Petitioner’s Motion for Joinder (IPR2014-01070)
`
`
`Docket No. 076885.0192
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________________________________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________________________________
`
`
`ADVANCED MICRO DEVICES, INC., RENESAS ELECTRONICS
`CORPORATION, RENESAS ELECTRONICS AMERICA, 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. IPR2014-01070
`U.S. PATENT NO. 6,805,779
`CLAIMS 30-37, 39 and 40
`TITLE: PLASMA GENERATION USING MULTI-STEP IONIZATION
`
`
`PETITIONER’S MOTION FOR JOINDER UNDER 35 U.S.C. §315(c) AND
`37 C.F.R. § 42.22 AND § 42.122(b)
`
`
`
`
`
`
`
`
`
`
`
`
`
`Docket No. 076885.0192
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________________________________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________________________________
`
`
`ADVANCED MICRO DEVICES, INC., RENESAS ELECTRONICS
`CORPORATION, RENESAS ELECTRONICS AMERICA, 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. IPR2014-01070
`U.S. PATENT NO. 6,805,779
`CLAIMS 30-37, 39 and 40
`TITLE: PLASMA GENERATION USING MULTI-STEP IONIZATION
`
`
`PETITIONER’S MOTION FOR JOINDER UNDER 35 U.S.C. §315(c) AND
`37 C.F.R. § 42.22 AND § 42.122(b)
`
`
`
`
`
`
`
`
`
`
`
`
`Petitioner’s Motion for Joinder (IPR2014-01070)
`
`INTRODUCTION
`
`Advanced Micro Devices, Inc., Renesas Electronics Corporation, Renesas
`
`Electronics America, 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 IPR2014-01070 (the “Joint IPR”) and hereby move
`
`for joinder of the Joint IPR with IPR2014-00828, filed by Taiwan Semiconductor
`
`Manufacturing Company, LTD (the “TSMC IPR”). 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.
`
`1
`
`
`
`Petitioner’s Motion for Joinder (IPR2014-01070)
`
`(“Zond”) against numerous defendants in the District of Massachusetts: 1:13-cv-
`
`11570-RGS (Zond v. Intel Corp.); 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.).
`
`In particular, a first complaint in 1:13-cv-11570-RGS (Zond v. Intel) was
`
`served on defendant Intel Corporation on July 9, 2013. 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
`
`TSMC, AMD, GlobalFoundries, Renesas, and Toshiba are timely as prescribed by
`
`35 U.S.C. § 315(b).
`
`On April 18, 2014, in 1:13-cv-11570-RGS (Zond v. Intel), the Court entered
`
`an order granting Intel’s Motion to Stay pending inter partes review, indicating
`
`2
`
`
`
`Petitioner’s Motion for Joinder (IPR2014-01070)
`
`that “the Court will benefit from the expert claim analysis of the PTO.” Order
`
`Granting Mot. to Stay, Dkt. No. 120.
`
`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.
`
`Currently, the family of inter partes review proceedings relating to the seven
`
`Zond patents (the “Zond IPRs”) consists of the following proceedings:
`
`TSMC IPRs
`
`Joint IPRs
`
`GlobalFoundries
`IPRs
`
`Claims
`
`
`
`Patent
`
`6,805,779
`
`TSMC
`Ref
`
`TSMC
`Filed
`
`Joint
`Ref
`
`Joint
`Filed
`
`n/a
`
`n/a
`
`n/a
`
`n/a
`
`n/a
`
`n/a
`
`n/a
`
`n/a
`
`GF Ref
`
`GF Filed
`
`Claims Challenged
`
`IPR2014
`-01073
`
`IPR2014
`-01076
`
`06/30/14
`
`1-4, 10-15, 17, 18, 24-
`27 and 29
`
`06/30/14
`
`5, 6, 8, 19, 22, 23,
`and 43
`
`IPR2014
`-00828
`
`05/28/14
`
`n/a
`
`n/a
`
`n/a
`
`n/a
`
`30-40
`
`n/a
`
`n/a
`
`IPR2014
`-00829
`
`IPR2014
`-00917
`
`05/28/14
`
`06/09/14
`
`IPR2014
`-01070
`
`IPR2014
`-01072
`
`IPR2014
`-01074
`
`06/30/14
`
`n/a
`
`n/a
`
`30-37, 39, 40
`
`06/30/14
`
`n/a
`
`n/a
`
`06/30/14
`
`n/a
`
`n/a
`
`16, 28, 41, 42, 45 and
`46
`
`7, 9, 20, 21, 38, and
`44
`
`6,806,652
`
`n/a
`
`n/a
`
`n/a
`
`n/a
`
`
`
`n/a
`
`n/a
`
`n/a
`
`n/a
`
`IPR2014
`-01089
`IPR2014
`-01088
`
`07/01/14 35
`
`07/01/14 1-17
`
`IPR2014
`-00861
`
`05/30/14
`
`IPR2014
`-01066
`
`06/30/14
`
`n/a
`
`n/a
`
`18-34
`
`6,853,142
`
`n/a
`
`n/a
`
`n/a
`
`n/a
`
`IPR2014
`-01098
`
`07/01/14 40, 41
`
`
`
`3
`
`
`
`Petitioner’s Motion for Joinder (IPR2014-01070)
`
`IPR2014
`-00818
`
`IPR2014
`-00821
`
`IPR2014
`-00819
`
`IPR2014
`-00827
`
`05/27/14
`
`05/27/14
`
`05/27/14
`
`05/28/14
`
`IPR2014
`-01075
`
`IPR2014
`-01057
`
`IPR2014
`-01046
`
`IPR2014
`-01063
`
`06/30/14
`
`n/a
`
`n/a
`
`1, 3-10, 12, 15, 17-20,
`42
`
`06/27/14
`
`n/a
`
`n/a
`
`2, 11, 13, 14, 16
`
`06/27/14
`
`n/a
`
`n/a
`
`06/30/14
`
`n/a
`
`n/a
`
`21, 24, 26-28, 31, 32,
`37, 38
`
`22, 23, 25, 29, 30, 33-
`36, 39, 43
`
`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 1, 4, 10-12, 17, 18, 44
`
`06/30/14
`
`2, 3, 5-9, 13-16, 19,
`41-43, 45
`
`06/30/14 40
`
`IPR2014
`-00781
`
`IPR2014
`-00782
`
`05/19/14
`
`05/19/14
`
`IPR2014
`-01047
`
`IPR2014
`-01059
`
`06/27/14
`
`n/a
`
`n/a
`
`20, 21, 34-36, 38, 39,
`47, 49
`
`06/27/14
`
`n/a
`
`n/a
`
`22-33, 37, 46, 48, 50
`
`7,604,716
`
`
`
`n/a
`
`n/a
`
`n/a
`
`n/a
`
`n/a
`
`n/a
`
`n/a
`
`n/a
`
`IPR2014
`-01099
`
`IPR2014
`-01100
`
`07/01/14 1-11 and 33
`
`07/01/14 12 and 13
`
`IPR2014
`-00807
`
`IPR2014
`-00808
`
`IPR2014
`-00799
`
`IPR2014
`-00803
`
`IPR2014
`-00800
`
`IPR2014
`-00802
`
`IPR2014
`-00805
`
`05/23/14
`
`05/23/14
`
`05/22/14
`
`05/22/14
`
`IPR2014
`-01065
`
`IPR2014
`-01067
`
`IPR2014
`-01042
`
`IPR2014
`-01061
`
`05/22/14
`
`05/22/14
`
`05/23/14
`
`IPR2014
`-01037
`
`IPR2014
`-01071
`
`IPR2014
`-01069
`
`06/30/14
`
`n/a
`
`n/a
`
`14-18 and 25-32
`
`06/30/14
`
`n/a
`
`n/a
`
`19-24
`
`
`
`06/27/14
`
`n/a
`
`n/a
`
`1-5, 11-15
`
`06/30/14
`
`n/a
`
`n/a
`
`6-10, 16-20
`
`
`
`06/30/14
`
`n/a
`
`n/a
`
`1, 2, 8, 10-13, 15-17,
`22-25, 27-30, 33, 34,
`38, 39, 42, 43, 46-48
`
`06/30/14
`
`n/a
`
`n/a
`
`9, 14, 21, 26, 35, 37
`
`06/30/14
`
`n/a
`
`n/a
`
`3-7, 18-20, 31, 32, 36,
`40, 41, 44, 45
`
`7,808,184
`
`7,811,421
`
`4
`
`
`
`Petitioner’s Motion for Joinder (IPR2014-01070)
`
`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, the corresponding petitions are Case Nos. IPR2014-00828 and IPR2014-
`
`001022.
`
`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 first filed by
`
`TSMC, subject to the same conditions sought by this motion. TSMC does 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 motions for joinder within five business days.
`
`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
`
`5
`
`
`
`Petitioner’s Motion for Joinder (IPR2014-01070)
`
`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)
`
`Substantively Identical Petitions
`
`Petitioner represents that the Joint IPR is identical to the TSMC IPR in all
`
`substantive respects. It includes identical grounds, analysis, and exhibits and relies
`
`upon the same expert declarant and declaration. Accordingly, if instituted,
`
`maintaining the Joint IPR proceeding separate from that of TSMC would entail
`
`needless duplication of effort.
`
`b)
`
`Consolidated Filings and Discovery
`
`6
`
`
`
`Petitioner’s Motion for Joinder (IPR2014-01070)
`
`Because the grounds of unpatentability in the Joint IPR and TSMC IPR are
`
`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
`
`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
`
`7
`
`
`
`Petitioner’s Motion for Joinder (IPR2014-01070)
`
`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.
`
`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
`
`8
`
`
`
`Petitioner’s Motion for Joinder (IPR2014-01070)
`
`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 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.
`
`• 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
`
`9
`
`
`
`Petitioner’s Motion for Joinder (IPR2014-01070)
`
`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.
`
`
`
`
`
`10
`
`
`
`Petitioner’s Motion for Joinder (IPR2014-01070)
`
`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
`
`Respectfully submitted
`
`/s/ Robinson Vu
`
`
`
`
`
`Robinson Vu (Reg. No. 60,211),
`
`TSMC IPR proceedings.
`
`Date: September 23, 2014
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`BAKER BOTTS LLP
`
`910 LOUISIANA ST
`
`HOUSTON, TX 77002
`
`713 229-1715
`
`robinson.vu@bakerbotts.com
`
`
`
`
`
`11
`
`
`
`Petitioner’s Motion for Joinder (IPR2014-01070)
`
`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
`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
`
`
`
`Manner of service
`
`
`
`
`
`Documents served
`
`
`
`
`
`
`
`
`
`Persons Served
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`September 23, 2014
`
`Email: gonsalves@gonsalveslawfirm.com;
`bbarker@chsblaw.com
`
`PETITIONER’S 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, MA 01581
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`/s/ Robinson Vu
`
`
`
`
`
`Robinson Vu (Reg. No. 60,211)
`
`12
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
