`Trials@uspto.gov
`571-272-7822
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` Entered: January 6, 2014
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`
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`THE GILLETTE COMPANY,
`Petitioner,
`
`v.
`
`ZOND, LLC,
`Patent Owner.
`____________
`
`Case IPR2014-01004
`Patent 6,806,652 B1
`____________
`
`
`
`
`Before KEVIN F. TURNER, JONI Y. CHANG, SUSAN L. C. MITCHELL,
`and JENNIFER M. MEYER, Administrative Patent Judges.
`
`
`MITCHELL, Administrative Patent Judge.
`
`DECISION
`Granting Revised Motion for Joinder
`37 C.F.R. § 42.122
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`IPR2014-01004
`Patent 6,806,652 B1
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`INTRODUCTION
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`The Gillette Company (“Gillette”) filed a Petition requesting an inter
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`partes review of claim 35 of U.S. Patent 6,806,652 B2 (Ex. 1201, “the ’652
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`patent”). Paper 3 (“Pet.”). Pursuant to 37 C.F.R. § 42.122(b), Gillette also
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`filed a renewed Motion for Joinder, seeking to join the instant proceeding
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`with GLOBALFOUNDRIES U.S., Inc. v. Zond, LLC, Case IPR2014-01089
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`(“IPR2014-01089”). Paper 10 (“Mot.”).
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`GLOBALFOUNDRIES U.S., Inc., GLOBALFOUNDRIES Dresden
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`Module One LLC & Co. KG, and GLOBALFOUNDRIES Dresden Module
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`Two LLC & Co. KG (collectively, “GLOBALFOUNDRIES”), the Petitioner
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`in IPR2014-01089, does not oppose Gillette’s renewed Motion for Joinder.
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`Mot. 2. Patent Owner, Zond, LLC (“Zond”), filed a Preliminary Response
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`to the Petition (Paper 12, “Prelim. Resp.”) and an Opposition to Gillette’s
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`renewed Motion for Joinder (Paper 11, “Opp.”). In a separate decision,
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`entered concurrently, we institute an inter partes review as to the same claim
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`on the same grounds of unpatentability for which we instituted trial in
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`IPR2014-01089. For the reasons set forth below, Gillette’s renewed Motion
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`for Joinder is granted.
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`ANALYSIS
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`The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat.
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`284 (2011) (“AIA”) permits joinder of like review proceedings. The Board,
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`acting on behalf of the Director, has the discretion to join an inter partes
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`review with another inter partes review. 35 U.S.C. § 315.
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`IPR2014-01004
`Patent 6,806,652 B1
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`The statutory provision governing joinder of inter partes review
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`proceedings is 35 U.S.C § 315(c), which provides:
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`JOINDER.—If the Director institutes an inter partes review, the
`Director, in his or her discretion, may join as a party to that
`inter partes review any person who properly files a petition
`under section 311
`that
`the Director, after receiving a
`preliminary response under section 313 or the expiration of the
`time for filing such a response, determines warrants the
`institution of an inter partes review under section 314.
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`Joinder may be authorized when warranted, but the decision to grant
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`joinder is discretionary. 35 U.S.C. § 315(c); 37 C.F.R. § 42.122. When
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`exercising its discretion, the Board is mindful that patent trial regulations,
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`including the rules for joinder, must be construed to secure the just, speedy,
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`and inexpensive resolution of every proceeding. See 35 U.S.C. § 316(b);
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`37 C.F.R. § 42.1(b). The Board considers the impact of both substantive
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`issues and procedural matters on the proceedings.
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`As the moving party, Gillette bears the burden to show that joinder is
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`appropriate. 37 C.F.R. §§ 42.20(c), 42.122(b). In its revised Motion for
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`Joinder, Gillette contends that joinder, in this particular situation, is
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`appropriate because: (1) “it is the most expedient way to secure the just,
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`speedy, and inexpensive resolution of the related proceedings” (Mot. 5);
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`(2) Gillette’s Petition is substantively identical to GLOBALFOUNDRIES’s
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`Petition filed in IPR2014-01089 (id. at 6–7); (3) Gillette agrees to
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`consolidated filings and discovery (id. at 6–7); (4) joinder would not affect
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`the schedule in IPR2014-01089 (id. at 7–8); (5) joinder would streamline the
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`proceedings, reduce the costs and burdens on the parties, and increase
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`efficiencies for the Board without any prejudice to Zond (id. at 8).
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`IPR2014-01004
`Patent 6,806,652 B1
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`We agree that the substantive issues in IPR2014-01089 would not be
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`affected by joinder, because Gillette’s Petition is substantively identical to
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`GLOBALFOUNDRIES’s Petition filed in IPR2014-01089. Notably,
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`Gillette’s Petition asserts identical grounds of unpatentability, challenging
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`the same claim of the ’652 patent. Compare Pet. 24–53, with IPR2014-
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`01089, Paper4 (“’1089 Pet.”), 23–52. Gillette also submits identical claim
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`constructions, as well as the same Declaration of Dr. Uwe Kortshagen.
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`Compare Pet. 13–18, with ’1089 Pet. 12–17; compare Ex. 1202, with ’1089,
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`Ex. 1202. Moreover, we institute the instant trial based on the same grounds
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`for which we instituted trial in IPR2014-01089. Therefore, Gillette’s
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`Petition raises no new issues beyond those already before us in IPR2014-
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`01089.
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`In its Opposition, Zond indicates that it is not opposed to joinder.
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`Opp. 1. Rather, Zond proposes a procedure for the joined proceeding to
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`consolidate the schedule, filings, and discovery. Opp. 2–3.
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`We agree with the parties that conducting a single joined proceeding
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`for reviewing claim 35 of the ’652 patent is more efficient than conducting
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`multiple proceedings, eliminating duplicate filings and discovery. Gillette
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`agrees to consolidated filings for all substantive papers. Mot. 6–7. Gillette
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`indicates that it will not file any paper with arguments different from those
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`advanced by the consolidated filings, eliminating duplicate briefing. Id. at 6.
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`Gillette further agrees to consolidated discovery, as each Petitioner proffers
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`the same Declaration of Dr. Kortshagen. Id. at 6–7. Gillette indicates that
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`Petitioners, collectively, will designate an attorney to conduct the cross-
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`examination of any witnesses produced by Zond and the redirect of any
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`IPR2014-01004
`Patent 6,806,652 B1
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`witnesses produced by Petitioners, within the timeframe normally allotted by
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`the rules for one party. Id. at 7. Moreover, joinder will not require any
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`change to the trial schedule in IPR2014-01089, allowing the trial still to be
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`completed within one year. Id. at 7. Given that Gillette’s Petition raises no
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`new issues, and Petitioners agree to consolidated filings and discovery, the
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`impact of joinder on IPR2014-01089 will be minimal, and joinder will
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`streamline the proceedings, reducing the costs and burdens on the parties
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`and the Board.
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`For the foregoing reasons, Gillette has met its burden of
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`demonstrating that joinder of the instant proceeding with IPR2014-01089 is
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`warranted under the circumstances.
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`In consideration of the foregoing, it is hereby:
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`ORDER
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`ORDERED that Gillette’s Motion for Joinder with IPR2014-01089 is
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`granted;
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`FURTHER ORDERED that the instant proceeding is joined with
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`IPR2014-01089;
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`FURTHER ORDERED that the grounds of unpatentability on which a
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`trial was instituted in IPR2014-01089 are unchanged;
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`FURTHER ORDERED that the Scheduling Order for IPR2014-01089
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`shall govern the joined proceeding; an initial conference call will be held on
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`January 12, 2015 at 2:00 pm ET;
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`FURTHER ORDERED that the instant proceeding is instituted,
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`joined, and terminated under 37 C.F.R. § 42.72, and all further filings in the
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`joined proceeding shall be made only in IPR2014-01089;
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`IPR2014-01004
`Patent 6,806,652 B1
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`FURTHER ORDERED that, throughout IPR2014-01089, Petitioners
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`(GLOBALFOUNDRIES and Gillette) will file papers, except for motions
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`which do not involve the other party, as consolidated filings1;
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`GLOBALFOUNDRIES will identify each such filing as a consolidated
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`filing and will be responsible for completing all consolidated filings; the
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`page limits set forth in 37 C.F.R. § 42.24 will apply to all consolidated
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`filings (e.g., a consolidated filing of a reply to a patent owner response
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`should be 15 pages or less);
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`FURTHER ORDERED that Zond will conduct the cross-examination
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`of witnesses, as well as the redirect examination of any witness it produces,
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`in the timeframes set forth in 37 C.F.R. § 42.53(c);
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`FURTHER ORDERED that Petitioners collectively will designate
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`attorneys to conduct the cross-examination of any witnesses produced by
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`Zond and the redirect examination of any witnesses produced by Petitioners,
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`within the timeframes set forth in 37 C.F.R. § 42.53(c) for one party; no
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`individual Petitioner will receive any cross-examination or redirect
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`examination time in addition to the time normally allotted by 37 C.F.R.
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`§ 42.53(c) for one party;
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`FURTHER ORDERED that Petitioners collectively will designate
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`attorneys to present at the oral hearing (if requested) as a consolidated
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`presentation;
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`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.
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`IPR2014-01004
`Patent 6,806,652 B1
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`FURTHER ORDERED that the case caption in IPR2014-01089 shall
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`be changed to reflect the joinder with the instant proceeding in accordance
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`with the attached example; and
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`FURTHER ORDERED that a copy of this Decision be entered into
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`the file of IPR2014-01089.
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`IPR2014-01004
`Patent 6,806,652 B1
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`PETITIONER:
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`David L. Cavanaugh
`David.Cavanaugh@wilmerhale.com
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`Larissa Bifano Park
`Larissa.Park@wilmerhale.com
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`PATENT OWNER:
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`Bruce J. Barker
`bbarker@chsblaw.com
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`Gregory J. Gonsalves
`gonsalves@gonsalveslawfirm.com
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`IPR2014-01004
`Patent 6,806,652 B1
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`
`GLOBALFOUNDRIES U.S., INC., GLOBALFOUNDRIES DRESDEN
`MODULE ONE LLC & CO. KG, GLOBALFOUNDRIES DRESDEN
`MODULE TWO LLC & CO. KG, and THE GILLETTE COMPANY,
`Petitioners,
`
`v.
`
`ZOND, LLC,
`Patent Owner.
`____________
`
`Case IPR2014-010892
`Patent 6,806,652 B1
`____________
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`2 Case IPR2014-01004 has been joined with the instant proceeding.
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