`Trials@uspto.gov
`571-272-7822
`
` Entered: October 23, 2014
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`THE GILLETTE COMPANY,
`Petitioner,
`v.
`
`ZOND, LLC,
`Patent Owner.
`____________
`
`Cases IPR2014-01014
`Patent 6,853,142 B2
`____________
`
`
`
`
`Before KEVIN F. TURNER, DEBRA K. STEPHENS, JONI Y. CHANG,
`SUSAN L.C. MITCHELL, and JENNIFER M. MEYER,
`Administrative Patent Judges.
`
`TURNER, Administrative Patent Judge.
`
`
`DECISION
`Granting Renewed Motion for Joinder
`37 C.F.R. § 42.122
`
`
`
`
`
`
`
`IPR2014-01014
`Patent 6,853,142 B2
`
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`
`INTRODUCTION
`The Gillette Company (“Gillette”) filed a Petition requesting inter
`partes review of claims 21, 24, 26–28, 31, 32, 37, and 38 of U.S. Patent No.
`6,853,142 B2 (“the ’142 Patent”). Paper 3 (“Pet.”). Pursuant to 37 C.F.R.
`§ 42.122(b), Gillette also filed a renewed Motion for Joinder, seeking to join
`the instant proceeding with Taiwan Semiconductor Manuf. Co. v. Zond,
`LLC., Case IPR2014-00819 (PTAB) (“IPR2014-00819”). Paper 10
`(“Mot.”).
`Taiwan Semiconductor Manufacturing Company, Ltd. and TSMC
`North America Corp. (collectively, “TSMC”), one of the Petitioners in
`IPR2014-00819, does not oppose Gillette’s renewed Motion for Joinder.
`Mot. 2. Patent Owner, Zond, LLC (“Zond”), filed a Preliminary Response
`to the Petition (Paper 8, “Prelim. Resp.”) and an Opposition to Gillette’s
`renewed 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 IPR2014-00819. For the
`reasons set forth below, Gillette’s renewed 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
`discretion, the Board is mindful that patent trial regulations, including the
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`IPR2014-01014
`Patent 6,853,142 B2
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`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 renewed 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 TSMC’s Petition filed in
`IPR2014-00819 (id. at 6); (3) Gillette agrees to consolidated filings and
`discovery (id. at 6–7); (4) joinder would not affect the schedule in
`IPR2014-00819 (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 IPR2014-00819 would not be
`affected by joinder, because Gillette’s Petition is substantively identical to
`TSMC’s Petition filed in IPR2014-00819. Notably, Gillette’s Petition
`asserts identical grounds of unpatentability, challenging the same claims of
`the ’142 Patent. Compare Pet. 15–56, with IPR2014-00819, Paper 2 (“’819
`Pet.”), 14–56. Gillette also submits identical proposed claim constructions,
`as well as the same Declaration of Dr. Uwe Kortshagen. Compare Pet. 12–
`14, with ’819 Pet. 12–14; compare Ex. 1202, with ’819 Ex. 1202. Moreover,
`we institute the instant trial based on the same ground for which we
`instituted trial in IPR2014-00819. Therefore, Gillette’s Petition raises no
`new issues beyond those already before us in IPR2014-00819.
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`IPR2014-01014
`Patent 6,853,142 B2
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`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 21, 24, 26–28, 31, 32, 37, and 38 of the ’142 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 IPR2014-00819, 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 IPR2014-00819 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 IPR2014-00819 is
`warranted under the circumstances.
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`IPR2014-01014
`Patent 6,853,142 B2
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`ORDER
`
`
`
`Accordingly, it is:
`ORDERED that Gillette’s Motion for Joinder with IPR2014-00819 is
`granted;
`FURTHER ORDERED that the instant proceeding is joined with
`IPR2014-00819;
`FURTHER ORDERED that the grounds of unpatentability on which a
`trial was instituted in IPR2014-00819 are unchanged;
`FURTHER ORDERED that the Scheduling Order for IPR2014-00819
`(Paper 10) shall govern the joined proceeding; the initial conference call for
`the joined proceeding is scheduled on November 25, 2014 at 3:00 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 IPR2014-00819;
`FURTHER ORDERED that, throughout IPR2014-000819, Petitioners
`(TSMC, Fujitsu, and Gillette) will file papers, except for motions which do
`not involve the other parties, as consolidated filings1; TSMC 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.
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`IPR2014-01014
`Patent 6,853,142 B2
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`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 IPR2014-00819 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 IPR2014-00819.
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`IPR2014-01014
`Patent 6,853,142 B2
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`For PETITIONER:
`Michael A. Deiner
`Larissa B. Park
`WILMER, CUTLER, PICKERING, HALE AND DORR, LLP
`Michael.Diener@wilmerhale.com
`Larissa.Park@wilmerhale.com
`
`
`
`PATENT OWNER:
`
`Gregory Gonsalves
`THE GONSALVES LAW FIRM
`gonsalves@gonsalveslawfirm.com
`
`Bruce Barker
`CHAO HADIDI STARK & BARKER LLP
`bbarker@chsblaw.com
`
`
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`TAIWAN SEMICONDUCTOR MANUFACTURING COMPANY, LTD.,
`TSMC NORTH AMERICA CORP., FUJITSU SEMICONDUCTOR
`LIMITED, FUJITSU SEMICONDUCTOR AMERICA, INC., and THE
`GILLETTE COMPANY,
`Petitioner,
`
`v.
`
`ZOND, LLC,
`Patent Owner.
`____________
`
`Case IPR2014-008191
`Patent 6,853,142 B2
`____________
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`
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`1 Cases IPR2014-00867 and IPR2014-01014 have been joined with the
`instant proceeding.