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`Patent No. 7,811,421
`IPR2014-00844
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________________
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`
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`TAIWAN SEMICONDUCTOR MANUFACTURING COMPANY LTD,
`
`AND TSMC NORTH AMERICA CORP.
`
`Petitioner
`
`v.
`
`ZOND, LLC
`Patent Owner
`
`U.S. Patent No. 7,811,421
`Claims 1, 2, 8, 10-13, 15-17, 22-25, 27-30, 33, 34, 38, 39,
`42, 43 AND 46-48
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`
`
`
`_____________________
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`Inter Partes Review Case No. 2014-00844
`_____________________
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`PATENT OWNER’s OPPOSITION TO MOTION FOR JOINDER
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`I. Introduction and Summary of Argument
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`Patent No. 7,811,421
`IPR2014-00844
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`Zond LLC (“Zond”) is not opposed to joinder per se. It merely wants a
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`more global solution to the enormous, unprecedented number of petitions filed
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`against Zond, which currently total 117 and counting. Zond is clearly under
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`siege as accused infringers file multiple requests for inter partes review against
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`every one of its asserted patents. This is not what Congress had in mind when
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`it created inter partes review. In fact, Congress specifically warned that the new
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`post grant proceedings were “not to be used as tools for harassment or a
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`means to prevent market entry through repeated litigation and administrative
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`attacks on validity of a patent.”1 Thus, pursuant to 35 U.S.C. §315, Congress
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`granted the Board the authority to manage such situations through various
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`procedural powers (e.g., stay, transfer, consolidation or termination), in part to
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`protect patent owners from harassment and in part for the Board to manage its
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`own workload.
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` For the reasons stated below, Zond respectfully submits that any joinder
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`should only be granted if TSCM, by agreement or by order of the Board, is
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`1 Excerpt from Committee Report 112-98, section “Post-Grant Proceedings,”
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`attached at page 7.
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`1
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`barred from filing more petitions against the ‘184 patent: TSMC’s proposal
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`Patent No. 7,811,421
`IPR2014-00844
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`does not come close to solving the current problem, because its reserves for
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`TSMC the option to file additional petitions against the patent at issue, thereby
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`adding to the problem. Nor does it address the parallel petitions filed by
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`Gillette, Renesas Electronics Corp. and others against the patent, and the
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`additional petitions that are expected to arrive shortly. Therefore, TSMC’s
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`petition and proposed joinder create only the illusion of simplification. As
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`explained below, TSCM’s petition and motion serve only TSMC’s objective of
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`procuring an immediate stay of Zond’s infringement action against TSMC.
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`II. The Motion Does Not Consider Risk of Harassment By Other
`Petitions Contemplated By TSMC Against the ‘184 Patent
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`As explained below, TSCM copied Intel’s petition for the sole purpose of
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`obtaining an immediate stay of Zond’s infringement litigation against TSMC
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`in civil action number 1:13-cv-11634. TSMC therefore insists on reserving the
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`option to file additional petitions in the coming months against the ‘184 patent
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`with its own arguments and new art.
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`TSMC is a defendant in an infringement suit before Judge Young. This
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`is not the suit mentioned in TSMC’s motion, in which Intel is the defendant
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`before a different judge. That suit was stayed three months ago in view of
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`Intel’s petitions for inter partes review. In the infringement action against
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`2
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`TSMC, Judge Young initially denied TSMC’s motion to stay because TSMC
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`Patent No. 7,811,421
`IPR2014-00844
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`had at that time not filed any petition for inter partes review: “The motion to stay
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`is denied as premature.”2 Judge Young made it quite clear that if TSMC
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`wanted a stay, it would have to file its own petitions:
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`THE COURT: So the ruling’s the same, it’s denied because it is
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`premature. Once they notify the court that it’s filed – once it’s filed
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`then --- as soon as that happens, my stay will go into effect …
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`MR FITZPATRICK: The IPRs are already pending. Intel has
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`already filed IPRs.
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`THE COURT: You’re not Intel.3
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`Judge Young said that in the meantime, he was prepared to rule on Markman
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`issues4 and take the case to trial and verdict by December 2014.5
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`And so the flood of copied petitions began, which led to Judge Young’s
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`order to stay the litigation. But the present petition was copied just for
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`purposes of procuring this stay. TSMC wants the option to file its own
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`2 Hearing Transcript, page 11 (attached below)
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`3 Hearing Transcript, page 14, 17(attached below) .
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`4 Hearing Transcript, page 6, 18 (attached below).
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`5 Hearing Transcript, page 10 (attached below).
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`3
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`petitions against the ‘184 with new arguments and art in the coming months.
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`Patent No. 7,811,421
`IPR2014-00844
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`For this reason, TSMC’s proposal to join the Intel proceedings but to keep
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`open the option of filing even more petitions against Zond, is an abuse of the
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`IPR proceedings that Congress urged the patent office to address with its
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`expanded procedural authority:
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`[T]he changes made … are not to be used as tools for harassment
`or a means to prevent market entry through repeated litigation
`and administrative attacks on validity of a patent. Doing so
`would frustrate the purpose of the section as providing quick and
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`cost effective alternatives to litigation…..as such, the committee
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`intends for the USPTO to address potential abuses and current
`inefficiencies under its expanded procedural authority.6
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`Accordingly, joinder should only be allowed if TSMC is precluded from filing
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`additional petitions against the same patent, and if any such joinder takes into
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`consideration the many other petitions that have been filed against the ‘142
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`patent as explained below.
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`III. The Motion Does Not Consider Other Petitions That have Been
`Filed Against the‘142 Patent
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`6 Excerpt from Committee Report 112-98 , section “Post-Grant Proceedings,”
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`attached at page 7.
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`4
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`Patent No. 7,811,421
`IPR2014-00844
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`The current motion does not address the petitions being filed by Gillette,
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`Renesas Electronics Corp. and many other parties against the ‘184 patent.
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`Unless these parties are included in the joinder, little is accomplished. If these
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`parties are not taken into consideration, Zond will be prejudiced if they refuse
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`to agree to the same schedule or refuse to streamline briefing and discovery.
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`Even worse, it appears that more petitions are forthcoming. Thus, the present
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`motion to join is premature since we have reason to believe that more copied
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`petitions are forthcoming against the ‘184 patent, and all parties to the copied
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`petitions have not yet conferred on the terms of joinder.
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`IV. The Motion Does Not Consider The Complications of Multiple
`Proceedings Against A Single Patent
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`TSMC’s motion also does not address the complications presented by
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`the pending requests for separate proceedings against different parts of the
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`same patent, or the fact that the Board has yet to be decided which, if any, of
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`the proposed grounds will be granted review. As Zond has pointed out in its
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`responses to date, the records in the pending petitions have evidentiary
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`shortcomings that Zond believes do not meet the reasonable likelihood
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`standard required for review. As a result, Zond expects that many of the
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`proposed grounds will be denied review on these records. Thus, until the
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`5
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`Board decides which, if any claims to review, it is too soon to decide which
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`Patent No. 7,811,421
`IPR2014-00844
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`grounds to consolidate and which parties to join.
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`V. Conclusion
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`Pursuant to 35 U.S.C. §315, the Board has the authority to manage the
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`numerous multiple petitions against the ‘184 patent by, for example,
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`consolidation, termination and joinder, once it is apparent which grounds in
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`the copied petitions have satisfied the standards for initiation of an inter partes
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`review. For the reasons stated above, Zond respectfully submits that any
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`joinder should only be granted if TSCM, by agreement or by order of the
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`Board, is barred from filing more petitions against the ‘184 patent. Zond
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`further submits that the proposed joinder is premature since it does not take
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`into consideration the other Petitions filed against the same patent by other
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`parties.
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`Date: July 15, 2014
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`
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`Respectfully submitted,
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`
`
`By: /Gregory Gonsalves/
`Gregory Gonsalves
`Reg. No. 43,639
`2216 Beacon Lane
`Falls Church, Virginia 22043
`(571) 419-7252
`gonsalves@gonsalveslawfirm
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`6
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`Patent No. 7,811,421
`IPR2014-00844
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`Bruce Barker
`Reg. No. 33,291
`Chao Hadidi Stark & Barker LLP
`176 East Main Street, Suite 6
`Westborough, MA 01581
`(508) 366-3800
`bbarker@chsblaw.com
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`7
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`Patent No. 7,811,421
`IPR2014-00844
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`Excerpt From Committee Report 112-98
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`8
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`Patent No. 7,811,421
`IPR2014-00844
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`Excerpts From Hearing Before Judge Young on May 9, 2014
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`9
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`Patent No. 7,811,421
`IPR2014-00844
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`Excerpts From Hearing Before Judge Young on May 9, 2014
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`The Court:
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`10
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`Patent No. 7,811,421
`Patent No. 7,811,421
`IPR2014-00844
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`IPR2014-00844
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`HR- FITZPATRICK: _
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`11
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`11
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`15
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`Patent No. 7,811,421
`IPR2014-00844
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that a copy of the foregoing Patent Owner’
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`Opposition to Motion for Joinder was served via email on July 15, 2014, on the
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`attorneys for the Petitioner:
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`
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`David L. McCombs
`David M. O’Dell
`HAYNES AND BOONE, LLP.
`2323 VICTORY AVENUE SUITE 700
`DALLAS TEXAS 75219
`TELEPHONE: (214) 651-5533
`FAX: (214) 200-0853
`EMAIL: David.McCombs@haynesboone.com
`david.odell@haynesboone.com
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`
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`By: /Gregory Gonsalves/
`Gregory Gonsalves
`Reg. No. 43,639
`2216 Beacon Lane
`Falls Church, Virginia 22043
`(571) 419-7252
`gonsalves@gonsalveslawfirm.
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`
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`12
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