Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`Entered: October 29, 2014
`
`
`
`
`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.
`____________
`Cases IPR2014-01083, IPR2014-01086, IPR2014-010871
`Patent 7,147,759 B2
`____________
`
`
`Before KEVIN F. TURNER, DEBRA K. STEPHENS, JONI Y. CHANG,
`SUSAN L.C. MITCHELL, and JENNIFER M. MEYER,
`Administrative Patent Judges.
`
`CHANG, Administrative Patent Judge.
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`
`
`1 IPR2014-00988 has been joined with IPR2014-01083; IPR2014-00981 has been
`joined with IPR2014-01086; and IPR2014-00984 has been joined with
`IPR2014-01087.
`
`
`571-272-7822
`
`
`
`
`
`Entered: October 29, 2014
`
`
`
`
`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.
`____________
`Cases IPR2014-01083, IPR2014-01086, IPR2014-010871
`Patent 7,147,759 B2
`____________
`
`
`Before KEVIN F. TURNER, DEBRA K. STEPHENS, JONI Y. CHANG,
`SUSAN L.C. MITCHELL, and JENNIFER M. MEYER,
`Administrative Patent Judges.
`
`CHANG, Administrative Patent Judge.
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`
`
`1 IPR2014-00988 has been joined with IPR2014-01083; IPR2014-00981 has been
`joined with IPR2014-01086; and IPR2014-00984 has been joined with
`IPR2014-01087.
`
`
`
`IPR2014-01083, IPR2014-01086, and IPR2014-01087
`Patent 7,147,759 B2
`
`
`We instituted an inter partes review in each of the following proceedings,
`
`challenging U.S. Patent No. 7,147,759 B2: IPR2014-01083, IPR2014-01086, and
`
`IPR2014-01087 (“the GlobalFoundries reviews”), as well as IPR2014-00781 and
`
`IPR2014-00782 (“the TSMC reviews”). Paper 9.2 For efficiency, we entered a
`
`single Scheduling Order that sets forth the due dates for the parties to take action in
`
`all five reviews, ensuring that the reviews will be completed within one year of
`
`institution. Paper 10. After institution, we also granted the revised Motions for
`
`Joinder filed by Fujitsu Semiconductor Limited and Fujitsu Semiconductor
`
`America, Inc. (collectively, “Fujitsu”), 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 (collectively,
`
`“AMD”), and The Gillette Company (“Gillette”). Papers 16, 17, 18. A list of
`
`these Joinder Cases is provided in the Appendix of the instant Order.
`
`An initial conference call was held on October 27, 2014, between respective
`
`counsel for the parties for all five above-identified reviews and Judges Turner,
`
`Stephens, Chang, Mitchell, and Meyer. Counsel for each of the Joinder Cases also
`
`attended the conference call. The purpose of the call was to discuss any proposed
`
`
`
`2 For the purpose of clarity and expediency, we treat IPR2014-01083 as
`representative, and all citations are to IPR2014-01083 unless otherwise noted.
`
`2
`
`
`
`IPR2014-01083, IPR2014-01086, and IPR2014-01087
`Patent 7,147,759 B2
`
`
`changes to the Scheduling Order (Paper 10), as well as any motions that the parties
`
`intend to file.
`
`Trial Schedule
`
`During the conference call, we explained that the trial schedule for all five
`
`above-identified reviews had been synchronized. The parties indicated that they
`
`do not, at this time, foresee any problems with meeting their due dates. They also
`
`expressed that they may stipulate to different dates for certain due dates. If the
`
`parties decide to stipulate to different due dates, the parties should file a notice of
`
`stipulation that includes a copy of the due date appendix of the Scheduling Order,
`
`showing the new due dates next to the original due dates. Paper 10, 2, 5.
`
`We further noted that the oral hearings for all five reviews are scheduled on
`
`the same day. We explained that, although Petitioners for the GlobalFoundries
`
`reviews and the TSMC reviews are different, the oral hearings for all five reviews
`
`could be combined and the transcript from the combined oral hearing could be
`
`useable across all five reviews, given the similarity in claimed subject matter and
`
`overlapping asserted prior art. The parties may request a single-combined oral
`
`hearing in their requests for oral hearing before or on Due Date 4. Id. at 5.
`
`The Procedure for Consolidated Filings and Discovery
`
`As we explained during the conference call, the Decisions on the revised
`
`Motions for Joinder (“the Joinder Decisions”) did not change the grounds of
`
`unpatentability on which a trial was instituted or the Scheduling Order, in each of
`
`the GlobalFoundries reviews and the TSMC reviews. Paper 12. And the Joinder
`
`Decisions set forth a procedure for consolidated filings and discovery. Id. at 5–7.
`
`3
`
`
`
`IPR2014-01083, IPR2014-01086, and IPR2014-01087
`Patent 7,147,759 B2
`
`
`Upon inquiry from the Board, the parties stated that they are in agreement with the
`
`procedure.
`
`The parties indicated that they have been in discussions regarding the
`
`discovery schedule. Given the similarity in claimed subject matter and
`
`overlapping asserted prior art and that Petitioners submitted declarations from the
`
`same expert witness in each review, the parties further expressed the desire to
`
`coordinate and combine discovery between all five reviews. For example, the
`
`cross-examination of Petitioners’ expert witness may be combined and useable in
`
`all five reviews, for efficiency and consistency.
`
`Incorporation by Reference is Prohibited
`
`During the conference call, we directed the parties’ attention to 37 C.F.R.
`
`§ 42.6(a)(3), which provides “[a]rguments must not be incorporated by reference
`
`from one document into another document.” We observed that, in a family of
`
`cases challenging the same patent, as here, briefing papers may cross-reference
`
`between different inter partes reviews, but incorporation by reference is still
`
`prohibited. For example, the Patent Owner Response or Reply to a Patent Owner
`
`Response filed in one proceeding may not incorporate by reference arguments
`
`submitted in another proceeding. Each briefing paper must stand on its own, with
`
`appropriate supporting evidence.
`
`Objection and Motion to Exclude Evidence
`
`As we explained during the conference call, certain due dates are set forth in
`
`the Scheduling Order (Paper 10, 6), but the times for serving objections to
`
`evidence are set forth in 37 C.F.R. § 42.64(b). For instance, the parties are not
`
`4
`
`
`
`IPR2014-01083, IPR2014-01086, and IPR2014-01087
`Patent 7,147,759 B2
`
`
`required to seek prior authorization for filing a motion to exclude evidence under
`
`37 C.F.R. § 42.64(c), a motion for observation regarding cross-examination of
`
`reply witness, and a response to observation because the Scheduling Order sets
`
`forth the due date for these motions and responses. See Paper 10, 6. However, any
`
`objection to evidence submitted during a preliminary proceeding must be served
`
`within ten business days of the institution of the trial. After institution, any
`
`objection must be served within five business days of service of evidence to which
`
`the objection is directed. The parties further should note that a motion to exclude
`
`evidence must identify and explain the objections.
`
`Motion for pro hac vice admission under 37 C.F.R. § 42.10(c).
`
`Petitioners filed a notice of proposed motions indicating that they will file a
`
`motion for pro hac vice admission of Mr. Brett C. Rismiller. Paper 13. We
`
`previously authorized the parties to file motions for pro hac vice admission.
`
`Paper 3, 2. Opposing party is authorized to file an opposition no later than one
`
`week after the filing of the underlying motion for pro hac vice admission.
`
`See Paper 4, 2; Unified Patents, Inc. v. Parallel Iron, LLC, Case IPR2013-00639,
`
`slip op. at 3 (PTAB Oct. 15, 2013) (Paper 7). A motion for pro hac vice admission
`
`generally will be decided in due course, after the expiration of the one-week time
`
`period or the filing of an opposition, whichever is earlier. For any future motion
`
`for pro hac vice admission, the parties may agree in advance and notify the Board
`
`that the motion is unopposed, so that the Board may expedite its decision on such a
`
`motion.
`
`
`
`5
`
`
`
`IPR2014-01083, IPR2014-01086, and IPR2014-01087
`Patent 7,147,759 B2
`
`
`
`
`It is
`
`ORDER
`
`ORDERED that the parties are authorized to request a single-combined oral
`
`hearing for all five above-identified inter partes reviews; and
`
`FURTHER ORDERED that the parties are authorized to consolidate
`
`discovery for all five above-identified inter partes reviews, so that the
`
`cross-examination and redirect examination may be usable in all five reviews.
`
`
`
`
`
`
`
`
`
`
`
`
`
`6
`
`
`
`IPR2014-01083, IPR2014-01086, and IPR2014-01087
`Patent 7,147,759 B2
`
`
`APPENDIX
`
`
`
`Inter partes reviews for
`U.S. Patent No. 7,147,759 B2
`
`Joinder Cases
`
`IPR2014-00781 (TSMC)
`
`IPR2014-00782 (TSMC)
`
`IPR2014-00845 (Fujitsu),
`IPR2014-00985 (Gillette),
`IPR2014-01047 (AMD)
`
`IPR2014-00850 (Fujitsu),
`IPR2014-00986 (Gillette),
`IPR2014-01059 (AMD)
`
`IPR2014-01083 (Global Foundries)
`
`IPR2014-00988 (Gillette)
`
`IPR2014-01086 (Global Foundries)
`
`IPR2014-00981 (Gillette)
`
`IPR2014-01087 (Global Foundries)
`
`IPR2014-00984 (Gillette)
`
`
`
`
`
`
`
`7
`
`
`
`IPR2014-01083, IPR2014-01086, and IPR2014-01087
`Patent 7,147,759 B2
`
`
`For PATENT OWNER:
`
`Gregory J. Gonsalves
`gonsalves@gonsalveslawfirm.com
`
`Bruce J. Barker
`bbarker@chsblaw.com
`
`
`For PETITIONERS:
`
`GlobalFoundries:
`
`David Tennant
`dtennant@whitecase.com
`
`Dohm Chankong
`dohm.chankong@whitecase.com
`
`
`TSMC and Fujitsu:
`
`David L. McCombs
`david.mccombs.ipr@haynesboone.com
`
`David M O’Dell
`david.odell.ipr@haynesboone.com
`
`Richard C. Kim
`rckim@duanemorris.com
`
`
`Gillette:
`
`Michael A. Diener
`michael.diener@wilmerhale.com
`
`Larissa B. Park
`larissa.park@wilmerhale.com
`
`
`
`8
`
`
`
`IPR2014-01083, IPR2014-01086, and IPR2014-01087
`Patent 7,147,759 B2
`
`
`AMD:
`
`David M. Tennant
`dtennant@whitecase.com
`
`Brian M. Berliner
`bberliner@omm.com
`
`Byan K. Yagura
`ryagura@omm.com
`
`Xin-Yi Zhou
`vzhou@omm.com
`
`
`
`9
`
`
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