Paper No. 8
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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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`
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`THE GILLETTE COMPANY,
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`Petitioner
`
`v. ZOND, INC.,
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`Patent Owner
`
`Case IPR2014-01019
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`U.S. PATENT NO. 6,805,779
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`CLAIMS 5, 6, 8, 19, 22, 23, and 43
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`Title: Plasma generation using multi-step ionization
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`PETITIONER’S 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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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`THE GILLETTE COMPANY,
`
`Petitioner
`
`v. ZOND, INC.,
`
`Patent Owner
`
`Case IPR2014-01019
`
`U.S. PATENT NO. 6,805,779
`
`CLAIMS 5, 6, 8, 19, 22, 23, and 43
`
`Title: Plasma generation using multi-step ionization
`
`PETITIONER’S 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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`I.
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`INTRODUCTION
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`Petitioner's Motion for Joinder (IPR2014-01019)
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`The Gillette Company and Proctor & Gamble, Inc. (collectively, “Gillette”)
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`filed the present petition for inter partes review IPR2014-01019 (the “Gillette
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`IPR”), and moves for joinder of the Gillette IPR with IPR2014-00686 (“the Intel
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`IPR”), filed by Intel Corporation (“Intel”). The Gillette IPR is identical to the Intel
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`IPR in all substantive respects, includes identical exhibits, and relies upon the same
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`expert declarant. Intel does not oppose this motion.
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`II. BACKGROUND AND RELATED PROCEEDINGS
`The Gillette IPR and Intel IPR are among a family of inter partes review
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`proceedings relating to patents that are being asserted by Zond against numerous
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`defendants in the District of Massachusetts: 1:13-cv-11570-RGS (Zond v. Intel
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`Corp.); 1:13-cv-11577-DPW (Zond v. AMD, Inc., et al.); 1:13-cv-11581-DJC (Zond
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`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
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`Semiconductor Mfg. Co.); and 1:13-cv-11567-DJC (Zond v. The Gillette Co., et al.).
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`In particular, a first complaint in 1:13-cv-11570-RGS (Zond v. Intel) was
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`served on Intel on July 9, 2013, and a first complaint in 1:13-cv-11567-DJC
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`(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 Intel of infringing, namely, U.S. Patent No. 6,805,779
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`Petitioner's Motion for Joinder (IPR2014-01019)
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`B2, U.S. Patent No. 6,806,652 B1, U.S. Patent No. 6,853,142 B2, U.S. Patent No.
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`7,147,759 B2, U.S. Patent No. 7,604,716 B2, U.S. Patent No. 7,808,184 B2, U.S.
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`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 Intel, Gillette, and the other defendants in the District of
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`Massachusetts litigations. All petitions for inter partes review that have been filed
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`by Intel and Gillette are timely as prescribed by 35 U.S.C. § 315(b).
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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 first filed by Intel, subject to the
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`same conditions sought by this motion. Intel 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
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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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`required if sought within one month of the institution date of any inter partes review
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`Petitioner's Motion for Joinder (IPR2014-01019)
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`for which joinder is requested. See 37 C.F.R. § 42.422(b). Inasmuch as the Intel
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`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 Intel IPR petitions, including the Intel IPR. The Appendix contains a list of all
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`IPR petitions for the Overlapping Patents. A conference call with the Board was
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`held on Monday, August 4, 2014 to discuss TSMC’s pending motion. The Board
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`issued an order on August 5, 2014 (Paper 13, Case IPR2014-00443), requesting all
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`petitioners to file motions for joinder within 10 days of the order.
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`III. DISCUSSION
`If the Director institutes an inter partes review on the Intel IPR, Gillette
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`respectfully requests that the Board exercise its discretion to grant joinder of the
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`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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`Petitioner's Motion for Joinder (IPR2014-01019)
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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 Intel IPR in an effort to avoid multiplication of issues before the
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`Board. Given the duplicative nature of these petitions, joinder of the related
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`proceedings is appropriate. Further, Gillette agrees to consolidated filings and
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`discovery.
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`Substantively Identical Petitions
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`1.
`Gillette represents that the Gillette IPR is identical to the Intel IPR in all
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`substantive respects. It includes identical grounds, analysis, and exhibits and relies
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`upon the same expert declarant and declaration. Accordingly, if instituted,
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`maintaining the Gillette IPR proceeding separate from that of Intel would entail
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`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 Intel IPR are
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`the same, the case is amenable to consolidated filings. Gillette agrees to
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`consolidated filings for all substantive papers (e.g., Reply to the Patent Owner’s
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`Response, Opposition to Motion to Amend, Motion for Observation on Cross
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`Examination Testimony of a Reply Witness, Motion to Exclude Evidence,
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`Petitioner's Motion for Joinder (IPR2014-01019)
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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 Intel in a consolidated filing, subject to the
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`ordinary page limits for one party. Intel and Gillette will be jointly responsible for
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`the consolidated filings.
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`Gillette agrees not to make arguments separate from those advanced by
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`Gillette and Intel in the consolidated filings. This agreement thus avoids lengthy
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`and duplicative briefing.
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`Consolidated discovery is also appropriate given that Gillette and Intel are
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`using the same expert declarant who has submitted an identical declaration in the
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`two proceedings. Gillette and Intel will designate an attorney to conduct the cross-
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`examination of any witness produced by Zond and the redirect of any witness
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`produced by Gillette or Intel within the timeframe normally allotted by the rules
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`for one party. Gillette and Intel will not receive separate cross-examination or
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`redirect time.
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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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`Intel IPR because the petitions are identical.
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`Petitioner's Motion for Joinder (IPR2014-01019)
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`C. No Impact on IPR Trial Schedule
`The small difference between the filing date of the Intel IPR and the Gillette
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`IPR is without consequence should the proceedings be joined. The trial schedule
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`for the Intel IPR would not need to be delayed to effect joinder. The joint
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`proceeding would allow the Board and the parties to focus on the merits in one
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`consolidated proceeding in a timely manner.
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`D. Briefing and Discovery Will Be Simplified
`Joinder will simplify briefing and discovery because Gillette seeks an
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`order similar to that issued in Motorola Mobility LLC v. Softview LLC, IPR2013-
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`00256 (PTAB June 20, 2013) (Paper 10). As discussed above, Gillette and Intel will
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`engage in consolidated filings and discovery, which will simplify the briefing and
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`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
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`expense for depositions and other discovery required in separate proceedings, and
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`creates case management efficiencies for the Board and parties.
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`Petitioner's Motion for Joinder (IPR2014-01019)
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`IV. PROPOSED ORDER
`Petitioner proposes a joinder order for consideration by the Board as follows,
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`which Intel does not oppose:
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`
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`If review is instituted on any ground in the Intel IPR, the Gillette IPR
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`will be instituted and will be joined with the Intel IPR on the same
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`grounds. Grounds not instituted because of any finding that the Intel
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`IPR failed to establish a reasonable likelihood of prevailing, if any, will
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`be similarly denied in the Gillette IPR.
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`The scheduling order for the Intel IPR will apply for the joined
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`proceeding.
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`Throughout the proceeding, Intel and Gillette will file papers as
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`consolidated filings, except for motions that do not involve the other
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`party, in accordance with the Board’s established rules regarding page
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`limits for one party. So long as they both continue to participate in the
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`merged proceeding, Intel and Gillette will identify each such filing as a
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`consolidated filing and will be responsible for completing all
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`consolidated filings.
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`Petitioner's Motion for Joinder (IPR2014-01019)
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`Intel 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 Intel or Gillette within the timeframe normally
`
`allotted by the rules for one party. Intel and Gillette will not receive
`
`any separate cross-examination or redirect time.
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`Zond will conduct any cross-examination of any given witness jointly
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`produced by Intel or Gillette and the redirect of any given witness
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`produced by Zond within the timeframe normally allotted by the rules
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`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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`Intel IPR, Gillette respectfully requests that the Board grant joinder of the Gillette
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`IPR and Intel IPR proceedings.
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`Petitioner's Motion for Joinder (IPR2014-01019)
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`Respectfully submitted,
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`__/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
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`“Intel Petitions”
`U.S. Patent No. 6,805,779 B2
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`U.S. Patent No. 6,806,652 B1
`
`U.S. Patent No. 6,853,142 B2
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`U.S. Patent No. 7,147,759 B2
`
`U.S. Patent No. 7,604,716 B2
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`U.S. Patent No. 7,808,184 B2
`U.S. Patent No. 7,811,421 B2
`
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`“Joinder Petitions”
`U.S. Patent No. 6,805,779 B2
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`U.S. Patent No. 6,806,652 B1
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`Petitioner's Motion for Joinder (IPR2014-01019)
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`APPENDIX
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`
`IPR2014-00598, IPR2014-00686,
`IPR2014-00765, IPR2014-00820,
`IPR2014-00913
`IPR2014-00843, IPR2014-00923,
`IPR2014-00945
`IPR2014-00494, IPR2014-00495,
`IPR2014-00496, IPR2014-00497,
`IPR2014-00498
`IPR2014-00443, IPR2014-00444,
`IPR2014-00445, IPR2014-00446,
`IPR2014-00447
`IPR2014-00520, IPR2014-00521,
`IPR2014-00522, IPR2014-00523
`IPR2014-00455, IPR2014-00456
`IPR2014-00468, IPR2014-00470,
`IPR2014-00473
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`IPR2014-00828, IPR2014-00829,
`IPR2014-00856, IPR2014-00859,
`IPR2014-00917, IPR2014-00918,
`IPR2014-01017, IPR2014-01019,
`IPR2014-01020, IPR2014-01022,
`IPR2014-01025, IPR2014-01070,
`IPR2014-01072, IPR2014-01073,
`IPR2014-01074, IPR2014-01076
`IPR2014-00861, IPR2014-00864,
`IPR2014-01000, IPR2014-01003,
`IPR2014-01004, IPR2014-01066,
`IPR2014-01088, IPR2014-01089
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`U.S. Patent No. 6,853,142 B2
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`U.S. Patent No. 7,147,759 B2
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`U.S. Patent No. 7,604,716 B2
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`U.S. Patent No. 7,808,184 B2
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`U.S. Patent No. 7,811,421 B2
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`Petitioner's Motion for Joinder (IPR2014-01019)
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`IPR2014-00818, IPR2014-00819,
`IPR2014-00821, IPR2014-00827,
`IPR2014-00863, IPR2014-00865,
`IPR2014-00866, IPR2014-00867,
`IPR2014-01012, IPR2014-01013,
`IPR2014-01014, IPR2014-01015,
`IPR2014-01016, IPR2014-01046,
`IPR2014-01057, IPR2014-01063,
`IPR2014-01075, IPR2014-01098
`IPR2014-00781, IPR2014-00782,
`IPR2014-00845, IPR2014-00850,
`IPR2014-00981, IPR2014-00984,
`IPR2014-00985, IPR2014-00986,
`IPR2014-00988, IPR2014-01047,
`IPR2014-01059, IPR2014-01083,
`IPR2014-01086, IPR2014-01087
`IPR2014-00807, IPR2014-00808,
`IPR2014-00846, IPR2014-00849,
`IPR2014-00972, IPR2014-00973,
`IPR2014-00974, IPR2014-00975,
`IPR2014-01065, IPR2014-01067,
`IPR2014-01099, IPR2014-01100
`IPR2014-00799, IPR2014-00803,
`IPR2014-00855, IPR2014-00858,
`IPR2014-00995, IPR2014-00996,
`IPR2014-01042, IPR2014-01061
`IPR2014-00800, IPR2014-00802,
`IPR2014-00805, IPR2014-00844,
`IPR2014-00848, IPR2014-00851,
`IPR2014-00990, IPR2014-00991,
`IPR2014-00992, IPR2014-01037,
`IPR2014-01069, IPR2014-01071
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`Petitioner's Motion for Joinder (IPR2014-01019)
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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 to
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`be served a true and correct copy of the foregoing “PETITIONER’S MOTION FOR
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`JOINDER UNDER 35 U.S.C. § 315(c) AND 37 C.F.R. §§ 42.22 AND 42.122(b)” as
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`detailed below:
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`Date of service August 18, 2014
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`Manner of service Email: gonsalves@gonsalveslawfirm.com;
`bbarker@chsblaw.com
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`Documents served PETITIONER’S 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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`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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