`Trials@uspto.gov
`571-272-7822
`
` Entered: November 19, 2014
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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.,
`GLOBAL FOUNDRIES 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,
`Petitioners,
`
`v.
`
`ZOND, LLC,
`Patent Owner.
`____________
`
`Case IPR2014-01074
`Patent 6,805,779 B2
`____________
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`
`
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`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
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`Case IPR2014-01074
`Patent 6,805,779 B2
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`INTRODUCTION
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`Petitioners (collectively, “AMD”) filed a Petition requesting an inter
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`partes review of U.S. Patent 6,805,779 B2 (Ex. 1401, “the ’779 patent”).
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`Paper 1 (“Pet.”). Pursuant to 37 C.F.R. § 42.122(b), AMD also filed a
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`revised Motion for Joinder, seeking to the instant proceeding with Taiwan
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`Semiconductor Mfg. Co., Ltd. v. Zond, LLC, Case IPR2014-00917 (PTAB)
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`(“IPR2014-00917”). Paper 9 (“Mot.”).
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`The Petitioners in IPR2014-009171, Taiwan Semiconductor
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`Manufacturing Company, Ltd. and TSMC North America Corporation
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`(collectively, “TSMC”), and Fujitsu Semiconductor Limited and Fujitsu
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`Semiconductor America, Inc. (collectively, “Fujitsu”), do not oppose
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`AMD’s revised Motion for Joinder. Mot. 2. Patent Owner, Zond, LLC
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`(“Zond”), filed a Preliminary Response to the Petition (Paper 8, “Prelim.
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`Resp.”) and an Opposition to AMD’s revised Motion for Joinder (Paper 10,
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`“Opp.”). In a separate decision, we institute an inter partes review as to the
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`same claims on the same grounds of unpatentability for which we instituted
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`trial in IPR2014-00917. For the reasons set forth below, AMD’s revised
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`Motion for Joinder is granted.
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`ANALYSIS
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`The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat.
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`284 (2011) (“AIA”) permits joinder of like review proceedings. The Board,
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`acting on behalf of the Director, has the discretion to join an inter partes
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`review with another inter partes review. 35 U.S.C. § 315.
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`1 IPR2014-00918 has been joined with IPR2014-00917.
`2
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`Case IPR2014-01074
`Patent 6,805,779 B2
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`The statutory provision governing joinder of inter partes review
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`proceedings is 35 U.S.C § 315(c), which provides:
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`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.
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`Joinder may be authorized when warranted, but the decision to grant
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`joinder is discretionary. 35 U.S.C. § 315(c); 37 C.F.R. § 42.122. When
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`exercising its discretion, the Board is mindful that patent trial regulations,
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`including the rules for joinder, must be construed to secure the just, speedy,
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`and inexpensive resolution of every proceeding. See 35 U.S.C. § 316(b);
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`37 C.F.R. § 42.1(b). The Board considers the impact of both substantive
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`issues and procedural matters on the proceedings.
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`As the moving party, AMD bears the burden to show that joinder is
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`appropriate. 37 C.F.R. §§ 42.20(c), 42.122(b). In its revised Motion for
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`Joinder, AMD contends that joinder, in this particular situation, is
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`appropriate because: (1) “it is the most expedient way to secure the just,
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`speedy, and inexpensive resolution of the related proceedings” (Mot. 5);
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`(2) AMD’s Petition is substantively identical to TSMC’s Petition filed in
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`IPR2014-00917 (id. at 6); (3) AMD agrees to consolidated filings and
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`discovery (id. at 6–7); (4) joinder would not affect the schedule in
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`IPR2014-00917 (id. at 7–8); and (5) joinder would streamline the
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`proceedings, reduce the costs and burdens on the parties, and increase
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`efficiencies for the Board without any prejudice to Zond (id. at 8).
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`Case IPR2014-01074
`Patent 6,805,779 B2
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`We agree that the substantive issues in IPR2014-00917 would not be
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`affected by joinder, because AMD’s Petition is substantively identical to
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`TSMC’s Petition filed in IPR2014-00917. Notably, AMD’s Petition asserts
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`identical grounds of unpatentability, challenging the same claims of the ’779
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`patent. Compare Pet. 16–60, with IPR2014-00917, Paper 2 (“’917 Pet.”),
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`16–60. AMD also submits identical claim constructions, as well as the same
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`Declaration of Dr. Uwe Kortshagen. Compare Pet. 15–16, with ’917 Pet.
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`15–16; compare Ex. 1402, with ’917 Ex. 1402. Moreover, we institute the
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`instant trial based on the same grounds for which we instituted trial in
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`IPR2014-00917. Therefore, AMD’s Petition raises no new issues beyond
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`those already before us in IPR2014-00917.
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`In its Opposition, Zond indicates that it is not opposed to joinder.
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`Opp. 1. Rather, Zond proposes a procedure for the joined proceeding to
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`consolidate the schedule, filings, and discovery. Opp. 2–3.
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`We agree with the parties that conducting a single joined proceeding
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`for reviewing claims 7, 9, 20, 21, 38, and 44 of the ’779 patent is more
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`efficient than conducting multiple proceedings, eliminating duplicate filings
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`and discovery. AMD agrees to consolidated filings for all substantive
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`papers. Mot. 6–7. AMD indicates that it will not file any paper with
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`arguments different from those advanced by the consolidated filings,
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`eliminating duplicate briefing. Id. AMD further agrees to consolidated
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`discovery, as each Petitioner proffers the same Declaration of
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`Dr. Kortshagen. Id. at 7. AMD indicates that Petitioners of the joined
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`proceeding collectively will designate an attorney to conduct the
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`cross-examination of any witnesses produced by Zond and the redirect of
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`any witnesses produced by Petitioners, within the timeframe normally
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`Patent 6,805,779 B2
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`allotted by the rules for one party. Id. at 7. Moreover, joinder will not
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`require any change to the trial schedule in IPR2014-00917, allowing the trial
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`still to be completed within one year. Id. at 7–8. Given that AMD’s Petition
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`raises no new issues, and Petitioners agree to consolidated filings and
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`discovery, the impact of joinder on IPR2014-00917 will be minimal, and
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`joinder will streamline the proceedings, reducing the costs and burdens on
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`the parties and the Board.
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`For the foregoing reasons, AMD has met its burden of demonstrating
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`that joinder of the instant proceeding with IPR2014-00917 is warranted
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`under the circumstances.
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`In consideration of the foregoing, it is hereby:
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`ORDER
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`ORDERED that AMD’s Motion for Joinder with IPR2014-00917 is
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`granted;
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`FURTHER ORDERED that the instant proceeding is joined with
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`IPR2014-00917;
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`FURTHER ORDERED that the grounds of unpatentability on which a
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`trial was instituted in IPR2014-00917 are unchanged;
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`FURTHER ORDERED that the Scheduling Order for IPR2014-00917
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`(Paper 11) shall govern the joined proceeding; the initial conference call for
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`the joined proceeding is scheduled on December 17, 2014 at 2:00 p.m. ET;
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`FURTHER ORDERED that the instant proceeding is instituted,
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`joined, and terminated under 37 C.F.R. § 42.72, and all further filings in the
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`joined proceeding shall be made only in IPR2014-00917;
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`Case IPR2014-01074
`Patent 6,805,779 B2
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`FURTHER ORDERED that, throughout IPR2014-00917, Petitioners
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`(TSMC, Fujitsu, and AMD) will file papers, except for motions which do
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`not involve the other parties, as consolidated filings2; TSMC will identify
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`each such filing as a consolidated filing and will be responsible for
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`completing all consolidated filings; the page limits set forth in 37 C.F.R.
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`§ 42.24 will apply to all consolidated filings (e.g., a consolidated filing of a
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`reply to a patent owner response should be 15 pages or less);
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`FURTHER ORDERED that Zond will conduct the cross-examination
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`of witnesses, as well as the redirect examination of any witness it produces,
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`in the timeframes set forth in 37 C.F.R. § 42.53(c);
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`FURTHER ORDERED that Petitioners collectively will designate
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`attorneys to conduct the cross-examination of any witnesses produced by
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`Zond and the redirect examination of any witnesses produced by Petitioners,
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`within the timeframes set forth in 37 C.F.R. § 42.53(c) for one party; no
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`individual Petitioner will receive any cross-examination or redirect
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`examination time in addition to the time normally allotted by 37 C.F.R.
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`§ 42.53(c) for one party;
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`FURTHER ORDERED that Petitioners collectively will designate
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`attorneys to present at the oral hearing (if requested) as a consolidated
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`presentation;
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`FURTHER ORDERED that the case caption in IPR2014-00917 shall
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`be changed to reflect the joinder with the instant proceeding in accordance
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`with the attached example; and
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`2 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.
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`Case IPR2014-01074
`Patent 6,805,779 B2
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`FURTHER ORDERED that a copy of this Decision be entered into
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`the file of IPR2014-00917.
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`7
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`Case IPR2014-01074
`Patent 6,805,779 B2
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`For PETITIONER:
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`
`Robinson Vu
`Robinson.vu@bakerbotts.com
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`John Feldhaus
`jfeldhaus@foley.com
`
`Pavan Agarwal
`pagarwal@foley.com
`
`Michael Houston
`mhouston@foley.com
`
`David Tennant
`dtennant@whitecase.com
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`Brian Berliner
`bberliner@omm.com
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`Ryan Yagura
`ryagura@omm.com
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`Xin-Yi Zhou
`vzhou@omm.com
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`
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`PATENT OWNER:
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`Gregory J. Gonsalves
`gonsalves@gonsalveslawfirm.com
`
`Bruce J. Barker
`bbarker@chsblaw.com
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`8
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`
`TAIWAN SEMICONDUCTOR MANUFACTURING COMPANY, LTD.,
`TSMC NORTH AMERICA CORPORATION,
`FUJITSU SEMICONDUCTOR LIMITED,
`FUJITSU SEMICONDUCTOR AMERICA, INC.,
`ADVANCED MICRO DEVICES, INC., RENESAS ELECTRONICS
`CORPORATION, RENESAS ELECTRONICS AMERICA, INC.,
`GLOBAL FOUNDRIES 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,
`Petitioners,
`
`v.
`
`ZOND, LLC,
`Patent Owner.
`____________
`
`Case IPR2014-009171
`Patent 6,805,779 B2
`____________
`
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`1 Case IPR2014-00918 and IPR2014-01074 have been joined with the
`instant proceeding.
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`