UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________________________________
`
`Paper No. ___
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________________________________
`
`GLOBALFOUNDRIES U.S., INC., GLOBALFOUNDRIES DRESDEN
`MODULE ONE LLC & CO. KG, GLOBALFOUNDRIES DRESDEN
`MODULE TWO LLC & CO. KG, and
`THE GILLETTE COMPANY,
`Petitioners,
`
`v.
`
`ZOND, LLC,
`Patent Owner
`____________________________________________
`
`Case IPR2014-010731
`U.S. PATENT NO. 6,805,779
`____________________________________________
`
`
`MOTION TO DESIGNATE LEAD PETITIONER AND TO AMEND
`SCHEDULING ORDER
`
`
`
`
`
`
`
`
`1 Case IPR 2014-01017 has been joined with the instant proceeding.
`
`
`____________________________________________
`
`Paper No. ___
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________________________________
`
`GLOBALFOUNDRIES U.S., INC., GLOBALFOUNDRIES DRESDEN
`MODULE ONE LLC & CO. KG, GLOBALFOUNDRIES DRESDEN
`MODULE TWO LLC & CO. KG, and
`THE GILLETTE COMPANY,
`Petitioners,
`
`v.
`
`ZOND, LLC,
`Patent Owner
`____________________________________________
`
`Case IPR2014-010731
`U.S. PATENT NO. 6,805,779
`____________________________________________
`
`
`MOTION TO DESIGNATE LEAD PETITIONER AND TO AMEND
`SCHEDULING ORDER
`
`
`
`
`
`
`
`
`1 Case IPR 2014-01017 has been joined with the instant proceeding.
`
`
`
`Motion to Designate Lead Petitioner and to Amend Scheduling Order
`
`IPR2014-01073 (U.S. 6,805,779)
`
`
`Pursuant to the Board’s March 10, 2015, Order following a conference call
`
`between the Board and respective counsel for the parties Patent Owner ZOND
`
`LLC (“Patent Owner”) and Petitioners TAIWAN SEMICONDUCTOR
`
`MANUFACTURING COMPANY, LTD., TSMC NORTH AMERICA
`
`CORPORATION (jointly, “TSMC”), FUJITSU SEMICONDUCTOR LIMITED,
`
`FUJITSU SEMICONDUCTOR AMERICA, INC. (jointly, “Fujitsu”),
`
`ADVANCED MICRO DEVICES, INC. (“AMD”), RENESAS ELECTRONICS
`
`CORPORATION, RENESAS ELECTRONICS AMERICA INC. (jointly,
`
`“Renesas”), GLOBALFOUNDRIES U.S., INC., GLOBALFOUNDRIES
`
`DRESDEN MODULE ONE LLC & CO. KG, GLOBALFOUNDRIES DRESDEN
`
`MODULE TWO LLC & CO. KG (jointly, “GlobalFoundries”), TOSHIBA
`
`AMERICA ELECTRONIC COMPONENTS, INC., TOSHIBA AMERICA INC.,
`
`TOSHIBA AMERICA INFORMATION SYSTEMS, INC., TOSHIBA
`
`CORPORATION (jointly, “Toshiba”), and THE GILLETTE COMPANY
`
`(“Gillette”) (jointly, “Petitioner2”) (collectively with Patent Owner, “the Parties”)
`
`have reached an agreement regarding designation of new Lead Counsel for
`
`Petitioner and regarding proposed amendments to the Scheduling Order entered in
`
`
`2 The above-listed Petitioners are parties to the inter partes review proceedings for
`which TSMC is Lead Counsel and may not necessarily be a party in the instant
`proceeding.
`
`
`
`1
`
`
`
`
`
`Motion to Designate Lead Petitioner and to Amend Scheduling Order
`
`IPR2014-01073 (U.S. 6,805,779)
`
`
`the above-captioned matter. This motion is submitted for the Board’s review
`
`concurrently with the Joint Motion to Terminate filed by Patent Owner and TSMC.
`
`I.
`
`DESIGNATION OF NEW LEAD COUNSEL
`
`TSMC counsel is currently designated as Lead Counsel on seventeen (17)
`
`inter partes review proceedings involving seven (7) of Patent Owner’s patents.
`
`The table below lists the proceedings for which TSMC counsel is Lead Counsel:
`
`Patent
`
`7,808,184
`
`6,853,142
`
`6,805,779
`
`7,604,716
`
`7,811,421
`
`7,147,759
`
`8,806,652
`
`Case Nos.
`IPR2014-00799
`IPR2014-00803
`IPR2014-00818
`IPR2014-00821
`IPR2014-00819
`IPR2014-00827
`IPR2014-00828
`IPR2014-00829
`IPR2014-00917
`IPR2014-00807
`IPR2014-00808
`IPR2014-00800
`IPR2014-00802
`IPR2014-00805
`IPR2014-00781
`IPR2014-00782
`
`IPR2014-00861
`
`
`
`
`
`2
`
`
`
`
`
`Motion to Designate Lead Petitioner and to Amend Scheduling Order
`
`IPR2014-01073 (U.S. 6,805,779)
`
`
`Following withdrawal by TSMC from the above proceedings, Petitioner
`
`requests that the Board designate the following Petitioners as Lead and Backup
`
`Counsel:
`
`Patent
`
`7,808,184
`
`6,853,142
`
`6,805,779
`
`7,604,716
`
`7,811,421
`
`7,147,759
`
`Case Nos.
`IPR2014-00799
`IPR2014-00803
`IPR2014-00818
`IPR2014-00821
`IPR2014-00819
`IPR2014-00827
`IPR2014-00828
`IPR2014-00829
`IPR2014-00917
`IPR2014-00807
`IPR2014-00808
`IPR2014-00800
`IPR2014-00802
`IPR2014-00805
`IPR2014-00781
`IPR2014-00782
`
`Lead Counsel
`
`Backup Counsel
`
`Gillette
`
`GlobalFoundries
`
`GlobalFoundries
`
`Gillette
`
`GlobalFoundries
`
`Gillette
`
`AMD
`
`GlobalFoundries
`
`Toshiba
`
`GlobalFoundries
`
`Renesas
`
`GlobalFoundries
`
`8,806,652
`
`IPR2014-00861
`
`GlobalFoundries
`
`Gillette
`
`Counsel information for each of the Petitioners is summarized below.
`
`3
`
`
`
`
`
`
`
`
`
`Motion to Designate Lead Petitioner and to Amend Scheduling Order
`
`IPR2014-01073 (U.S. 6,805,779)
`
`
`Attorney
`Petitioner
`David L. Cavanaugh
`Gillette
`GlobalFoundries David M. Tennant
`Ryan K. Yagura
`AMD
`John J. Feldhaus
`Renesas
`Robinson Vu
`Toshiba
`
`Registration No.
`36,476
`48,362
`47,191
`28,822
`60,211
`
`
`
`As stated in the Board’s Decision Granting Renewed Motion for Joinder, the
`
`Lead Counsel will be primarily responsible for consolidated filings for all
`
`substantive papers on behalf of Petitioner and will not file any paper with
`
`arguments separate from those advanced by the consolidated filings. Lead Counsel
`
`further agrees to consolidated discovery, including the designation of an attorney
`
`to conduct the cross-examination of any witnesses produced by Patent Owner and
`
`the redirect of any witnesses produced by Petitioner, within the timeframe
`
`normally allotted by the rules for one party. Petitioner requests that the parties
`
`designated as Backup Counsel be so-designated as to allow them filing rights in the
`
`event that the Lead Counsel is unable to successfully complete its consolidated
`
`filings.
`
`II.
`
`PROPOSED AMENDMENTS TO DUE DATES 6 AND 7
`
`In order to allow Petitioner sufficient time to accommodate TSMC’s
`
`withdrawal while timely meeting its deadlines, the Parties request that the Board
`
`amend DUE DATES 6 and 7 as set forth in the Scheduling Orders filed in inter
`4
`
`
`
`
`
`
`
`Motion to Designate Lead Petitioner and to Amend Scheduling Order
`
`IPR2014-01073 (U.S. 6,805,779)
`
`
`partes review proceedings for Patent Nos. 7,147,759, 6,853,142, and 8,125,155.
`
`The Parties propose that the Board consolidate Oral Argument (to the extent
`
`requested) for Patent Nos. (i) 7,147,759 and 7,811,421, (ii) 8,125,155 and
`
`7,808,184, and (iii) 6,853,142 and 7,604,716. The proposed amendments to DUE
`
`DATES 6 and 7 for the 7,147,759, 6,853,142, and 8,125,155 patents will align with
`
`DUE DATES 6 and 7 for the 7,811,421, 7,604,716, and 7,808,184, respectively.
`
`The parties propose the following change in DUE DATES 6 and 7 as set
`
`forth in the Scheduling Order for Patent Nos. 7,147,759, 6,853,142 and 8,125,155:
`
`Patent
`
`7,147,759
`
`6,853,142
`
`8,125,155
`
`Case Nos.
`IPR2014-00781
`IPR2014-00782
`IPR2014-01086
`IPR2014-01087
`IPR2014-01083
`IPR2014-00818
`IPR2014-00821
`IPR2014-00819
`IPR2014-00827
`IPR2014-01098
`IPR2014-00477
`IPR2014-00479
`
`DUE DATE 6
`
`DUE DATE 7
`
`5/28/2015*
`
`6/8/2015*
`
`6/5/2015**
`
`6/12/2015**
`
`5/21/2015***
`
`5/28/2015***
`
`* Same date as the corresponding DUE DATE in Patent No. 7,811,421
`** Same date as the corresponding DUE DATE in Patent No. 7,604,716
`*** Same date as the corresponding DUE DATE in Patent No. 7,808,184
`
`
`
`5
`
`
`
`
`
`Motion to Designate Lead Petitioner and to Amend Scheduling Order
`
`IPR2014-01073 (U.S. 6,805,779)
`
`
`III. AMENDMENTS TO DUE DATES 2, 3, 4, AND 5
`
`Pursuant to the Scheduling Order entered in the above-captioned matter, the
`
`Parties hereby present notice of stipulation to changes to DUE DATES 2, 3, 4, and
`
`5 as discussed in Exhibit 1 (Notice of Stipulation to Extend Due Dates). The
`
`Parties represent that the stipulation in Exhibit 1 is to be contingent on the Board’s
`
`granting the Parties’ proposed amendments to DUE DATES 6 and 7, as discussed
`
`in Section II.
`
`IV. CONCLUSION
`
`For the foregoing reasons, the Parties jointly request that the Board
`
`designate new Lead Parties for each of the seventeen TSMC-led inter partes
`
`review proceedings and modify DUE DATES 6 and 7 as set forth in the
`
`Scheduling Orders filed in inter partes review proceedings for Patent Nos.
`
`7,147,759, 6,853,142, and 8,125,155.
`
`
`Dated: March 16, 2015
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`
`
`/s/David M. Tennant
`David M. Tennant
`Lead Counsel for Petitioner
`GlobalFoundries
`Registration No. 48,362
`
`
`
`
`
`
`
`
`
`
`6
`
`
`
`
`
`Motion to Designate Lead Petitioner and to Amend Scheduling Order
`
`IPR2014-01073 (U.S. 6,805,779)
`
`
`CERTIFICATE OF SERVICE
`
`
`
`
`Pursuant to 37 C.F.R. § 42.6(e), this is to certify that I caused to be served a
`
`true and correct copy of the foregoing “MOTION TO DESIGNATE LEAD
`
`PETITIONER AND TO AMEND SCHEDULING ORDER” as detailed below:
`
`
`
`
`
`Date of service March 16, 2015
`
`Manner of service Email: gonsalves@gonsalveslawfirm.com;
`bbarker@chsblaw.com; kurt@rauschenbach.com
`
`Documents served MOTION TO DESIGNATE LEAD PETITIONER AND TO
`AMEND SCHEDULING ORDER
`
`Persons Served 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/ Anna Goodall
`Anna Goodall
`White & Case LLP
`3000 El Camino Real
`Five Palo Alto Square, 9th Floor
`Palo Alto, CA 94306
`Tel: (650) 213-0367
`Email: agoodall@whitecase.com
`
`
`
`
`7
`
`
`
`
`
`
`
`
`
`
`
`Exhibit 1
`
`Exhibit 1
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________________________________
`
`Paper No. ___
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________________________________
`
`GLOBALFOUNDRIES U.S., INC., GLOBALFOUNDRIES DRESDEN
`MODULE ONE LLC & CO. KG, GLOBALFOUNDRIES DRESDEN
`MODULE TWO LLC & CO. KG, and
`THE GILLETTE COMPANY,
`Petitioners,
`
`v.
`
`ZOND, LLC,
`Patent Owner
`____________________________________________
`
`Case IPR2014-010733
`U.S. PATENT NO. 6,805,779
`____________________________________________
`
`NOTICE OF STIPUATION TO EXTEND DUE DATES
`
`
`
`
`
`
`
`
`3 Case IPR 2014-01017 has been joined with the instant proceeding.
`
`
`
`
`
`Notice of Stipulation to Extend Due Date
`IPR2014-01073 (U.S. 6,805,779)
`
`
`Pursuant to the Scheduling Orders entered in the following inter partes
`
`review proceedings, the parties hereby present this notice of stipulation to the
`
`following changes in DUE DATES 2, 3, 4, and 5 as set forth in the respective
`
`Scheduling Orders:
`
`Patent
`
`Case Nos.
`
`DUE
`DATE 2
`
`DUE
`DATE 3
`
`DUE
`DATE 4
`
`DUE
`DATE 5
`
`8,125,155
`
`7,147,759
`
`6,853,142
`
`7,808,184
`
`7,604,716
`
`IPR2014-00477
`IPR2014-00479
`IPR2014-00781
`IPR2014-00782
`IPR2014-01086
`IPR2014-01087
`IPR2014-01083
`IPR2014-00818
`IPR2014-00821
`IPR2014-00819
`IPR2014-00827
`IPR2014-01098
`IPR2014-00799
`IPR2014-00803
`IPR2014-00807
`IPR2014-00808
`IPR2014-01099
`IPR2014-01100
`
`-
`
`n/a*
`
`4/30/2015
`
`5/14/2015
`
`5/4/2015
`
`n/a*
`
`5/15/2015
`
`5/25/2015
`
`4/16/2015
`
`n/a*
`
`5/15/2015
`
`5/29/2015
`
`4/10/2015
`
`n/a*
`
`4/30/2015
`
`n/a*
`
`-
`
`-
`
`-
`
`-
`
`*DUE DATE 3 corresponds to “Patent owner’s reply to petitioner’s opposition to
`motion to amend.” As Patent Owner did not file a motion to amend, DUE DATE 3
`is irrelevant to the current proceedings.
`
`
`
`1
`
`
`
`
`
`
`
`Notice of Stipulation to Extend Due Date
`IPR2014-01073 (U.S. 6,805,779)
`
`
`Respectfully submitted,
`
`
`
`/s/David M. Tennant
`David M. Tennant
`Lead Counsel for Petitioner
`GlobalFoundries
`Registration No. 48,362
`
`
`
`
`
`
`
`
`
`2
`
`
`
`
`Dated: March 16, 2015
`
`
`
`
`
`
`
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
