`Trials@uspto.gov
`571-272-7822
`
` Entered: November 18, 2014
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`THE GILLETTE COMPANY,
`Petitioner,
`v.
`
`ZOND, LLC,
`Patent Owner.
`____________
`
`Cases IPR2014-01017
`Patent 6,805,779 B2
`____________
`
`
`
`
`Before KEVIN F. TURNER, JONI Y. CHANG, SUSAN L.C. MITCHELL,
`and JENNIFER M. MEYER, Administrative Patent Judges.
`
`CHANG, Administrative Patent Judge.
`
`
`DECISION
`Granting Revised Motion for Joinder
`37 C.F.R. § 42.122
`
`
`
`
`
`
`
`IPR2014-01017
`Patent 6,805,779 B2
`
`
`
`
`
`
`INTRODUCTION
`The Gillette Company (“Gillette”) filed a Petition requesting an inter
`partes review of U.S. Patent 6,805,779 B2 (Ex. 1001, “the ’779 patent”).
`Paper 3 (“Pet.”). Pursuant to 37 C.F.R. § 42.122(b), Gillette also filed a
`revised Motion for Joinder with GLOBALFOUNDRIES U.S., Inc. v. Zond,
`LLC, Case IPR2014-01073 (PTAB) (“IPR2014-01073”). Paper 11 (“Mot.”).
`GlobalFoundries does not oppose Gillette’s request for joinder.
`Mot. 1. Patent Owner Zond, LLC (“Zond”) filed a Preliminary Response to
`the Petition (Paper 9, “Prelim. Resp.”) and an Opposition to Gillette’s
`revised Motion for Joinder (Paper 12, “Opp.”). In a separate decision, we
`institute an inter partes review as to the same claims on the same grounds of
`unpatentability for which we instituted trial in IPR2014-01073. For the
`reasons set forth below, Gillette’s revised Motion for Joinder is granted.
`
`ANALYSIS
`The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat.
`284 (2011) (“AIA”) permits joinder of like review proceedings. The Board,
`acting on behalf of the Director, has the discretion to join an inter partes
`review with another inter partes review. 35 U.S.C. § 315. The statutory
`provision governing joinder of inter partes review proceedings is
`35 U.S.C § 315(c), which provides:
`JOINDER.—If the Director institutes an inter partes review, the
`Director, in his or her discretion, may join as a party to that
`inter partes review any person who properly files a petition
`under section 311
`that
`the Director, after receiving a
`preliminary response under section 313 or the expiration of the
`time for filing such a response, determines warrants the
`institution of an inter partes review under section 314.
`
`
`
`2
`
`
`
`IPR2014-01017
`Patent 6,805,779 B2
`
`
`
`
`
`
`Joinder may be authorized when warranted, but the decision to grant
`joinder is discretionary. 35 U.S.C. § 315(c); 37 C.F.R. § 42.122. When
`exercising its discretion, the Board is mindful that patent trial regulations,
`including the rules for joinder, must be construed to secure the just, speedy,
`and inexpensive resolution of every proceeding. See 35 U.S.C. § 316(b);
`37 C.F.R. § 42.1(b). The Board considers the impact of both substantive
`issues and procedural matters on the proceedings.
`As the moving party, Gillette bears the burden to show that joinder is
`appropriate. 37 C.F.R. §§ 42.20(c), 42.122(b). In its revised Motion for
`Joinder, Gillette contends that joinder, in this particular situation, is
`appropriate because: (1) “it is the most expedient way to secure the just,
`speedy, and inexpensive resolution of the related proceedings” (Mot. 5);
`(2) Gillette’s Petition is substantively identical to the Petition filed in
`IPR2014-01073 (id. at 5–6); (3) Gillette agrees to consolidated filings and
`discovery (id. at 6–7); (4) joinder would not affect the schedule in
`IPR2014-01073 (id. at 7); and (5) joinder would streamline the proceedings,
`reduce the costs and burdens on the parties, and increase efficiencies for the
`Board without any prejudice to Zond (id. at 8).
`We agree that the substantive issues in IPR2014-01073 would not be
`affected by joinder, because Gillette’s Petition is substantively identical to
`GlobalFoundries’s Petition filed in IPR2014-01073. Notably, Gillette’s
`Petition asserts identical grounds of unpatentability, challenging the same
`claims of the ’779 patent. Compare Pet. 18–60, with IPR2014-01073,
`Paper 2 (“’1073 Pet.”), 18–60. Gillette also submits identical claim
`construction arguments, as well as the same Declaration of Dr. Uwe
`Kortshagen. Compare Pet. 17, with ’1073 Pet. 17; compare Ex. 1002, with
`3
`
`
`
`
`
`IPR2014-01017
`Patent 6,805,779 B2
`
`
`
`
`
`
`’1073 Ex. 1002. More importantly, we institute the instant trial based on the
`same grounds for which we instituted trial in IPR2014-01073. Therefore,
`Gillette’s Petition raises no new issues beyond those already before us in
`IPR2014-01073.
`In its Opposition, Zond indicates that it “is not opposed to joinder.”
`Opp. 1. Rather, Zond proposes a procedure for the joined proceeding to
`consolidate the schedule, filings, and discovery. Opp. 2–3.
`We agree with the parties that conducting a single joined proceeding
`for reviewing claims 1–4, 10–15, 17, 18, 24–27, and 29 of the ’779 patent is
`more efficient than conducting multiple proceedings, eliminating duplicate
`filings and discovery. Gillette agrees to consolidated filings for all
`substantive papers. Mot. 6–7. Gillette indicates that it will not file any
`paper with arguments different from those advanced by the consolidated
`filings, eliminating duplicate briefing. Id. at 6. Gillette further agrees to
`consolidated discovery, as each Petitioner proffers the same Declaration of
`Dr. Kortshagen. Id. at 7. Gillette indicates that Petitioners of the joined
`proceeding collectively will designate an attorney to conduct the
`cross-examination of any witnesses produced by Zond and the redirect of
`any witnesses produced by Petitioners, within the timeframe normally
`allotted by the rules for one party. Id. Moreover, joinder will not require
`any change to the trial schedule in IPR2014-01073, allowing the trial still to
`be completed within one year. Id. Given that Gillette’s Petition raises no
`new issues, and Petitioners agree to consolidated filings and discovery, the
`impact of joinder on IPR2014-01073 will be minimal, and joinder will
`streamline the proceedings, reducing the costs and burdens on the parties
`and the Board.
`
`
`
`4
`
`
`
`IPR2014-01017
`Patent 6,805,779 B2
`
`
`
`
`
`
`For the foregoing reasons, Gillette has met its burden of
`demonstrating that joinder of the instant proceeding with IPR2014-01073 is
`warranted under the circumstances.
`
`ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED that Gillette’s Motion for Joinder with IPR2014-01073 is
`granted;
`FURTHER ORDERED that the instant proceeding is joined with
`IPR2014-01073;
`FURTHER ORDERED that the grounds of unpatentability on which a
`trial was instituted in IPR2014-01073 are unchanged;
`FURTHER ORDERED that the Scheduling Order for IPR2014-01073
`(Paper 12) shall govern the joined proceeding; the initial conference call for
`the joined proceeding is scheduled on December 17, 2014 at 2:00 p.m. ET;
`FURTHER ORDERED that the instant proceeding is instituted,
`joined, and terminated under 37 C.F.R. § 42.72, and all further filings in the
`joined proceeding shall be made only in IPR2014-01073;
`FURTHER ORDERED that, throughout IPR2014-01073, Petitioners
`(GlobalFoundries and Gillette) will file papers, except for motions which do
`not involve the other parties, as consolidated filings1; GlobalFoundries will
`identify each such filing as a consolidated filing and will be responsible for
`completing all consolidated filings; the page limits set forth in 37 C.F.R.
`
`
`1 The parties are directed to the Board’s website, in particular FAQs C3, D5,
`and G8, for information regarding filings in the Patent Review Processing
`System (PRPS). See http://www.uspto.gov/ip/boards/bpai/prps.jsp.
`5
`
`
`
`
`
`IPR2014-01017
`Patent 6,805,779 B2
`
`
`
`
`
`
`§ 42.24 will apply to all consolidated filings (e.g., a consolidated filing of a
`reply to a patent owner response should be 15 pages or less);
`FURTHER ORDERED that Zond will conduct the cross-examination
`of witnesses, as well as the redirect examination of any witness it produces,
`in the timeframes set forth in 37 C.F.R. § 42.53(c);
`FURTHER ORDERED that Petitioners collectively will designate
`attorneys to conduct the cross-examination of any witnesses produced by
`Zond and the redirect examination of any witnesses produced by Petitioners,
`within the timeframes set forth in 37 C.F.R. § 42.53(c) for one party;
`no individual Petitioner will receive any cross-examination or redirect
`examination time in addition to the time normally allotted by 37 C.F.R.
`§ 42.53(c) for one party;
`FURTHER ORDERED that Petitioners collectively will designate
`attorneys to present at the oral hearing (if requested) as a consolidated
`presentation;
`FURTHER ORDERED that the case caption in IPR2014-01073 shall
`be changed to reflect the joinder with the instant proceeding in accordance
`with the attached example; and
`FURTHER ORDERED that a copy of this Decision be entered into
`the file of IPR2014-01073.
`
`
`
`
`6
`
`
`
`IPR2014-01017
`Patent 6,805,779 B2
`
`
`
`
`
`
`For PETITIONER:
`Michael Diener
`Larissa Park
`WILMER, CUTLER, PICKERING, HALE AND DORR, LLP
`michael.diener@wilmerhale.com
`larissa.park@wilmerhale.com
`
`
`
`For PATENT OWNER:
`
`Gregory J. Gonsalves
`gonsalves@gonsalveslawfirm.com
`
`Bruce J. Barker
`CHAO HADIDI STARK & BARKER LLP
`bbarker@chsblaw.com
`
`
`
`
`
`7
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`GLOBAL FOUNDRIES 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
`Patent 7,147,779 B2
`____________
`
`
`
`
`
`
`1 Case IPR2014-001017 has been joined with the instant proceeding.