`Trials@uspto.gov
`571-272-7822
`
` Entered: November 19, 2014
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ADVANCED MICRO DEVICES, INC., RENESAS ELECTRONICS
`CORPORATION, RENESAS ELECTRONICS AMERICA, INC.,
`GLOBAL FOUNDRIES 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., and
`TOSHIBA CORPORATION,
`Petitioners,
`v.
`
`ZOND, LLC,
`Patent Owner.
`____________
`
`Case IPR2014-01070
`Patent 6,805,779 B2
`____________
`
`
`
`
`Before KEVIN F. TURNER, JONI Y. CHANG, SUSAN L.C. MITCHELL,
`and JENNIFER M. MEYER, Administrative Patent Judges.
`
`CHANG, Administrative Patent Judge.
`
`
`DECISION
`Granting Revised Motion for Joinder
`37 C.F.R. § 42.122
`
`
`
`
`
`
`
`Case IPR2014-01070
`Patent 6,805,779 B2
`
`
`
`
`
`
`INTRODUCTION
`Petitioners (collectively, “AMD”) filed a Petition requesting an inter
`partes review of U.S. Patent 6,805,779 B2 (Ex. 1201, “the ’779 patent”).
`Paper 1 (“Pet.”). Pursuant to 37 C.F.R. § 42.122(b), AMD also filed a
`revised Motion for Joinder, seeking to the instant proceeding with Taiwan
`Semiconductor Mfg. Co., Ltd. v. Zond, LLC, Case IPR2014-00828 (PTAB)
`(“IPR2014-00828”). Paper 8 (“Mot.”).
`The Petitioners in IPR2014-008281, Taiwan Semiconductor
`Manufacturing Company, Ltd. and TSMC North America Corporation
`(collectively, “TSMC”), and Fujitsu Semiconductor Limited and Fujitsu
`Semiconductor America, Inc. (collectively, “Fujitsu”), do not oppose
`AMD’s revised Motion for Joinder. Mot. 2. Patent Owner, Zond, LLC
`(“Zond”), filed a Preliminary Response to the Petition (Paper 10, “Prelim.
`Resp.”) and an Opposition to AMD’s revised Motion for Joinder (Paper 9,
`“Opp.”). In a separate decision, we institute an inter partes review as to the
`same claims on the same grounds of unpatentability for which we instituted
`trial in IPR2014-00828. For the reasons set forth below, AMD’s revised
`Motion for Joinder is granted.
`
`ANALYSIS
`The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat.
`284 (2011) (“AIA”) permits joinder of like review proceedings. The Board,
`acting on behalf of the Director, has the discretion to join an inter partes
`review with another inter partes review. 35 U.S.C. § 315.
`
`
`1 IPR2014-00856 has been joined with IPR2014-00828.
`2
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`Case IPR2014-01070
`Patent 6,805,779 B2
`
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`The statutory provision governing joinder of inter partes review
`proceedings is 35 U.S.C § 315(c), which provides:
`JOINDER.—If the Director institutes an inter partes review, the
`Director, in his or her discretion, may join as a party to that
`inter partes review any person who properly files a petition
`under section 311
`that
`the Director, after receiving a
`preliminary response under section 313 or the expiration of the
`time for filing such a response, determines warrants the
`institution of an inter partes review under section 314.
`
`Joinder may be authorized when warranted, but the decision to grant
`joinder is discretionary. 35 U.S.C. § 315(c); 37 C.F.R. § 42.122. When
`exercising its discretion, the Board is mindful that patent trial regulations,
`including the rules for joinder, must be construed to secure the just, speedy,
`and inexpensive resolution of every proceeding. See 35 U.S.C. § 316(b);
`37 C.F.R. § 42.1(b). The Board considers the impact of both substantive
`issues and procedural matters on the proceedings.
`As the moving party, AMD bears the burden to show that joinder is
`appropriate. 37 C.F.R. §§ 42.20(c), 42.122(b). In its revised Motion for
`Joinder, AMD contends that joinder, in this particular situation, is
`appropriate because: (1) “it is the most expedient way to secure the just,
`speedy, and inexpensive resolution of the related proceedings” (Mot. 5);
`(2) AMD’s Petition is substantively identical to TSMC’s Petition filed in
`IPR2014-00828 (id. at 6); (3) AMD agrees to consolidated filings and
`discovery (id. at 6–7); (4) joinder would not affect the schedule in
`IPR2014-00828 (id. at 7–8); and (5) joinder would streamline the
`proceedings, reduce the costs and burdens on the parties, and increase
`efficiencies for the Board without any prejudice to Zond (id. at 8).
`
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`Case IPR2014-01070
`Patent 6,805,779 B2
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`We agree that the substantive issues in IPR2014-00828 would not be
`affected by joinder, because AMD’s Petition is substantively identical to
`TSMC’s Petition filed in IPR2014-00828. Notably, AMD’s Petition asserts
`identical grounds of unpatentability, challenging the same claims of the ’779
`patent. Compare Pet. 19– 60, with IPR2014-00828, Paper 2 (“’828 Pet.”),
`20–60. AMD also submits identical claim constructions, as well as the same
`Declaration of Dr. Uwe Kortshagen. Compare Pet. 18–19, with ’828 Pet.
`19–20; compare Ex. 1202, with ’828 Ex. 1202. Moreover, we institute the
`instant trial based on the same grounds for which we instituted trial in
`IPR2014-00828. Therefore, AMD’s Petition raises no new issues beyond
`those already before us in IPR2014-00828.
`In its Opposition, Zond indicates that it is not opposed to joinder.
`Opp. 1. Rather, Zond proposes a procedure for the joined proceeding to
`consolidate the schedule, filings, and discovery. Opp. 2–3.
`We agree with the parties that conducting a single joined proceeding
`for reviewing claims 30–37, 39, and 40 of the ’779 patent is more efficient
`than conducting multiple proceedings, eliminating duplicate filings and
`discovery. AMD agrees to consolidated filings for all substantive papers.
`Mot. 6–7. AMD indicates that it will not file any paper with arguments
`different from those advanced by the consolidated filings, eliminating
`duplicate briefing. Id. AMD further agrees to consolidated discovery, as
`each Petitioner proffers the same Declaration of Dr. Kortshagen. Id. at 7.
`AMD indicates that Petitioners of the joined proceeding collectively will
`designate an attorney to conduct the cross-examination of any witnesses
`produced by Zond and the redirect of any witnesses produced by Petitioners,
`within the timeframe normally allotted by the rules for one party. Id. at 7.
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`Case IPR2014-01070
`Patent 6,805,779 B2
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`Moreover, joinder will not require any change to the trial schedule in
`IPR2014-00828, allowing the trial still to be completed within one year. Id.
`at 7–8. Given that AMD’s Petition raises no new issues, and Petitioners
`agree to consolidated filings and discovery, the impact of joinder on
`IPR2014-00828 will be minimal, and joinder will streamline the
`proceedings, reducing the costs and burdens on the parties and the Board.
`For the foregoing reasons, AMD has met its burden of demonstrating
`that joinder of the instant proceeding with IPR2014-00828 is warranted
`under the circumstances.
`
`ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED that AMD’s Motion for Joinder with IPR2014-00828 is
`granted;
`FURTHER ORDERED that the instant proceeding is joined with
`IPR2014-00828;
`FURTHER ORDERED that the grounds of unpatentability on which a
`trial was instituted in IPR2014-00828 are unchanged;
`FURTHER ORDERED that the Scheduling Order for IPR2014-00828
`(Paper 10) shall govern the joined proceeding; the initial conference call for
`the joined proceeding is scheduled on December 17, 2014 at 2:00 p.m. ET;
`FURTHER ORDERED that the instant proceeding is instituted,
`joined, and terminated under 37 C.F.R. § 42.72, and all further filings in the
`joined proceeding shall be made only in IPR2014-00828;
`FURTHER ORDERED that, throughout IPR2014-00828, Petitioners
`(TSMC, Fujitsu, and AMD) will file papers, except for motions which do
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`Case IPR2014-01070
`Patent 6,805,779 B2
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`not involve the other parties, as consolidated filings2; TSMC will identify
`each such filing as a consolidated filing and will be responsible for
`completing all consolidated filings; the page limits set forth in 37 C.F.R.
`§ 42.24 will apply to all consolidated filings (e.g., a consolidated filing of a
`reply to a patent owner response should be 15 pages or less);
`FURTHER ORDERED that Zond will conduct the cross-examination
`of witnesses, as well as the redirect examination of any witness it produces,
`in the timeframes set forth in 37 C.F.R. § 42.53(c);
`FURTHER ORDERED that Petitioners collectively will designate
`attorneys to conduct the cross-examination of any witnesses produced by
`Zond and the redirect examination of any witnesses produced by Petitioners,
`within the timeframes set forth in 37 C.F.R. § 42.53(c) for one party; no
`individual Petitioner will receive any cross-examination or redirect
`examination time in addition to the time normally allotted by 37 C.F.R.
`§ 42.53(c) for one party;
`FURTHER ORDERED that Petitioners collectively will designate
`attorneys to present at the oral hearing (if requested) as a consolidated
`presentation;
`FURTHER ORDERED that the case caption in IPR2014-00828 shall
`be changed to reflect the joinder with the instant proceeding in accordance
`with the attached example; and
`FURTHER ORDERED that a copy of this Decision be entered into
`the file of IPR2014-00828.
`
`
`2 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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`Case IPR2014-01070
`Patent 6,805,779 B2
`
`
`For PETITIONER:
`Robinson Vu
`Robinson.vu@bakerbotts.com
`John Feldhaus
`jfeldhaus@foley.com
`Pavan Agarwal
`pagarwal@foley.com
`Michael Houston
`mhouston@foley.com
`
`David Tennant
`dtennant@whitecase.com
`Brian Berliner
`bberliner@omm.com
`Ryan Yagura
`ryagura@omm.com
`Xin-Yi Zhou
`vzhou@omm.com
`
`PATENT OWNER:
`
`Gregory J. Gonsalves
`gonsalves@gonsalveslawfirm.com
`
`Bruce J. Barker
`bbarker@chsblaw.com
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`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.,
`GLOBAL FOUNDRIES 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., and
`TOSHIBA CORPORATION,
`Petitioners,
`
`v.
`
`ZOND, LLC,
`Patent Owner.
`____________
`
`Case IPR2014-008281
`Patent 6,805,779 B2
`____________
`
`
`
`
`
`
`1 Case IPR2014-00856 and IPR2014-01070 have been joined with the
`instant proceeding.