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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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`
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`MACRONIX INTERNATIONAL CO., LTD., MACRONIX ASIA LIMITED,
`MACRONIX (HONG KONG) CO., LTD. and MACRONIX AMERICA, INC.
`Petitioners
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`v.
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`SPANSION LLC
`Patent Owner
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`
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`Case: IPR2014-00898
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`
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`MOTION FOR JOINDER TO RELATED INSTITUTED
`INTER PARTES REVIEW UNDER 37 C.F.R. § 42.122(B)
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`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`PO Box 1450
`Alexandria, Virginia 22313–1450
`Submitted Electronically via the Patent Review Processing System
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`1
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`Macronix International Co., Ltd., Macronix Asia Limited, Macronix (Hong
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`Kong) Co., Ltd., and Macronix America, Inc. (collectively “Petitioners”) file this
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`Motion for Joinder of the Petition for Inter Partes Review of Claims 7 and 14 of
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`U.S. Patent No. 7,151,027 (“Second Petition”), with the instituted inter partes
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`review, Macronix International Co., Ltd., et al. v. Spansion LLC, No. IPR2014-
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`00108 (“IPR2014-00108”), pursuant to 35 U.S.C. § 315(c) and 37 C.F.R. §
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`42.122(b).
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`No fee is required for consideration of this Motion. Petitioners have paid the
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`fee for IPR2014-00108, and are submitting herewith the fee for this Second
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`Petition.
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`I.
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`APPLICABLE RULES
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`The rule permitting joinder of proceedings, 37 C.F.R. § 42.l22(b) states:
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`Request for joinder. Joinder may be requested by a patent owner or
`petitioner. Any request for joinder must be filed, as a motion under §
`42.22, no later than one month after the institution date of any inter
`partes review for which joinder is requested. The time period set forth
`in § 42.101(b) shall not apply when the petition is accompanied by a
`request for joinder.
`II. RELIEF REQUESTED
`Petitioners request that the Second Petition be joined with IPR2014-00108.
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`2
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`III. STATEMENT OF MATERIAL FACTS
`[1] On November 8, 2013 Petitioners filed a first petition for inter partes
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`review of U.S. Patent No. 7,151,027 (“the ’027 Patent”). That petition was
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`assigned number IPR2014-00108. In that Petition, Petitioner requested institution
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`of inter partes review of all claims (claims 1-14) of the ’027 Patent.
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`[2] There is pending litigation before the United States International
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`Trade Commission involving the ’027 Patent. A Markman hearing has been held,
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`expert reports have been exchanged, and expert depositions have occurred. One of
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`the secondary references relied on in the accompanying Petition, U.S. Patent
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`Application No. 2003/0042520 was raised by Respondents in that investigation in
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`their expert reports as a basis for invalidating certain claims of the ’027 Patent.
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`Trial is currently scheduled in that matter for October 2014.
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`[3] On May 8, 2014, the Board instituted trial on claims 1-6 and 8-13 of
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`the ’027 Patent based on the following grounds:
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`a. Claims 1-4 and 8-10 under 35 U.S.C. § 102(b) as anticipated by
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`Yuzuriha;
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`b. Claims 5, 11, and 12 under 35 U.S.C. § 103(a) as obvious over
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`Yuzuriha in view of Shukuri; and
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`c. Claims 6 and 13 under 35 U.S.C. § 103(a) as unpatentable over
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`Yuzuriha in view of Nakagawa.
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`3
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`[4] The Board found that Petitioners had not established, based on the
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`record presented, that claims 7 and 14 are (1) anticipated by Nakagawa, (2)
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`obvious over Yuzuriha and Nakagawa, or (3) obvious over Shukuri and Nakagawa.
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`The Board denied other grounds for trial as being redundant.
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`[5] An initial conference call is currently scheduled for 10 AM on June 5,
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`2014 in IPR2014-00108, as well as several other co-pending trials between the
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`parties.
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`[6] Concurrently with this Motion, Petitioners are filing their Second
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`Petition, challenging claims 7 and 14 using Yuzuriha as the base reference for the
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`obviousness challenge presented in the Second Petition.
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`IV. ARGUMENT
`The Board has the authority under 35 U.S.C. § 315(c) to join a properly-filed
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`second inter partes review petition to an instituted inter partes review proceeding.
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`This request for joinder is timely filed under 37 C.F.R. § 42.122(b).
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`The Second Petition involves the same parties—Petitioners and Spansion—
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`and the same patent. The Second Petition relies on a declaration by the same
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`declarant as that presented in connection with IPR2014-00108 such that a single
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`deposition of the declarant can occur in this proceeding. The Second Petition
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`further adopts the Yuzuriha reference as the primary reference in an obviousness
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`challenge so as to keep the issues narrow for the purposes of a joined proceeding.
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`4
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`Moreover, the Second Petition relies on U.S. Patent Application Publication No.
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`2003/0042520 to Tsukamoto et al. (hereafter “Tsukamoto”) which has been raised
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`by Respondents in co-pending litigation before the ITC.
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`Since expert reports have been exchanged and expert depositions have
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`occurred, Patent Owner has had ample time to consider both Yuzuriha and
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`Tsukamoto and their combined teachings in developing its litigation positions in
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`response to Petitioners’ positions regarding validity in the co-pending ITC
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`litigation. To the extent that additional references have been cited in the Second
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`Petition, they are provided to show the knowledge of those skilled in the art and
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`should not present positions that surprise Patent Owner. Finally, the independent
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`claims from which claims 7 and 14 depend are already involved in a just-instituted
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`trial such that considering dependent claims 7 and 14 in a joined proceeding would
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`assist in securing the “just, speedy, and inexpensive resolution” of both IPR2014-
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`00108 and the Second Petition.
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`V. CONCLUSION
`For the foregoing reasons joinder of IPR2014-00108 with Petitioners’
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`Second Petition is respectfully requested.
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`5
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`Respectfully submitted,
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`/Andrew R. Sommer/
`Michael M. Murray
`Reg. No. 32,537
`Andrew R. Sommer
`Reg. No. 53,932
`Counsel for Petitioners
`Macronix International Co., Ltd.,
`Macronix Asia Limited, Macronix
`(Hong Kong) Co., Ltd., and Macronix
`America, Inc.
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`Dated: June 4, 2014
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`
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`
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`WINSTON & STRAWN LLP
`200 Park Ave.
`New York, NY 10166
`Telephone: (212) 294-3325
`Fax: (202) 282-5100
`mmurray@winston.com
`
`1700 K Street NW
`Washington, DC 20006
`Telephone: (202) 282-5896
`Fax: (202) 282-5100
`asommer@winston.com
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`
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`6
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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 on June
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`4, 2014, I caused to be served a true and correct copy of the foregoing “MOTION
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`FOR JOINDER TO RELATED INSTITUTED INTER PARTES REVIEW
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`UNDER 37 C.F.R. § 42.122(B)” by EXPRESS MAIL on the Patent Owner at the
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`correspondence address of record for U.S. Patent No. 7,151,027, as follows:
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`Spansion LLC
`c/o Murabito, Hao, & Barnes, LLP
`2 North Market Street
`Third Floor
`San Jose, CA 95113
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` A
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` courtesy copy was also served by email on counsel of record in IPR2014-
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`Respectfully submitted,
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`/Andrew R. Sommer/
`Andrew R. Sommer (Reg. No.
`53,932)
`Counsel for Petitioners
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`00108.
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`Dated: June 4, 2014
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`
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`
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`WINSTON & STRAWN LLP
`1700 K Street NW
`Washington, DC 20006
`Telephone: (202) 282-5896
`Fax: (202) 282-5100
`asommer@winston.com
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