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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 IPR2014-01025
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`U.S. PATENT NO. 6,805,779
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`CLAIMS 7, 9, 20, 21, 38, and 44
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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 136255136v.1
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`I.
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`INTRODUCTION
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`Petitioner's Renewed Motion for Joinder (IPR2014-01025)
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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 IPR2014-01025 (the “Gillette IPR”),
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`and moves for joinder of the Gillette IPR with IPR2014-00917 (the “TSMC IPR”),
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`filed by Taiwan Semiconductor Manufacturing Company, LTD. and TSMC North
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`America Corp. (“TSMC”). The Gillette IPR is identical to the TSMC IPR in all
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`substantive respects, includes identical exhibits, and relies upon the same expert
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`declarant. TSMC does not oppose this motion.
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`II. BACKGROUND AND RELATED PROCEEDINGS
`The Gillette IPR and TSMC 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-LTS (Zond v. AMD, Inc., et al.); 1:13-cv-11581-DJC (Zond v.
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`Toshiba Am. Elec. Comp. Inc.); 1:13-cv-11625-NMG (Zond v. Renesas Elec. Corp.);
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`1:13-cv-11634-WGY (Zond v. Fujitsu Semiconductor Ltd., et al. and Taiwan
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`Semiconductor Mfg. Co.); 1:14-cv-12438-WGY (Zond v. Fujitsu Semiconductor Ltd.
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`et al. and Taiwan Semiconductor Mfg. Co.); and 1:13-cv-11567-DJC (Zond v. The
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`Gillette Co., et al.).
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`Petitioner's Renewed Motion for Joinder (IPR2014-01025)
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`In particular, a first complaint in 1:13-cv-11634-WGY (Zond v. Fujitsu) was
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`filed against TSMC on July 9, 2013, a second complaint in 1:14-cv-12438-WGY
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`(Zond v. Fujitsu) was filed against TSMC on June 10, 2014, and a first complaint in
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`1:13-cv-11567-DJC (Zond v. Gillette) was served on Gillette on July 2, 2013. In its
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`complaint, Zond alleges Gillette infringes ten of Zond’s patents, nine of which
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`overlap with the patents Zond alleges TSMC 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, U.S. Patent No. 6,896,773 B2 and U.S. Patent No.
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`6,896,775 B2. (the “Overlapping Patents”).1
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`Currently, inter partes review petitions are pending which relate to the
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`Overlapping Patents and involve TSMC and Gillette. All petitions for inter partes
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`1
`Gillette also has filed two petitions for an inter partes review of an additional
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`patent asserted by Zond against Gillette. See IPR2014-00477 and IPR2014-00479
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`(U.S. Patent No. 8,125,155). Gillette does not seek joinder of these petitions, nor
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`does it seek joinder of its IPR2014-00580 and IPR2014-00726 (U.S. Patent No.
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`6,896,773 B2) petitions or its IPR2014-00578 and IPR2014-00604 (U.S. Patent No.
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`6,896,775 B2) petitions with TSMC’s corresponding petitions.
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`review that have been filed by TSMC and Gillette are timely as prescribed by 35
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`Petitioner's Renewed Motion for Joinder (IPR2014-01025)
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`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 TSMC2, subject to the
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`same conditions sought by this motion. TSMC 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 TSMC IPR
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`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 TSMC IPR petitions, including the TSMC IPR. A conference call with the
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`Board was held on Monday, August 4, 2014 to discuss TSMC’s pending motion.
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`The Board issued an order on August 5, 2014 (Paper 13, Case IPR2014-00443),
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`2 The Appendix contains a list of these petitions.
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`requesting all petitioners to file motions for joinder within 10 days of the order.
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`Petitioner's Renewed Motion for Joinder (IPR2014-01025)
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`Gillette subsequently filed a motion for joinder with a corresponding Intel IPR. Intel
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`subsequently terminated its corresponding IPR proceeding. On Tuesday, September
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`16, 2014, the Board issued a subsequent paper requesting renewed joinder motions
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`within five business days.
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`III. DISCUSSION
`If the Director institutes an inter partes review on the TSMC 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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`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 TSMC 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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`Petitioner's Renewed Motion for Joinder (IPR2014-01025)
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`Substantively Identical Petitions
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`1.
`Gillette represents that the Gillette IPR is identical to the TSMC 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 TSMC 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 TSMC 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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`Opposition to Motion to Exclude Evidence and Reply). Specifically, Gillette agrees
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`to incorporate its filings with those of TSMC in a consolidated filing, subject to the
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`ordinary page limits for one party. TSMC 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 it advances jointly
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`with TSMC in the consolidated filings. This agreement thus avoids lengthy and
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`duplicative briefing.
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`Petitioner's Renewed Motion for Joinder (IPR2014-01025)
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`Consolidated discovery is also appropriate given that Gillette and TSMC are
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`using the same expert declarant who has submitted an identical declaration in the two
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`proceedings. Gillette and TSMC 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 TSMC within the timeframe normally allotted by the rules
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`for one party. Gillette and TSMC will not receive separate cross-examination or
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`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 TSMC 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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`TSMC 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 TSMC IPR and the Gillette
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`IPR is without consequence should the proceedings be joined. The trial schedule for
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`the TSMC IPR would not need to be delayed to effect joinder. The joint proceeding
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`would allow the Board and the parties to focus on the merits in one consolidated
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`proceeding in a timely manner.
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`Petitioner's Renewed Motion for Joinder (IPR2014-01025)
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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 TSMC 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 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 TSMC does not oppose:
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`If review is instituted on any ground in the TSMC IPR, the Gillette IPR
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`will be instituted and will be joined with the TSMC IPR on the same
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`grounds. Grounds not instituted because of any finding that the TSMC
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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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`Petitioner's Renewed Motion for Joinder (IPR2014-01025)
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`The scheduling order for the TSMC IPR will apply for the joined
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`proceeding.
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`Throughout the proceeding, TSMC 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, TSMC and Gillette will identify each such filing as
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`a consolidated filing and will be responsible for completing all
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`consolidated filings.
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`TSMC and Gillette will designate an attorney to conduct the cross
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`examination of any witness produced by Zond and the redirect of any
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`witness produced by TSMC or Gillette within the timeframe normally
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`allotted by the rules for one party. TSMC and Gillette will not receive
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`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 TSMC 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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`Petitioner's Renewed Motion for Joinder (IPR2014-01025)
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`V. CONCLUSION
`For the foregoing reasons, if the Director institutes inter partes review of the
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`TSMC IPR, Gillette respectfully requests that the Board grant joinder of the Gillette
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`IPR and TSMC IPR proceedings.
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`Petitioner's Renewed Motion for Joinder (IPR2014-01025)
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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 (IPR2014-01025)
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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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`6,805,779
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`6,806,652
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`6,853,142
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`6,853,142
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`6,853,142
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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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`7,604,716
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`TSMC:
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`Gillette:
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`IPR2014-00917
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`IPR2014-01025
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`IPR2014-00829
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`IPR2014-01020
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`IPR2014-00828
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`IPR2014-01022
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`7, 9, 20,
`21, 38, and
`44
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`16, 28, 41,
`42, 45 and
`46
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`30-37, 39
`and 40
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`18-34
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`IPR2014-00861
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`IPR2014-01003
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`1, 3-10,
`12, 15, 17-
`20 and 42
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`2, 11, 13,
`14 and 16
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`21, 24, 26-
`28, 31, 32,
`37 and 38
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`22, 23, 25,
`29, 30, 33-
`36, 39 and
`43
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`22-33, 37,
`46, 48 and
`50
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`20, 21, 34-
`36, 38, 39,
`47 and 49
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`14-18 and
`25-32
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`IPR2014-00818
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`IPR2014-01012
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`IPR2014-00821
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`IPR2014-01013
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`IPR2014-00819
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`IPR2014-01014
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`IPR2014-00827
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`IPR2014-01015
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`IPR2014-00782
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`IPR2014-00986
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`IPR2014-00781
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`IPR2014-00985
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`IPR2014-00807
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`IPR2014-00974
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`7,604,716
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`7,808,184
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`7,808,184
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`7,811,421
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`7,811,421
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`7,811,421
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`Petitioner's Renewed Motion for Joinder (IPR2014-01025)
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`19-24
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`IPR2014-00808
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`IPR2014-00975
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`IPR2014-00799
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`IPR2014-00995
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`IPR2014-00803
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`IPR2014-00996
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`IPR2014-00800
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`IPR2014-00991
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`IPR2014-00802
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`IPR2014-00992
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`IPR2014-00805
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`IPR2014-00990
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`1-5 and
`11-15
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`6-10 and
`16-20
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`1, 2, 8, 10-
`13, 15-17,
`22-25, 27-
`30, 33, 34,
`38, 39,42,
`43 and 46-
`48
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`9, 14, 21,
`26, 35 and
`37
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`3-7, 18-20,
`31, 32, 36,
`40, 41, 44
`and 45
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`Petitioner's Renewed Motion for Joinder (IPR2014-01025)
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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;
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`bbarker@chsblaw.com
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`Documents served 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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`
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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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`ActiveUS 136255136v.1
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