Trials@uspto.gov Paper No. 9
`571-272-7822 Entered: August 5, 2014
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
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`FUJITSU SEMICONDUCTOR LIMITED and
`FUJITSU SEMICONDUCTOR AMERICA, INC.,
`Petitioners,
`
`v.
`
`ZOND, LLC,
`Patent Owner.
`____________
`
`Case IPR2014-00845
`Patent 7,147,759 B21
`____________
`
`Before KEVIN F. TURNER, DEBRA K. STEPHENS, JONI Y. CHANG,
`SUSAN L. C. MITCHELL, and JENNIFER M. MEYER,
`Administrative Patent Judges.
`
`
`CHANG, Administrative Patent Judge.
`
`ORDER
`Conduct of the Proceedings
`37 C.F.R. § 42.5
`
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`1 This Order addresses similar issues in the inter partes reviews, involving
`the following patents: U.S. Patent Nos. 6,805,779 B2, 6,806,652 B1,
`6,853,142 B2, 7,147,759 B2, 7,604,716 B2, 7,808,184 B2, and 7,811,421
`B2. For efficiency, we file this Order in this case as representative. The
`parties, however, are not authorized to use this style of filing in subsequent
`papers.
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`571-272-7822 Entered: August 5, 2014
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`FUJITSU SEMICONDUCTOR LIMITED and
`FUJITSU SEMICONDUCTOR AMERICA, INC.,
`Petitioners,
`
`v.
`
`ZOND, LLC,
`Patent Owner.
`____________
`
`Case IPR2014-00845
`Patent 7,147,759 B21
`____________
`
`Before KEVIN F. TURNER, DEBRA K. STEPHENS, JONI Y. CHANG,
`SUSAN L. C. MITCHELL, and JENNIFER M. MEYER,
`Administrative Patent Judges.
`
`
`CHANG, Administrative Patent Judge.
`
`ORDER
`Conduct of the Proceedings
`37 C.F.R. § 42.5
`
`
`1 This Order addresses similar issues in the inter partes reviews, involving
`the following patents: U.S. Patent Nos. 6,805,779 B2, 6,806,652 B1,
`6,853,142 B2, 7,147,759 B2, 7,604,716 B2, 7,808,184 B2, and 7,811,421
`B2. For efficiency, we file this Order in this case as representative. The
`parties, however, are not authorized to use this style of filing in subsequent
`papers.
`
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`IPR2014-00845
`Patent 7,147,759 B2
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`Patent Owner, Zond, LLC (“Zond”), jointly requested the conference
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`call with the following Petitioners:
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`(1) Intel Corporation (“Intel”);
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`(2) Taiwan Semiconductor Manufacturing Company, Ltd. and TSMC
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`North America Corporation (collectively, “TSMC”);
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`(3) Fujitsu Semiconductor Limited and Fujitsu Semiconductor
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`America, Inc. (collectively, “Fujitsu”);
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`(4) The Gillette Company (“Gillette”);
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`(5) Advanced Micro Devices, Inc., Renesas Electronics Corporation,
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`Renesas Electronics America, Inc., GLOBALFOUNDRIES U.S., Inc.,
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`GLOBALFOUNDRIES Dresden Module One LLC & Co. KG,
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`GLOBALFOUNDRIES Dresden Module Two LLC & Co. KG, Toshiba
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`America Electronic Components, Inc., Toshiba America Inc., Toshiba
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`America Information Systems, Inc., and Toshiba Corporation (collectively,
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`“AMD”); and
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`(6) GLOBALFOUNDRIES U.S., Inc., GLOBALFOUNDRIES
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`Dresden Module One LLC & Co. KG, GLOBALFOUNDRIES Dresden
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`Module Two LLC & Co. KG (collectively, “Global”).
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`Intel filed twenty-five petitions (“Intel Petitions”) to institute an inter
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`partes review, challenging the following Zond Patents: U.S. Patent Nos.
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`6,805,779 B2, 6,806,652 B1, 6,853,142 B2, 7,147,759 B2, 7,604,716 B2,
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`7,808,184 B2, and 7,811,421 B2. Other aforementioned Petitioners also
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`filed petitions, requesting review of those patents (“Joinder Petitions”), and
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`indicated the intent to seek joinder with Intel’s proceedings. See, e.g.,
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`IPR2014-00981, Paper 3, 1. A list of inter partes reviews involving those
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`Zond Patents is provided in the Appendix of this Order. TSMC and Fujitsu
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`IPR2014-00845
`Patent 7,147,759 B2
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`filed their Motions for Joinder, and Zond filed its Oppositions to those
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`Motions for Joinder. See, e.g., IPR2014-00781, Papers 8, 10. However,
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`Gillette, AMD, and Global have not filed their Motions for Joinder.
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`A conference call was held on August 4, 2014, between Judges
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`Turner, Stephens, Chang, Mitchell, and Meyer, and respective counsel for
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`Zond and each of the aforementioned Petitioners, except Global. The
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`purpose of the conference call was to discuss joinder issues.
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`During the conference call, Zond indicated that the parties have been
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`engaged in discussions regarding joinders of the proceedings to minimize
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`the burden on the Board and parties, and to help streamline the proceedings.
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`The parties confirmed that the Joinder Petitions are substantively identical to
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`the Intel Petitions, including the same asserted grounds of unpatentability
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`and the same declarations from the same expert witness. Compare, e.g.,
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`IPR2014-00781, Paper 2, 19–59, with IPR2014-00445, Paper 4, 19–60;
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`compare, e.g., IPR2014-00781, Ex. 1202 with IPR2014-00445, Ex. 1202.
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`The Petitioners also agreed to consolidated filings and discovery—
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`subject to the rules for one party on page limits and deposition time. See,
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`e.g., IPR2014-00781, Paper 8, 8–9. TSMC clarified that, although its
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`Motions for Joinder (see, e.g., IPR2014-00781, Paper 8, 9) request a similar
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`order as that issued in Motorola Mobility LLC v. Softview LLC, IPR2013-
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`00256 (PTAB June 20, 2013) (Paper 10), “separate filings” directed only to
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`points of disagreement with Intel would not be necessary. Intel indicated
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`that it does not oppose joinder, and it is willing to work with other
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`Petitioners and coordinate the consolidated filings and discovery.
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`During the conference call, Zond further expressed concerns with a
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`large number of petitions, and requested a restriction be placed on the
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`3
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`IPR2014-00845
`Patent 7,147,759 B2
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`Petitioners, specifically barring them from filing additional petitions against
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`the above-identified Zond Patents. Although the Petitioners indicated that,
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`at this time, they do not intend to file additional petitions involving those
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`Zond Patents, they opposed such a restriction. The Petitioners noted that the
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`statute and rules do not provide for such a restriction in a joinder situation.
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`Upon consideration of the parties’ contentions, we determined that the
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`current situation does not require us to impose such a restriction. We also
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`observed that Zond already has made such a request and has presented
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`arguments in its Oppositions to the Motions for Joinder filed by TSMC and
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`Fujitsu. See, e.g., IPR2014-00781, Paper 10, 1–6. Zond also may submit
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`that request in its Oppositions when Gillette, AMD, and Global file their
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`Motions for Joinder. We, therefore, decline to authorize any additional
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`briefing on this matter.
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`As we articulated previously, having all of the Motions for Joinder at
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`the time we decide the Intel Petitions would help streamline the proceedings,
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`in that we could decide the Joinder Petitions near the same timeframe.
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`Therefore, we requested Gillette and AMD to file their Motions for Joinder
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`within ten business days from this Order. Global also subsequently
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`contacted the Board’s administrative staff and indicated that it will file its
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`Motions for Joinder within this time period. We also authorized Zond to file
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`Oppositions to those Motions for Joinder.
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`In consideration of the foregoing, it is hereby:
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`ORDERED that Gillette, AMD, and Global should file a Motion for
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`Joinder, within ten business days from this Order, in each of the proceedings
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`in which they seek joinder with Intel’s proceedings;
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`IPR2014-00845
`Patent 7,147,759 B2
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`FURTHER ORDERED that should Gillette, AMD, or Global file a
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`Motion for Joinder, Zond is authorized to file an Opposition to the Motion
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`for Joinder within ten business days, limited to ten pages; and
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`FURTHER ORDERED that no reply is authorized.
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`5
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`IPR2014-00845
`Patent 7,147,759 B2
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`For PETITIONER:
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`David McCombs
`david.mccombs.ipr@haynesboone.com
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`David M. O’Dell
`david.odell.ipr@haynesboone.com
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`Richard C. Kim
`rckim@duanemorris.com
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`For PATENT OWNER:
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`Gregory J. Gonsalves
`gonsalves@gonsalveslawfirm.com
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`Bruce J. Barker
`bbarker@chsblaw.com
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`6
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`IPR2014-00845
`Patent 7,147,759 B2
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`“Intel Petitions”
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`APPENDIX
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`
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`U.S. Patent No. 6,805,779 B2
`IPR2014-00598, IPR2014-00686, IPR2014-00765, IPR2014-00820,
`IPR2014-00913
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`U.S. Patent No. 6,806,652 B1
`IPR2014-00843, IPR2014-00923, IPR2014-00945
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`U.S. Patent No. 6,853,142 B2
`IPR2014-00494, IPR2014-00495, IPR2014-00496, IPR2014-00497,
`IPR2014-00498
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`U.S. Patent No. 7,147,759 B2
`IPR2014-00443, IPR2014-00444, IPR2014-00445, IPR2014-00446,
`IPR2014-00447
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`U.S. Patent No. 7,604,716 B2
`IPR2014-00520, IPR2014-00521, IPR2014-00522, IPR2014-00523
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`U.S. Patent No. 7,808,184 B2
`IPR2014-00455, IPR2014-00456
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`U.S. Patent No. 7,811,421 B2
`IPR2014-00468, IPR2014-00470, IPR2014-00473
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`“Joinder Petitions”
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`U.S. Patent No. 6,805,779 B2
`IPR2014-00828, IPR2014-00829, IPR2014-00856, IPR2014-00859,
`IPR2014-00917, IPR2014-00918, IPR2014-01017, IPR2014-01019,
`IPR2014-01020, IPR2014-01022, IPR2014-01025, IPR2014-01070,
`IPR2014-01072, IPR2014-01073, IPR2014-01074, IPR2014-01076
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`U.S. Patent No. 6,806,652 B1
`IPR2014-00861, IPR2014-00864, IPR2014-01000, IPR2014-01003,
`IPR2014-01004, IPR2014-01066, IPR2014-01088, IPR2014-01089
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`7
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`IPR2014-00845
`Patent 7,147,759 B2
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`U.S. Patent No. 6,853,142 B2
`IPR2014-00818, IPR2014-00819, IPR2014-00821, IPR2014-00827,
`IPR2014-00863, IPR2014-00865, IPR2014-00866, IPR2014-00867,
`IPR2014-01012, IPR2014-01013, IPR2014-01014, IPR2014-01015,
`IPR2014-01016, IPR2014-01046, IPR2014-01057, IPR2014-01063,
`IPR2014-01075, IPR2014-01098
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`U.S. Patent No. 7,147,759 B2
`IPR2014-00781, IPR2014-00782, IPR2014-00845, IPR2014-00850,
`IPR2014-00981, IPR2014-00984, IPR2014-00985, IPR2014-00986,
`IPR2014-00988, IPR2014-01047, IPR2014-01059, IPR2014-01083,
`IPR2014-01086, IPR2014-01087
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`U.S. Patent No. 7,604,716 B2
`IPR2014-00807, IPR2014-00808, IPR2014-00846, IPR2014-00849,
`IPR2014-00972, IPR2014-00973, IPR2014-00974, IPR2014-00975,
`IPR2014-01065, IPR2014-01067, IPR2014-01099, IPR2014-01100
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`U.S. Patent No. 7,808,184 B2
`IPR2014-00799, IPR2014-00803, IPR2014-00855, IPR2014-00858,
`IPR2014-00995, IPR2014-00996, IPR2014-01042, IPR2014-01061
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`U.S. Patent No. 7,811,421 B2
`IPR2014-00800, IPR2014-00802, IPR2014-00805, IPR2014-00844,
`IPR2014-00848, IPR2014-00851, IPR2014-00990, IPR2014-00991,
`IPR2014-00992, IPR2014-01037, IPR2014-01069, IPR2014-01071
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`8
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