`
`
`
`
`
`
`Petitioner’s Revised Motion for Joinder (IPR2014-01063)
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________________________________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________________________________
`
`
`RENESAS ELECTRONICS CORPORATION, RENESAS ELECTRONICS
`AMERICA, INC., ADVANCED MICRO DEVICES, INC.,
`GLOBALFOUNDRIES U.S., INC., GLOBALFOUNDRIES DRESDEN
`MODULE ONE LLC & CO. KG, GLOBALFOUNDRIES DRESDEN MODULE
`TWO LLC & CO. KG, TOSHIBA AMERICA ELECTRONIC COMPONENTS,
`INC., TOSHIBA AMERICA INC., TOSHIBA AMERICA INFORMATION
`SYSTEMS, INC., AND TOSHIBA CORPORATION
`Petitioner
`
`v.
`
`ZOND, INC.
`Patent Owner
`
`Case No. IPR2014-01063
`
`U.S. PATENT NO. 6,853,142
`
`CLAIMS 22, 23, 25, 29, 30, 33-36, 39 and 43
`
`Title: METHODS AND APPARATUS FOR
`GENERAТING НIGH-DENSIТY PLASМA
`
`PETITIONER’S REVISED MOTION FOR JOINDER UNDER 35 U.S.C.
`§315(c) AND 37 C.F.R. § 42.22 AND § 42.122(b)
`
`4819-6514-6654.1
`
`
`
`
`
`Petitioner’s Revised Motion for Joinder (IPR2014-01063)
`
`INTRODUCTION
`
`Renesas Electronics Corporation, Renesas Electronics America, Inc.,
`
`Advanced Micro Devices, Inc., GLOBALFOUNDRIES U.S., Inc.,
`
`GLOBALFOUNDRIES Dresden Module One LLC & Co. KG,
`
`GLOBALFOUNDRIES Dresden Module Two LLC & Co. KG, Toshiba America
`
`Electronic Components, Inc., Toshiba America Inc., Toshiba America Information
`
`Systems, Inc., and Toshiba Corporation (collectively, “Petitioner”) filed the present
`
`petition for inter partes review, IPR2014-01063(the “Joint IPR”) and hereby move
`
`for joinder of the Joint IPR with IPR2014-00827, filed by TSMC IPR Taiwan
`
`Semiconductor Manufacturing Company (the “TSMC IP”). The Joint IPR is
`
`identical to the TSMC IPR in all substantive respects, includes identical exhibits,
`
`and relies upon the same expert declarant. Fujitsu Semiconductor Limited and
`
`Fujitsu Semiconductor America, Inc. (collectively “Fujitsu”), and The Gillette
`
`Company and Proctor & Gamble, Inc. (collectively, “Gillette”) have filed petitions
`
`identical to the TSMC IPR and have likewise moved for joinder with the TSMC
`
`IPR. TSMC, Fujitsu, and Gillette do not oppose this motion. Zond declined to
`
`take a position at this time.
`
`BACKGROUND AND RELATED PROCEEDINGS
`
`The Joint IPR and TSMC IPR are among a family of inter partes review
`
`proceedings relating to seven patents that are being asserted by Zond, Inc.
`
`- 2 -
`
`
`
`Petitioner’s Revised Motion for Joinder (IPR2014-01063)
`
`(“Zond”) against numerous defendants in the District of Massachusetts: 1:13-cv-
`
`11577-DPW (Zond v. AMD, Inc., et al); 1:13-cv-11581-DJC (Zond v. Toshiba Am.
`
`Elec. Comp. Inc.); 1:13-cv-11625-NMG (Zond v. Renesas Elec. Corp.); 1:13-cv-
`
`11634-WGY (Zond v. Fujitsu and TSMC); and 1:13-cv-11567-DJC (Zond v.
`
`Gillette, Co.).
`
`The following table summarizes the dates on which a first complaint was
`
`served on Petitioner.
`
`Defendant Group
`
`Case
`
`AMD
`
`GlobalFoundries
`
`Renesas
`
`Toshiba
`
`Zond v. AMD, Inc., et al., Case
`No. 1:13-cv-11577-DPW
`Zond v. AMD, Inc., et al., Case
`No. 1:13-cv-11577-DPW
`Zond v. Renesas Elec. Corp., Case
`No.1:13-cv-11625-NMG
`Zond v. Toshiba Am. Elec. Comp.
`Inc., Case No.1:13-cv-11581-DJC
`
`Service Date of First
`Complaint
`July 2, 2013
`
`December 5, 2013
`
`July 8, 2013
`
`July 3, 2013
`
`Accordingly, all petitions for inter partes review that have been filed by
`
`defendants, AMD, GlobalFoundries, Renesas, and Toshiba are timely as prescribed
`
`by 35 U.S.C. § 315(b).
`
`On June 6, 2014, as clarified on July 22, 2014, in 11:13-cv-11577-DPW
`
`(Zond v. AMD, Inc., et al), the Court entered an order to administratively stay the
`
`case pending conclusion of inter partes reviews.
`
`- 3 -
`
`
`
`Petitioner’s Revised Motion for Joinder (IPR2014-01063)
`
`Currently, the family of inter partes review proceedings relating to the seven
`
`Zond patents (the “Zond IPRs”) consists of the following proceedings initiated by
`
`TSMC and later by only the GlobalFoundries entities or jointly by AMD,
`
`GlobalFoundries, Renesas, and Toshiba:
`
`TSMC IPRs
`TSMC
`TSMC
`Ref
`Filed
`
`Joint IPRs
`Joint
`Filed
`
`Joint Ref
`
`GlobalFoundries IPRs
`
`Claims
`
`GF Ref
`
`GF Filed
`
`Claims Challenged
`
`n/a
`
`n/a
`
`n/a
`
`06/30/14
`
`06/30/14
`
`06/30/14
`
`
`
`n/a
`
`n/a
`
`IPR2014‐
`01073
`IPR2014‐
`01076
`
`06/30/14
`
`06/30/14
`
`1‐4, 10‐15, 17, 18,
`24‐27 and 29
`5, 6, 8, 19, 22, 23,
`and 43
`
`n/a
`
`n/a
`
`n/a
`
`n/a
`
`n/a
`
`n/a
`
`n/a
`
`n/a
`
`30‐40
`
`30‐37, 39, 40
`
`16, 28, 41, 42, 45
`and 46
`7, 9, 20, 21, 38, and
`44
`
`IPR2014‐
`01089
`IPR2014‐
`01088
`
`07/01/14
`
`35
`
`07/01/14
`
`1‐17
`
`06/30/14
`
`n/a
`
`n/a
`
`18‐34
`
`
`
`n/a
`
`06/30/14
`
`06/27/14
`
`06/27/14
`
`06/30/14
`
`IPR2014‐
`01098
`
`07/01/14
`
`40, 41
`
`n/a
`
`n/a
`
`n/a
`
`n/a
`
`n/a
`
`n/a
`
`n/a
`
`n/a
`
`1, 3‐10, 12, 15, 17‐
`20, 42
`
`2, 11, 13, 14, 16
`
`21, 24, 26‐28, 31, 32,
`37, 38
`22, 23, 25, 29, 30,
`33‐36, 39, 43
`
`Patent
`
`6,805,779
`
`6,806,652
`
`n/a
`
`n/a
`
`IPR2014‐
`00828
`
`n/a
`
`IPR2014‐
`00829
`IPR2014‐
`00917
`
`n/a
`
`n/a
`
`IPR2014‐
`00861
`
`n/a
`
`n/a
`
`n/a
`
`n/a
`
`05/28/14
`
`n/a
`
`IPR2014‐
`n/a
`01070
`05/28/14 IPR2014‐
`01072
`06/09/14 IPR2014‐
`01074
`
`n/a
`
`n/a
`
`n/a
`n/a
`05/30/14 IPR2014‐
`01066
`
`6,853,142
`
`n/a
`
`n/a
`
`n/a
`
`IPR2014‐
`00818
`IPR2014‐
`00821
`IPR2014‐
`00819
`IPR2014‐
`00827
`
`05/27/14 IPR2014‐
`01075
`05/27/14 IPR2014‐
`01057
`05/27/14 IPR2014‐
`01046
`05/28/14 IPR2014‐
`01063
`
`- 4 -
`
`
`
`Petitioner’s Revised Motion for Joinder (IPR2014-01063)
`
`7,147,759
`
`n/a
`
`n/a
`
`n/a
`
`n/a
`
`n/a
`
`n/a
`
`n/a
`
`n/a
`
`n/a
`
`
`
`n/a
`
`n/a
`
`n/a
`
`IPR2014‐
`01086
`IPR2014‐
`01087
`IPR2014‐
`01083
`
`06/30/14
`
`06/30/14
`
`1, 4, 10‐12, 17, 18,
`44
`2, 3, 5‐9, 13‐16, 19,
`41‐43, 45
`
`06/30/14
`
`40
`
`IPR2014‐
`00781
`IPR2014‐
`00782
`
`05/19/14 IPR2014‐
`01047
`05/19/14 IPR2014‐
`01059
`
`06/27/14
`
`06/27/14
`
`n/a
`
`n/a
`
`n/a
`
`n/a
`
`20, 21, 34‐36, 38, 39,
`47, 49
`
`22‐33, 37, 46, 48, 50
`
`7,604,716
`
`7,808,184
`
`7,811,421
`
`n/a
`
`n/a
`
`n/a
`n/a
`05/23/14 IPR2014‐
`01065
`05/23/14 IPR2014‐
`01067
`
`05/22/14 IPR2014‐
`01042
`05/22/14 IPR2014‐
`01061
`
`
`
`n/a
`
`n/a
`
`06/30/14
`
`IPR2014‐
`01099
`IPR2014‐
`01100
`n/a
`
`06/30/14
`
`n/a
`
`
`
`06/27/14
`
`06/30/14
`
`
`
`n/a
`
`n/a
`
`05/22/14 IPR2014‐
`01037
`05/22/14 IPR2014‐
`01071
`05/23/14 IPR2014‐
`01069
`
`06/30/14
`
`n/a
`
`06/30/14
`
`06/30/14
`
`n/a
`
`n/a
`
`n/a
`
`n/a
`
`IPR2014‐
`00807
`IPR2014‐
`00808
`
`IPR2014‐
`00799
`IPR2014‐
`00803
`
`IPR2014‐
`00800
`
`IPR2014‐
`00802
`IPR2014‐
`00805
`
`07/01/14
`
`1‐11 and 33
`
`07/01/14
`
`12 and 13
`
`n/a
`
`n/a
`
`n/a
`
`n/a
`
`n/a
`
`n/a
`
`n/a
`
`14‐18 and 25‐32
`
`19‐24
`
`1‐5, 11‐15
`
`6‐10, 16‐20
`
`1, 2, 8, 10‐13, 15‐17,
`22‐25, 27‐30, 33, 34,
`38, 39, 42, 43, 46‐48
`
`9, 14, 21, 26, 35, 37
`
`3‐7, 18‐20, 31, 32,
`36, 40, 41, 44, 45
`
`Similar to the above petitions, Fujitsu, and/or Gillette also filed petitions that
`
`address the same patent claims as the Joint IPR and the TSMC IPR. For the Joint
`
`IPR, Fujitsu’s corresponding petition is IPR2014-00865; and Gillette’s
`
`corresponding petition is IPR2014-01015.
`
`- 5 -
`
`
`
`Petitioner’s Revised Motion for Joinder (IPR2014-01063)
`
`The petitions for IPR filed by Petitioner are the same as the petitions first
`
`filed by TSMC against the same patent claims, and are identical to the TSMC
`
`petitions in all substantive respects. They include identical grounds, analysis, and
`
`exhibits and rely upon the same expert declarants and declarations.
`
`In addition to this motion, Petitioner is presently filing motions for joinder
`
`of each of their Zond IPR petitions with the corresponding petitions filed by
`
`TSMC, subject to the same conditions sought by this motion. TSMC and Gillette
`
`do not oppose any of Petitioner’s motions while Zond declined to take a position
`
`on the motions at this time. Moreover, Petitioner understands that other Zond
`
`petitioners have or will file a motion for joinder agreeing to the same conditions
`
`herein.
`
`In its September 16, 2014 Order in IPR2014-01047, the Board articulated
`
`that Petitioner must file its revised motions for joinder within five business days.
`
`The order resulted from Intel Corporation’s (“Intel”) reaching a settlement
`
`agreement with Zond and Intel’s subsequent withdrawal from its IPR petitions.
`
`Since Petitioner’s original motion for joinder sought joinder with the
`
`corresponding Intel IPR, Petitioner is required to file a revised motion for joinder
`
`with the TSMC IPR.
`
`- 6 -
`
`
`
`Petitioner’s Revised Motion for Joinder (IPR2014-01063)
`
`DISCUSSION
`
`If the Director institutes an inter partes review, Petitioner respectfully
`
`requests that the Board exercise its discretion to grant joinder of the Joint IPR and
`
`TSMC IPR proceedings pursuant to 35 U.S.C. § 315(c), 37 C.F.R. § 42.22, and 37
`
`C.F.R. § 42.122(b). In support of this motion, Petitioner proposes consolidated
`
`filings and other procedural accommodations designed to streamline the
`
`proceedings.
`
`1.
`
`Reasons Why Joinder is Appropriate
`
`Joinder is appropriate in this case because it is the most expedient way to
`
`secure the just, speedy, and inexpensive resolution of the related proceedings. See
`
`35 U.S.C. § 316(b); 37 C.F.R. § 42.1(b). Intentionally, the Joint IPR is
`
`substantively identical to the corresponding TSMC IPR in an effort to avoid
`
`multiplication of issues before the Board. Given the duplicative nature of these
`
`petitions, joinder of the related proceedings is appropriate. Further, Petitioner will
`
`agree to consolidated filings and discovery, and procedural concessions, which
`
`TSMC does not oppose.
`
`a)
`Petitioner represents that the Joint IPR is identical to the TSMC IPR in all
`
`Substantively Identical Petitions
`
`substantive respects. It includes identical grounds, analysis, and exhibits and relies
`
`upon the same expert declarant and declaration. Accordingly, if instituted,
`
`- 7 -
`
`
`
`Petitioner’s Revised Motion for Joinder (IPR2014-01063)
`
`maintaining the Joint IPR proceeding separate from that of TSMC would entail
`
`needless duplication of effort.
`
`b)
`Because the grounds of unpatentability in the Joint IPR and TSMC IPR are
`
`Consolidated Filings and Discovery
`
`the same, the case is amenable to consolidated filings. Petitioner will agree to
`
`consolidated filings for all substantive papers in the proceeding (e.g., Reply to the
`
`Patent Owner’s Response, Opposition to Motion to Amend, Motion for
`
`Observation on Cross Examination Testimony of a Reply Witness, Motion to
`
`Exclude Evidence, Opposition to Motion to Exclude Evidence and Reply).
`
`Specifically, Petitioner will agree to incorporate its filings with those of TSMC in a
`
`consolidated filing, subject to the ordinary rules for one party on page limits.
`
`TSMC and Petitioner will be jointly responsible for the consolidated filings.
`
`Petitioner agrees not to be permitted any arguments separate from those
`
`advanced by Petitioner and TSMC in the consolidated filings. These limitations
`
`avoid lengthy and duplicative briefing.
`
`Consolidated discovery is also appropriate given that Petitioner and TSMC
`
`are using the same expert declarant who has submitted the same, identical
`
`declaration in the two proceedings. Petitioner and TSMC will designate an
`
`attorney to conduct the cross-examination of any given witness produced by Zond
`
`and the redirect of any given witness produced by Petitioner or TSMC within the
`
`- 8 -
`
`
`
`Petitioner’s Revised Motion for Joinder (IPR2014-01063)
`
`timeframe normally allotted by the rules for one party. Petitioner will not receive
`
`any separate cross-examination or redirect time.
`
`Petitioner will agree to the foregoing conditions regarding consolidated
`
`filings and discovery even in the event other IPRs filed by other, third-party
`
`petitioners are joined with the TSMC IPR.
`
`2.
`
`No New Grounds of Patentability
`
`The Joint IPR raises no new grounds of unpatentability from those of the
`
`TSMC IPR because, in fact, the petitions are identical.
`
`3.
`
`No Impact on IPR Trial Schedule
`
`The small difference between the filing date of the Joint IPR and the TSMC
`
`IPR is without consequence should the proceedings be joined. The trial schedule
`
`for the TSMC IPR would not need to be delayed to effect joinder based on Zond’s
`
`preliminary response and later-filed Joint IPR. The joint proceeding would allow
`
`the Board and parties to focus on the merits in one consolidated proceeding
`
`without unnecessary duplication of effort, and in a timely manner.
`
`4.
`
`Briefing and Discovery Will Be Simplified
`
`Joinder will simplify briefing and discovery because Petitioner seeks an
`
`order similar to that issued in Motorola Mobility LLC v. Softview LLC, IPR2013-
`
`00256 (PTAB June 20, 2013) (Paper 10). As discussed above, Petitioner and
`
`TSMC will engage in consolidated filings and discovery, which will simplify the
`
`briefing and discovery process.
`
`- 9 -
`
`
`
`Petitioner’s Revised Motion for Joinder (IPR2014-01063)
`
`5.
`
`No Prejudice to Zond if Proceedings are Joined
`
`Petitioner proposes joinder to streamline the proceedings and reduce the
`
`costs and burdens on the parties. Petitioner believes joinder will achieve these
`
`goals for several reasons. First, joinder will most certainly decrease the number of
`
`papers the parties must file, by eliminating a duplicative proceeding. Second,
`
`joinder will also reduce by half the time and expense for depositions and other
`
`discovery required in separate proceedings. Third, joinder creates case
`
`management efficiencies for the Board and parties without any prejudice to Zond.
`
`PROPOSED ORDER
`
`Petitioner proposes a joinder order for consideration by the Board as
`
`follows, which TSMC, Fujitsu, and Gillette do not oppose and Zond has declined
`
`to take a position:
`
` If review is instituted on any ground in the TSMC IPR, the Joint IPR
`
`will be instituted and will be joined with the TSMC IPR on the same
`
`grounds. Grounds not instituted because the TSMC IPR failed to
`
`establish a reasonable likelihood of prevailing, if any, will be similarly
`
`denied in the Joint IPR.
`
` The scheduling order for the TSMC IPR will apply for the joined
`
`proceeding.
`
`- 10 -
`
`
`
`Petitioner’s Revised Motion for Joinder (IPR2014-01063)
`
` Throughout the proceeding, TSMC and Petitioner will file papers as
`
`consolidated filings, except for motions that do not involve the other
`
`party, in accordance with the Board’s established rules regarding page
`
`limits. So long as they both continue to participate in the joined
`
`proceeding, TSMC and Petitioner will identify each such filing as a
`
`Consolidated Filing and will be responsible for completing all
`
`consolidated filings.
`
` TSMC and Petitioner will designate an attorney to conduct the cross
`
`examination of any given witness produced by Zond and the redirect
`
`of any given witness produced by TSMC or Petitioner within the
`
`timeframe normally allotted by the rules for one party. Petitioner will
`
`not receive any separate cross-examination or redirect time.
`
` Zond will conduct any cross examination of any given witness jointly
`
`produced by TSMC or Petitioner and the redirect of any given witness
`
`produced by Zond within the timeframe normally allotted by the rules
`
`for one cross-examination or redirect examination.
`
`- 11 -
`
`
`
`Petitioner’s Revised Motion for Joinder (IPR2014-01063)
`
`CONCLUSION
`
`For the foregoing reasons, if the Director institutes inter partes review,
`
`Petitioner respectfully requests that the Board grant joinder of the Joint IPR and
`
`TSMC IPR proceedings.
`
`Respectfully submitted
`
`
`
`/John J. Feldhaus/
`
`
`
`John J. Feldhaus
`Reg. No. 28,822
`
`Lead Counsel for Petitioner
`
`Date: September 23, 2014
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`FOLEY & LARDNER LLP
`
`3000 K Street N.W, Suite 600
`
`Washington, D.C. 20007-5109
`
`TEL: (202) 672-5300
`
`FAX: (202) 672-5399
`
`EMAIL: jfeldhaus@foley.com
`
`
`
`
`
`
`
`- 12 -
`
`
`
`Petitioner’s Revised Motion for Joinder (IPR2014-01063)
`
`
`CERTIFICATE OF SERVICE
`
`
`
`Pursuant to 37 C.F.R. §§ 42.6(e) and 42.105(a), this is to certify that I
`
`caused to be served a true and correct copy of the foregoing “PETITIONER’S
`REVISED MOTION FOR JOINDER UNDER 35 U.S.C. § 315(c) AND 37 C.F.R.
`§ 42.22 AND § 42.122(b)” as detailed below:
`
`Date of service
`September 23, 2014
`Manner of service Email: gonsalves@gonsalveslawfirm.com;
`bbarker@chsblaw.com; kurt@rauschenbach.com
`PETITIONER’S REVISED MOTION FOR JOINDER
`UNDER 35 U.S.C. § 315(c) AND 37 C.F.R. § 42.22 AND §
`42.122(b)
`
`Dr. Gregory J. Gonsalves
`2216 Beacon Lane
`Falls Church, Virginia 22043
`
`Bruce Barker
`Chao Hadidi Stark & Barker LLP
`176 East Mail Street, Suite 6
`Westborough, Massachusetts 01581
`
`
`
`Documents served
`
`Persons served
`
`
`
`
`
`
`
`
`Michael R. Houston
`Registration No. 58,486
`
`
`
`
`
`
`
`4819-6514-6654.1
`
`