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