`
`
`
`
`
`Paper No. __
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`THE GILLETTE COMPANY,
`
`Petitioner
`
`v. ZOND, INC.,
`
`Patent Owner
`
`Case IPR2014-00985
`
`U.S. PATENT NO. 7,147,759
`
`CLAIMS 20, 21, 34-36, 38, 39, 47 and 49
`
`Title: High-Power Pulsed Magnetron Sputtering
`
`
`
`PETITIONER’S RENEWED MOTION FOR JOINDER
`UNDER 35 U.S.C. § 315(c) AND 37 C.F.R. § 42.22 AND § 42.122(b)
`
`
`ActiveUS 136291211v.1
`
`
`
`
`I.
`
`INTRODUCTION
`
`Petitioner's Renewed Motion for Joinder (IPR2014-00985)
`
`
`The Gillette Company and Procter & Gamble, Inc. (collectively, “Gillette”)
`
`filed the present petition for inter partes review IPR2014-00985 (the “Gillette IPR”),
`
`and moves for joinder of the Gillette IPR with IPR2014-00781 (the “TSMC IPR”),
`
`filed by Taiwan Semiconductor Manufacturing Company, LTD. and TSMC North
`
`America Corp. (“TSMC”). The Gillette IPR is identical to the TSMC IPR in all
`
`substantive respects, includes identical exhibits, and relies upon the same expert
`
`declarant. TSMC does not oppose this motion.
`
`II. BACKGROUND AND RELATED PROCEEDINGS
`The Gillette IPR and TSMC IPR are among a family of inter partes review
`
`proceedings relating to patents that are being asserted by Zond against numerous
`
`defendants in the District of Massachusetts: 1:13-cv-11570-RGS (Zond v. Intel
`
`Corp.); 1:13-cv-11577-LTS (Zond v. AMD, Inc., et al.); 1:13-cv-11581-DJC (Zond v.
`
`Toshiba Am. Elec. Comp. Inc.); 1:13-cv-11625-NMG (Zond v. Renesas Elec. Corp.);
`
`1:13-cv-11634-WGY (Zond v. Fujitsu Semiconductor Ltd., et al. and Taiwan
`
`Semiconductor Mfg. Co.); 1:14-cv-12438-WGY (Zond v. Fujitsu Semiconductor Ltd.
`
`et al. and Taiwan Semiconductor Mfg. Co.); and 1:13-cv-11567-DJC (Zond v. The
`
`Gillette Co., et al.).
`
`
`ActiveUS 136291211v.1
`
`2
`
`
`
`
`
`Petitioner's Renewed Motion for Joinder (IPR2014-00985)
`
`
`In particular, a first complaint in 1:13-cv-11634-WGY (Zond v. Fujitsu) was
`
`filed against TSMC on July 9, 2013, a second complaint in 1:14-cv-12438-WGY
`
`(Zond v. Fujitsu) was filed against TSMC on June 10, 2014, and a first complaint in
`
`1:13-cv-11567-DJC (Zond v. Gillette) was served on Gillette on July 2, 2013. In its
`
`complaint, Zond alleges Gillette infringes ten of Zond’s patents, nine of which
`
`overlap with the patents Zond alleges TSMC of infringing, namely, U.S. Patent No.
`
`6,805,779 B2, U.S. Patent No. 6,806,652 B1, U.S. Patent No. 6,853,142 B2, U.S.
`
`Patent No. 7,147,759 B2, U.S. Patent No. 7,604,716 B2, U.S. Patent No. 7,808,184
`
`B2, U.S. Patent No. 7,811,421 B2, U.S. Patent No. 6,896,773 B2 and U.S. Patent No.
`
`6,896,775 B2. (the “Overlapping Patents”).1
`
`Currently, inter partes review petitions are pending which relate to the
`
`Overlapping Patents and involve TSMC and Gillette. All petitions for inter partes
`
`
`1
`Gillette also has filed two petitions for an inter partes review of an additional
`
`patent asserted by Zond against Gillette. See IPR2014-00477 and IPR2014-00479
`
`(U.S. Patent No. 8,125,155). Gillette does not seek joinder of these petitions, nor
`
`does it seek joinder of its IPR2014-00580 and IPR2014-00726 (U.S. Patent No.
`
`6,896,773 B2) petitions or its IPR2014-00578 and IPR2014-00604 (U.S. Patent No.
`
`6,896,775 B2) petitions with TSMC’s corresponding petitions.
`
`
`ActiveUS 136291211v.1
`
`3
`
`
`
`
`review that have been filed by TSMC and Gillette are timely as prescribed by 35
`
`Petitioner's Renewed Motion for Joinder (IPR2014-00985)
`
`
`U.S.C. § 315(b).
`
`In addition to this motion, Gillette is moving for joinder of each of its Zond
`
`IPR petitions with the corresponding petitions first filed by TSMC2, subject to the
`
`same conditions sought by this motion. TSMC does not oppose the Gillette motions.
`
`In its May 29, 2014 Order (Paper 5) in IPR2014-00781 and IPR2014-00782,
`
`the Board stated that prior authorization for filing a motion for joinder is not required
`
`if sought within one month of the institution date of any inter partes review for
`
`which joinder is requested. See 37 C.F.R. § 42.122(b). Inasmuch as the TSMC IPR
`
`has not yet been instituted, this motion is, therefore, timely.
`
`Since the May 29, 2014 Order, petitioners Intel, Gillette, TSMC, Fujitsu
`
`Semiconductor Ltd. (“Fujitsu”), GlobalFoundries, Inc. (“GlobalFoundries”), AMD,
`
`Inc. (“AMD”), Renesas Elec. Corp. (“Renesas”) and Toshiba Am. Elec. Comp. Inc.
`
`(“Toshiba”) have completed their filings of substantially the same IPR petitions as
`
`the TSMC IPR petitions, including the TSMC IPR. A conference call with the
`
`Board was held on Monday, August 4, 2014 to discuss TSMC’s pending motion.
`
`The Board issued an order on August 5, 2014 (Paper 13, Case IPR2014-00443),
`
`
`2 The Appendix contains a list of these petitions.
`
`
`ActiveUS 136291211v.1
`
`4
`
`
`
`
`requesting all petitioners to file motions for joinder within 10 days of the order.
`
`Petitioner's Renewed Motion for Joinder (IPR2014-00985)
`
`
`Gillette subsequently filed a motion for joinder with a corresponding Intel IPR. Intel
`
`subsequently terminated its corresponding IPR proceeding. On Tuesday, September
`
`16, 2014, the Board issued a subsequent paper requesting renewed joinder motions
`
`within five business days.
`
`III. DISCUSSION
`If the Director institutes an inter partes review on the TSMC IPR, Gillette
`
`respectfully requests that the Board exercise its discretion to grant joinder of the
`
`Gillette IPR pursuant to 35 U.S.C. § 315(c), 37 C.F.R. § 42.22, and 37 C.F.R.
`
`§ 42.122(b). In support of this motion, Gillette proposes consolidated filings and
`
`other procedural accommodations designed to streamline the proceedings.
`
`A. Reasons Why Joinder Is Appropriate
`Joinder is appropriate because it is the most expedient way to secure the just,
`
`speedy and inexpensive resolution of the related proceedings. See 35 U.S.C.
`
`§ 316(b); 37 C.F.R. § 42.1(b). The Gillette IPR is substantively identical to the
`
`corresponding TSMC IPR in an effort to avoid multiplication of issues before the
`
`Board. Given the duplicative nature of these petitions, joinder of the related
`
`proceedings is appropriate. Further, Gillette agrees to consolidated filings and
`
`discovery.
`
`
`ActiveUS 136291211v.1
`
`5
`
`
`
`
`
`Petitioner's Renewed Motion for Joinder (IPR2014-00985)
`
`
`Substantively Identical Petitions
`
`1.
`Gillette represents that the Gillette IPR is identical to the TSMC IPR in all
`
`substantive respects. It includes identical grounds, analysis, and exhibits and relies
`
`upon the same expert declarant and declaration. Accordingly, if instituted,
`
`maintaining the Gillette IPR proceeding separate from that of TSMC would entail
`
`needless duplication of effort.
`
`Consolidated Filings and Discovery
`
`2.
`Because the grounds of unpatentability in the Gillette IPR and TSMC IPR are
`
`the same, the case is amenable to consolidated filings. Gillette agrees to
`
`consolidated filings for all substantive papers (e.g., Reply to the Patent Owner’s
`
`Response, Opposition to Motion to Amend, Motion for Observation on Cross
`
`Examination Testimony of a Reply Witness, Motion to Exclude Evidence,
`
`Opposition to Motion to Exclude Evidence and Reply). Specifically, Gillette agrees
`
`to incorporate its filings with those of TSMC in a consolidated filing, subject to the
`
`ordinary page limits for one party. TSMC and Gillette will be jointly responsible for
`
`the consolidated filings.
`
`Gillette agrees not to make arguments separate from those it advances jointly
`
`with TSMC in the consolidated filings. This agreement thus avoids lengthy and
`
`duplicative briefing.
`
`
`ActiveUS 136291211v.1
`
`6
`
`
`
`
`
`Petitioner's Renewed Motion for Joinder (IPR2014-00985)
`
`
`Consolidated discovery is also appropriate given that Gillette and TSMC are
`
`using the same expert declarant who has submitted an identical declaration in the two
`
`proceedings. Gillette and TSMC will designate an attorney to conduct the cross-
`
`examination of any witness produced by Zond and the redirect of any witness
`
`produced by Gillette or TSMC within the timeframe normally allotted by the rules
`
`for one party. Gillette and TSMC will not receive separate cross-examination or
`
`redirect time.
`
`Gillette will agree to the foregoing conditions regarding consolidated filings
`
`and discovery even in the event other IPRs filed by other, third-party petitioners are
`
`joined with the TSMC IPR.
`
`B. No New Grounds of Unpatentability
`The Gillette IPR raises no new grounds of unpatentability from those of the
`
`TSMC IPR because the petitions are identical.
`
`C. No Impact on IPR Trial Schedule
`The small difference between the filing date of the TSMC IPR and the Gillette
`
`IPR is without consequence should the proceedings be joined. The trial schedule for
`
`the TSMC IPR would not need to be delayed to effect joinder. The joint proceeding
`
`would allow the Board and the parties to focus on the merits in one consolidated
`
`proceeding in a timely manner.
`
`ActiveUS 136291211v.1
`
`7
`
`
`
`
`
`Petitioner's Renewed Motion for Joinder (IPR2014-00985)
`
`
`D. Briefing and Discovery Will Be Simplified
`Joinder will simplify briefing and discovery because Gillette seeks an order
`
`similar to that issued in Motorola Mobility LLC v. Softview LLC, IPR2013-00256
`
`(PTAB June 20, 2013) (Paper 10). As discussed above, Gillette and TSMC will
`
`engage in consolidated filings and discovery, which will simplify the briefing and
`
`discovery process.
`
`E. No Prejudice to Zond If Proceedings Are Joined
`Zond will suffer no prejudice if the proceedings are joined. In fact, joinder
`
`will decrease the number of papers the parties must file, reduce the time and expense
`
`for depositions and other discovery required in separate proceedings, and creates
`
`case management efficiencies for the Board and parties.
`
`IV. PROPOSED ORDER
`Petitioner proposes a joinder order for consideration by the Board as follows,
`
`which TSMC does not oppose:
`
`
`
`If review is instituted on any ground in the TSMC IPR, the Gillette IPR
`
`will be instituted and will be joined with the TSMC IPR on the same
`
`grounds. Grounds not instituted because of any finding that the TSMC
`
`IPR failed to establish a reasonable likelihood of prevailing, if any, will
`
`be similarly denied in the Gillette IPR.
`
`
`ActiveUS 136291211v.1
`
`8
`
`
`
`
`
`
`
`
`
`Petitioner's Renewed Motion for Joinder (IPR2014-00985)
`
`
`The scheduling order for the TSMC IPR will apply for the joined
`
`proceeding.
`
`Throughout the proceeding, TSMC and Gillette will file papers as
`
`consolidated filings, except for motions that do not involve the other
`
`party, in accordance with the Board’s established rules regarding page
`
`limits for one party. So long as they both continue to participate in the
`
`merged proceeding, TSMC and Gillette will identify each such filing as
`
`a consolidated filing and will be responsible for completing all
`
`consolidated filings.
`
`
`
`TSMC and Gillette will designate an attorney to conduct the cross
`
`examination of any witness produced by Zond and the redirect of any
`
`witness produced by TSMC or Gillette within the timeframe normally
`
`allotted by the rules for one party. TSMC and Gillette will not receive
`
`any separate cross-examination or redirect time.
`
`
`
`Zond will conduct any cross-examination of any given witness jointly
`
`produced by TSMC or Gillette and the redirect of any given witness
`
`produced by Zond within the timeframe normally allotted by the rules
`
`for one cross-examination or redirect examination.
`
`
`ActiveUS 136291211v.1
`
`9
`
`
`
`Petitioner's Renewed Motion for Joinder (IPR2014-00985)
`
`
`
`V. CONCLUSION
`For the foregoing reasons, if the Director institutes inter partes review of the
`
`TSMC IPR, Gillette respectfully requests that the Board grant joinder of the Gillette
`
`IPR and TSMC IPR proceedings.
`
`
`
`
`
`
`ActiveUS 136291211v.1
`
`10
`
`
`
`
`
`Petitioner's Renewed Motion for Joinder (IPR2014-00985)
`
`
`Respectfully submitted,
`
`_/Larissa B. Park /_________
`Larissa B. Park
`Reg. No. 59,051
`
`Back-up Counsel for Petitioner
`
`WILMER CUTLER PICKERING
` HALE AND DORR LLP
`60 State Street
`Boston, Massachusetts 02109
`TEL: (617) 526-6000
`FAX: (617) 526-5000
`EMAIL: larissa.park@wilmerhale.com
`
`
`
`
`
`
`ActiveUS 136291211v.1
`
`11
`
`
`
`
`
`Petitioner's Renewed Motion for Joinder (IPR2014-00985)
`
`
`APPENDIX
`
`PATENT NO.: CLAIMS:
`
`IPR PETITIONS FILED BY:
`
`6,805,779
`
`6,805,779
`
`6,805,779
`
`6,806,652
`
`6,853,142
`
`6,853,142
`
`6,853,142
`
`6,853,142
`
`7,147,759
`
`7,147,759
`
`7,604,716
`
`TSMC:
`
`Gillette:
`
`IPR2014-00917
`
`IPR2014-01025
`
`IPR2014-00829
`
`IPR2014-01020
`
`IPR2014-00828
`
`IPR2014-01022
`
`7, 9, 20,
`21, 38, and
`44
`
`16, 28, 41,
`42, 45 and
`46
`
`30-37, 39
`and 40
`
`18-34
`
`IPR2014-00861
`
`IPR2014-01003
`
`1, 3-10,
`12, 15, 17-
`20 and 42
`
`2, 11, 13,
`14 and 16
`
`21, 24, 26-
`28, 31, 32,
`37 and 38
`
`22, 23, 25,
`29, 30, 33-
`36, 39 and
`43
`
`22-33, 37,
`46, 48 and
`50
`
`20, 21, 34-
`36, 38, 39,
`47 and 49
`
`14-18 and
`25-32
`
`IPR2014-00818
`
`IPR2014-01012
`
`IPR2014-00821
`
`IPR2014-01013
`
`IPR2014-00819
`
`IPR2014-01014
`
`IPR2014-00827
`
`IPR2014-01015
`
`IPR2014-00782
`
`IPR2014-00986
`
`IPR2014-00781
`
`IPR2014-00985
`
`IPR2014-00807
`
`IPR2014-00974
`
`
`ActiveUS 136291211v.1
`
`12
`
`
`
`7,604,716
`
`7,808,184
`
`7,808,184
`
`7,811,421
`
`7,811,421
`
`7,811,421
`
`
`
`
`
`Petitioner's Renewed Motion for Joinder (IPR2014-00985)
`
`
`19-24
`
`IPR2014-00808
`
`IPR2014-00975
`
`IPR2014-00799
`
`IPR2014-00995
`
`IPR2014-00803
`
`IPR2014-00996
`
`IPR2014-00800
`
`IPR2014-00991
`
`IPR2014-00802
`
`IPR2014-00992
`
`IPR2014-00805
`
`IPR2014-00990
`
`1-5 and
`11-15
`
`6-10 and
`16-20
`
`1, 2, 8, 10-
`13, 15-17,
`22-25, 27-
`30, 33, 34,
`38, 39,42,
`43 and 46-
`48
`
`9, 14, 21,
`26, 35 and
`37
`
`3-7, 18-20,
`31, 32, 36,
`40, 41, 44
`and 45
`
`
`
`ActiveUS 136291211v.1
`
`13
`
`
`
`
`
`Petitioner's Renewed Motion for Joinder (IPR2014-00985)
`
`
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. §§ 42.6(e) and 42.105(a), this is to certify that I caused
`
`to be served a true and correct copy of the foregoing “PETITIONER’S RENEWED
`
`MOTION FOR JOINDER UNDER 35 U.S.C. § 315(c) AND 37 C.F.R. §§ 42.22
`
`AND 42.122(b)” as detailed below:
`
`Date of service September 23, 2014
`
`Manner of service Email: gonsalves@gonsalveslawfirm.com;
`
`
`
`bbarker@chsblaw.com
`
`Documents served PETITIONER’S RENEWED MOTION FOR JOINDER
`UNDER 35 U.S.C. § 315(c) AND 37 C.F.R. §§ 42.22 AND
`42.122(b)
`
`
`
`Persons Served Dr. Gregory J. Gonsalves
`2216 Beacon Lane
`Falls Church, Virginia 22043
`
`Bruce Barker
`Chao Hadidi Stark & Barker LLP
`176 East Main Street, Suite 6
`Westborough, MA 01581
`
`/Larissa B. Park /
`Larissa B. Park
`Registration No. 59,051
`
`
`
`
`ActiveUS 136291211v.1
`
`14
`
`