37 C.F.R. § 42.64(b). For instance, the parties are not required to seek prior
`
`authorization for filing a motion to exclude evidence under 37 C.F.R. § 42.64(c), a
`
`motion for observation regarding cross-examination of a reply witness, and a
`
`response to such observation because the Scheduling Orders set forth the due date
`
`
`
`4
`
`
`
`IPR2014-00818, IPR2014-00819, IPR2014-0821,
`IPR2014-0827, and IPR2014-01098
`Patent 6,853,142 B2
`
`for these motions and responses. However, any objection to evidence submitted
`
`during a preliminary proceeding must be served within ten business days of the
`
`institution of the trial. After institution, any objection must be served within five
`
`business days of service of evidence to which the objection is directed. The parties
`
`further should note that a motion to exclude evidence must identify and explain the
`
`objections.
`
`It is
`
`ORDER
`
`ORDERED that the parties are authorized to request a single-combined oral
`
`hearing for the above-identified inter partes reviews; and
`
`FURTHER ORDERED that the parties are authorized to consolidate
`
`discovery for the above-identified inter partes reviews, so that the
`
`cross-examination and redirect examination may be usable in each of the above-
`
`identified inter partes reviews.
`
`
`
`
`
`5
`
`
`
`Joinder Cases
`
`IPR2014-00866
`IPR2014-01012
`IPR2014-01075
`
`IPR2014-00867
`IPR2014-01014
`IPR2014-01046
`
`IPR2014-00863
`IPR2014-01013
`IPR2014-01057
`
`IPR2014-00865
`IPR2014-01015
`IPR2014-01063
`
`IPR2014-01016
`
`IPR2014-00818, IPR2014-00819, IPR2014-0821,
`IPR2014-0827, and IPR2014-01098
`Patent 6,853,142 B2
`
`
`APPENDIX
`
`
`
`Inter partes reviews for
`U.S. Patent No. 6,853,142 B2
`
`IPR2014-00818
`(Claims 1, 3–10, 12, 15, 17–20, and 42)
`
`IPR2014-00819
`(Claims 21, 24, 26–28, 31, 32, 37, and 38)
`
`IPR2014-00821
`(Claims 2, 11, 13, 14, and 16)
`
`IPR2014-00827
`(Claims 22, 23, 25, 29, 30, 33–36, 39, and 43)
`
`IPR2014-01098
`(Claims 40 and 41)
`
`
`
`
`
`
`
`
`
`6
`
`
`
`IPR2014-00818, IPR2014-00819, IPR2014-0821,
`IPR2014-0827, and IPR2014-01098
`Patent 6,853,142 B2
`
`PATENT OWNER:
`
`Gregory J. Gonsalves
`gonsalves@gonsalveslawfirm.com
`
`Bruce Barker
`bbarker@chcblaw.com
`
`PETITIONER:
`
`TSMC – Lead Petitioner in IPR2014-00818, IPR2014-00819, IPR2014-00821
`and IPR2014-00827:
`
`David M O’Dell
`david.odell.ipr@haynesboone.com
`
`David L. McCombs
`david.mccombs.ipr@haynesboone.com
`
`Anthony J. Fitzpatrick
`AJFitzpatrick@duanemorris.com
`
`Donald D. Jackson
`donald.jackson@haynesboone.com
`
`Gregory P. Huh
`gregory.huh.ipr@haynesboone.com
`
`GlobalFoundries – Lead Petitioner in IPR2014-01098:
`
`David M. Tennant
`Dohm Chankong
`dtennant@whitecase.com
`
`Fujitsu:
`
`David M O’Dell
`david.odell.ipr@haynesboone.com
`
`David L. McCombs
`david.mccombs.ipr@haynesboone.com
`
`
`
`7
`
`
`
`IPR2014-00818, IPR2014-00819, IPR2014-0821,
`IPR2014-0827, and IPR2014-01098
`Patent 6,853,142 B2
`
`AMD:
`
`Robinson Vu
`robinson.vu@bakerbotts.com
`
`Brian M. Berliner
`bberliner@omm.com
`
`Ryan K. Yagura
`ryagura@omm.com
`
`Xin-Yi Zhou
`vzhou@omm.com
`
`John Feldhaus
`jfeldhaus@foley.com
`
`Pavan K. Agarwal
`pagarwal@foley.com
`
`Mike R. Houston
`mhouston@foley.com
`
`David M. Tennant
`dtennant@whitecase.com
`
`Gillette:
`
`Michael A. Diener
`michael.diener@wilmerhale.com
`
`Larissa B. Park
`larissa.park@wilmerhale.com
`
`
`
`
`
`8
`
`
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