`571-272-7822
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`
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`Paper 53
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`Entered: January 4, 2016
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`FUJITSU SEMICONDUCTOR LIMITED, FUJITSU SEMICONDUCTOR
`AMERICA, INC., THE GILLETTE COMPANY, 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., and TOSHIBA CORPORATION,
`Petitioners,
`
`v.
`
`ZOND, LLC,
`Patent Owner.
`____________
`Case IPR2014-008611
`Patent 6,806,652 B1
`____________
`
`
`Before KEVIN F. TURNER, JONI Y. CHANG, SUSAN L.C. MITCHELL,
`and JENNIFER MEYER CHAGNON, Administrative Patent Judges.
`
`CHANG, Administrative Patent Judge.
`
`
`
`DECISION
`Granting Joint Motion to Terminate as to Petitioner Fujitsu
`37 C.F.R. § 42.74
`
`
`1 Cases IPR2014-00864, IPR2014-01003, and IPR2014-01066 have been
`joined with the instant inter partes review.
`
`
`
`IPR2014-00861
`Patent 6,806,652 B1
`
`Taiwan Semiconductor Manufacturing Company, Ltd. and TSMC
`North America Corp. (collectively, “TSMC”) filed a Petition (Paper 2,
`“Pet.”) seeking inter partes review of claims 18–34 of U.S. patent No.
`6,806,652 B1 (Ex. 1101, “the ’652 patent”). On December 11, 2014, we
`instituted an inter partes review in this proceeding. Paper 12. Subsequent to
`institution, we granted the revised Motions for Joinder filed by other
`Petitioners listed in the Caption above—including Fujitsu Semiconductor
`Limited and Fujitsu Semiconductor America, Inc. (collectively, “Fujitsu”)—
`joining Cases IPR2014-00864, IPR2014-01003, and IPR2014-01066 with
`the instant trial (Papers 16 and 17; IPR2014-00864, Paper 17), and also
`granted a Joint Motion to Terminate with respect to TSMC (Paper 31).
`On December 29, 2015, Patent Owner Zond, LLC (“Zond”) and
`Fujitsu filed a Joint Motion to Terminate, with respect to Fujitsu, in the
`instant inter partes review. Paper 51, “Mot.” They also filed a true copy of
`their Written Settlement Agreement, made in connection with the
`termination as to Fujitsu, pursuant to 35 U.S.C. § 317(b) and 37 C.F.R.
`§ 42.74(b). Ex. 2007. They further request that the Written Settlement
`Agreement be treated as business confidential information under 35 U.S.C.
`§ 317(b) and 37 C.F.R. § 42.74(c). Paper 52. For the reasons set forth
`below, the Joint Motion to Terminate, with respect to Fujitsu, and the Joint
`Request are granted.
`Under the Leahy-Smith America Invents Act, settlement between the
`parties to a proceeding is encouraged. Notably, 35 U.S.C. § 317(a), in part,
`provides the following (emphasis added):
`(a) IN GENERAL.—An inter partes review instituted under this
`chapter shall be terminated with respect to any petitioner upon
`2
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`IPR2014-00861
`Patent 6,806,652 B1
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`
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`the joint request of the petitioner and the patent owner, unless
`the Office has decided the merits of the proceeding before the
`request for termination is filed. If the inter partes review is
`terminated with respect to a petitioner under this section, no
`estoppel under section 315(e) shall attach to the petitioner, or
`to the real party in interest or privy of the petitioner, on the
`basis of that petitioner’s institution of that inter partes review.
`Here, although the instant inter partes review has been instituted, we
`have not entered a final written decision in this proceeding. Upon review of
`the procedural posture of this proceeding and the facts before us, we
`determine that the parties’ contentions have merit, and that it is appropriate
`to terminate this proceeding with respect Fujitsu. The proceeding, however,
`will not be terminated with respect to Zond, as additional Petitioners remain
`in the proceedings.
`In consideration of the foregoing, it is hereby:
`ORDERED that the Joint Motion to Terminate, with respect to
`Fujitsu, is granted;
`FURTHER ORDERED that this review is terminated with respect to
`Fujitsu only; but this review continues to proceed with Zond and the
`remaining Petitioners;
`FURTHER ORDERED that the Joint Request that the Written
`Settlement Agreement be treated as business confidential information kept
`separate from the patent file, and made available only to Federal
`Government agencies on written request, or to any person on a showing of
`good cause, pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c), is
`granted; and
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`3
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`IPR2014-00861
`Patent 6,806,652 B1
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`FURTHER ORDERED that any subsequent papers filed in these inter
`partes reviews should not include Fujitsu in the caption.
`
`
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`4
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`IPR2014-00861
`Patent 6,806,652 B1
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`
`
` For PETITIONERS:
`GlobalFoundries:
`David M. Tennant
`dtennant@whitecase.com
`Dohm Chankong
`dohm.chankong@whitecase.com
`
`Gillette:
`David L. Cavanaugh
`david.cavanaugh@wilmerhale.com
`Larissa B. Park
`larissa.park@wilmerhale.com
`
`Fujitsu:
`David L. McCombs
`david.mccombs.ipr@haynesboone.com
`David M O’Dell
`david.odell.ipr@haynesboone.com
`Richard C. Kim
`rckim@duanemorris.com
`
`AMD:
`Brian M. Berliner
`bberliner@omm.com
`Ryan K. Yagura
`ryagura@omm.com
`Xin-Yi Zhou
`vzhou@omm.com
`
`Toshiba:
`Robinson Vu
`Robinson.vu@bakerbotts.com
`
`
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`5
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`IPR2014-00861
`Patent 6,806,652 B1
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`Renesas:
`John J. Feldhaus
`jfeldhaus@foley.com
`Pavan Agarwal
`pagarwal@foley.com
`Mike Houston
`mhouston@foley.com
`
`
`
`For PATENT OWNER:
`Gregory J. Gonsalves
`gonsalves@gonsalveslawfirm.com
`Bruce J. Barker
`bbarker@chsblaw.com
`Tarek Fahmi
`tarek.fahmi@ascendalaw.com
`
`
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`6