`
`Paper No.
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`
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________________________________
`
`
`
`
`
`TAIWAN SEMICONDUCTOR MANUFACTURING COMPANY, LTD. and
`TSMC NORTH AMERICA CORP.
`Petitioner
`
`v.
`
`ZOND, INC.
`Patent Owner
`
`Case IPR2014-00828
`U.S. PATENT NO. 6,805,779
`CLAIMS 30-37, 39-40
`Title: Plasma generation using multi-step ionization
`____________________________________________
`
`
`
`
`
`
`__________________________________________________________________
`
`
`
`PETITIONER’s MOTION FOR JOINDER UNDER 35 U.S.C. § 315(c)
`AND 37 C.F.R. § 42.22 AND § 42.122(b)
`
`
`
`
`
`
`
`Petitioner's Motion for Joinder (IPR2014-00828)
`
`INTRODUCTION
`
`Taiwan Semiconductor Manufacturing Co., Ltd and TSMC North America
`
`Corp. (“TSMC”) filed the present petition for inter partes review IPR2014-00828
`
`(the “TSMC IPR”) and hereby moves for joinder of the TSMC IPR with IPR2014-
`
`00765, filed by Intel Corporation (the “Intel IPR”). The TSMC IPR is identical to
`
`the Intel IPR in all substantive respects, includes identical exhibits, and relies upon
`
`the same expert declarant. Intel Corporation does not oppose this motion.
`
`BACKGROUND AND RELATED PROCEEDINGS
`
`
`
`The TSMC IPR and Intel IPR are among a family of inter partes review
`
`proceedings relating to seven patents that are being asserted by Zond, Inc.
`
`(“Zond”) against numerous defendants in the District of Massachusetts: 1:13-cv-
`
`11570-RGS (Zond v. Intel Corp.); 1:13-cv-11577-DPW (Zond v. AMD, Inc., et al);
`
`1:13-cv-11581-DJC (Zond v. Toshiba Am. Elec. Comp. Inc.); 1:13-cv-11625-NMG
`
`(Zond v. Renesas Elec. Corp.); 1:13-cv-11634-WGY (Zond v. Fujitsu1 and TSMC);
`
`and 1:13-cv-11567-DJC (Zond v. Gillette, Co.).
`
`In particular, a first complaint in 1:13-cv-11570-RGS (Zond v. Intel) was
`
`served on defendant Intel Corporation on July 9, 2013, and a first complaint in
`
`1:13-cv-11634-WGY (Zond v. Fujitsu and TSMC) was served on defendants
`
`
`1 “Fujitsu” as used herein refers to Fujitsu Semiconductor Limited and Fujitsu
`Semiconductor America, Inc., collectively.
`2
`
`
`
`
`
`
`
`
`Petitioner's Motion for Joinder (IPR2014-00828)
`
`Fujitsu and TSMC on July 9, 2013 and September 5, 2013, respectively.
`
`Accordingly, all petitions for inter partes review that have been filed by defendants
`
`Intel, TSMC, and Fujitsu are timely as prescribed by 35 U.S.C. § 315(b).
`
`On April 18, 2014, in 1:13-cv-11570-RGS (Zond v. Intel), the Court entered
`
`an order granting Intel’s Motion to Stay pending inter partes review, indicating the
`
`Court will benefit from the expert claim analysis of the PTO.
`
`On June 2, 2014, as clarified on June 3, 2014, in 1:13-cv-11634-WGY (Zond
`
`v. Fujitsu and TSMC), the Court entered an order to administratively close the case
`
`pending conclusion of inter partes reviews or until May 9, 2016, whichever shall
`
`occur first.
`
`
`
`Currently, the family of inter partes review proceedings relating to the seven
`
`Zond patents (the “Zond IPRs”) consists of the following proceedings that involve
`
`Intel, TSMC, and Fujitsu:2
`
`
`
`
`
`
`2 Gillette Co. filed petitions for inter partes review of other patents asserted by
`Zond in 1:13-cv-11567-DJC (Zond v. Gillette, Co.), namely IPR2014-00477 and
`IPR2014-00479 (U.S. Patent No. 8,125,155); IPR2014-00580 and IPR2014-00726
`(U.S. Patent No. 6,896,773); and IPR2014-00578 and IPR2014-00604 (U.S. Patent
`No. 6,896,775). Other Gillette filings are ongoing.
`
`
`
`3
`
`
`
`
`
`Petitioner's Motion for Joinder (IPR2014-00828)
`
`Claims
`
`5/30/14 16, 28, 41, 42, 45, 46
`
`Fujitsu IPRs
`TSMC IPRs
`Intel IPRs
`Fujitsu
`TSMC
`Intel
`Intel
`TSMC
`Fujitsu
`Claims in IPR
`Ref
`Ref
`Ref
`Filed
`Filed
`Filed
`2014‐
`5/16/14 2014‐
`5/28/14 2014‐
`5/30/14 30‐37, 39‐40
`00765
`00828
`00856
`2014‐
`5/27/14 2014‐
`5/28/14 2014‐
`00820
`00829
`00859
`2014‐
`n/a
`n/a
`00598
`2014‐
`00686
`2014‐
`00913
`
`4/9/14
`
`4/24/14
`
`n/a
`
`n/a
`
`n/a
`
`n/a
`
`n/a
`
`n/a
`
`1‐4, 10‐15, 17, 18, 24‐
`27, 29
`5, 6, 8, 19, 22, 23, 43
`
`6/6/14 2014‐
`00917
`
`6/9/14 2014‐
`00918
`
`6/9/14 7, 9, 20, 21, 38, 44
`
`2014‐
`00843
`2014‐
`00945
`2014‐
`00923
`
`2014‐
`00494
`2014‐
`00495
`2014‐
`00496
`2014‐
`00497
`2014‐
`00498
`
`5/29/14 2014‐
`00861
`n/a
`
`6/12/14
`
`5/30/14 2014‐
`00864
`n/a
`
`n/a
`
`6/10/14
`
`n/a
`
`n/a
`
`n/a
`
`5/30/14
`
`n/a
`
`n/a
`
`18‐34
`
`1‐17
`
`35
`
`3/13/14 2014‐
`00818
`3/13/14 2014‐
`00821
`3/13/14 2014‐
`00819
`3/13/14 2014‐
`00827
`n/a
`
`3/13/14
`
`5/27/14 2014‐
`00866
`5/27/14 2014‐
`00863
`5/27/14 2014‐
`00867
`5/28/14 2014‐
`00865
`n/a
`
`n/a
`
`5/30/14 1, 3‐10, 12, 15, 17‐20,
`42
`5/30/14 2, 11, 13, 14, 16
`
`5/30/14 21, 24, 26‐28, 31, 32,
`37, 38
`5/30/14 22, 23, 25, 29, 30, 33‐
`36, 39, 43
`40, 41
`
`n/a
`
`
`
`4
`
`
`
`Patent
`
`6805779
`
`6806652
`
`6853142
`
`
`
`
`
`
`
`
`
`
`
`Patent
`
`7147759
`
`
`
`
`
`
`
`
`7604716
`
`7808184
`
`2014‐
`00522
`2014‐
`00523
`2014‐
`00520
`2014‐
`00521
`
`2014‐
`00455
`2014‐
`00456
`
`3/27/14 2014‐
`00807
`3/27/14 2014‐
`00808
`n/a
`
`3/27/14
`
`5/23/14 2014‐
`00846
`5/23/14 2014‐
`00849
`n/a
`
`n/a
`
`5/29/14 14‐18, 25‐32
`
`5/29/14 19‐24
`
`n/a
`
`1‐11, 33
`
`3/27/14
`
`n/a
`
`n/a
`
`n/a
`
`n/a
`
`12, 13
`
`3/7/14 2014‐
`00799
`3/7/14 2014‐
`00803
`
`5/22/14 2014‐
`00855
`5/22/14 2014‐
`00858
`
`5/30/14 1‐5, 11‐15
`
`5/30/14 6‐10, 16‐20
`
`7811421
`
`2014‐
`00468
`
`3/7/14 2014‐
`00800
`
`5/22/14 2014‐
`00844
`
`2014‐
`00470
`2014‐
`00473
`
`3/7/14 2014‐
`00802
`3/7/14 2014‐
`00805
`
`5/22/14 2014‐
`00848
`5/23/14 2014‐
`00851
`
`5/29/14 1, 2, 8, 10‐13, 15‐17,
`22‐25, 27‐30, 33, 34,
`38, 39, 42, 43, 46‐48
`5/29/14 9, 14, 21, 26, 35, 37
`
`5/30/14 3‐7, 18‐20, 31, 32, 36,
`40, 41, 44, 45
`
`
`
`5
`
`Petitioner's Motion for Joinder (IPR2014-00828)
`
`Claims
`
`Fujitsu IPRs
`TSMC IPRs
`Intel IPRs
`Fujitsu
`TSMC
`Intel
`Intel
`TSMC
`Fujitsu
`Claims in IPR
`Ref
`Ref
`Ref
`Filed
`Filed
`Filed
`2014‐
`3/6/14 2014‐
`5/19/14 2014‐
`5/29/14 20, 21, 34‐36, 38, 39,
`00445
`00781
`00845
`47, 49
`5/29/14 22‐33, 37, 46, 48, 50
`2014‐
`3/6/14 2014‐
`5/19/14 2014‐
`00850
`00446
`00782
`2014‐
`n/a
`n/a
`00443
`2014‐
`00444
`2014‐
`00447
`
`3/6/14
`
`3/6/14
`
`n/a
`
`3/6/14
`
`n/a
`
`n/a
`
`n/a
`
`n/a
`
`n/a
`
`1, 4, 10‐12, 17, 18, 44
`
`n/a
`
`n/a
`
`n/a
`
`n/a
`
`2, 3, 5‐9, 13‐16, 19, 41‐
`43, 45
`40
`
`
`
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`Petitioner's Motion for Joinder (IPR2014-00828)
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`The petitions for IPR filed by TSMC and by Fujitsu correspond exactly to
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`the petitions first filed by Intel against the same patent claims, and are identical to
`
`the Intel petitions in all substantive respects. They include identical grounds,
`
`analysis, and exhibits and rely upon the same expert declarants and declarations.
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`
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`In addition to this motion, TSMC and Fujitsu are presently filing motions for
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`joinder of each of their Zond IPR petitions with the corresponding petitions first
`
`filed by Intel, subject to the same conditions sought by this motion. Intel does not
`
`oppose the TSMC and Fujitsu motions.
`
`
`
`In its May 29, 2014 Order (Paper 5) in IPR2014-00781 and IPR2014-00782,
`
`the Board articulated that prior authorization for filing a motion for joinder is not
`
`required if sought prior to one month after the institution date of any inter partes
`
`review for which joinder is requested. See 37 C.F.R. § 42.422(b). That order
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`resulted from a May 27, 2014 Board conference call initiated by TSMC and
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`attended by Zond and Intel. TSMC advised the Board that multiple Zond IPR
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`petitions were in the process of being filed and sought guidance from the Board on
`
`filing of motions for joinder that will minimize the burden on the Board and help
`
`streamline the proceedings.
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`Since the May 29, 2014 Order, petitioners Intel, TSMC, and Fujitsu have
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`completed their filings of the Zond IPR petitions identified above, directed to all
`
`seven patents in the District of Massachusetts litigation.
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`6
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`Petitioner's Motion for Joinder (IPR2014-00828)
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`DISCUSSION
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`If the Director institutes an inter partes review, TSMC respectfully requests
`
`that the Board exercise its discretion to grant joinder of the TSMC IPR and Intel
`
`IPR proceedings pursuant to 35 U.S.C. § 315(c), 37 C.F.R. § 42.22, and 37 C.F.R.
`
`§ 42.122(b). In support of this motion, TSMC proposes consolidated filings and
`
`other procedural accommodations designed to streamline the proceedings.
`
`1. Reasons Why Joinder is Appropriate
`
`Joinder is appropriate in this case because it is the most expedient way to
`
`secure the just, speedy, and inexpensive resolution of the related proceedings. See
`
`35 U.S.C. § 316(b); 37 C.F.R. § 42.1(b). Intentionally, the TSMC IPR is
`
`substantively identical to the corresponding Intel IPR in an effort to avoid
`
`multiplication of issues before the Board. Given the duplicative nature of these
`
`petitions, joinder of the related proceedings is appropriate. Further, TSMC will
`
`agree to consolidated filings and discovery, and procedural concessions, which
`
`Intel does not oppose.
`
`a. Substantively Identical Petitions
`
`TSMC represents that the TSMC IPR is identical to the Intel IPR in all
`
`substantive respects. It includes identical grounds, analysis, and exhibits and relies
`
`upon the same expert declarant and declaration. Accordingly, if instituted,
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`7
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`Petitioner's Motion for Joinder (IPR2014-00828)
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`maintaining the TSMC IPR proceeding separate from that of Intel would entail
`
`needless duplication of effort.
`
`b. Consolidated Filings and Discovery
`
`Because the grounds of unpatentability in the TSMC IPR and Intel IPR are
`
`the same, the case is amenable to consolidated filings. TSMC will agree to
`
`consolidated filings for all substantive papers in the proceeding (e.g., Reply to the
`
`Patent Owner’s Response, Opposition to Motion to Amend, Motion for
`
`Observation on Cross Examination Testimony of a Reply Witness, Motion to
`
`Exclude Evidence, Opposition to Motion to Exclude Evidence and Reply).
`
`Specifically, TSMC will agree to incorporate its filings with those of Intel in a
`
`consolidated filing, subject to the ordinary rules for one party on page limits. Intel
`
`and TSMC will be jointly responsible for the consolidated filings.
`
`TSMC agrees not to be permitted any arguments separate from those
`
`advanced by TSMC and Intel in the consolidated filings. These limitations avoid
`
`lengthy and duplicative briefing.
`
`Consolidated discovery is also appropriate given that TSMC and Intel are
`
`using the same expert declarant who has submitted the same, identical declaration
`
`in the two proceedings. TSMC and Intel will designate an attorney to conduct the
`
`cross-examination of any given witness produced by Zond and the redirect of any
`
`given witness produced by TSMC or Intel within the timeframe normally allotted
`
`8
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`Petitioner's Motion for Joinder (IPR2014-00828)
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`by the rules for one party. TSMC and Intel will not receive any separate cross-
`
`examination or redirect time.
`
`2. No New Grounds of Unpatentability
`
`The TSMC IPR raises no new grounds of unpatentability from those of the
`
`Intel IPR because, in fact, the petitions are identical.
`
`3. No Impact on IPR Trial Schedule
`
`The small difference between the filing date of the TSMC IPR and the Intel
`
`IPR is without consequence should the proceedings be joined. The trial schedule
`
`for the Intel IPR would not need to be delayed to effect joinder based on Zond’s
`
`preliminary response and later-filed TSMC IPR. The joint proceeding would allow
`
`the Board and parties to focus on the merits in one consolidated proceeding
`
`without unnecessary duplication of effort, and in a timely manner.
`
`4. Briefing and Discovery Will Be Simplified
`
`Joinder will simplify briefing and discovery because TSMC seeks an order
`
`similar to that issued in Motorola Mobility LLC v. Softview LLC, IPR2013-00256
`
`(PTAB June 20, 2013) (Paper 10). As discussed above, TSMC and Intel will
`
`engage in consolidated filings and discovery, which will simplify the briefing and
`
`9
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`discovery process.
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`Petitioner's Motion for Joinder (IPR2014-00828)
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`5. No Prejudice to Zond if Proceedings are Joined
`
`TSMC proposes joinder to streamline the proceedings and reduce the costs
`
`and burdens on the parties. TSMC believes joinder will achieve these goals for
`
`several reasons. First, joinder will most certainly decrease the number of papers
`
`the parties must file, by eliminating a duplicative proceeding. Second, joinder will
`
`also reduce by half the time and expense for depositions and other discovery
`
`required in separate proceedings. Third, joinder creates case management
`
`efficiencies for the Board and parties without any prejudice to Zond.
`
`PROPOSED ORDER
`
`
`
`Petitioner proposes a joinder order for consideration by the Board as
`
`follows, which Intel does not oppose:
`
` If review is instituted on any ground in the Intel IPR, the TSMC IPR
`
`will be instituted and will be joined with the Intel IPR on the same
`
`grounds. Grounds not instituted because the Intel IPR failed to
`
`establish a reasonable likelihood of prevailing, if any, will be similarly
`
`denied in the TSMC IPR.
`
` The scheduling order for the Intel IPR will apply for the joined
`
`proceeding.
`
` Throughout the proceeding, Intel and TSMC will file papers as
`
`consolidated filings, except for motions that do not involve the other
`10
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`Petitioner's Motion for Joinder (IPR2014-00828)
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`party, in accordance with the Board's established rules regarding page
`
`limits. So long as they both continue to participate in the merged
`
`proceeding, Intel and TSMC will identify each such filing as a
`
`Consolidated Filing and will be responsible for completing all
`
`consolidated filings.
`
` Intel and TSMC will designate an attorney to conduct the cross
`
`examination of any given witness produced by Zond and the redirect
`
`of any given witness produced by Intel or TSMC within the timeframe
`
`normally allotted by the rules for one party. Intel and TSMC will not
`
`receive any separate cross-examination or redirect time.
`
` Zond will conduct any cross examination of any given witness jointly
`
`produced by Intel or TSMC and the redirect of any given witness
`
`produced by Zond within the timeframe normally allotted by the rules
`
`for one cross-examination or redirect examination.
`
`CONCLUSION
`
`
`
`For the foregoing reasons, if the Director institutes inter partes review,
`
`TSMC respectfully requests that the Board grant joinder of the TSMC IPR and
`
`Intel IPR proceedings.
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`11
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`Petitioner's Motion for Joinder (IPR2014-00828)
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`Respectfully submitted,
`
`/David M. O’Dell/
`
`
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`
`David M. O’Dell
`Reg. No. 42,044
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`Lead Counsel for Petitioner
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`Date: June 27, 2014
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`HAYNES AND BOONE, LLP.
`2323 VICTORY AVENUE SUITE 700
`DALLAS TEXAS 75219
`TEL: (972) 739-8635
`FAX: (214) 200-0853
`EMAIL: david.odell.ipr@haynesboone.com
`
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`12
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`Petitioner's Motion for Joinder (IPR2014-00828)
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`CERTIFICATE OF SERVICE
`
`
`
`Pursuant to 37 C.F.R. §§ 42.6(e) and 42.105(a), this is to certify that I
`
`caused to be served a true and correct copy of the foregoing "PETITIONER’S
`MOTION FOR JOINDER UNDER 35 U.S.C. § 315(c) AND 37 C.F.R. §§ 42.22
`AND 42.122(b)” as detailed below:
`
`
`Date of service June 27, 2014
`
`Manner of service Email: gonsalves@gonsalveslawfirm.com;
`bbarker@chsblaw.com; kurt@rauschenbach.com
`
`Documents served PETITIONER’S MOTION FOR JOINDER UNDER 35
`U.S.C. § 315(c) AND 37 C.F.R. §§ 42.22 AND 42.122(b)
`
`Persons Served Dr. Gregory J. Gonsalves
`2216 Beacon Lane
`Falls Church, Virginia 22043
`
`Bruce Barker
`Chao Hadidi Stark & Barker LLP
`176 East Mail Street, Suite 6
`Westborough, MA 01581
`
`
`
`/David M. O’Dell/
`David M. O’Dell
`Registration No. 42,044
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`13
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