Petitioner’s Motion for Joinder (IPR2014-01072)
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`Docket No. 076885.0192
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________________________________
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`
`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. IPR2014-01072
`U.S. PATENT NO. 6,805,779
`CLAIMS 16, 28, 41, 42, 45 AND 46
`TITLE: PLASMA GENERATION USING MULTI-STEP IONIZATION
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`
`PETITIONER’S 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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`Docket No. 076885.0192
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`
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`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. IPR2014-01072
`U.S. PATENT NO. 6,805,779
`CLAIMS 16, 28, 41, 42, 45 AND 46
`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)
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`Petitioner’s Motion for Joinder (IPR2014-01072)
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`INTRODUCTION
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`Advanced Micro Devices, Inc., Renesas Electronics Corporation, Renesas
`
`Electronics America, Inc., GLOBALFOUNDRIES U.S., Inc.,
`
`GLOBALFOUNDRIES Dresden Module One LLC & Co. KG,
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`GLOBALFOUNDRIES Dresden Module Two LLC & Co. KG, Toshiba America
`
`Electronic Components, Inc., Toshiba America Inc., Toshiba America Information
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`Systems, Inc., and Toshiba Corporation (collectively, “Petitioner”) filed the present
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`petition for inter partes review IPR2014-01072 (the “Joint IPR”) and hereby move
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`for joinder of the Joint IPR with IPR2014-00820, filed by Intel Corporation (the
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`“Intel IPR”). The Joint IPR is identical to the Intel IPR in all substantive respects,
`
`includes identical exhibits, and relies upon the same expert declarant. Taiwan
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`Semiconductor Manufacturing Co., Ltd. and TSMC North America Corp.
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`(collectively “TSMC”), Fujitsu Semiconductor Limited and Fujitsu Semiconductor
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`America, Inc. (collectively “Fujitsu”), and The Gillette Company and Proctor &
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`Gamble, Inc. (collectively, “Gillette”) have filed petitions identical to the Intel IPR
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`and have likewise moved for joinder with the Intel IPR. Intel Corporation and
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`Gillette do not oppose this motion. Zond declined to take a position at this time.
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`BACKGROUND AND RELATED PROCEEDINGS
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`The Joint IPR and Intel IPR are among a family of inter partes review
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`proceedings relating to seven patents that are being asserted by Zond, Inc.
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`1
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`
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`Petitioner’s Motion for Joinder (IPR2014-01072)
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`(“Zond”) against numerous defendants in the District of Massachusetts: 1:13-cv-
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`11570-RGS (Zond v. Intel Corp.); 1:13-cv-11577-DPW (Zond v. AMD, Inc., et al);
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`1:13-cv-11581-DJC (Zond v. Toshiba Am. Elec. Comp. Inc.); 1:13-cv-11625-NMG
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`(Zond v. Renesas Elec. Corp.); 1:13-cv-11634-WGY (Zond v. Fujitsu and TSMC);
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`and 1:13-cv-11567-DJC (Zond v. Gillette, Co.).
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`In particular, a first complaint in 1:13-cv-11570-RGS (Zond v. Intel) was
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`served on defendant Intel Corporation on July 9, 2013. The following table
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`summarizes the dates on which a first complaint was served on Petitioner.
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`Defendant Group
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`Case
`
`AMD
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`GlobalFoundries
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`Renesas
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`Toshiba
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`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
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`Service Date of First
`Complaint
`July 2, 2013
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`December 5, 2013
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`July 8, 2013
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`July 3, 2013
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`Accordingly, all petitions for inter partes review that have been filed by defendants
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`Intel, AMD, GlobalFoundries, Renesas, and Toshiba are timely as prescribed by 35
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`U.S.C. § 315(b).
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`On April 18, 2014, in 1:13-cv-11570-RGS (Zond v. Intel), the Court entered
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`an order granting Intel’s Motion to Stay pending inter partes review, indicating
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`2
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`
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`Petitioner’s Motion for Joinder (IPR2014-01072)
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`that “the Court will benefit from the expert claim analysis of the PTO.” Order
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`Granting Mot. to Stay, Dkt. No. 120.
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`On June 6, 2014, as clarified on July 22, 2014, in 11:13-cv-11577-DPW
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`(Zond v. AMD, Inc., et al), the Court entered an order to administratively stay the
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`case pending conclusion of inter partes reviews.
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`Currently, the family of inter partes review proceedings relating to the seven
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`Zond patents (the “Zond IPRs”) consists of the following proceedings initiated by
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`Intel and later by only the GlobalFoundries entities or jointly by AMD,
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`GlobalFoundries, Renesas, and Toshiba:
`
`Intel IPRs
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`Joint IPRs
`
`GlobalFoundries IPRs
`
`Claims
`
`
`
`Patent
`
`Intel
`Ref
`
`Intel
`Filed
`
`Joint Ref
`
`Joint
`Filed
`
`6,805,779 2014-
`00598
`
`04/09/14
`
`n/a
`
`n/a
`
`04/24/14
`
`n/a
`
`n/a
`
`GF Ref
`
`GF Filed
`
`Claims Challenged
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`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
`
`05/16/14
`
`05/27/14
`
`06/06/14
`
`IPR2014-
`01070
`
`IPR2014-
`01072
`
`IPR2014-
`01074
`
`06/30/14
`
`n/a
`
`n/a
`
`06/30/14
`
`n/a
`
`n/a
`
`06/30/14
`
`n/a
`
`n/a
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`30-37, 39, 40
`
`16, 28, 41, 42, 45 and
`46
`
`7, 9, 20, 21, 38, and
`44
`
`2014-
`00686
`
`2014-
`00765
`
`2014-
`00820
`
`2014-
`00913
`
`2014-
`00945
`
`2014-
`00843
`
`6,806,652 2014-
`00923
`
`06/10/14
`
`n/a
`
`n/a
`
`06/12/14
`
`n/a
`
`n/a
`
`
`
`IPR2014-
`01089
`IPR2014-
`01088
`
`07/01/14
`
`07/01/14
`
`05/29/14
`
`IPR2014-
`01066
`
`06/30/14
`
`n/a
`
`n/a
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`
`
`3
`
`35
`
`1-17
`
`18-34
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`
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`Petitioner’s Motion for Joinder (IPR2014-01072)
`
`6,853,142 2014-
`00498
`
`03/13/14
`
`n/a
`
`n/a
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`IPR2014-
`01098
`
`07/01/14
`
`40, 41
`
`2014-
`00494
`
`2014-
`00495
`
`2014-
`00496
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`2014-
`00497
`
`03/13/14
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`03/13/14
`
`03/13/14
`
`03/13/14
`
`IPR2014-
`01075
`
`IPR2014-
`01057
`
`IPR2014-
`01046
`
`IPR2014-
`01063
`
`06/30/14
`
`n/a
`
`n/a
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`06/27/14
`
`n/a
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`n/a
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`06/27/14
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`n/a
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`n/a
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`06/30/14
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`n/a
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`n/a
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`1, 3-10, 12, 15, 17-20,
`42
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`2, 11, 13, 14, 16
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`21, 24, 26-28, 31, 32,
`37, 38
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`22, 23, 25, 29, 30, 33-
`36, 39, 43
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`7,147,759 2014-
`00443
`
`03/06/14
`
`n/a
`
`n/a
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`
`
`IPR2014-
`01086
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`IPR2014-
`01087
`
`IPR2014-
`01083
`
`06/30/14
`
`06/30/14
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`1, 4, 10-12, 17, 18, 44
`
`2, 3, 5-9, 13-16, 19,
`41-43, 45
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`06/30/14
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`40
`
`03/06/14
`
`n/a
`
`n/a
`
`03/06/14
`
`n/a
`
`n/a
`
`2014-
`00444
`
`2014-
`00447
`
`2014-
`00445
`
`03/06/14
`
`IPR2014-
`01047
`
`06/27/14
`
`n/a
`
`n/a
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`20, 21, 34-36, 38, 39,
`47, 49
`
`n/a
`
`n/a
`
`2014-
`00446
`
`03/06/14
`
`IPR2014-
`01059
`
`06/27/14
`
`
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`7,604,716 2014-
`00520
`
`03/27/14
`
`n/a
`
`n/a
`
`03/27/14
`
`n/a
`
`n/a
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`22-33, 37, 46, 48, 50
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`IPR2014-
`01099
`
`IPR2014-
`01100
`
`07/01/14
`
`07/01/14
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`1-11 and 33
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`12 and 13
`
`2014-
`00521
`
`2014-
`00522
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`2014-
`00523
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`03/27/14
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`03/27/14
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`7,808,184 2014-
`00455
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`03/07/14
`
`2014-
`00456
`
`03/07/14
`
`IPR2014-
`01065
`
`IPR2014-
`01067
`
`IPR2014-
`01042
`
`IPR2014-
`01061
`
`06/30/14
`
`n/a
`
`06/30/14
`
`n/a
`
`n/a
`
`n/a
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`14-18 and 25-32
`
`19-24
`
`
`
`06/27/14
`
`n/a
`
`n/a
`
`06/30/14
`
`n/a
`
`n/a
`
`1-5, 11-15
`
`6-10, 16-20
`
`
`
`7,811,421
`
`2014-
`00468
`
`2014-
`00470
`
`03/07/14
`
`03/07/14
`
`IPR2014-
`01037
`
`IPR2014-
`01071
`
`06/30/14
`
`n/a
`
`n/a
`
`06/30/14
`
`n/a
`
`n/a
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`1, 2, 8, 10-13, 15-17,
`22-25, 27-30, 33, 34,
`38, 39, 42, 43, 46-48
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`9, 14, 21, 26, 35, 37
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`4
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`
`
`Petitioner’s Motion for Joinder (IPR2014-01072)
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`2014-
`00473
`
`03/07/14
`
`IPR2014-
`01069
`
`06/30/14
`
`n/a
`
`n/a
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`3-7, 18-20, 31, 32, 36,
`40, 41, 44, 45
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`Similar to the above petitions, TSMC, Fujitsu, and/or Gillette also filed
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`petitions that address the same patent claims as the Joint IPR and the Intel IPR.
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`For the Joint IPR, the corresponding petitions are Case Nos. IPR2014-00820,
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`IPR2014-00859, and IPR2014-001020.
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`The petitions for IPR filed by Petitioner are the same as the petitions first
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`filed by Intel against the same patent claims, and are identical to the Intel petitions
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`in all substantive respects. They include identical grounds, analysis, and exhibits
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`and rely upon the same expert declarants and declarations.
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`In addition to this motion, Petitioner is presently filing motions for joinder
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`of each of their Zond IPR petitions with the corresponding petitions first filed by
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`Intel, subject to the same conditions sought by this motion. Intel and Gillette do
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`not oppose any of Petitioner’s motions while Zond declined to take a position on
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`the motions at this time. Moreover, Petitioner understands that other Zond
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`petitioners have or will file a motion for joinder agreeing to the same conditions
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`herein.
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`In its August 5, 2014 Order in IPR2014-01086 and IPR2014-01047, the
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`Board articulated that Petitioner must file its motions for joinder within ten
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`business days. The order resulted from an August 4, 2014 Board conference call
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`attended by Zond, Intel, TSMC, Fujitsu, Gillette, AMD, GlobalFoundries, Renesas,
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`5
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`Petitioner’s Motion for Joinder (IPR2014-01072)
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`and Toshiba. During the conference call, the Petitioner sought guidance from the
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`Board on filing of motions for joinder that will minimize the burden on the Board
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`and help streamline the proceedings.
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`DISCUSSION
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`If the Director institutes an inter partes review, Petitioner respectfully
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`requests that the Board exercise its discretion to grant joinder of the Joint IPR and
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`Intel IPR proceedings pursuant to 35 U.S.C. § 315(c), 37 C.F.R. § 42.22, and 37
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`C.F.R. § 42.122(b). In support of this motion, Petitioner proposes consolidated
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`filings and other procedural accommodations designed to streamline the
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`proceedings.
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`1.
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`Reasons Why Joinder is Appropriate
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`Joinder is appropriate in this case because it is the most expedient way to
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`secure the just, speedy, and inexpensive resolution of the related proceedings. See
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`35 U.S.C. § 316(b); 37 C.F.R. § 42.1(b). Intentionally, the Joint IPR is
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`substantively identical to the corresponding Intel IPR in an effort to avoid
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`multiplication of issues before the Board. Given the duplicative nature of these
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`petitions, joinder of the related proceedings is appropriate. Further, Petitioner will
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`agree to consolidated filings and discovery, and procedural concessions, which
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`Intel does not oppose.
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`6
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`Petitioner’s Motion for Joinder (IPR2014-01072)
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`a)
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`Substantively Identical Petitions
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`Petitioner represents that the Joint IPR is identical to the Intel 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 Joint IPR proceeding separate from that of Intel would entail
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`needless duplication of effort.
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`b)
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`Consolidated Filings and Discovery
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`Because the grounds of unpatentability in the Joint IPR and Intel IPR are the
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`same, the case is amenable to consolidated filings. Petitioner will agree to
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`consolidated filings for all substantive papers in the proceeding (e.g., Reply to the
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`Patent Owner’s Response, Opposition to Motion to Amend, Motion for
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`Observation on Cross Examination Testimony of a Reply Witness, Motion to
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`Exclude Evidence, Opposition to Motion to Exclude Evidence and Reply).
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`Specifically, Petitioner will agree to incorporate its filings with those of Intel in a
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`consolidated filing, subject to the ordinary rules for one party on page limits. Intel
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`and Petitioner will be jointly responsible for the consolidated filings.
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`Petitioner agrees not to be permitted any arguments separate from those
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`advanced by Petitioner and Intel in the consolidated filings. These limitations
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`avoid lengthy and duplicative briefing.
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`7
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`Petitioner’s Motion for Joinder (IPR2014-01072)
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`Consolidated discovery is also appropriate given that Petitioner and Intel are
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`using the same expert declarant who has submitted the same, identical declaration
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`in the two proceedings. Petitioner and Intel will designate an attorney to conduct
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`the cross-examination of any given witness produced by Zond and the redirect of
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`any given witness produced by Petitioner or Intel within the timeframe normally
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`allotted by the rules for one party. Petitioner will not receive any separate cross-
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`examination or redirect time.
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`2.
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`No New Grounds of Patentability
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`The Joint IPR raises no new grounds of unpatentability from those of the
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`Intel IPR because, in fact, the petitions are identical.
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`3.
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`No Impact on IPR Trial Schedule
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`The small difference between the filing date of the Joint IPR and the Intel
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`IPR is without consequence should the proceedings be joined. The trial schedule
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`for the Intel IPR would not need to be delayed to effect joinder based on Zond’s
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`preliminary response and later-filed Joint IPR. The joint proceeding would allow
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`the Board and parties to focus on the merits in one consolidated proceeding
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`without unnecessary duplication of effort, and in a timely manner.
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`4.
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`Briefing and Discovery Will Be Simplified
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`Joinder will simplify briefing and discovery because Petitioner seeks an
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`order similar to that issued in Motorola Mobility LLC v. Softview LLC, IPR2013-
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`00256 (PTAB June 20, 2013) (Paper 10). As discussed above, Petitioner and Intel
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`8
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`Petitioner’s Motion for Joinder (IPR2014-01072)
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`will engage in consolidated filings and discovery, which will simplify the briefing
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`and discovery process.
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`5.
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`No Prejudice to Zond if Proceedings are Joined
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`Petitioner proposes joinder to streamline the proceedings and reduce the
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`costs and burdens on the parties. Petitioner believes joinder will achieve these
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`goals for several reasons. First, joinder will most certainly decrease the number of
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`papers the parties must file, by eliminating a duplicative proceeding. Second,
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`joinder will also reduce by half the time and expense for depositions and other
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`discovery required in separate proceedings. Third, joinder creates case
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`management efficiencies for the Board and parties without any prejudice to Zond.
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`PROPOSED ORDER
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`Petitioner proposes a joinder order for consideration by the Board as
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`follows, which Intel and Gillette do not oppose and Zond has declined to take a
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`position:
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`• If review is instituted on any ground in the Intel IPR, the Joint IPR
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`will be instituted and will be joined with the Intel IPR on the same
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`grounds. Grounds not instituted because the Intel IPR failed to
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`establish a reasonable likelihood of prevailing, if any, will be similarly
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`denied in the Joint IPR.
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`9
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`Petitioner’s Motion for Joinder (IPR2014-01072)
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`• The scheduling order for the Intel IPR will apply for the joined
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`proceeding.
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`• Throughout the proceeding, Intel and Petitioner 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. So long as they both continue to participate in the joined
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`proceeding, Intel and Petitioner will identify each such filing as a
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`Consolidated Filing and will be responsible for completing all
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`consolidated filings.
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`• Intel and Petitioner will designate an attorney to conduct the cross
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`examination of any given witness produced by Zond and the redirect
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`of any given witness produced by Intel or Petitioner within the
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`timeframe normally allotted by the rules for one party. Petitioner will
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`not receive 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 Intel or Petitioner 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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`10
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`Petitioner’s Motion for Joinder (IPR2014-01072)
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`CONCLUSION
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`For the foregoing reasons, if the Director institutes inter partes review,
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`Petitioner respectfully requests that the Board grant joinder of the Joint IPR and
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`Respectfully submitted
`
`/s/ Robinson Vu
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`Robinson Vu (Reg. No. 60,211),
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`Intel IPR proceedings.
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`Date: August 19, 2014
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`BAKER BOTTS LLP
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`910 LOUISIANA ST
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`HOUSTON, TX 77002
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`713 229-1715
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`robinson.vu@bakerbotts.com
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`11
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`Petitioner’s Motion for Joinder (IPR2014-01072)
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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
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`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:
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`Date of service
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`Manner of service
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`Documents served
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`Persons Served
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`August 19, 2014
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`Email: gonsalves@gonsalveslawfirm.com;
`bbarker@chsblaw.com
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`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
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`Bruce Barker
`Chao Hadidi Stark & Barker LLP
`176 East Mail Street, Suite 6
`Westborough, MA 01581
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`/s/ Robinson Vu
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`Robinson Vu (Reg. No. 60,211)
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`12
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