`Trials@uspto.gov
`571-272-7822
`
` Entered: November 18, 2014
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`THE GILLETTE COMPANY,
`Petitioner,
`v.
`
`ZOND, LLC,
`Patent Owner.
`____________
`
`Cases IPR2014-01019
`Patent 6,805,779 B2
`____________
`
`
`
`
`Before KEVIN F. TURNER, DEBRA K. STEPHENS, JONI Y. CHANG,
`SUSAN L.C. MITCHELL, and JENNIFER M. MEYER,
`Administrative Patent Judges.
`
`CHANG, Administrative Patent Judge.
`
`
`DECISION
`Granting Revised Motion for Joinder
`37 C.F.R. § 42.122
`
`
`
`
`
`
`
`IPR2014-01019
`Patent 6,805,779 B2
`
`
`
`
`
`
`INTRODUCTION
`The Gillette Company (“Gillette”) filed a Petition requesting an inter
`partes review of U.S. Patent 6,805,779 B2 (Ex. 1101, “the ’779 patent”).
`Paper 3 (“Pet.”). Pursuant to 37 C.F.R. § 42.122(b), Gillette also filed a
`revised Motion for Joinder with GLOBALFOUNDRIES U.S., Inc. v. Zond,
`LLC, Case IPR2014-01076 (PTAB) (“IPR2014-01076”). Paper 11 (“Mot.”).
`GlobalFoundries does not oppose Gillette’s request for joinder.
`Mot. 1. Patent Owner Zond, LLC (“Zond”) filed a Preliminary Response to
`the Petition (Paper 9, “Prelim. Resp.”) and an Opposition to Gillette’s
`revised Motion for Joinder (Paper 12, “Opp.”). In a separate decision, we
`institute an inter partes review as to the same claims on the same grounds of
`unpatentability for which we instituted trial in IPR2014-01076. For the
`reasons set forth below, Gillette’s revised 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. 35 U.S.C. § 315. The statutory
`provision governing joinder of inter partes review proceedings is
`35 U.S.C § 315(c), which provides:
`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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`2
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`IPR2014-01019
`Patent 6,805,779 B2
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`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 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 revised 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 GlobalFoundries’s Petition
`filed in IPR2014-01076 (id. at 5–6); (3) Gillette agrees to consolidated
`filings and discovery (id. at 6–7); (4) joinder would not affect the schedule
`in IPR2014-01076 (id. at 7); and (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 IPR2014-01076 would not be
`affected by joinder, because Gillette’s Petition is substantively identical to
`the Petition filed in IPR2014-01076. Notably, Gillette’s Petition asserts
`identical grounds of unpatentability, challenging the same claims of the ’779
`patent. Compare Pet. 18–60, with IPR2014-01076, Paper 2 (“’1076 Pet.”),
`18–60. Gillette also submits identical claim construction arguments, as well
`as the same Declaration of Dr. Uwe Kortshagen. Compare Pet. 17–18, with
`’1076 Pet. 17–18; compare Ex. 1102, with ’1076 Ex. 1102. More
`3
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`IPR2014-01019
`Patent 6,805,779 B2
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`importantly, we institute the instant trial based on the same grounds for
`which we instituted trial in IPR2014-01076. Therefore, Gillette’s Petition
`raises no new issues beyond those already before us in IPR2014-01076.
`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 5, 6, 8, 19, 22, 23, and 43 of the ’779 patent is more
`efficient than conducting multiple proceedings, eliminating duplicate filings
`and discovery. Gillette agrees to consolidated filings for all substantive
`papers. Mot. 6–7. Gillette indicates that it will not file any paper with
`arguments different from those advanced by the consolidated filings,
`eliminating duplicate briefing. Id. at 6. Gillette further agrees to
`consolidated discovery, as each Petitioner proffers the same Declaration of
`Dr. Kortshagen. Id. at 7. Gillette indicates that Petitioners of the joined
`proceeding 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. Moreover, joinder will not require any change to
`the trial schedule in IPR2014-01076, 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 IPR2014-01076 will be minimal, and joinder will streamline the
`proceedings, reducing the costs and burdens on the parties and the Board.
`
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`4
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`IPR2014-01019
`Patent 6,805,779 B2
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`For the foregoing reasons, Gillette has met its burden of
`demonstrating that joinder of the instant proceeding with IPR2014-01076 is
`warranted under the circumstances.
`
`ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED that Gillette’s Motion for Joinder with IPR2014-01076 is
`granted;
`FURTHER ORDERED that the instant proceeding is joined with
`IPR2014-01076;
`FURTHER ORDERED that the grounds of unpatentability on which a
`trial was instituted in IPR2014-01076 are unchanged;
`FURTHER ORDERED that the Scheduling Order for IPR2014-01076
`(Paper 12) shall govern the joined proceeding; the initial conference call for
`the joined proceeding is scheduled on December 17, 2014 at 2:00 p.m. 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 IPR2014-01076;
`FURTHER ORDERED that, throughout IPR2014-01076, Petitioners
`(GlobalFoundries and Gillette) will file papers, except for motions which do
`not involve the other parties, as consolidated filings1; GlobalFoundries 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.
`
`
`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.
`5
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`IPR2014-01019
`Patent 6,805,779 B2
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`§ 42.24 will apply to all consolidated filings (e.g., a consolidated filing of a
`reply to a patent owner response should be 15 pages or less);
`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 IPR2014-01076 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 IPR2014-01076.
`
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`6
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`IPR2014-01019
`Patent 6,805,779 B2
`
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`For PETITIONER:
`
`Michael Diener
`Larissa Park
`WILMER, CUTLER, PICKERING, HALE AND DORR, LLP
`michael.diener@wilmerhale.com
`larissa.park@wilmerhale.com
`
`For PATENT OWNER:
`
`Gregory J. Gonsalves
`gonsalves@gonsalveslawfirm.com
`
`Bruce J. Barker
`CHAO HADIDI STARK & BARKER LLP
`bbarker@chsblaw.com
`
`
`
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`7
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`GLOBAL FOUNDRIES 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 IPR2014-010761
`Patent 7,147,779 B2
`____________
`
`
`
`
`
`
`1 Case IPR2014-001019 has been joined with the instant proceeding.