Trials@uspto.gov Paper 9
`571-272-7822 Entered: January 30, 2015
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`TAIWAN SEMICONDUCTOR MANUFACTURING COMPANY, LTD.
`(TSMC),
`Petitioner,
`
`v.
`
`DSS TECHNOLOGY MANAGEMENT, INC.,
`Patent Owner.
`____________
`
`Case IPR2014-01030
`Patent 5,652,084
`____________
`
`
`
`Before ERICA A. FRANKLIN, JACQUELINE WRIGHT BONILLA, and
`KRISTINA M. KALAN, Administrative Patent Judges.
`
`
`
`BONILLA, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`571-272-7822 Entered: January 30, 2015
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`TAIWAN SEMICONDUCTOR MANUFACTURING COMPANY, LTD.
`(TSMC),
`Petitioner,
`
`v.
`
`DSS TECHNOLOGY MANAGEMENT, INC.,
`Patent Owner.
`____________
`
`Case IPR2014-01030
`Patent 5,652,084
`____________
`
`
`
`Before ERICA A. FRANKLIN, JACQUELINE WRIGHT BONILLA, and
`KRISTINA M. KALAN, Administrative Patent Judges.
`
`
`
`BONILLA, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`IPR2014-01030
`Patent 5,652,084
`
`
`1. Introduction
`
`We instituted trial in this proceeding on December 31, 2014. IPR2014-
`
`01030, Paper 7 (“Dec. to Inst.”). On January 27, 2015, counsel for Samsung
`
`Electronics Co., Ltd. (“Samsung”), i.e., Petitioner in IPR2014-01493, involving the
`
`same challenged patent at issue here, requested that it attend an upcoming initial
`
`conference call in this proceeding, and asked that we address its request for
`
`authorization to file a motion to join as a party to IPR2014-01030. We authorized
`
`Samsung to participate in the call, and indicated that we would address its request
`
`to file a motion for joinder during the call.
`
`On January 28, 2015, an initial conference call was conducted among
`
`counsel for Petitioner Taiwan Semiconductor Manufacturing Company, Ltd.
`
`(“TSMC”), counsel for Patent Owner DSS Technology Management, Inc. (“Patent
`
`Owner”), counsel for Samsung, and Judges Franklin, Bonilla, Kokoski, and Kalan.
`
`The purpose of the call was to determine if the parties have any issues concerning
`
`the Scheduling Order (Paper 8) and to discuss any motions contemplated by the
`
`parties, including Samsung’s proposed motion for joinder.
`
`2. Samsung’s Request to File a Motion for Joinder
`
`Samsung requests authorization to file a motion in IPR2014-01493 to join as
`
`a party to IPR2014-01030. In the event of joinder, Samsung agrees to limit its
`
`Petition to grounds upon which we instituted trial in the current proceeding. Dec.
`
`to Inst. 19. Samsung agrees to consolidated filings and discovery with TSMC, and
`
`to rely on the same expert as TSMC, Dr. Richard Blanchard. Samsung requests
`
`that it, and TSMC, conduct cross-examination of any witnesses produced by Patent
`
`Owner, and redirect of any witnesses produced by Petitioners, within the same
`
`time frame normally allotted by the rules for one party. In addition, Samsung
`
`
`
`2
`
`
`
`IPR2014-01030
`Patent 5,652,084
`
`requests that, in the event of joinder, we proceed as outlined in the Scheduling
`
`Order in the current proceeding. Paper 8.
`
`During the call, neither TSMC nor Patent Owner objected to Samsung’s
`
`requests as discussed above. We authorized Samsung to file a motion for joinder
`
`by Friday, January 30, 2015, as stated in an Order we issue concurrently in
`
`IPR2014-01493.
`
`3. Related Matters
`
`Other than IPR2014-01493, the parties have identified no other inter partes
`
`reviews, reexaminations or reissue applications of U.S. Pat. No. 5,652,084 (“the
`
`’084 patent”). The parties also confirmed that Patent Owner has asserted the
`
`’084 patent against both TSMC and Samsung, among other co-defendants, in DSS
`
`Technology Mgmt. Inc. v. Taiwan Semiconductor Mfg. Co., Ltd. et al., 2-14-CV-
`
`00199 (E.D.Tx.).
`
`4. Scheduling Order
`
`None of the parties indicated any issues with respect to the Scheduling
`
`Order. The parties are reminded that, without obtaining prior authorization from
`
`the Board, they may stipulate to different dates for DATES 1–5 by filing an
`
`appropriate notice with the Board. The parties may not stipulate to any other
`
`changes to the Scheduling Order.
`
`5. Discovery
`
`There are no discovery issues pending at this time. The parties are reminded
`
`of the discovery provisions of 37 C.F.R. §§ 42.51-52 and Office Patent Trial
`
`Practice Guide. See Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756,
`
`48,761–2 (Aug. 14, 2012). As noted in 37 C.F.R. § 42.51(b)(2)(i), the parties may
`
`agree to additional discovery between themselves. Discovery requests and
`
`
`
`3
`
`
`
`IPR2014-01030
`Patent 5,652,084
`
`objections are not to be filed with the Board without prior authorization. If the
`
`parties are unable to resolve discovery issues between them, the parties may
`
`request a conference with the Board. A motion to exclude, which does not require
`
`Board authorization, must be filed to preserve any objection. See 37 C.F.R.
`
`§ 37.64, Office Patent Trial Practice Guide, 77 Fed. Reg. at 48,767.
`
`Each party may depose experts and affiants supporting the opposing party.
`
`The parties are reminded of the provisions for taking testimony found at 37 C.F.R.
`
`§ 42.53 and the Office Patent Trial Practice Guide at 77 Fed. Reg. at 48,772,
`
`App. D.
`
`6. Protective Order
`
`As discussed in the conference call, no protective order is currently in place,
`
`and none will be entered in the proceeding unless a party files a motion to seal with
`
`a proposed protective order. If the parties choose to propose a protective order
`
`other than, or departing from, the default protective order, they must submit a joint,
`
`proposed protective order, accompanied by a red-lined version based on the default
`
`protective order in Appendix B to the Board’s Office Patent Trial Practice Guide,
`
`77 Fed. Reg. at 48,771.
`
`If a party’s filed documents or things are accompanied by a motion to seal,
`
`any redacted information for which the motion is granted cannot be used in the
`
`Board’s final decision and also remain under seal, because the final decision is a
`
`matter of public record. Thus, the parties are cautioned to keep any redactions to a
`
`minimum, and to also consider other ways of presenting the information.
`
`7. Motions
`
`The parties are reminded that, except as otherwise provided in the Rules,
`
`Board authorization is required before filing a motion. 37 C.F.R. § 42.20(b).
`
`
`
`4
`
`
`
`IPR2014-01030
`Patent 5,652,084
`
`A party seeking to file a motion should request a conference to obtain authorization
`
`to file the motion. No other motions are authorized in this proceeding at this time.
`
`
`
`Accordingly, it is
`
`ORDERED that Samsung’s request for authorization to file a motion for
`
`joinder in IPR2014-01493 is granted, as stated in an Order issued concurrently in
`
`that case;
`
`FURTHER ORDERED that no other motions are authorized at this time,
`
`other than those already authorized by rule or the Scheduling Order; and
`
`FURTHER ORDERED that due dates specified in the Scheduling Order
`
`dated December 31, 2014, remain unchanged.
`
`
`
`
`
`
`PETITIONER:
`
`
`David O’Dell
`david.odell.ipr@haynesboone.com
`
`David McCombs
`david.mccombs.ipr@haynesboone.com
`
`
`PATENT OWNER:
`
`
`Andriy Lytvyn
`andriy.lytvyn@smithhopen.com
`
`Anton Hopen
`anton.hopen@smithhopen.com
`
`
`
`
`
`
`
`5
`
`
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