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`Paper No. __
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`THE GILLETTE COMPANY,
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`Petitioner
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`v. ZOND, INC.,
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`Patent Owner
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`Case IPR2014-01017
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`U.S. PATENT NO. 6,805,779
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`CLAIMS 1-4, 10-15, 17, 18, 24-27, 29
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`Title: Plasma generation using multi-step ionization
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`PETITIONER’S RENEWED MOTION FOR JOINDER
`UNDER 35 U.S.C. § 315(c) AND 37 C.F.R. § 42.22 AND § 42.122(b)
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`ActiveUS 136258731v.1
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`I.
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`INTRODUCTION
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`Petitioner's Renewed Motion for Joinder (IPR2014-01017)
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`The Gillette Company and Procter & Gamble, Inc. (collectively, “Gillette”)
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`filed the present petition for inter partes review IPR2014-01017 (the “Gillette IPR”),
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`and moves for joinder of the Gillette IPR with IPR2014-01073 (the
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`“GlobalFoundries IPR”), filed by GlobalFoundries U.S., Inc., GlobalFoundries
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`Dresden Module One LLC & Co. KG, GlobalFoundries Dresden Module Two LLC
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`& Co. KG. (“GlobalFoundries”). The Gillette IPR is identical to the
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`GlobalFoundries IPR in all substantive respects, includes identical exhibits, and
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`relies upon the same expert declarant. GlobalFoundries does not oppose this motion.
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`II. BACKGROUND AND RELATED PROCEEDINGS
`The Gillette IPR and GlobalFoundries IPR are among a family of inter partes
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`review proceedings relating to patents that are being asserted by Zond against
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`numerous defendants in the District of Massachusetts: 1:13-cv-11570-RGS (Zond v.
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`Intel Corp.); 1:13-cv-11577-LTS (Zond v. AMD, Inc., et al.); 1:13-cv-11581-DJC
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`(Zond v. Toshiba Am. Elec. Comp. Inc.); 1:13-cv-11625-NMG (Zond v. Renesas
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`Elec. Corp.); 1:13-cv-11634-WGY (Zond v. Fujitsu Semiconductor Ltd., et al. and
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`Taiwan Semiconductor Mfg. Co.); and 1:13-cv-11567-DJC (Zond v. The Gillette Co.,
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`et al.).
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`Petitioner's Renewed Motion for Joinder (IPR2014-01017)
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`In particular, a first complaint against GlobalFoundries in 1:13-cv-11577-LTS
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`(Zond v. AMD) was filed on July 2, 2013, and a first complaint in 1:13-cv-11567-
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`DJC (Zond v. Gillette) was served on Gillette on July 2, 2013. In its complaint, Zond
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`alleges Gillette infringes ten of Zond’s patents, seven of which overlap with the
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`seven patents Zond alleges GlobalFoundries of infringing, namely, U.S. Patent No.
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`6,805,779 B2, U.S. Patent No. 6,806,652 B1, U.S. Patent No. 6,853,142 B2, U.S.
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`Patent No. 7,147,759 B2, U.S. Patent No. 7,604,716 B2, U.S. Patent No. 7,808,184
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`B2, U.S. Patent No. 7,811,421 B2 (the “Overlapping Patents”).1
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`Currently, inter partes review petitions relating to the Overlapping Patents, are
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`pending, involving GlobalFoundries, Gillette, and the other defendants in the District
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`of Massachusetts litigations. All petitions for inter partes review that have been
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`filed by GlobalFoundries and Gillette are timely as prescribed by 35 U.S.C. § 315(b).
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`Gillette also has filed petitions for an inter partes review of the three
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`additional patents asserted by Zond against Gillette. See IPR2014-00477 and
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`IPR2014-00479 (U.S. Patent No. 8,125,155); IPR2014-00580 and IPR2014-00726
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`(U.S. Patent No. 6,896,773); and IPR2014-00578 and IPR2014-00604 (U.S. Patent
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`No. 6,896,775). Gillette does not seek joinder of these petitions.
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`Petitioner's Renewed Motion for Joinder (IPR2014-01017)
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`In addition to this motion, Gillette is moving for joinder of each of its Zond
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`IPR petitions with the corresponding petitions filed by GlobalFoundries as listed in
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`the Appendix, subject to the same conditions sought by this motion.
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`GlobalFoundries does not oppose the Gillette motions.
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`In its May 29, 2014 Order (Paper 5) in IPR2014-00781 and IPR2014-00782,
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`the Board stated that prior authorization for filing a motion for joinder is not required
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`if sought within one month of the institution date of any inter partes review for
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`which joinder is requested. See 37 C.F.R. § 42.122(b). Inasmuch as the
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`GlobalFoundries IPR has not yet been instituted, this motion is, therefore, timely.
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`Since the May 29, 2014 Order, petitioners Intel, Gillette, TSMC, Fujitsu
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`Semiconductor Ltd (“Fujitsu”), GlobalFoundries, Inc. (“GlobalFoundries”) AMD,
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`Inc. (“AMD”), Renesas Elec. Corp. (“Renesas”) and Toshiba Am. Elec. Comp. Inc.
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`(“Toshiba”) have completed their filings of substantially the same IPR petitions as
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`the GlobalFoundries IPR petitions, including the GlobalFoundries IPR. A
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`conference call with the Board was held on Monday, August 4, 2014 to discuss
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`TSMC’s pending motion. The Board issued an order on August 5, 2014 (Paper 13,
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`Case IPR2014-00443), requesting all petitioners to file motions for joinder within 10
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`days of the order. Gillette subsequently filed a motion for joinder with a
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`corresponding Intel IPR. Intel subsequently terminated its corresponding IPR
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`proceeding. On Tuesday, September 16, 2014, the Board issued a subsequent paper
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`Petitioner's Renewed Motion for Joinder (IPR2014-01017)
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`requesting renewed joinder motions within five business days.
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`III. DISCUSSION
`If the Director institutes an inter partes review on the GlobalFoundries IPR,
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`Gillette respectfully requests that the Board exercise its discretion to grant joinder of
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`the Gillette IPR pursuant to 35 U.S.C. § 315(c), 37 C.F.R. § 42.22, and 37 C.F.R.
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`§ 42.122(b). In support of this motion, Gillette proposes consolidated filings and
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`other procedural accommodations designed to streamline the proceedings.
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`A. Reasons Why Joinder Is Appropriate
`Joinder is appropriate because it is the most expedient way to secure the just,
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`speedy and inexpensive resolution of the related proceedings. See 35 U.S.C.
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`§ 316(b); 37 C.F.R. § 42.1(b). The Gillette IPR is substantively identical to the
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`corresponding GlobalFoundries IPR in an effort to avoid multiplication of issues
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`before the Board. Given the duplicative nature of these petitions, joinder of the
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`related proceedings is appropriate. Further, Gillette agrees to consolidated filings
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`and discovery.
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`Substantively Identical Petitions
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`1.
`Gillette represents that the Gillette IPR is identical to the GlobalFoundries IPR
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`in all substantive respects. It includes identical grounds, analysis, and exhibits and
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`relies upon the same expert declarant and declaration. Accordingly, if instituted,
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`Petitioner's Renewed Motion for Joinder (IPR2014-01017)
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`maintaining the Gillette IPR proceeding separate from that of GlobalFoundries
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`would entail needless duplication of effort.
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`Consolidated Filings and Discovery
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`2.
`Because the grounds of unpatentability in the Gillette IPR and
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`GlobalFoundries IPR are the same, the case is amenable to consolidated filings.
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`Gillette agrees to consolidated filings for all substantive papers (e.g., Reply to the
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`Patent Owner’s Response, Opposition to Motion to Amend, Motion for Observation
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`on Cross Examination Testimony of a Reply Witness, Motion to Exclude Evidence,
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`Opposition to Motion to Exclude Evidence and Reply). Specifically, Gillette agrees
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`to incorporate its filings with those of GlobalFoundries in a consolidated filing,
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`subject to the ordinary page limits for one party. GlobalFoundries and Gillette will
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`be jointly responsible for the consolidated filings.
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`Gillette agrees not to make arguments separate from those advanced by
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`Gillette and GlobalFoundries in the consolidated filings. This agreement thus avoids
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`lengthy and duplicative briefing.
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`Consolidated discovery is also appropriate given that Gillette and
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`GlobalFoundries are using the same expert declarant who has submitted an identical
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`declaration in the two proceedings. Gillette and GlobalFoundries will designate an
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`Petitioner's Renewed Motion for Joinder (IPR2014-01017)
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`attorney to conduct the cross-examination of any witness produced by Zond and the
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`redirect of any witness produced by Gillette or GlobalFoundries within the
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`timeframe normally allotted by the rules for one party. Gillette and GlobalFoundries
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`will not receive separate cross-examination or redirect time.
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`Gillette will agree to the foregoing conditions regarding consolidated filings
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`and discovery even in the event other IPRs filed by other, third-party petitioners are
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`joined with the GlobalFoundries IPR.
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`B. No New Grounds of Unpatentability
`The Gillette IPR raises no new grounds of unpatentability from those of the
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`GlobalFoundries IPR because the petitions are identical.
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`C. No Impact on IPR Trial Schedule
`The small difference between the filing date of the GlobalFoundries IPR and
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`the Gillette IPR is without consequence should the proceedings be joined. The trial
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`schedule for the GlobalFoundries IPR would not need to be delayed to effect joinder.
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`The joint proceeding would allow the Board and the parties to focus on the merits in
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`one consolidated proceeding in a timely manner.
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`Petitioner's Renewed Motion for Joinder (IPR2014-01017)
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`D. Briefing and Discovery Will Be Simplified
`Joinder will simplify briefing and discovery because Gillette seeks an order
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`similar to that issued in Motorola Mobility LLC v. Softview LLC, IPR2013-00256
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`(PTAB June 20, 2013) (Paper 10). As discussed above, Gillette and
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`GlobalFoundries will engage in consolidated filings and discovery, which will
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`simplify the briefing and discovery process.
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`E. No Prejudice to Zond if Proceedings Are Joined
`Zond will suffer no prejudice if the proceedings are joined. In fact, joinder
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`will decrease the number of papers the parties must file, reduce the time and expense
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`for depositions and other discovery required in separate proceedings, and creates
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`case management efficiencies for the Board and parties.
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`IV. PROPOSED ORDER
`Petitioner proposes a joinder order for consideration by the Board as follows,
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`which GlobalFoundries does not oppose:
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`If review is instituted on any ground in the GlobalFoundries IPR, the
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`Gillette IPR will be instituted and will be joined with the
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`GlobalFoundries IPR on the same grounds. Grounds not instituted
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`because of any finding that the GlobalFoundries IPR failed to establish
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`Petitioner's Renewed Motion for Joinder (IPR2014-01017)
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`a reasonable likelihood of prevailing, if any, will be similarly denied in
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`the Gillette IPR.
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`The scheduling order for the GlobalFoundries IPR will apply for the
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`joined proceeding.
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`Throughout the proceeding, GlobalFoundries and Gillette will file
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`papers as consolidated filings, except for motions that do not involve the
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`other party, in accordance with the Board’s established rules regarding
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`page limits for one party. So long as they both continue to participate in
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`the merged proceeding, GlobalFoundries and Gillette will identify each
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`such filing as a consolidated filing and will be responsible for
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`completing all consolidated filings.
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`GlobalFoundries and Gillette will designate an attorney to conduct the
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`cross examination of any witness produced by Zond and the redirect of
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`any witness produced by GlobalFoundries or Gillette within the
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`timeframe normally allotted by the rules for one party. GlobalFoundries
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`and Gillette will not receive any separate cross-examination or redirect
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`time.
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`Petitioner's Renewed Motion for Joinder (IPR2014-01017)
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`Zond will conduct any cross-examination of any given witness jointly
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`produced by GlobalFoundries or Gillette and the redirect of any given
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`witness produced by Zond within the timeframe normally allotted by the
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`rules for one cross-examination or redirect examination.
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`V. CONCLUSION
`For the foregoing reasons, if the Director institutes inter partes review of the
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`GlobalFoundries IPR, Gillette respectfully requests that the Board grant joinder of
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`the Gillette IPR and GlobalFoundries IPR proceedings.
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`Petitioner's Renewed Motion for Joinder (IPR2014-01017)
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`Respectfully submitted,
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`_/Larissa B. Park /_________
`Larissa B. Park
`Reg. No. 59,051
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`Back-up Counsel for Petitioner
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`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
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`Petitioner's Renewed Motion for Joinder (IPR2014-01017)
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`APPENDIX
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`PATENT NO.: CLAIMS:
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`IPR PETITIONS FILED BY:
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`6,805,779
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`6,805,779
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`6,806,652
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`6,806,652
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`6,853,142
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`7,147,759
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`7,147,759
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`7,147,759
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`7,604,716
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`7,604,716
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`Gillette:
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`GlobalFoundries:
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`IPR2014-01017
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`IPR2014-01073
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`IPR2014-01019
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`IPR2014-01076
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`IPR2014-01000
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`IPR2014-01088
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`IPR2014-01004
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`IPR2014-01089
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`1-4, 10-15,
`17, 18, 24-
`27 and 29
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`5, 6, 8, 19,
`22, 23, and
`43
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`1-17
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`35
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`40 and 41
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`IPR2014-01016
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`IPR2014-01098
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`IPR2014-00981
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`IPR2014-01086
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`IPR2014-00984
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`IPR2014-01087
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`1, 4, 10-
`12, 17, 18
`and 44
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`2, 3, 5-9,
`13-16, 19,
`41-43 and
`45
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`40
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`IPR2014-00988
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`IPR2014-01083
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`IPR2014-00972
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`IPR2014-01099
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`IPR2014-00973
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`IPR2014-01100
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`1-11 and
`33
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`12 and 13
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`Petitioner's Renewed Motion for Joinder (IPR2014-01017)
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. §§ 42.6(e) and 42.105(a), this is to certify that I caused
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`to be served a true and correct copy of the foregoing “PETITIONER’S RENEWED
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`MOTION FOR JOINDER UNDER 35 U.S.C. § 315(c) AND 37 C.F.R. §§ 42.22
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`AND 42.122(b)” as detailed below:
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`Date of service September 23, 2014
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`Manner of service Email: gonsalves@gonsalveslawfirm.com;
` bbarker@chsblaw.com
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`UNDER 35 U.S.C. § 315(c) AND 37 C.F.R. §§ 42.22 AND
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`Documents served PETITIONER’S RENEWED MOTION FOR JOINDER
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`42.122(b)
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`Persons Served Dr. Gregory J. Gonsalves
`2216 Beacon Lane
`Falls Church, Virginia 22043
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`Bruce Barker
`Chao Hadidi Stark & Barker LLP
`176 East Main Street, Suite 6
`Westborough, MA 01581
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`/Larissa B. Park /
`Larissa B. Park
`Registration No. 59,051
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