`Trials@uspto.gov
`571-272-7822
`
` Entered: October 17, 2014
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`THE GILLETTE COMPANY,
`Petitioner,
`
`v.
`
`ZOND, LLC,
`Patent Owner.
`____________
`
`Cases IPR2014-00972
`Patent 7,604,716 B2
`____________
`
`
`
`
`Before KEVIN F. TURNER, DEBRA K. STEPHENS, JONI Y. CHANG,
`SUSAN L.C. MITCHELL, and JENNIFER M. MEYER,
`Administrative Patent Judges.
`
`
`MEYER, Administrative Patent Judge.
`
`DECISION
`Granting Revised Motion for Joinder
`37 C.F.R. § 42.122
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`IPR2014-00972
`Patent 7,604,716 B2
`
`
`
`
`
`
`INTRODUCTION
`
`The Gillette Company (“Gillette”) filed a Petition requesting inter
`
`partes review of claims 1–11 and 33 of U.S. Patent No. 7,604,716 B2
`
`(Ex. 1001, “the ’716 patent”). Paper 1 (“Pet.”). Pursuant to 37 C.F.R.
`
`§ 42.122(b), Gillette also filed a revised Motion for Joinder, seeking to join
`
`the instant proceeding with GLOBALFOUNDRIES U.S., INC., v. Zond,
`
`LLC., Case IPR2014-01099 (PTAB) (“IPR2014-01099”). Paper 10
`
`(“Mot.”).
`
`GLOBALFOUNDRIES U.S., Inc., GLOBALFOUNDRIES Dresden
`
`Module One LLC & Co. KG, and GLOBALFOUNDRIES Dresden Module
`
`Two LLC & Co. KG (collectively, “GlobalFoundries”), the Petitioner in
`
`IPR2014-01099, does not oppose Gillette’s revised Motion for Joinder.
`
`Mot. 2. Patent Owner, Zond, LLC (“Zond”), filed a Preliminary Response
`
`to the Petition (Paper 7, “Prelim. Resp.”), and an Opposition to Gillette’s
`
`revised Motion for Joinder (Paper 11, “Opp.”). In a separate decision, we
`
`institute inter partes review as to the same claims on the same ground of
`
`unpatentability for which we instituted trial in IPR2014-01099. For the
`
`reasons set forth below, Gillette’s revised Motion for Joinder is granted.
`
`ANALYSIS
`
`The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat.
`
`284 (2011) (“AIA”) permits joinder of like review proceedings. The Board,
`
`acting on behalf of the Director, has the discretion to join an inter partes
`
`review with another inter partes review. See 35 U.S.C. § 315(c). Joinder
`
`may be authorized when warranted, but the decision to grant joinder is
`
`discretionary. 35 U.S.C. § 315(c); 37 C.F.R. § 42.122. When exercising its
`
`
`
`2
`
`
`
`IPR2014-00972
`Patent 7,604,716 B2
`
`
`
`
`
`
`discretion, the Board is mindful that patent trial regulations, including the
`
`rules for joinder, must be construed to secure the just, speedy, and
`
`inexpensive resolution of every proceeding. See 35 U.S.C. § 316(b);
`
`37 C.F.R. § 42.1(b). The Board considers the impact of both substantive
`
`issues and procedural matters on the proceedings.
`
`As the moving party, Gillette bears the burden to show that joinder is
`
`appropriate. 37 C.F.R. §§ 42.20(c), 42.122(b). In its revised Motion for
`
`Joinder, Gillette contends that joinder, in this particular situation, is
`
`appropriate because: (1) “it is the most expedient way to secure the just,
`
`speedy, and inexpensive resolution of the related proceedings” (Mot. 5);
`
`(2) Gillette’s Petition is substantively identical to GlobalFoundries’s Petition
`
`filed in IPR2014-01099 (id. at 5–6); (3) Gillette agrees to consolidated
`
`filings and discovery (id. at 6–7); (4) joinder would not affect the schedule
`
`in IPR2014-01099 (id. at 7); (5) joinder would streamline the proceedings,
`
`reduce the costs and burdens on the parties, and increase efficiencies for the
`
`Board without any prejudice to Zond (id. at 8).
`
`We agree that the substantive issues in IPR2014-01099 would not be
`
`affected by joinder, because Gillette’s Petition is substantively identical to
`
`GlobalFoundries’s Petition filed in IPR2014-01099. Notably, Gillette’s
`
`Petition asserts identical grounds of unpatentability, challenging the same
`
`claims of the ’716 patent. Compare Pet. 15–58, with IPR2014-01099,
`
`Paper 1 (“’1099 Pet.”), 15–60. Gillette also submits identical proposed
`
`claim constructions, as well as the same Declaration of Dr. Uwe Kortshagen.
`
`Compare Pet. 11–15, with ’1099 Pet. 11–15; compare Ex. 1002, with ’1099
`
`Ex. 1002. Moreover, we institute the instant trial based on the same ground
`
`for which we instituted trial in IPR2014-01099. Therefore, Gillette’s
`
`
`
`3
`
`
`
`IPR2014-00972
`Patent 7,604,716 B2
`
`
`
`
`
`
`Petition raises no new issues beyond those already before us in IPR2014-
`
`01099.
`
`In its Opposition, Zond indicates that it is not opposed to joinder.
`
`Opp. 1. Rather, Zond proposes a procedure for the joined proceeding to
`
`consolidate the schedule, filings, and discovery. Opp. 2–3.
`
`We agree with the parties that conducting a single joined proceeding
`
`for reviewing claims 1–11 and 33 of the ’716 patent is more efficient than
`
`conducting multiple proceedings, eliminating duplicate filings and
`
`discovery. As previously indicated, Gillette agrees to consolidated filings
`
`for all substantive papers. Mot. 6. Gillette further indicates that it will not
`
`file any paper with arguments separate from those advanced by the
`
`consolidated filings, eliminating duplicate briefing. Id. Gillette further
`
`agrees to consolidated discovery, as each Petitioner proffers the same
`
`Declaration of Dr. Kortshagen. Id. at 6–7. Gillette indicates that Petitioners
`
`collectively will designate an attorney to conduct the cross-examination of
`
`any witnesses produced by Zond and the redirect of any witnesses produced
`
`by Petitioners, within the timeframe normally allotted by the rules for one
`
`party. Id. at 7. Moreover, joinder will not require any change to the trial
`
`schedule in IPR2014-01099, allowing the trial still to be completed within
`
`one year. Id. Given that Gillette’s Petition raises no new issues, and
`
`Petitioners agree to consolidated filings and discovery, the impact of joinder
`
`on IPR2014-01099 will be minimal, and joinder will streamline the
`
`proceedings, reducing the costs and burdens on the parties and the Board.
`
`For the foregoing reasons, Gillette has met its burden of
`
`demonstrating that joinder of the instant proceeding with IPR2014-01099 is
`
`warranted under the circumstances.
`
`4
`
`
`
`
`
`IPR2014-00972
`Patent 7,604,716 B2
`
`
`Accordingly, it is:
`
`
`
`ORDER
`
`
`
`ORDERED that Gillette’s Motion for Joinder with IPR2014-01099 is
`
`granted;
`
`FURTHER ORDERED that the instant proceeding is joined with
`
`IPR2014-01099;
`
`FURTHER ORDERED that the grounds of unpatentability on which a
`
`trial was instituted in IPR2014-01099 are unchanged;
`
`FURTHER ORDERED that the Scheduling Order for IPR2014-01099
`
`(Paper 10) shall govern the joined proceeding; the initial conference call for
`
`the joined proceeding is scheduled on November 20, 2014 at 2:00 PM ET;
`
`FURTHER ORDERED that the instant proceeding is instituted,
`
`joined, and terminated under 37 C.F.R. § 42.72, and all further filings in the
`
`joined proceeding shall be made only in IPR2014-01099;
`
`FURTHER ORDERED that, throughout IPR2014-01099, Petitioners
`
`(GlobalFoundries and Gillette) will file papers, except for motions which do
`
`not involve the other parties, as consolidated filings1; GlobalFoundries will
`
`identify each such filing as a consolidated filing and will be responsible for
`
`completing all consolidated filings; the page limits set forth in 37 C.F.R.
`
`§ 42.24 will apply to all consolidated filings; no individual Petitioner will
`
`receive any additional pages in addition to the page limits set forth in
`
`37 C.F.R. § 42.24 for one party;
`
`
`1 The parties are directed to the Board’s website, in particular FAQs C3, D5,
`and G8, for information regarding filings in the Patent Review Processing
`System (PRPS). See http://www.uspto.gov/ip/boards/bpai/prps.jsp.
`
`
`
`5
`
`
`
`IPR2014-00972
`Patent 7,604,716 B2
`
`
`
`
`
`
`FURTHER ORDERED that Zond will conduct the cross-examination
`
`of witnesses, as well as the redirect examination of any witness it produces,
`
`in the timeframes set forth in 37 C.F.R. § 42.53(c);
`
`FURTHER ORDERED that Petitioners collectively will designate
`
`attorneys to conduct the cross-examination of any witnesses produced by
`
`Zond and the redirect examination of any witnesses produced by Petitioners,
`
`within the timeframes set forth in 37 C.F.R. § 42.53(c) for one party; no
`
`individual Petitioner will receive any cross-examination or redirect
`
`examination time in addition to the time normally allotted by 37 C.F.R.
`
`§ 42.53(c) for one party;
`
`FURTHER ORDERED that Petitioners collectively will designate
`
`attorneys to present at the oral hearing (if requested) as a consolidated
`
`presentation;
`
`FURTHER ORDERED that the case caption in IPR2014-01099 shall
`
`be changed to reflect the joinder with the instant proceeding in accordance
`
`with the attached example; and
`
`FURTHER ORDERED that a copy of this Decision be entered into
`
`the file of IPR2014-01099.
`
`
`
`
`
`6
`
`
`
`IPR2014-00972
`Patent 7,604,716 B2
`
`
`For PETITIONER:
`
`
`
`
`
`Michael Diener
`Larissa Park
`WILMER CUTLER PICKERING HALE AND DORR LLP
`michael.diener@wilmerhale.com
`larissa.park@wilmerhale.com
`
`
`
`For PATENT OWNER:
`
`Bruce J. Barker
`CHAO HADIDI STARK & BARKER LLP
`bbarker@chsblaw.com
`
`Gregory J. Gonsalves
`gonsalves@gonsalveslawfirm.com
`
`
`
`
`
`7
`
`
`
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`
`GLOBALFOUNDRIES U.S., INC., GLOBAL FOUNDRIES DRESDEN
`MODULE ONE LLC & CO. KG, GLOBALFOUNDRIES DRESDEN
`MODULE TWO LLC & CO. KG, and THE GILLETTE COMPANY,
`Petitioner,
`
`v.
`
`ZOND, LLC,
`Patent Owner.
`____________
`
`Case IPR2014-010991
`Patent 7,604,716 B2
`____________
`
`
`1 Case IPR2014-00972 has been joined with the instant proceeding.
`
`
`
`