Trials@uspto.gov
`571-272-7822
`
`
`
`
` Paper 17
`Entered: December 18, 2014
`
`
`
`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.
`____________
`Cases IPR2014-00828, IPR2014-00829, and IPR2014-009171
`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.
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`1 The joinder cases are identified in the Appendix of this Order.
`
`
`571-272-7822
`
`
`
`
` Paper 17
`Entered: December 18, 2014
`
`
`
`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.
`____________
`Cases IPR2014-00828, IPR2014-00829, and IPR2014-009171
`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.
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`1 The joinder cases are identified in the Appendix of this Order.
`
`
`
`IPR2014-00828, IPR2014-00829, and IPR2014-00917
`Patent 6,805,779 B2
`
`
`We instituted an inter partes review in each of the following
`proceedings, challenging U.S. Patent No. 6,805,779 B2 (“the ’779 patent”):
`IPR2014-00828, IPR2014-00829, and IPR2014-00917 (“the TSMC reviews”),
`as well as IPR2014-01073 and IPR2014-01076 (“the GlobalFoundries
`reviews”). Paper 9.2 After institution, we also granted the revised Motions
`for Joinder filed by Fujitsu Semiconductor Limited and Fujitsu Semiconductor
`America, Inc. (collectively, “Fujitsu”), 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”), and The Gillette Company (“Gillette”). Papers 12, 13,
`14. A list of these Joinder Cases is provided in the Appendix of the instant
`Order.
`A conference call was held on December 17, 2014, between respective
`counsel for the parties for the above-identified reviews and Judges Turner,
`Chang, Mitchell, and Meyer. Counsel for each of the Joinder Cases also
`attended the conference call. Although the purpose of the call was to discuss
`any proposed changes to the Scheduling Order and any motions that the
`
`
`2 For the purpose of clarity and expediency, we treat IPR2014-00828 as
`representative, and all citations are to IPR2014-00828 unless otherwise noted.
`
`2
`
`
`
`IPR2014-00828, IPR2014-00829, and IPR2014-00917
`Patent 6,805,779 B2
`
`parties intend to file in the above identified proceedings, the participants also
`discussed alternate filing procedures for all of the cases in the Zond family.
`
`
`Filing Procedure when the Patent Review Processing System is Unavailable
`
`As an initial matter, Zond attempted to file a Notice of Stipulation to
`extend due dates 1 and 2 in IPR2014-00479, on December 17, 2014, when the
`Board’s electronic filing system, the Patent Review Processing System
`(PRPS), was unavailable during normal business hours. Zond also attempted
`to file the Notice of Stipulation, pursuant to 37 C.F.R. § 42.6(b)(2)(i),
`accompanied by a Motion Requesting Acceptance of the Notice of Stipulation
`via electronic mail to Trials@uspto.gov.
`As noted by Zond, our regulation provides for an alternate procedure
`for filing papers when PRPS is unavailable during normal business hours. See
`37 C.F.R. § 42.6(b)(2)(i). The Office Patent Trial Practice Guide also sets
`forth an alternative procedure for such a situation:
`[I]f a problem with business hours, a party may contact the Board
`and request a one-day extension of time for due dates that are set
`by rule or orders of the Board. § 42.5. In the unlikely event that
`an administrative patent judge is not available to rule on the
`extension, the Board may grant an extension the day after the
`paper is due, which includes situations where electronic filing
`problems are shown to have occurred.
`Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,758 (Aug. 14,
`2012).
`
`3
`
`
`
`IPR2014-00828, IPR2014-00829, and IPR2014-00917
`Patent 6,805,779 B2
`
`In connection with the PRPS unavailability, the Board’s Web site
`
`(http://www.uspto.gov/ip/boards/bpai/prps.jsp) posted the following notice:
`PRPS is currently down as of December 16, 2014 3:00 pm EST.
`PTAB will be extending deadlines for the parties for all matters
`that do not have statutory deadlines until the site becomes
`available. As for petition filings, patent owner responses,
`motions, and requests for rehearing (on institution decisions or
`final decisions) and any other matters that have an imposed
`deadline or statutory due date, the parties should send an e-mail
`to TRIALS@USPTO.GOV indicating the need to file one of
`these items. DO NOT send attachments. PTAB will authorize
`filing of late attachments and PTAB will change the filing dates
`in PRPS to reflect the appropriate filing date. ALL MATTERS
`SHOULD BE SERVED ON OPPOSING COUNSEL ON THE
`APPROPRIATE DUE DATE.
`
`We are mindful that there are at least 33 proceedings pending before us,
`which involve the parties. For expediency and efficiency, we authorize the
`parties to serve the appropriate paper and exhibits on the opposing party
`before or on the due date for filing the paper, and then file the paper and
`exhibits via PRPS on the next business day when the system is available
`again. 37 C.F.R. § 42.5(b). The paper filed with the Board via PRPS should
`include the appropriate certificate of service (37 C.F.R. § 42.6(e)), and a
`statement indicating that the party seeks a filing date other than the date of
`receipt at the Board. The filing party would not be required to file a motion
`under 37 C.F.R. § 42.6(b)(2)(i), requesting acceptance of the paper, or request
`an extension of time for filing the paper.
`
`
`4
`
`
`
`IPR2014-00828, IPR2014-00829, and IPR2014-00917
`Patent 6,805,779 B2
`
`
`Trial Schedule
`
`For efficiency, we entered a single Scheduling Order that sets forth the
`due dates for the parties to take action in all five reviews, ensuring that the
`reviews will be completed within one year of institution. Paper 10. During
`the conference call, we explained that the trial schedule for the above-
`identified reviews had been synchronized. The parties indicated that they do
`not, at this time, foresee any problems with meeting their due dates. We
`reminded the parties that they may stipulate to different dates for Due Dates 1
`through 5 (earlier or later, but no later than Due Date 6). 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.
`We further noted that the oral hearings for all five reviews related to the
`’779 patent are scheduled on the same day. The parties may request a
`single-combined oral hearing in their requests for oral hearing before or on
`Due Date 4. Id. at 5. Given the similarity in claimed subject matter and
`overlapping asserted prior art, we explained that the oral hearings for all five
`reviews would be combined and the transcript from the combined oral hearing
`would be useable across all five reviews. Should the parties seek to change
`the oral hearing date, they should notify the Board promptly with several
`proposed alternative dates.
`
`
`5
`
`
`
`IPR2014-00828, IPR2014-00829, and IPR2014-00917
`Patent 6,805,779 B2
`
`
`The Procedure for Consolidated Filings and Discovery
`
`As we explained during the conference call, the Decisions on the
`revised Motions for Joinder (“the Joinder Decisions”) did not change the
`grounds of unpatentability on which a trial was instituted or the Scheduling
`Order, in each of the TSMC reviews and the GlobalFoundries reviews. The
`Joinder Decisions set forth a procedure for consolidated filings and discovery.
`Upon inquiry from the Board, 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 Petitioners 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’ expert
`witness may be combined and useable in each of the five reviews, for
`efficiency and consistency. Should the parties combine discovery of the
`above-identified reviews, which involve the ’779 patent, with other
`proceedings that involve another patent, the parties are encouraged to keep the
`record clear as to each proceeding and each patent.
`
`
`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
`
`6
`
`
`
`IPR2014-00828, IPR2014-00829, and IPR2014-00917
`Patent 6,805,779 B2
`
`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.
`
`
`Motion for Pro Hac Vice Admission under 37 C.F.R. § 42.10(c).
`
`The parties confirmed that all of their motions for pro hac vice
`admission filed in the Zond family of cases have been decided. For any future
`pro hac vice motion or other non-substantive paper to be filed in multiple
`proceedings, the parties are authorized to file the motion or paper with:
`(1) a generic caption page that identifies the parties and all of the proceedings
`in which the motion or paper is to be entered, similar to the instant Order; or
`(2) a generic caption page that identifies the parties and patent numbers, and
`an appendix that includes a list of the proceedings.
`
`
`ORDER
`
`It is
`ORDERED that, if PRPS is unavailable during normal business hours,
`the parties are authorized to serve the appropriate paper and exhibits on the
`opposing party before or on the due date for filing the paper, and then file the
`paper via PRPS on the next business day when the system is available again;
`the paper filed with the Board via PRPS should include the appropriate
`7
`
`
`
`IPR2014-00828, IPR2014-00829, and IPR2014-00917
`Patent 6,805,779 B2
`
`certificate of service (37 C.F.R. § 42.6(e)) and a statement indicating that the
`party seeks a filing date other than the date of receipt at the Board;
`FURTHER ORDERED that the parties are authorized to request a
`single-combined oral hearing for all five above-identified inter partes
`reviews;
`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 the reviews; and
`FURTHER ORDERED that, in accordance with the instant Order, the
`parties are authorized to use a generic caption page when filing a pro hac vice
`motion or other non-substantive paper in multiple proceedings.
`
`
`
`
`
`
`8
`
`
`
`IPR2014-00828, IPR2014-00829, and IPR2014-00917
`Patent 6,805,779 B2
`
`
`
`APPENDIX
`
`
`
`Inter partes reviews for
`U.S. Patent No. 6,805,779 B2
`
`Joinder Cases
`
`IPR2014-00828 (TSMC)
`
`IPR2014-00829 (TSMC)
`
`IPR2014-00917 (TSMC)
`
`IPR2014-00856 (Fujitsu),
`IPR2014-01022 (Gillette), and
`IPR2014-01070 (AMD)
`
`IPR2014-00859 (Fujitsu),
`IPR2014-01020 (Gillette), and
`IPR2014-01072 (AMD)
`
`IPR2014-00918 (Fujitsu),
`IPR2014-01025 (Gillette), and
`IPR2014-01074 (AMD)
`
`IPR2014-01073 (GlobalFoundries)
`
`IPR2014-01017 (Gillette)
`
`IPR2014-01076 (GlobalFoundries)
`
`IPR2014-01019 (Gillette)
`
`
`
`9
`
`
`
`
`
`
`
`IPR2014-00828, IPR2014-00829, and IPR2014-00917
`Patent 6,805,779 B2
`
`For PATENT OWNER:
`Gregory J. Gonsalves
`GONSALVES LAW FIRM
`gonsalves@gonsalveslawfirm.com
`
`Bruce J. Barker
`CHAO HADIDI STARK & BARKER LLP
`bbarker@chsblaw.com
`
`
`
`For PETITIONERS:
`TSMC and Fujitsu:
`David M O’Dell
`David L. McCombs
`HAYNES AND BOONE, LLP
`david.odell.ipr@haynesboone.com
`david.mccombs.ipr@haynesboone.com
`
`Richard C. Kim
`DUANE MORRIS, LLP
`rckim@duanemorris.com
`
`GlobalFoundries:
`David Tennant
`Dohm Chankong
`WHITE & CASE LLP
`dtennant@whitecase.com
`dohm.chankong@whitecase.com
`
`10
`
`
`
`
`
`IPR2014-00828, IPR2014-00829, and IPR2014-00917
`Patent 6,805,779 B2
`
`Gillette:
`Michael A. Diener
`Larissa B. Park
`WILMER, CUTLER, PICKERING, HALE AND DORR, LLP
`michael.diener@wilmerhale.com
`larissa.park@wilmerhale.com
`
`AND:
`David M. Tennant
`WHITE & CASE LLP
`dtennant@whitecase.com
`
`Brian M. Berliner
`Byan K. Yagura
`Xin-Yi Zhou
`O’MELVENY & MYERS LLP
`bberliner@omm.com
`ryagura@omm.com
`vzhou@omm.com
`
`
`
`
`
`11
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