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.,
`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,
`Petitioners,
`v.
`ZOND, LLC
`Patent Owner
`__________________
`
`Case IPR2014-008291
`Patent 6,805,779 B2
`__________________
`
`
`
`JOINT MOTION TO TERMINATE
` PURSUANT TO 35 U.S.C. § 317 AND 37 C.F.R. § 42.72
`
`
`1 Cases IPR2014-00859, IPR2014-01020, and IPR2014-01072 have been joined
`with the instant proceeding.
`
`
`
`
`__________________
`
`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.,
`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,
`Petitioners,
`v.
`ZOND, LLC
`Patent Owner
`__________________
`
`Case IPR2014-008291
`Patent 6,805,779 B2
`__________________
`
`
`
`JOINT MOTION TO TERMINATE
` PURSUANT TO 35 U.S.C. § 317 AND 37 C.F.R. § 42.72
`
`
`1 Cases IPR2014-00859, IPR2014-01020, and IPR2014-01072 have been joined
`with the instant proceeding.
`
`
`
`
`
`IPR2014-00829
`U.S. Patent No. 6,805,779
`JOINT MOTION TO TERMINATE
`
`
`Pursuant to 35 U.S.C. §317 and 37 C.F.R. § 42.72, and the Board’s
`
`authorization of March 9, 2015, Patent Owner ZOND LLC (“Patent Owner”) and
`
`Petitioners TAIWAN SEMICONDUCTOR MANUFACTURING COMPANY,
`
`LTD. and TSMC NORTH AMERICA CORP (jointly, “TSMC” or “Petitioner”)
`
`(collectively, “the Parties”) have settled their dispute and jointly request
`
`termination of Inter Partes Review No. IPR2014-00829, regarding U.S. 6,805,779
`
`as to Petitioners TAIWAN SEMICONDUCTOR MANUFACTURING
`
`COMPANY, LTD. and TSMC NORTH AMERICA CORP. only. Because
`
`additional petitioners remain, the grant of this motion will not result in the
`
`termination of this inter partes review.
`
`I. RELATED PROCEEDINGS
`
`The following related proceedings are currently before the Office:
`
`U.S. Patent Number
`6,853,142
`
`7,147,759
`
`7,604,716
`
`
`
`IPR Case Number
`IPR2014-00818
`IPR2014-00821
`IPR2014-00819
`IPR2014-00827
`IPR2014-00781
`IPR2014-00782
`IPR2014-00807
`IPR2014-00808
`
`1
`
`
`
`IPR2014-00829
`U.S. Patent No. 6,805,779
`JOINT MOTION TO TERMINATE
`
`
`IPR2014-00799
`IPR2014-00803
`IPR2014-00800
`IPR2014-00802
`IPR2014-00805
`IPR2014-00828
`IPR2014-00829
`IPR2014-00917
`IPR2014-00861
`IPR2014-00580
`IPR2014-00726
`IPR2014-00578
`IPR2014-00604
`
`7,808,184
`
`7,811,421
`
`6,805,779
`
`6,806,652
`6,896,773
`
`6,896,775
`
`
`
`The Parties have agreed to settle, have dismissed with prejudice their related
`
`district court litigations concerning the Patents, and jointly request termination of
`
`this proceeding and all IPRs as to TSMC for the above listed Patents.1
`
`
`
`
`1 The Parties are submitting a Joint Motion to Terminate Proceeding in each of the
`
`IPRs filed or joined by TSMC relating to the above-identified patents.
`
`
`
`2
`
`
`
`IPR2014-00829
`U.S. Patent No. 6,805,779
`JOINT MOTION TO TERMINATE
`
`
`The various Patents are involved in litigation as follows:
`
`
`
`Caption
`
`Zond, Inc. v.
`Fujitsu Limited
`et al.
`
`Zond, Inc. v.
`Renesas
`Electronics
`Corporation et
`al.
`
`Zond, Inc. v. SK
`Hynix Inc. et al
`
`
`Zond, Inc. v.
`
`
`
`1:13-cv-
`11634
`(MAD)
`
`1:13-cv-
`11625
`(MAD)
`
`Case No. Patents
`6,805,779
`6,806,652
`6,853,142
`7,147,759
`7,604,716
`7,808,184
`7,811,421
`6,805,779
`6,806,652
`6,853,142
`7,147,759
`7,604,716
`7,808,184
`7,811,421
`6,805,779
`6,806,652
`6,853,142
`7,147,759
`7,604,716
`7,808,184
`7,811,421
`6,805,779
`
`1:13-cv-
`11591
`(MAD)
`
`1:13-cv-
`
`Defendants
`Fujitsu Semiconductor
`America, Inc.; Fujitsu
`Semiconductor Limited;
`Taiwan Semiconductor
`Manufacturing Company
`Limited; TSMC North
`America Corp.
`
`Status
`Admin.
`Closed;
`stipulation
`of
`dismissal
`filed as to
`TSMC
`
`Renesas Electronics
`America, Inc.; Renesas
`Electronics Corporation
`
`Pending;
`Stayed
`
`Hynix Semiconductor
`America, Inc.; SK Hynix
`America Inc.; SK Hynix
`Inc.; SK Hynix Memory
`Solutions Inc.
`
`Terminated
`
`Toshiba America
`
`Pending;
`
`3
`
`
`
`11581
`(MAD)
`
`Toshiba
`America
`Electronic
`Components,
`Inc. et al
`
`Zond, LLC v.
`Advanced Micro
`Devices, Inc., et
`al.
`
`1:13-cv-
`11577
`(MAD)
`
`Zond, LLC v.
`Intel
`Corporation
`
`1:13-cv-
`11570
`(MAD)
`
`Zond, Inc. v.
`The Gillette
`Company, et al
`
`1:13-cv-
`11567
`(MAD)
`
`6,806,652
`6,853,142
`7,147,759
`7,604,716
`7,808,184
`7,811,421
`6,805,779
`6,806,652
`6,853,142
`7,147,759
`7,604,716
`7,808,184
`7,811,421
`
`6,805,779
`6,806,652
`6,853,142
`7,147,759
`7,604,716
`7,808,184
`7,811,421
`6,805,779
`6,806,652
`6,853,142
`6,896,773
`
`IPR2014-00829
`U.S. Patent No. 6,805,779
`JOINT MOTION TO TERMINATE
`
`
`Stayed
`
`Electronic Components,
`Inc.; Toshiba America
`Information Systems,
`Inc.; Toshiba Corporation
`
`
`Advanced Micro Devices,
`Inc.; GlobalFoundries
`Dresden Module One
`LLC & Co. KG;
`GlobalFoundries Dresden
`Module Two LLC & Co.
`KG; Global Foundries
`US, Inc.
`
`Pending;
`Stayed
`
`Intel Corporation
`
`Terminated
`
`The Gillette Company;
`The Proctor & Gamble
`Company
`
`
`Pending;
`Stayed
`
`
`
`4
`
`
`
`IPR2014-00829
`U.S. Patent No. 6,805,779
`JOINT MOTION TO TERMINATE
`
`
`Fujitsu Semiconductor
`America, Inc.; Fujitsu
`Semiconductor Limited;
`Taiwan Semiconductor
`Manufacturing Company
`Limited; TSMC North
`America Corp.
`
`Admin.
`Closed;
`stipulation
`of
`dismissal
`filed as to
`TSMC
`
`Zond, Inc.
`
`Terminated
`
`6,896,775
`7,147,759
`7,604,716
`7,808,184
`7,811,421
`8,125,155
`6,806,651
`6,896,773
`6,896,775
`6,903,511
`7,095,179
`7,446,479
`
`6,806,651
`6,896,773
`6,896,775
`6,903,511
`7,095,179
`7,446,479
`
`Zond, Inc. v.
`Fujitsu
`Semiconductor
`Limited et al.
`
`1:14-cv-
`12438
`(MAD)
`
`TSMC
`Technology,
`Inc., et al. v.
`Zond, Inc.
`
`1:14-cv-
`00721
`(DED)
`
`
`
`The related district court litigations between Patent Owner and TSMC have
`
`been settled and stipulated to dismissal with prejudice. Further Zond has stipulated
`
`to dismissal of its appeal to the Federal Circuit from Order Granting Defendant’s
`
`Motion to Enjoin and Denying Plaintiff’s Motion to Transfer entered by the United
`
`
`
`5
`
`
`
`States District Court for the District of Delaware, Chief Judge Leonard P. Stark,
`
`IPR2014-00829
`U.S. Patent No. 6,805,779
`JOINT MOTION TO TERMINATE
`
`
`Case No. 1:14-cv-00721;LPS-CJB. The stipulations of dismissals with prejudice
`
`are filed in IPR2014-00828 as Exhibit 1218.
`
`The forgoing stipulations of dismissals with prejudice under Fed. R. Civ. P.
`
`41(a)(1)(A)(ii) are effective immediately upon filing, and do not require judicial
`
`approval before becoming effective. See 9 Wright & Miller, Federal Practice and
`
`Procedure: Civil § 2363 (3d ed. 2008, supp. 2014).
`
`II. BRIEF EXPLANATION AS TO WHY TERMINATION IS
`APPROPRIATE
`
`
`
`Inasmuch as no final written decision has yet been entered, and because
`
`Patent Owner and TSMC are jointly making this motion, termination of this IPR as
`
`to TSMC is appropriate, as the Board has not yet “decided the merits of the
`
`proceeding.” 35 U.S.C. § 317(a). Further, because Patent Owner and TSMC
`
`jointly request this termination as to TSMC’s involvement in this Inter Partes
`
`Review, no estoppel under 35 U.S.C. § 315(e) shall attach to TSMC.
`
`Because the merits of any of the IPRs have not been determined, concluding
`
`these IPR proceedings as to TSMC promotes the Congressional goal to establish a
`
`more efficient and streamlined patent system that, inter alia, limits unnecessary
`
`and counterproductive litigation costs. See “Changes to Implement Inter Partes
`
`Review Proceedings, Post-Grant Review Proceedings, and Transitional Program
`
`
`
`6
`
`
`
`IPR2014-00829
`U.S. Patent No. 6,805,779
`JOINT MOTION TO TERMINATE
`
`for Covered Business Method Patents,” Final Rule, 77 Fed. Reg., no. 157, p. 48680
`
`(Tuesday, August 14, 2012). By permitting termination of IPR proceedings as to
`
`the parties upon settlement, the PTAB provides certainty as to the outcome of these
`
`proceedings. Terminating IPRs upon settlement fosters an environment that
`
`promotes settlements, thereby creating a timely, cost-effective alternative to
`
`litigation. Should the Board decide to continue the present proceedings as to
`
`TSMC, the Congressional goal of speedy dispute resolutions will be chilled.
`
`Also, both Zond and TSMC have initiated an effort with the remaining
`
`Petitioners in these proceedings to create a plan to address any impact that TSMC’s
`
`withdrawal may have upon them. In accordance with the instructions given by the
`
`Board during the conference on March 9, 2015, a separate motion will be filed by
`
`the remaining Petitioners to provide the details of that plan to the Board.
`
`III. STATUS OF RELATED LITIGATION
`
`As noted above, the related litigation between the Parties has been settled
`
`and the cases have been dismissed with prejudice. See IPR2014-00828, Ex. 1218.
`
`IV. REQUEST TO TREAT SETTLEMENT AGREEMENT AS
`CONFIDENTIAL INFORMATION
`
`Pursuant to 37 C.F.R. § 42.74(b), the Parties’ settlement agreement and any
`
`collateral agreements made in contemplation of termination of the proceedings are
`
`in writing, and true and correct copies of such documents have been concurrently
`
`
`
`7
`
`
`
`IPR2014-00829
`U.S. Patent No. 6,805,779
`JOINT MOTION TO TERMINATE
`
`filed in IPR2014-00828 as Exhibit 1219 (the “Settlement Agreement”). The Parties
`
`desire that the Settlement Agreement be maintained as business confidential
`
`information and be kept separate under 37 C.F.R. § 42.74(c) and a separate joint
`
`request to that effect is being filed on even date herewith in IPR2014-00828.
`
`V. CONCLUSION
`
`
`
`For the foregoing reasons, Patent Owner and TSMC jointly request that the
`
`Board terminate this Inter Partes Review proceeding as to TSMC.
`
`Respectfully submitted,
`
` For Petitioner:
`TAIWAN SEMICONDUCTOR
`MANUFACTURING COMPANY LTD,
`and TSMC NORTH AMERICA CORP.
`
` /
`
` David M. O’Dell /
` David M. O’Dell, Reg. No. 42,044
`David L. McCombs, Reg. No. 32,271
`Haynes and Boone, LLP
`2323 Victory Avenue, Suite 700
`Dallas, TX 75219
`david.odell.ipr@haynesboone.com;
`david.mccombs.ipr@haynesboone.com.
`
`
`
`8
`
`For Patent Owner:
`ZOND, LLC
`
`
`
`/Gregory J. Gonsalves/
`Dr. Gregory J. Gonsalves
`Reg. No. 43,639
`2216 Beacon Lane
`Falls Church, Virginia 22043
`gonsalves@gonsalveslawfirm.com
`
`
`
`
`Dated: March 11, 2015
`
`
`
`
`
`
`
`
`IPR2014-00829
`U.S. Patent No. 6,805,779
`JOINT MOTION TO TERMINATE
`
`
`CERTIFICATE OF SERVICE
`
`
`
`
`Pursuant to 37 C.F.R. § 42.6(e), this is to certify that I caused to be served a
`
`true and correct copy of the foregoing “JOINT MOTION TO TERMINATE
`
`PURSUANT TO 35 U.S.C. § 317 AND 37 C.F.R. § 42.72” as detailed below:
`
`Date of service March 11, 2015
`
`Manner of service Email: gonsalves@gonsalveslawfirm.com;
`bbarker@chsblaw.com;
`
`Documents served JOINT MOTION TO TERMINATE PURSUANT TO 35
`U.S.C. § 317 AND 37 C.F.R. § 42.72
`
`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
`Lead Counsel for Petitioner TSMC
`Registration No. 42,044
`
`
`
`9
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