Paper No.
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________________________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________________________________
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`FUJITSU SEMICONDUCTOR LIMITED and
`FUJITSU SEMICONDUCTOR AMERICA, INC.
`Petitioner
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`v.
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`ZOND, LLC
`Patent Owner
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`Case IPR2014-00856
`U.S. PATENT NO. 6,805,779
`CLAIMS 30-37, 39-40
`Title: Plasma generation using multi-step ionization
`____________________________________________
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`__________________________________________________________________
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`PETITIONER’S REVISED MOTION FOR JOINDER UNDER
` 35 U.S.C. § 315(c) AND 37 C.F.R. § 42.22 AND § 42.122(b)
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________________________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________________________________
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`
`
`FUJITSU SEMICONDUCTOR LIMITED and
`FUJITSU SEMICONDUCTOR AMERICA, INC.
`Petitioner
`
`v.
`
`ZOND, LLC
`Patent Owner
`
`Case IPR2014-00856
`U.S. PATENT NO. 6,805,779
`CLAIMS 30-37, 39-40
`Title: Plasma generation using multi-step ionization
`____________________________________________
`
`
`
`
`__________________________________________________________________
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`PETITIONER’S REVISED MOTION FOR JOINDER UNDER
` 35 U.S.C. § 315(c) AND 37 C.F.R. § 42.22 AND § 42.122(b)
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`Petitioner’s Revised Motion for Joinder (IPR2014-00856)
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`I.
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`INTRODUCTION
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`Fujitsu Semiconductor Limited and Fujitsu Semiconductor America, Inc.,
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`(collectively “Fujitsu”) submit the present revised Motion for Joinder pursuant to
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`the Order of September 16, 2014, (Paper 12) in IPR2014-00781 and (Paper 10) in
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`IPR2014-00845, authorizing the filing of a revised Motion for Joinder. Fujitsu
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`further submits that the present revised Motion for Joinder is timely filed within
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`five business days from the date of the Order.
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`Fujitsu hereby moves for joinder of the present petition for inter partes
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`review IPR2014-00856 (the “FUJITSU IPR”) with IPR2014-00828, filed by
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`Taiwan Semiconductor Manufacturing Company, LTD, and TSMC North America
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`Corp. (the “TSMC IPR”).1 The FUJITSU IPR is identical to the TSMC IPR in all
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`substantive respects, includes identical exhibits to the TSMC IPR, and relies upon
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`the same expert declarant as the TSMC IPR. TSMC does not oppose this motion.
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`II. BACKGROUND AND RELATED PROCEEDINGS
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`The FUJITSU IPR and the TSMC IPR are among a family of inter partes
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`review proceedings relating to seven patents2 that are being asserted by Zond, LLC
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`(“Zond”) against numerous defendants
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`in
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`the District of Massachusetts:
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`1 “TSMC” as used herein refers to Taiwan Semiconductor Manufacturing Company
`Limited and TSMC North America Corp., collectively.
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` 2
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` U.S. Patent Nos. 6,805,779; 6,806,652; 6,853,142; 7,147,759; 7,604,716;
`7,808,184; and 7,811,421.
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`2
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`Petitioner’s Revised Motion for Joinder (IPR2014-00856)
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`1:13-cv-11577-DPW (Zond v. AMD, Inc., et al); 1:13-cv-11581-DJC (Zond
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`v. Toshiba Am. Elec. Comp. Inc.); 1:13-cv-11625-NMG (Zond v. Renesas Elec.
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`Corp.);
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`1:13-cv-11634-WGY
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`(Zond
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`v. Fujitsu
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`and
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`TSMC);
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`and
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`1:13-cv-11567-DJC (Zond v. Gillette, Co.).
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`In particular, a complaint in 1:13-cv-11634-WGY (Zond v. Fujitsu and
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`TSMC) was first served on defendants Fujitsu and TSMC on July 9, 2013, and
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`September 5, 2013, respectively. Accordingly, all petitions for inter partes review
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`that have been filed by defendants TSMC and Fujitsu are timely as prescribed by
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`35 U.S.C. § 315(b).
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`On June 2, 2014, as clarified on June 3, 2014, in 1:13-cv-11634-WGY (Zond
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`v. Fujitsu and TSMC), the Court entered an order to administratively close the case
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`pending conclusion of inter partes reviews or until May 9, 2016, whichever shall
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`occur first.
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`Currently, the family of inter partes review proceedings relating to the seven
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`Zond patents (the “Zond IPRs”) consists of the following proceedings that involve
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`TSMC and Fujitsu:3
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`3 Gillette Co. filed petitions for inter partes review of other patents asserted by
`Zond in 1:13-cv-11567-DJC (Zond v. Gillette, Co.), namely IPR2014-00477 and
`IPR2014-00479 (U.S. Patent No. 8,125,155); IPR2014-00580 and IPR2014-00726
`(U.S. Patent No. 6,896,773); and IPR2014-00578 and IPR2014-00604 (U.S. Patent
`No. 6,896,775). Other Gillette filings are ongoing.
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`Petitioner’s Revised Motion for Joinder (IPR2014-00856)
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`Petitioner’s Revised Motion for Joinder (IPR2014-00856)
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`In addition to the present Motion for Joinder, Fujitsu is presently filing
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`Motions for Joinder of other Zond IPR petitions with the corresponding petitions
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`filed by TSMC, subject to the same conditions sought by this motion. TSMC does
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`not oppose the Fujitsu motions.
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`III. DISCUSSION
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`If the Director institutes an inter partes review, Fujitsu respectfully requests
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`that the Board exercise its discretion to grant joinder of the FUJITSU IPR and
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`TSMC IPR proceedings pursuant to 35 U.S.C. § 315(c), 37 C.F.R. § 42.22, and
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`37 C.F.R. § 42.122(b). In support of this motion, Fujitsu proposes consolidated
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`filings and other procedural accommodations designed
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`to streamline
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`the
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`proceedings.
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`1. Reasons Why Joinder Is Appropriate
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`Joinder is appropriate in this case because it is the most expedient way to
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`secure the just, speedy, and inexpensive resolution of the related proceedings. See
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`35 U.S.C. § 316(b); 37 C.F.R. § 42.1(b). Intentionally, the FUJITSU IPR is
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`substantively identical to the corresponding TSMC IPR in an effort to avoid
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`multiplication of issues before the Board. Given the duplicative nature of these
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`petitions, joinder of the related proceedings is appropriate. As discussed below,
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`Petitioner’s Revised Motion for Joinder (IPR2014-00856)
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`Fujitsu will agree to consolidated filings and discovery, and procedural
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`concessions, which TSMC does not oppose and which do not prejudice Zond.
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`a. Substantively Identical Petitions
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`Fujitsu represents that the FUJITSU IPR is identical to the TSMC IPR in all
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`substantive respects. It includes identical grounds, analysis, and exhibits and relies
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`upon the same expert declarant and declaration as the TSMC IPR. Accordingly, if
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`instituted, maintaining the FUJITSU IPR proceeding separate from that of the
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`TSMC IPR would entail needless duplication of effort.
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`b. Consolidated Filings and Discovery
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`Because the grounds of unpatentability in the FUJITSU IPR and TSMC IPR
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`are the same, the case is amenable to consolidated filings. Fujitsu will agree to
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`consolidated filings for all substantive papers in the proceeding (e.g., Reply to the
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`Patent Owner’s Response, Opposition to Motion to Amend, Motion for
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`Observation on Cross Examination Testimony of a Reply Witness, Motion to
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`Exclude Evidence, Opposition to Motion to Exclude Evidence and Reply).
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`Specifically, Fujitsu will agree to incorporate its filings with those of TSMC in a
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`consolidated filing, subject to the ordinary rules for one party on page limits.
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`TSMC and Fujitsu will be jointly responsible for the consolidated filings.
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`Petitioner’s Revised Motion for Joinder (IPR2014-00856)
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`Fujitsu agrees not to be permitted any arguments separate from those
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`advanced by Fujitsu and TSMC in the consolidated filings. These limitations
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`avoid lengthy and duplicative briefing.
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`Consolidated discovery is also appropriate given that Fujitsu and TSMC are
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`using the same expert declarant who has submitted the same, identical declaration
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`in the two proceedings. Fujitsu and TSMC will designate an attorney to conduct
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`the cross-examination of any given witness produced by Zond and the redirect of
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`any given witness produced by Fujitsu or TSMC within the time frame normally
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`allotted by the rules for one party. Fujitsu and TSMC will not receive any separate
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`cross-examination or redirect time.
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`Fujitsu will agree to the foregoing conditions regarding consolidated filings
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`and discovery even in the event other IPRs filed by other, third-party petitioners
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`are joined with the TSMC IPR.
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`c. No New Grounds of Unpatentability
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`The FUJITSU IPR raises no new grounds of unpatentability from those of
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`the TSMC IPR because, in fact, the petitions are identical.
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`d. No Impact on IPR Trial Schedule
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`The small difference between the filing date of the FUJITSU IPR and the
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`TSMC IPR is without consequence should the proceedings be joined. The trial
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`schedule for the TSMC IPR would not need to be delayed to effect joinder based
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`Petitioner’s Revised Motion for Joinder (IPR2014-00856)
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`on Zond’s preliminary response and the later-filed FUJITSU IPR. The joint
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`proceeding would allow the Board and parties to focus on the merits in one
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`consolidated proceeding without unnecessary duplication of effort, and in a timely
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`manner.
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`e. Briefing and Discovery Will Be Simplified
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`Joinder will simplify briefing and discovery because Fujitsu seeks an order
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`similar to that issued in Motorola Mobility LLC v. Softview LLC, IPR2013-00256
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`(PTAB June 20, 2013) (Paper 10). As discussed above, Fujitsu and TSMC will
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`engage in consolidated filings and discovery, which will simplify the briefing and
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`discovery process.
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`f. No Prejudice to Zond if Proceedings Are Joined
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`Fujitsu proposes joinder to streamline the proceedings and reduce the costs
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`and burdens on the parties. Fujitsu believes joinder will achieve these goals for
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`several reasons. First, joinder will most certainly decrease the number of papers
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`the parties must file, by eliminating a duplicative proceeding. Second, joinder will
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`also reduce by half the time and expense for depositions and other discovery
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`required in separate proceedings. Third, joinder creates case management
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`efficiencies for the Board and parties without any prejudice to Zond.
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`Petitioner’s Revised Motion for Joinder (IPR2014-00856)
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`IV. PROPOSED ORDER
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`Petitioner proposes a joinder order for consideration by the Board as
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`follows, which TSMC does not oppose:
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`• If review is instituted on any ground in the TSMC IPR, the FUJITSU
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`IPR will be instituted and will be joined with the TSMC IPR on the
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`same grounds. Grounds not instituted because the TSMC IPR failed
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`to establish a reasonable likelihood of prevailing, if any, will be
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`similarly denied in the FUJITSU IPR.
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`• The scheduling order for the TSMC IPR will apply for the joined
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`proceeding.
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`• Throughout the proceeding, TSMC and Fujitsu will file papers as
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`consolidated filings, except for motions that do not involve the other
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`party, in accordance with the Board’s established rules regarding page
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`limits. So long as they both continue to participate in the merged
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`proceeding, TSMC and Fujitsu will identify each such filing as a
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`Consolidated Filing and will be responsible for completing all
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`consolidated filings.
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`• TSMC and Fujitsu will designate an attorney to conduct the cross
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`examination of any given witness produced by Zond and the redirect
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`of any given witness produced by TSMC or Fujitsu within the time
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`Petitioner’s Revised Motion for Joinder (IPR2014-00856)
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`frame normally allotted by the rules for one party. TSMC and Fujitsu
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`will not receive any separate cross-examination or redirect time.
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`• Zond will conduct any cross examination of any given witness jointly
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`produced by TSMC or Fujitsu and the redirect of any given witness
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`produced by Zond within the time frame normally allotted by the rules
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`for one cross-examination or redirect examination.
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`V. CONCLUSION
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` For the foregoing reasons, if the Director institutes inter partes review,
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`Fujitsu respectfully requests that the Board grant joinder of the FUJITSU IPR and
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`Respectfully submitted,
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`/David M. O’Dell/
`David M. O’Dell
`Registration No. 42,044
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`Counsel for Petitioner
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`TSMC IPR proceedings.
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`Date: September 22, 2014
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`HAYNES AND BOONE, LLP.
`2323 VICTORY AVENUE SUITE 700
`DALLAS TEXAS 75219
`TEL: (972) 739-8635
`FAX: (214) 200-0853
`EMAIL: david.odell.ipr@haynesboone.com
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`Petitioner’s Revised Motion for Joinder (IPR2014-00856)
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. §§ 42.6(e) and 42.105(a), this is to certify that I
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`caused to be served a true and correct copy of the foregoing “PETITIONER’S
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`REVISED MOTION FOR JOINDER UNDER 35 U.S.C. § 315(c) AND 37 C.F.R.
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`§§ 42.22 AND 42.122(b)” as detailed below:
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`Date of service September 22, 2014
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`Manner of service Email: gonsalves@gonsalveslawfirm.com;
`bbarker@chsblaw.com; kurt@rauschenbach.com
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`Documents served PETITIONER’S REVISED MOTION FOR JOINDER
`UNDER 35 U.S.C. § 315(c) AND 37 C.F.R. §§ 42.22 AND
`42.122(b)
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`Persons Served Dr. Gregory J. Gonsalves
`2216 Beacon Lane
`Falls Church, Virginia 22043
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`Bruce Barker
`Chao Hadidi Stark & Barker LLP
`176 East Mail Street, Suite 6
`Westborough, MA 01581
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`
`
`
`/David M. O’Dell/
`David M. O’Dell
`Registration No. 42,044
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`11
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