`Trials@uspto.gov
`571-272-7822
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` Entered: November 20, 2014
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`
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`THE GILLETTE COMPANY,
`Petitioner,
`
`v.
`
`ZOND, LLC,
`Patent Owner.
`____________
`
`Case IPR2014-01022
`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
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`
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`Case IPR2014-01022
`Patent 6,805,779 B2
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`INTRODUCTION
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`The Gillette Company (“Gillette”) filed a Petition requesting an inter
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`partes review of U.S. Patent 6,805,779 B2 (Ex. 1201, “the ’779 patent”).
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`Paper 3 (“Pet.”). Pursuant to 37 C.F.R. § 42.122(b), Gillette also filed a
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`revised Motion for Joinder, seeking to join the instant proceeding with
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`Taiwan Semiconductor Mfg. Co., Ltd. v. Zond, LLC, Case IPR2014-00828
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`(PTAB) (“IPR2014-00828”). Paper 9 (“Mot.”).
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`The Petitioners1 in IPR2014-008282 do not oppose Gillette’s revised
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`Motion for Joinder. Mot. 2. Patent Owner, Zond, LLC (“Zond”), filed a
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`Preliminary Response to the Petition (Paper 11, “Prelim. Resp.”) and an
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`Opposition to Gillette’s revised Motion for Joinder (Paper 10, “Opp.”). In a
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`separate decision, we institute an inter partes review as to the same claims
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`on the same grounds of unpatentability for which we instituted trial in
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`IPR2014-00828. For the reasons set forth below, Gillette’s revised Motion
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`for Joinder is granted.
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`1 The Petitioners in IPR2014-00828 are:
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`(1) Taiwan Semiconductor Manufacturing Company, Ltd. and TSMC
`North America Corporation (collectively, “TSMC”);
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`(2) Fujitsu Semiconductor Limited and Fujitsu Semiconductor
`America, Inc. (collectively, “Fujitsu”); and
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`(3) 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., and Toshiba Corporation
`(collectively, “AMD”).
`2 IPR2014-00856 and IPR2014-01070 have been joined with
`IPR2014-00828.
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`2
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`Case IPR2014-01022
`Patent 6,805,779 B2
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`ANALYSIS
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`
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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. 35 U.S.C. § 315.
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`The statutory provision governing joinder of inter partes review
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`proceedings is 35 U.S.C § 315(c), which provides:
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`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.
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`Joinder may be authorized when warranted, but the decision to grant
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`joinder is discretionary. 35 U.S.C. § 315(c); 37 C.F.R. § 42.122. When
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`exercising its discretion, the Board is mindful that patent trial regulations,
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`including the rules for joinder, must be construed to secure the just, speedy,
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`and 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, Gillette 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, Gillette 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) Gillette’s Petition is substantively identical to TSMC’s Petition filed in
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`3
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`Case IPR2014-01022
`Patent 6,805,779 B2
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`IPR2014-00828 (id. at 6); (3) Gillette 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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`IPR2014-00828 (id. at 7–8); and (5) joinder would streamline the
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`proceedings, reduce the costs and burdens on the parties, and increase
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`efficiencies for the Board without any prejudice to Zond (id. at 8).
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`We agree that the substantive issues in IPR2014-00828 would not be
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`affected by joinder, because Gillette’s Petition is substantively identical to
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`TSMC’s Petition filed in IPR2014-00828. Notably, Gillette’s Petition
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`asserts identical grounds of unpatentability, challenging the same claims of
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`the ’779 patent. Compare Pet. 19– 60, with IPR2014-00828, Paper 2 (“’828
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`Pet.”), 20–60. Gillette also submits identical claim constructions, as well as
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`the same Declaration of Dr. Uwe Kortshagen. Compare Pet. 18–19, with
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`’828 Pet. 19–20; compare Ex. 1202, with ’828 Ex. 1202. 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 IPR2014-00828. Therefore, Gillette’s Petition raises no new issues
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`beyond those already before us in IPR2014-00828.
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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 30–37, 39, and 40 of the ’779 patent is more efficient
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`than conducting multiple proceedings, eliminating duplicate filings and
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`discovery. Gillette agrees to consolidated filings for all substantive papers.
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`Mot. 6–7. Gillette indicates that it will not file any paper with arguments
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`different from those advanced by the consolidated filings, eliminating
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`duplicate briefing. Id. Gillette further agrees to consolidated discovery, as
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`4
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`Case IPR2014-01022
`Patent 6,805,779 B2
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`each Petitioner proffers the same Declaration of Dr. Kortshagen. Id. at 7.
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`Gillette indicates that Petitioners of the joined proceeding 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. at 7.
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`Moreover, joinder will not require any change to the trial schedule in
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`IPR2014-00828, allowing the trial still to be completed within one year. Id.
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`at 7–8. Given that Gillette’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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`IPR2014-00828 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, Gillette has met its burden of
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`demonstrating that joinder of the instant proceeding with IPR2014-00828 is
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`warranted under the circumstances.
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`In consideration of the foregoing, it is hereby:
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`ORDER
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`ORDERED that Gillette’s Motion for Joinder with IPR2014-00828 is
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`granted;
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`FURTHER ORDERED that the instant proceeding is joined with
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`IPR2014-00828;
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`FURTHER ORDERED that the grounds of unpatentability on which a
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`trial was instituted in IPR2014-00828 are unchanged;
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`FURTHER ORDERED that the Scheduling Order for IPR2014-00828
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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 December 17, 2014 at 2:00 p.m. ET;
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`5
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`Case IPR2014-01022
`Patent 6,805,779 B2
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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 IPR2014-00828;
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`FURTHER ORDERED that, throughout IPR2014-00828, Petitioners
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`(TSMC, Fujitsu, AMD, and Gillette) will file papers, except for motions
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`which do not involve the other parties, as consolidated filings3; TSMC will
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`identify each such filing as a consolidated filing and will be responsible for
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`completing all consolidated filings; the page limits set forth in 37 C.F.R.
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`§ 42.24 will apply to all consolidated filings (e.g., a consolidated filing of a
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`reply to a patent owner response should be 15 pages or less);
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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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`3 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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`6
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`Case IPR2014-01022
`Patent 6,805,779 B2
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`FURTHER ORDERED that the case caption in IPR2014-00828 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 IPR2014-00828.
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`7
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`8
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`Case IPR2014-01022
`Patent 6,805,779 B2
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`For PETITIONER:
`
`Michael Diener
`michael.diener@wilmerhale.com
`
`Larissa Park
`larissa.park@wilmerhale.com
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`
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`PATENT OWNER:
`
`Gregory J. Gonsalves
`gonsalves@gonsalveslawfirm.com
`
`Bruce J. Barker
`bbarker@chsblaw.com
`
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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 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.,
`TOSHIBA CORPORATION, and
`THE GILLETTE COMPANY,
`Petitioners,
`
`v.
`
`ZOND, LLC,
`Patent Owner.
`____________
`
`Case IPR2014-008281
`Patent 6,805,779 B2
`____________
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`1 Case IPR2014-00856, IPR2014-01070, and IPR2014-01022 have been
`joined with the instant proceeding.