Petitioner’s Motion for Joinder (IPR2014-01076)
`
`
`Docket No. 1642930-0003 IPR2
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________________________________
`
`
`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
`Petitioner
`
`v.
`
`ZOND, INC.
`Patent Owner
`
`Case No. IPR2014-01076
`U.S. PATENT NO. 6,805,779
`CLAIMS 5, 6, 8, 19, 22, 23, and 43
`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. 1642930-0003 IPR2
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________________________________
`
`
`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
`Petitioner
`
`v.
`
`ZOND, INC.
`Patent Owner
`
`Case No. IPR2014-01076
`U.S. PATENT NO. 6,805,779
`CLAIMS 5, 6, 8, 19, 22, 23, and 43
`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 (IPR2014-01076)
`
`INTRODUCTION
`
`GLOBALFOUNDRIES U.S., Inc., GLOBALFOUNDRIES Dresden Module
`
`One LLC & Co. KG, GLOBALFOUNDRIES Dresden Module Two LLC & Co.
`
`KG (collectively, “Petitioner”) filed the present petition for inter partes review
`
`IPR2014-01076 (the “GF IPR”) and hereby move for joinder of the GF IPR with
`
`IPR2014-00686, filed by Intel Corporation (the “Intel IPR”). The GF IPR is
`
`identical to the Intel IPR in all substantive respects, includes identical exhibits, and
`
`relies upon the same expert declarant. The Gillette Company and Proctor &
`
`Gamble, Inc. (collectively, “Gillette”) has filed a petition identical to the Intel IPR
`
`and have likewise moved for joinder with the Intel IPR. Intel Corporation and
`
`Gillette do not oppose this motion while Zond declined to take a position at the
`
`time of filing.
`
`BACKGROUND AND RELATED PROCEEDINGS
`
`The GF IPR and Intel IPR are among a family of inter partes review
`
`proceedings relating to seven patents that are being asserted by Zond, Inc.
`
`(“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.).
`
`1
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`
`
`Petitioner’s Motion for Joinder (IPR2014-01076)
`
`In particular, a first complaint in 1:13-cv-11570-RGS (Zond v. Intel) was
`
`served on defendant Intel Corporation on July 9, 2013. A first complaint in 11:13-
`
`cv-11577-DPW (Zond v. AMD, Inc., et al) was served on defendant
`
`GlobalFoundries on December 5, 2013. Accordingly, all petitions for inter partes
`
`review that have been filed by defendants Intel and GlobalFoundries 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
`
`“the Court will benefit from the expert claim analysis of the PTO.” Order Granting
`
`Mot. to Stay, Dkt. 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 initiated by
`
`Intel and later by only the GlobalFoundries entities or jointly by AMD,
`
`GlobalFoundries, Renesas, and Toshiba:
`
`Patent
`
`Intel IPRs
`Intel
`Intel
`Ref
`Filed
`6,805,779 2014-
`00598 04/09/14
`
`Joint IPRs
`Joint
`Filed
`
`Joint Ref
`
`n/a
`
`n/a
`
`GlobalFoundries IPRs
`
`Claims
`
`GF Ref
`
`GF Filed
`
`Claims Challenged
`
`IPR2014-
`01073
`
`06/30/14
`
`1-4, 10-15, 17, 18, 24-
`27 and 29
`
`2
`
`
`
`Petitioner’s Motion for Joinder (IPR2014-01076)
`
`n/a
`
`n/a
`
`IPR2014-
`01076
`
`06/30/14
`
`5, 6, 8, 19, 22, 23, and
`43
`
`n/a
`
`n/a
`
`n/a
`
`n/a
`
`n/a
`
`n/a
`
`30-37, 39, 40
`16, 28, 41, 42, 45 and
`46
`7, 9, 20, 21, 38, and
`44
`
`06/30/14
`
`06/30/14
`
`06/30/14
`
`
`
`n/a
`
`n/a
`
`IPR2014-
`01070
`IPR2014-
`01072
`IPR2014-
`01074
`
`n/a
`
`n/a
`
`IPR2014-
`01066
`
`IPR2014-
`01089
`IPR2014-
`01088
`
`07/01/14
`
`07/01/14
`
`06/30/14
`
`n/a
`
`n/a
`
`
`
`35
`
`1-17
`
`18-34
`
`2014-
`00686 04/24/14
`2014-
`00765 05/16/14
`2014-
`00820 05/27/14
`2014-
`00913 06/06/14
`
`6,806,652 2014-
`00923 06/10/14
`2014-
`00945 06/12/14
`2014-
`00843 05/29/14
`
`6,853,142 2014-
`00498 03/13/14
`2014-
`00494 03/13/14
`2014-
`00495 03/13/14
`2014-
`00496 03/13/14
`2014-
`00497 03/13/14
`
`7,147,759 2014-
`00443 03/06/14
`2014-
`00444 03/06/14
`2014-
`00447 03/06/14
`2014-
`00445 03/06/14
`2014-
`00446 03/06/14
`
`n/a
`
`n/a
`
`IPR2014-
`01098
`
`07/01/14
`
`IPR2014-
`01075
`IPR2014-
`01057
`IPR2014-
`01046
`IPR2014-
`01063
`
`n/a
`
`n/a
`
`n/a
`
`IPR2014-
`01047
`IPR2014-
`01059
`
`06/30/14
`
`06/27/14
`
`06/27/14
`
`06/30/14
`
`
`
`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
`
`06/30/14
`
`06/30/14
`
`06/27/14
`
`06/27/14
`
`n/a
`
`n/a
`
`n/a
`
`n/a
`
`40, 41
`1, 3-10, 12, 15, 17-20,
`42
`
`2, 11, 13, 14, 16
`21, 24, 26-28, 31, 32,
`37, 38
`22, 23, 25, 29, 30, 33-
`36, 39, 43
`
`1, 4, 10-12, 17, 18, 44
`2, 3, 5-9, 13-16, 19,
`41-43, 45
`
`40
`20, 21, 34-36, 38, 39,
`47, 49
`
`22-33, 37, 46, 48, 50
`
`7,604,716 2014-
`00520 03/27/14
`2014-
`00521 03/27/14
`
`n/a
`
`n/a
`
`IPR2014-
`01099
`IPR2014-
`01100
`
`07/01/14
`
`07/01/14
`
`1-11 and 33
`
`12 and 13
`
`
`
`n/a
`
`n/a
`
`3
`
`
`
`Petitioner’s Motion for Joinder (IPR2014-01076)
`
`2014-
`00522 03/27/14
`2014-
`00523 03/27/14
`
`IPR2014-
`01065
`IPR2014-
`01067
`
`7,808,184 2014-
`00455 03/07/14
`2014-
`00456 03/07/14
`
`IPR2014-
`01042
`IPR2014-
`01061
`
`n/a
`
`n/a
`
`n/a
`
`n/a
`
`06/30/14
`
`06/30/14
`
`
`
`06/27/14
`
`06/30/14
`
`
`
`7,811,421
`
`2014-
`00468 03/07/14
`
`2014-
`00470 03/07/14
`2014-
`00473 03/07/14
`
`IPR2014-
`01037
`IPR2014-
`01071
`IPR2014-
`01069
`
`06/30/14
`
`n/a
`
`06/30/14
`
`06/30/14
`
`n/a
`
`n/a
`
`n/a
`
`n/a
`
`n/a
`
`n/a
`
`n/a
`
`n/a
`
`n/a
`
`14-18 and 25-32
`
`19-24
`
`1-5, 11-15
`
`6-10, 16-20
`
`1, 2, 8, 10-13, 15-17,
`22-25, 27-30, 33, 34,
`38, 39, 42, 43, 46-48
`
`9, 14, 21, 26, 35, 37
`3-7, 18-20, 31, 32, 36,
`40, 41, 44, 45
`
`Similar to the above petitions, Gillette also filed a petition that addresses the
`
`same patent claims as the GF IPR and the Intel IPR. For the GF IPR, Gillette’s
`
`corresponding petition is IPR2014-01019.
`
`The petitions for IPR filed by Petitioner are the same as the petitions first
`
`filed by Intel against the same patent claims, and are identical to the Intel 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
`
`Intel, subject to the same conditions sought by this motion. Intel and Gillette do not
`
`oppose any of Petitioner’s motions while Zond declined to a take position on the
`
`4
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`
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`Petitioner’s Motion for Joinder (IPR2014-01076)
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`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 August 5, 2014 Order in IPR2014-01086 and IPR2014-01047, the
`
`Board articulated that Petitioner must file its motions for joinder within ten
`
`business days. The order resulted from an August 4, 2014 Board conference call
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`initiated by the Zond defendants and attended by both Zond and the defendants.
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`The Zond defendants sought guidance from the Board on filing of motions for
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`joinder that will minimize the burden on the Board and help streamline the
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`proceedings.
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`DISCUSSION
`
`If the Director institutes an inter partes review, Petitioner respectfully
`
`requests that the Board exercise its discretion to grant joinder of the GF IPR and
`
`Intel IPR proceedings pursuant to 35 U.S.C. § 315(c), 37 C.F.R. § 42.22, and 37
`
`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 GF IPR is substantively
`
`5
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`
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`Petitioner’s Motion for Joinder (IPR2014-01076)
`
`identical to the corresponding Intel 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 Intel does not oppose.
`
`a)
`Petitioner represents that the GF IPR is identical to the Intel IPR in all
`
`Substantively Identical Petitions
`
`substantive respects. It includes identical grounds, analysis, and exhibits and relies
`
`upon the same expert declarant and declaration. Accordingly, if instituted,
`
`maintaining the GF IPR proceeding separate from that of Intel would entail
`
`needless duplication of effort.
`
`b)
`Because the grounds of unpatentability in the GF IPR and Intel IPR are the
`
`Consolidated Filings and Discovery
`
`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 Intel in a
`
`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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`6
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`
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`Petitioner’s Motion for Joinder (IPR2014-01076)
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`Petitioner agrees not to be permitted any arguments separate from those
`
`advanced by Petitioner and Intel in the consolidated filings. These limitations
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`avoid lengthy and duplicative briefing.
`
`Consolidated discovery is also appropriate given that Petitioner and Intel are
`
`using the same expert declarant who has submitted the same, identical declaration
`
`in the two proceedings. Petitioner and Intel 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 Intel within the timeframe normally
`
`allotted by the rules for one party. Petitioner will not receive any separate cross-
`
`examination or redirect time.
`
`2.
`
`No New Grounds of Patentability
`
`The GF IPR raises no new grounds of unpatentability from those of the Intel
`
`IPR because, in fact, the petitions are identical.
`
`3.
`
`No Impact on IPR Trial Schedule
`
`The small difference between the filing date of the GF IPR and the Intel IPR
`
`is without consequence should the proceedings be joined. The trial schedule for the
`
`Intel IPR would not need to be delayed to effect joinder based on Zond’s
`
`preliminary response and later-filed GF 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.
`
`7
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`
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`Petitioner’s Motion for Joinder (IPR2014-01076)
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`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 Intel
`
`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
`
`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 Intel and Gillette do not oppose and Zond has declined to take a
`
`position:
`
`• If review is instituted on any ground in the Intel IPR, the GF IPR will
`
`be instituted and will be joined with the Intel IPR on the same
`
`8
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`Petitioner’s Motion for Joinder (IPR2014-01076)
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`grounds. Grounds not instituted because the Intel IPR failed to
`
`establish a reasonable likelihood of prevailing, if any, will be similarly
`
`denied in the GF IPR.
`
`• The scheduling order for the Intel IPR will apply for the joined
`
`proceeding.
`
`• Throughout the proceeding, Intel 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
`
`proceeding, Intel and Petitioner will identify each such filing as a
`
`Consolidated Filing and will be responsible for completing all
`
`consolidated filings.
`
`• Intel 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 Intel 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 Intel or Petitioner and the redirect of any given witness
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`9
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`Petitioner’s Motion for Joinder (IPR2014-01076)
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`produced by Zond within the timeframe normally allotted by the rules
`
`for one cross-examination or redirect examination.
`
`CONCLUSION
`
`For the foregoing reasons, if the Director institutes inter partes review,
`
`Petitioner respectfully requests that the Board grant joinder of the GF IPR and Intel
`
`IPR proceedings.
`
`Respectfully submitted
`
`
`
`/David M. Tennant/
`
`
`
`
`
`
`
`David M. Tennant
`
`Reg. No. 48,362
`
`Lead Counsel for Petitioner
`
`Date: August 18, 2014
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`WHITE & CASE LLP
`
`701 Thirteenth St., NW
`
`Washington, D.C. 20005-3807
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`TEL: (202) 626-3600
`
`FAX: (202) 639-9355
`
`EMAIL: dtennant@whitecase.com
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`
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`10
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`Petitioner’s Motion for Joinder (IPR2014-01076)
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`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 described below:
`
`
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`Date of service
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`
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`August 18, 2014
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`Manner of service
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`Documents served
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`Persons served
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`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
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`/David M. Tennant/
`David M. Tennant
`Reg. No. 48,362
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`Lead Counsel for Petitioner
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