Attorney Docket No
`IPR2014-00898
`110900-0004-657
`U.S. Patent No. 7,151,027
`UNITED STATES PATENT AND TRADEMARK OFFICE
`______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________
`
`MACRONIX INTERNATIONAL CO., LTD., MACRONIX ASIA LIMITED,
`MACRONIX (HONG KONG) CO., LTD., and MACRONIX AMERICA, INC.
`Petitioner
`
`v.
`
`SPANSION LLC
`Patent Owner
`______________
`
`Case IPR2014-00898
`Patent 7,151,027 B1
`______________
`
`Before the Honorable HOWARD B. BLANKENSHIP, DEBRA K. STEPHENS,
`KRISTEN L. DROESCH, JUSTIN T. ARBES, and RICHARD E. RICE, Administra-
`tive Patent Judges.
`
`PATENT OWNER SPANSION LLC’S OPPOSITION TO PETITIONERS’
`MOTION FOR JOINDER
`
`
`
`By: Attorneys for Patent Owner, Spansion LLC
`
`ROPES & GRAY LLP
`J. Steven Baughman (Lead Counsel)
`IPRM – Floor 43, Prudential Tower,
`Reg. No. 47,414
`800 Boylston Street
`Gabrielle E. Higgins (Backup Counsel)
`Boston, MA 02199-3600
`Reg. No. 38,916
`(202) 508-4606 (Telephone)
`(617) 235-9492 (Fax)
`
`
`
`
`
`
`
`
`
`
`IPR2014-00898
`110900-0004-657
`U.S. Patent No. 7,151,027
`UNITED STATES PATENT AND TRADEMARK OFFICE
`______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________
`
`MACRONIX INTERNATIONAL CO., LTD., MACRONIX ASIA LIMITED,
`MACRONIX (HONG KONG) CO., LTD., and MACRONIX AMERICA, INC.
`Petitioner
`
`v.
`
`SPANSION LLC
`Patent Owner
`______________
`
`Case IPR2014-00898
`Patent 7,151,027 B1
`______________
`
`Before the Honorable HOWARD B. BLANKENSHIP, DEBRA K. STEPHENS,
`KRISTEN L. DROESCH, JUSTIN T. ARBES, and RICHARD E. RICE, Administra-
`tive Patent Judges.
`
`PATENT OWNER SPANSION LLC’S OPPOSITION TO PETITIONERS’
`MOTION FOR JOINDER
`
`
`
`By: Attorneys for Patent Owner, Spansion LLC
`
`ROPES & GRAY LLP
`J. Steven Baughman (Lead Counsel)
`IPRM – Floor 43, Prudential Tower,
`Reg. No. 47,414
`800 Boylston Street
`Gabrielle E. Higgins (Backup Counsel)
`Boston, MA 02199-3600
`Reg. No. 38,916
`(202) 508-4606 (Telephone)
`(617) 235-9492 (Fax)
`
`
`
`
`
`
`
`
`
`
`
`IPR2014-00898
`U.S. Patent No. 7,151,027
`
`
`Attorney Docket No
`110900-0004-657
`
`Pursuant to Paper 4, Spansion LLC (“Patent Owner”) opposes Petitioners’ Mo-
`
`tion for Joinder (Paper 3) (“Motion,” or “Mot.”). Petitioners bear the burden to es-
`
`tablish their entitlement to joinder with IPR2014-00108 (37 C.F.R. §§ 42.20(c),
`
`42.122(b)), and must: (1) set forth the reasons why joinder is appropriate; (2) identify
`
`any new grounds of unpatentability asserted in the petition; (3) explain what impact (if
`
`any) joinder would have on the trial schedule for the existing review; and (4) address
`
`specifically how briefing and discovery may be simplified. See, e.g., IPR2013-00386,
`
`Paper 16 at 3-4; Frequently Asked Question (“FAQ”) H5, at http://www.uspto.gov/
`
`ip/boards/bpai/prps.jsp. As discussed below, however, Petitioners fail to establish
`
`that joinder would promote efficient resolution of the new unpatentability and prior
`
`art issues first raised in this later proceeding without substantially affecting the sched-
`
`ule for IPR2014-00108, and, on the schedule Petitioners propose, without substantial-
`
`ly prejudicing Patent Owner. Thus, Petitioners failed to satisfy their burden to show
`
`entitlement to joinder on the schedule Petitioners now urge, and Patent Owner re-
`
`spectfully requests either that joinder be granted only on the schedule and conditions
`
`specified below by Patent Owner, including continued coordination of the schedule in
`
`the joined matters with IPR2014-00105 to preserve the efficiencies established by the
`
`Board’s current schedule (see Section IV, infra), or that Petitioners’ request be denied.
`
`I.
`
`
`
`Statement of Material Facts
`
`As background omitted from Petitioners’ motion, Petitioners have known of
`
`1
`
`
`
`IPR2014-00898
`U.S. Patent No. 7,151,027
`
`their dispute with Patent Owner over U.S. Pat. No. 7,151,027 (the ‘027 Patent) and
`
`Attorney Docket No
`110900-0004-657
`
`five others1 since at least November 6, 2012.2 Between November 8 and 12, 2013,
`
`Petitioners filed six petitions for inter partes review of these patents (docketed as
`
`IPR2014-00103 to -00108). The Board denied institution of trial on two petitions
`
`(IPR2014-00106 and -00107), and, for the remaining four on which trial of at least
`
`some claims was instituted, established a common schedule. See IPR2014-00103, Pa-
`
`per 10; -00104, Paper 11; -00105, Paper 14; and -00108, Paper 17. In IPR2014-00108
`
`and -00105, Petitioners relied upon the same declarant, Dhaval J. Brahmbhatt, who is
`
`scheduled to be deposed next week, on July 2-3, for both proceedings.
`
`As to the ‘027 Patent, in IPR2014-00108 Petitioners asserted three different
`
`grounds under 35 U.S.C. § 103, attempting to invalidate claims 7 and 14. All of these
`
`were denied by the Board (see Paper 16), but Petitioners never raised the possibility of
`
`filing an additional petition or seeking joinder until, literally, the eve of the June 5,
`
`2014 initial conference call with the Board in IPR2014-00108 and the three other co-
`
`ordinated trials between the parties. Petitioners did not include any reference to a
`
`motion for joinder in their list of proposed motions, and did not mention this new
`
`1 These copending disputes involve U.S. Patent Nos. 6,369,416, 6,459,625, 6,731,536,
`
`6,900,124 and 7,018,922.
`
`2 See, e.g., Spansion LLC v. Macronix International Co., Ltd., No. 3:13-cv-03566 (N.D.
`
`Cal.), First Amended Complaint (Paper 11), ¶¶ 23-27.
`
`
`
`2
`
`
`
`IPR2014-00898
`U.S. Patent No. 7,151,027
`
`petition or any such request in a meet and confer with Patent Owner regarding the
`
`Attorney Docket No
`110900-0004-657
`
`parties’ proposed motions earlier that same day (June 4). Rather than raising any pos-
`
`sibility of joinder and appropriate schedule adjustments at the time of institution, Peti-
`
`tioners chose instead to wait and surprise both the Patent Owner and the Board.
`
`II.
`
`Petitioners Fail to Establish that Joinder is Appropriate In Light of the
`New Unpatentability and Prior Art Arguments Asserted Here
`
`The Petition in the instant proceeding raises numerous substantive issues that
`
`are not before the Board in the pending IPR2014-00108 trial. Petitioners (1) assert a
`
`new ground of unpatentability using two new references not asserted in the earlier
`
`proceeding (obviousness under § 103(a) over Yuzuriha, Tsukamoto, and Lin
`
`(MX027II-1003, -1004, and -1007); only Yuzuriha was before the Board in IPR2014-
`
`00108), and (2) assert five new prior art references overall (Tsukamoto, Lin, Wolf
`
`(MX027II-1008), Bergemont (MX027II-1010), and Rogers (MX027II-1011)), none of
`
`which are at issue in the existing proceeding. Petitioners’ suggestion that, because one
`
`of its five newly-asserted prior art references (Tsukamoto) was raised in the co-
`
`pending ITC investigation, Patent Owner should be assumed to require no further
`
`time to defend itself here in this IPR proceeding (Mot. 5), and under a different claim
`
`construction standard, is simply untenable. To begin with, this reference is among
`
`100+ prior art documents identified in the co-pending ITC proceeding. The notion
`
`that Patent Owner must stand ready to respond urgently to any belated assertion by
`
`Petitioners of any reference identified in parallel litigation is nonsensical. It is also be-
`
`
`
`3
`
`
`
`IPR2014-00898
`U.S. Patent No. 7,151,027
`
`lied by Petitioners’ own delay in filing their new petition here based on arguments Peti-
`
`Attorney Docket No
`110900-0004-657
`
`tioners now (erroneously) suggest have already been fully aired in the ITC (Mot. 5).
`
`In fact, the combination of references in Petitioners’ proposed new ground (Yuzuriha,
`
`Tsukamato and Lin) has not been specified or argued by Petitioners in the ITC, and
`
`four of the new references relied upon by Petitioners—either as part of the new 103(a)
`
`combination (i.e., Lin) or as purported “knowledge of those skilled in the art” (i.e.,
`
`Bergemont, Rogers and Wolf)3—have never been previously identified by Petitioners,
`
`and thus could not have been “ampl[y]” considered (Mot. 5) as Petitioners assert.
`
`And while Petitioners included a 36–page declaration from Mr. Brahmbhatt
`
`(MX027II-1002) who also testified in IPR2014-00108, they fail to explain how a “sin-
`
`gle” deposition of this declarant (Mot. 4) could be accomplished, given that he is cur-
`
`rently scheduled to be deposed next week in one location for both IPR2014-00108 and
`
`-00105, whose schedule the Board has synchronized with IPR2014-00108. This may
`
`3 Petitioners’ suggestion that these three other new references add no burden because
`
`“to the extent that additional references have been cited in the Second Petition, they
`
`are provided to show the knowledge of those skilled in the art” (Mot. 5) is, of course,
`
`specious—Petitioners deemed it necessary to rely upon them, and Patent Owner must
`
`now assess them like any other reference asserted against the challenged claims. See,
`
`e.g., Pet. at 5 (discussing Bergemont), 19 (citing Rogers), 23 (quoting Wolf); MX027II-
`
`1002 at ¶ 37 (discussing Bergemont), ¶ 56 (citing Wolf), ¶ 60 (citing Rogers).
`
`
`
`4
`
`
`
`IPR2014-00898
`U.S. Patent No. 7,151,027
`
`well have concluded by the time the Board decides the present motion, and in any
`
`Attorney Docket No
`110900-0004-657
`
`event Petitioners offer no suggestion how Patent Owner could be required to address
`
`issues from this new IPR2014-00898 proceeding before Patent Owner has even had
`
`an opportunity to submit its preliminary response (on July 16), and before the Board
`
`has determined whether to institute review at all (as well as whether any further claim
`
`construction issues may need to be addressed). At a minimum, the new opinions set
`
`forth in this proceeding by Petitioners’ declarant “would increase the amount of dis-
`
`covery (e.g., depositions) that would be required if joinder is permitted” (see IPR2013-
`
`00386, Paper 16 at 7 (denying joinder)) and would require additional travel to multiple
`
`depositions of Mr. Brahmbhatt even if the motion is decided and granted, unless the
`
`IPR2014-00105 proceeding (concerning the ‘536 patent) is also placed on a later
`
`schedule. In either case, Petitioners’ request would vitiate the efficiencies in the cur-
`
`rent common schedule for the four pending IPR proceedings as contemplated by the
`
`Board and negotiated by the parties.
`
`Finally, Petitioners also overlook that joinder is not required to reduce the bur-
`
`dens of the newer proceeding. As the Board has previously observed, “[w]hile our
`
`final decision in this proceeding may be informed by our analysis in the related pro-
`
`ceedings, our consideration of additional prior art in this proceeding can proceed in-
`
`dependently.” See CBM2014-00018, Paper 16 at 3.
`
`In sum, and as the Board’s decisions make clear, the new unpatentability argu-
`
`
`
`5
`
`
`
`IPR2014-00898
`U.S. Patent No. 7,151,027
`
`ments based on the five additional references raised in this new Petition weigh against
`
`Attorney Docket No
`110900-0004-657
`
`granting Petitioners’ motion for joinder, particularly on the timeline Petitioners have
`
`proposed. See, e.g., IPR2013-00386, Paper 16 (denying joinder where newer Petition
`
`included new grounds of unpatentability and five new references, and “fail[ed] to ex-
`
`plain adequately” the impact of the new issues on trial schedule in the existing pro-
`
`ceeding); CBM2014-00012, Paper 18 (denying joinder where newer Petition asserted
`
`“new arguments” for invalidity); CBM2014-00018, Paper 16 (denying joinder where
`
`newer Petition asserted prior art not under consideration in existing proceedings).
`
`III. Petitioners Fail to Establish that Joinder On their Proposed Schedule
`Would Promote Efficient Resolution of these Matters
`
`Joining the two Petitions would have a substantial impact on the trial schedule
`
`for the existing proceeding, and, as discussed below, a joined proceeding could not be
`
`properly accomplished on the revised schedule Petitioners propose. IPR2014-00108
`
`was filed more than seven months ago and is already well underway with deposition
`
`of Petitioners’ declarant scheduled for next week (July 2-3) in both the IPR2014-
`
`00108 and -00105 proceedings, and Patent Owner’s response due less than three
`
`weeks thereafter. IPR2014-00108, Paper 17. In the instant proceeding, Patent Own-
`
`er’s preliminary response is due July 16, 2014, after which the Board will need time to
`
`determine whether Petitioners’ new ground meets the threshold for review. Joinder,
`
`therefore, will necessarily require delaying the upcoming due dates in at least
`
`IPR2014-00108. And while Petitioners acknowledge the need for at least some addi-
`
`
`
`6
`
`
`
`IPR2014-00898
`U.S. Patent No. 7,151,027
`
`tional time in their proposed schedule, they fail to explain how the minimal additional
`
`Attorney Docket No
`110900-0004-657
`
`time they propose is adequate (see Section IV, infra), or to “address specifically” how
`
`briefing and discovery may be simplified or how joinder would minimize the impact
`
`on the current schedule in IPR2014-00108 (as well as IPR2014-00105, where Mr.
`
`Brahmbhatt has also testified). See, e.g., IPR2013-00386, Paper 16 (noting “substantial
`
`impact” on trial schedule for existing petition “filed more than seven months ago and
`
`[] already well underway, with at least one deposition conducted already,” and Peti-
`
`tioner’s failure to detail procedures to simplify discovery or minimize schedule im-
`
`pact). To the contrary, unless Patent Owner’s alternative proposal below is adopted,
`
`Petitioners’ choice to throw this late petition into the mix of four pending trials whose
`
`schedules the Board previously coordinated will, without question, add to the burden
`
`on Patent Owner and reduce efficiencies—imposing, as just one example, additional
`
`time and expense to travel to depose Mr. Brahmbhatt yet again, while the Board’s es-
`
`tablished schedule for the -00108 and -00105 proceedings had allowed the parties to
`
`schedule his depositions to occur together on July 2-3 at Petitioners’ counsel’s office.
`
`(Patent Owner’s counsel will be traveling to New York for these depositions.)
`
`In addition, while Petitioners acknowledge they identified one of the five new
`
`asserted references in co-pending ITC litigation (Mot. 4), this was at the end of
`
`2013—roughly a month after IPR2014-00108 was accorded a filing date. Notably,
`
`Petitioners provide no reason that they could not have asserted this prior art in anoth-
`
`
`
`7
`
`
`
`IPR2014-00898
`U.S. Patent No. 7,151,027
`
`er petition at that time, supplementing the three grounds they had already asserted
`
`Attorney Docket No
`110900-0004-657
`
`against claims 7 and 14, rather than delay until June to file the Petition in the instant
`
`proceeding. See, e.g., IPR2013-00386, Paper 16 (noting as an additional consideration
`
`in denying joinder Petitioners’ failure to provide reason for why they could not have
`
`asserted the prior art previously identified in co-pending litigation “in another petition
`
`at that time”). Again, Petitioners have failed to show that joinder on their proposed
`
`schedule would promote efficient resolution of these matters before the Board.
`
`IV. Any Joined Schedule Should be Extended by At Least 12 Weeks
`Petitioners’ proposed revised schedule (IPR2014-00108, Paper 21), submitted
`
`at the Board’s direction after Petitioners’ original motion, adds only about seven
`
`weeks to each of the original Due Dates in the existing -00108 proceeding. Patent
`
`Owner respectfully submits that is inadequate and would prejudice Patent Owner,
`
`forcing Patent Owner to bear the procedural burdens resulting from Petitioners’ de-
`
`lay. The proposed period between the Patent Owner’s preliminary response (July 16,
`
`2014) and Due Date 1 (September 8, 2014) would not allow the Board sufficient time
`
`to reach a decision on institution of trial and then permit Patent Owner sufficient time
`
`to conduct discovery and prepare its substantive response and potential motion to
`
`amend based on the Board’s decision, particularly while Patent Owner’s knowledgea-
`
`ble personnel and representatives are actively engaged in significant ongoing activity at
`
`the ITC, as well as in parallel trials (with ongoing discovery) before the Board. More-
`
`
`
`8
`
`
`
`IPR2014-00898
`U.S. Patent No. 7,151,027
`
`over, Petitioners’ proposed schedule sets the time between Due Date 2 and Due Date
`
`Attorney Docket No
`110900-0004-657
`
`3 to overlap with Thanksgiving and end-of-year holidays, further reducing the effec-
`
`tive time available for a key Patent Owner submission. To reduce the prejudice to Pa-
`
`tent Owner that would result from joinder, along with disruption to both the existing
`
`trials and this Proceeding, Patent Owner respectfully requests that the Board enter the
`
`following revised schedule in the event the Board determines to grant joinder here:
`
`
`
`Petitioners’ Proposed
`Revised Trial Schedule
`
`Patent Owner’s Pro-
`posed Revised Trial
`Schedule
`
`
`Because Petitioners’ decision to file the instant Petition some seven months after its
`
`original petition will otherwise disrupt the efficiencies made possible by the Board’s
`
`synchronizing of the instituted IPR2014-00108 trial with IPR2014-00105 (including,
`
`
`
`9
`
`Patent Owner Preliminary Response
`DUE DATE 1
`
`DUE DATE 2
`
`DUE DATE 3
`
`DUE DATE 4
`
`DUE DATE 5
`
`DUE DATE 6
`
`DUE DATE 7
`
`Statutory deadline for Final Written
`Opinion
`
`July 16, 2014
`July 21, 2014
`July 21, 2014
`September 8, 2014
`October 6, 2014
`October 6, 2014
`October 6, 2014
`November 24, 2014
`December 29, 2014
`November 5, 2014
`November 5, 2014
`December 23, 2014
`January 28, 2015
`November 26, 2014
`November 26, 2014
`January 14, 2015
`February 18, 2015
`December 10, 2014
`December 10, 2014
`January 28, 2015
`March 4, 2015
`December 17, 2014
`December 17, 2014
`February 4, 2015
`March 11, 2015
`January 13, 2015
`January 13, 2015
`March 3, 2015
`April 7, 2015
`May 8, 2015
`Not applicable in the case of joinder
`35 U.S.C. § 316(a)(11)
`
`
`
`IPR2014-00898
`U.S. Patent No. 7,151,027
`
`e.g., coordinated depositions in each proceeding), Patent Owner respectfully requests
`
`Attorney Docket No
`110900-0004-657
`
`that, if joinder is granted, the same schedule be adopted not only for IPR2014-00108,
`
`IPR2014-00898, but also, at least through Due Date 3, for IPR2014-00105. In the al-
`
`ternative, because separating these proceedings would, inter alia, require otherwise un-
`
`necessary travel by Patent Owner’s counsel to an additional deposition of Mr.
`
`Brahmbhatt beyond what the Board’s coordinated schedule with IPR2014-00105
`
`presently facilitates, Patent Owner respectfully requests that the resulting prejudice be
`
`at least partially mitigated by an order from the Board requiring Petitioners to bear the
`
`cost of presenting Mr. Brahmbhatt for deposition in the joined proceeding at a loca-
`
`tion convenient to Patent Owner.
`
`V.
`
`Conclusion
`
`For the reasons set forth above, Patent Owner respectfully requests that Peti-
`
`tioners’ motion for joinder of IPR2014-00108 with the instant proceeding be granted
`
`only upon the adoption of Patent Owner’s proposed revised schedule for each of
`
`IPR2014-00108, IPR2014-00898 and IPR2014-00105 (or, if the same schedule is not
`
`adopted for IPR2014-00105, that the Board at minimum order Petitioners to bear the
`
`cost of presenting Mr. Brahmbhatt for deposition in the joined proceeding at a loca-
`
`tion convenient to Patent Owner), and that Petitioners’ motion otherwise be denied.
`
`June 23, 2014
`
`
`
`
`
`
`Respectfully submitted,
`
`/
`By /J. Steven Baughman
`J. Steven Baughman, Lead Counsel
`
`
`
`10
`
`
`
`IPR2014-00898
`U.S. Patent No. 7,151,027
`
`
`Attorney Docket No
`110900-0004-657
`
`CERTIFICATE OF SERVICE
`
`
`
`The undersigned hereby certifies that a copy of PATENT OWNER SPAN-
`
`SION LLC’S OPPOSITION TO PETITIONERS’ MOTION FOR JOINDER has
`
`been served in its entirety by filing aforementioned document through the Patent Re-
`
`view Processing System, as well as delivering a copy via United States Express Mail,
`
`Mailing Label Nos. EF 003 033 918 US and EF 003 033 921 US, upon the following
`
`attorneys of record for the Petitioner listed below:
`
`Lead Counsel:
`
`Michael M. Murray (Reg.# 32,537)
`WINSTON & STRAWN LLP
`200 Park Ave.
`New York, NY 10166-4193
`Telephone: (212) 294-3325
`Fax: (202) 282-5100
`Back-up Counsel: Andrew R. Sommer (Reg. #53,932)
`WINSTON & STRAWN LLP
`1700 K Street NW
`Washington, D.C. 20006-3817
`Telephone: (202) 282-5896
`Fax: (202) 282-5100
`
`
`
`
`Dated:
`
`June 23, 2014
`
`/Ginny Blundell/
`
`
`
`
`ROPES & GRAY LLP
`
`
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