`IPR2014-00867
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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
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`FUJITSU SEMICONDUCTOR AMERICA, INC.
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`Petitioner
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`v.
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`ZOND, LLC
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`Patent Owner
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`U.S. Patent No. 6,853,142
`Claims 21, 24, 26-28, 31, 32, 37, 38
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`_____________________
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`Inter Partes Review Case No. 2014-00867
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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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`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 stay,
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`transfer, consolidation or termination, in part to protect patent owners from
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`harassment and in part for the Board to manage its own workload.
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` For the reasons stated below, Zond respectfully submits that the
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`proposed joinder should be denied as premature, and that any joinder should
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`only be granted if Fujitsu, by agreement or by order of the Board, is barred
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`from filing more petitions against the ‘142 patent: Fujitsu’s proposal does not
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`1 Excerpt from Committee Report 112-98, section “Post-Grant Proceedings.”
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`come close to solving the current problem, because its reserves for Fujitsu the
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`option to file additional petitions against the patent at issue (no. 6,853,142),
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`thereby adding to the problem. Nor does it address the parallel petitions filed
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`by Gillette, Renesas Electronics Corp. and others against the ‘142 patent, and
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`the additional petitions that are expected to arrive shortly. Therefore, Fujitsu’s
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`petition and proposed joinder create only the illusion of simplification. As
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`explained below, Fujitsu’s petition and motion serve only Fujitsu’s objective of
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`procuring an immediate stay of Zond’s infringement action against Fujitsu.
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`II. The Motion Does Not Address the Risk of Harassment by Other
`Petitions Contemplated By TSMC Against the ‘142 Patent
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`As explained below, Fujitsu copied Intel’s petition for the sole purpose
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`of obtaining an immediate stay of Zond’s infringement litigation against
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`Fujitsu in civil action number 1:13-cv-11634. Fujitsu therefore insists on
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`reserving the option to file additional petitions in the coming months against
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`the ‘142 patent, with its own arguments and new art.
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`Fujitsu is currently a defendant in an infringement suit before Judge
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`Young. This is not the suit mentioned in Fujitsu’s motion, in which Intel is
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`the defendant before a different judge. That suit was stayed three months ago
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`in view of Intel’s petitions for inter partes review. In the infringement action
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`against Fujitsu, Judge Young initially denied Fujitsu’s motion to stay because
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`Fujitsu had at that time not filed any petition for inter partes review: “The
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`motion to stay is denied as premature.”2 Judge Young made it quite clear that
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`if Fujitsu 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. But the present petition was
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`copied is just for purposes of procuring a stay. Fujitsu wants the option to file
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`its own petitions against the ‘142 with new arguments and art in the coming
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`months. For this reason, Fujitsu’s proposal to join the Intel proceedings but
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`2 Ex. B, Hearing Transcript, page 11.
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`3 Ex. B, Hearing Transcript, page 14, 17.
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`4 Ex. B, Hearing Transcript, page 6, 18.
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`5 Ex. B, Hearing Transcript, page 10.
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`still reserve the option to file even more petitions against Zond, is an abuse of
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`the 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
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`or a means to prevent market entry through repeated litigation
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`and administrative attacks on validity of a patent. Doing so
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`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
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`inefficiencies under its expanded procedural authority.6
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`Accordingly, joinder should only be allowed if Fujitsu 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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`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 ‘142 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 will
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`not agree to maintain the same schedule or to streamline briefing and
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`6 Excerpt from Committee Report 112-98 , section “Post-Grant Proceedings.”
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`discovery. Even worse, it appears that more petitions are forthcoming, as
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`some defendants have not yet filed petitions against every claim of the ‘142
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`patent, as the pattern suggests is their intent. Thus, the present motion to join
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`is premature since we have reason to believe that more copied petitions are
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`forthcoming against the ‘142 patent, and all parties to the copied petitions have
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`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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`Fujitsu’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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`Board decides which, if any claims to review, it is too soon to decide which
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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 ‘142 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
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`requested joinder is premature, and requests that any joinder should only be
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`granted if Fujitsu, by agreement or by order of the Board, is barred from filing
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`more petitions against the ‘142 patent.
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`Date: July 14, 2014
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`Respectfully submitted,
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`/Bruce Barker/
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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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`Excerpt From Committee Report 112-98
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`Excerpts From Hearing Before Judge Young on May 9, 2014
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`Excerpts From Hearing Before Judge Young on May 9, 2014
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`Patent No. 6,853,142
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`9
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`The Court:
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`H CH
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`MR. FITZPATRIcm —
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`Patent No. 6,853,142
`Patent No. 6,853,142
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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 and Cited Excerpts were served via email on July
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`14, 2014, on the attorneys for the Petitioner:
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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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`/ Bruce Barker/
`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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