`571-272-7822 Entered: November 21, 2014
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`TAIWAN SEMICONDUCTOR MANUFACTURING COMPANY, LTD., TSMC
`NORTH AMERICA CORP., FUJITSU SEMICONDUCTOR LIMITED, FUJITSU
`SEMICONDUCTOR AMERICA, INC., 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., TOSHIBA CORPORATION, and
`THE GILLETTE COMPANY,
`Petitioner,
`v.
`ZOND, LLC,
`Patent Owner.
`____________
`
`Cases IPR2014-00807, IPR2014-00808, IPR2014-01099, and IPR2014-011001
`Patent 7,604,716 B2
`____________
`Before KEVIN F. TURNER, JONI Y. CHANG, SUSAN L.C. MITCHELL, and
`JENNIFER M. MEYER, Administrative Patent Judges.
`
`MEYER, Administrative Patent Judge.
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`1 IPR2014-00846, IPR2014-00974, and IPR2014-01065 have been joined with
`IPR2014-00807; IPR2014-00849, IPR2014-00975, and IPR2014-01067 have been
`joined with IPR2014-00808; IPR2014-00972 has been joined with
`IPR2014-01099; and IPR2014-00973 has been joined with IPR2014-01100.
`
`
`
`
`
`IPR2014-00807, IPR2014-00808, IPR2014-01099, IPR2014-01100
`Patent 7,604,716
`
`
`We instituted inter partes review in each of the above-identified proceedings
`to review the claims of U.S. Patent No. 7,604,716 (“the ’716 patent”). Paper 10.2
`For efficiency, we synchronized the Scheduling Orders that set forth the due dates
`for the parties to take action for each of the above-identified reviews, ensuring that
`the reviews will be completed within one year of institution. See Paper 11. An
`initial conference call was held on November 20, 2014, between respective counsel
`for the parties3 for the above-identified reviews and Judges Turner, Chang,
`Mitchell, and Meyer. The purpose of the call was to discuss any proposed changes
`to the Scheduling Orders, as well as any motions that the parties intend to file, and
`to address questions that the parties might have.
`
`Trial Schedule
`The parties indicated that they do not, at this time, foresee any problems
`with meeting the due dates set forth in the Scheduling Orders. We remind that
`parties that they may stipulate to different dates for Due Dates 1–5. 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. We noted that the oral
`hearings for each of the above-identified reviews are scheduled on the same day.
`The parties may request a single-combined oral hearing in their requests for oral
`hearing on or before Due Date 4. Given the similarity in claimed subject matter
`
`
`2 For the purpose of clarity and expediency, we treat IPR2014-00807 as
`representative, and all citations are to IPR2014-00807 unless otherwise noted.
`3 We note that Petitioner in each of IPR2014-01099 and IPR2014-01100 is limited
`to GLOBALFOUNDRIES U.S., Inc., GLOBALFOUNDRIES Dresden Module
`One LLC & Co. KG, and GLOBALFOUNDRIES Dresden Module Two LLC &
`Co. KG, and The Gillette Company.
`
`
`
`2
`
`
`
`IPR2014-00807, IPR2014-00808, IPR2014-01099, IPR2014-01100
`Patent 7,604,716
`
`and overlapping asserted prior art, the transcript from the combined oral hearing
`could be usable across all of the above-identified reviews.
`
`The Procedure for Consolidated Filings and Discovery
`As we noted during the conference call, the Decisions on the Motions for
`Joinder (“the Joinder Decisions”) did not change the grounds of unpatentability on
`which a trial was instituted or the Scheduling Orders, in each of the original
`reviews. The Joinder Decisions set forth a procedure for consolidated filings and
`discovery. The parties stated that they are in agreement with the procedure.
`Given the similarity in claimed subject matter and overlapping asserted prior
`art and that Petitioner submitted declarations from the same expert witness in each
`review, the parties may coordinate and combine discovery for these proceedings,
`as well as other proceedings involving the parties, but different patents. For
`example, cross-examination of Petitioners’ declarant may be combined and useable
`in each of the above-identified reviews, for efficiency and consistency. Should the
`parties combine discovery of the above-identified reviews, which involve the ’716
`patent, with other proceedings that involve another patent, the parties are
`encouraged to keep the record clear as to each proceeding and each patent.
`
`Incorporation by Reference is Prohibited
`During the conference call, we reminded the parties that incorporation by
`reference from one document to another is not permitted under our rules. See
`37 C.F.R. § 42.6(a)(3). 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
`
`
`
`3
`
`
`
`IPR2014-00807, IPR2014-00808, IPR2014-01099, IPR2014-01100
`Patent 7,604,716
`
`proceeding. Each briefing paper must stand on its own, with appropriate
`supporting evidence.
`
`Objections and Motions to Exclude Evidence
`We remind the parties that while certain due dates are set forth in the
`Scheduling Orders, the times for serving objections to evidence are set forth in
`37 C.F.R. § 42.64(b). For instance, the parties are not 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 a reply witness, and a
`response to such observation because the Scheduling Orders set forth the due date
`for these motions and responses. 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.
`
`ORDER
`
`It is
`ORDERED that the parties are authorized to request a single-combined oral
`hearing for the above-identified inter partes reviews; and
`FURTHER ORDERED that the parties are authorized to consolidate
`discovery for the above-identified inter partes reviews, so that the
`cross-examination and redirect examination may be usable in each of the above-
`identified inter partes reviews.
`
`
`
`
`4
`
`
`
`IPR2014-00807, IPR2014-00808, IPR2014-01099, IPR2014-01100
`Patent 7,604,716
`
`PATENT OWNER:
`
`Tarek Fahmi
`Tarek.fahmi@ascendalaw.com
`
`Gregory J. Gonsalves
`gonsalves@gonsalveslawfirm.com
`
`PETITIONER:
`
`TSMC – Lead Petitioner in IPR2014-00807 and IPR2014-00808:
`
`David M O’Dell
`david.odell.ipr@haynesboone.com
`
`David L. McCombs
`david.mccombs.ipr@haynesboone.com
`
`Anthony J. Fitzpatrick
`AJFitzpatrick @duanemorris.com
`
`Donald D. Jackson
`donald.jackson@haynesboone.com
`
`Gregory P. Huh
`gregory.huh.ipr@haynesboone.com
`
`GlobalFoundries – Lead Petitioner in IPR2014-01099 and IPR2014-01100:
`
`David M. Tennant
`Dohm Chankong
`dtennant@whitecase.com
`
`Fujitsu:
`
`David M O’Dell
`david.odell.ipr@haynesboone.com
`
`David L. McCombs
`david.mccombs.ipr@haynesboone.com
`
`
`
`5
`
`
`
`IPR2014-00807, IPR2014-00808, IPR2014-01099, IPR2014-01100
`Patent 7,604,716
`
`Richard C. Kim
`rckim@duanemorris.com
`
`AND:
`
`Robinson Vu
`robinson.vu@bakerbotts.com
`
`Brian M. Berliner
`bberliner@omm.com
`
`Ryan K. Yagura
`ryagura@omm.com
`
`Xin-Yi Zhou
`vzhou@omm.com
`
`John Feldhaus
`jfeldhaus@foley.com
`
`Pavan K. Agarwal
`pagarwal@foley.com
`
`Mike R. Houston
`mhouston@foley.com
`
`David M. Tennant
`dtennant@whitecase.com
`
`Gillette:
`
`Michael A. Diener
`michael.diener@wilmerhale.com
`
`Larissa B. Park
`larissa.park@wilmerhale.com
`
`
`
`
`
`6
`
`