Trials@uspto.gov
`Tel: 571-272-7822
`
`
`Paper 23
`Entered: December 16, 2014
`
`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., TOSHIBA CORPORATION, and THE GILLETTE
`COMPANY
`Petitioners,
`v.
`ZOND, LLC,
`Patent Owner.
`________________________
`Case IPR2014-008071 2
`Patent 7,604,716 B2
`____________
`Before KEVIN F. TURNER, Administrative Patent Judge.
`
`DECISION
`Motions for Pro Hac Vice Admission of Mr. Etai Lahav
`Motions for Pro Hac Vice Admission of Dr. Maria Granovsky
`Motions for Pro Hac Vice Admission of Mr. Tigran Vardanian
`37 C.F.R. § 42.10
`
`
`
`1 Cases IPR 2014-00846, IPR 2014-0974, and IPR 2014-01065 have been joined
`with the instant proceeding.
`2 This Decision addresses the same issues in the inter partes reviews listed in the
`Appendix. Therefore, we issue one Decision to be filed in all of the cases. The
`parties, however, are not authorized to use this style of filing in subsequent papers.
`
`
`Tel: 571-272-7822
`
`
`Paper 23
`Entered: December 16, 2014
`
`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., TOSHIBA CORPORATION, and THE GILLETTE
`COMPANY
`Petitioners,
`v.
`ZOND, LLC,
`Patent Owner.
`________________________
`Case IPR2014-008071 2
`Patent 7,604,716 B2
`____________
`Before KEVIN F. TURNER, Administrative Patent Judge.
`
`DECISION
`Motions for Pro Hac Vice Admission of Mr. Etai Lahav
`Motions for Pro Hac Vice Admission of Dr. Maria Granovsky
`Motions for Pro Hac Vice Admission of Mr. Tigran Vardanian
`37 C.F.R. § 42.10
`
`
`
`1 Cases IPR 2014-00846, IPR 2014-0974, and IPR 2014-01065 have been joined
`with the instant proceeding.
`2 This Decision addresses the same issues in the inter partes reviews listed in the
`Appendix. Therefore, we issue one Decision to be filed in all of the cases. The
`parties, however, are not authorized to use this style of filing in subsequent papers.
`
`
`
`IPR2014-00807 (Patent 7,604,716 B2) et al.
`
`
`Patent Owner Zond, LLC (hereafter “Zond”) filed Motions for Pro Hac Vice
`Admission of Mr. Etai Lahav, Dr. Maria Granovsky, and Mr. Tigran Vardanian in
`each of the proceedings identified in the Appendix. Papers 24, 25, 26 (“Mot. 1,”
`“Mot. 2,” “Mot. 3,” respectively).3 Zond indicates that these Motions were being
`filed without opposition. Mots. 1–3, 2. For the reasons provided below, Zond’s
`Motions are granted.
`Pursuant to 37 C.F.R. § 42.10(c), we may recognize counsel pro hac vice
`during a proceeding upon a showing of good cause, subject to the condition that
`lead counsel be a registered practitioner. The Order authorizing motions for pro
`hac vice admission requires a statement of facts showing there is good cause for us
`to recognize counsel pro hac vice, and an affidavit or declaration of the individual
`seeking to appear in the proceedings identified in the Appendix.
`In the proceedings at issue, lead counsel for Zond, Dr. Gregory J. Gonsalves,
`is a registered practitioner. Mots. 1–3, 2. Zond’s Motions indicate that there is
`good cause for us to recognize Mr. Etai Lahav, Dr. Maria Granovsky, and Mr.
`Tigran Vardanian pro hac vice during these proceedings, and is supported by a
`Declaration of each (Exs. 2001, 2002, 2003). Mots. 1–3, 4. We address each
`individual seeking admission below, in turn.
`Mr. Lahav declares that he is an experienced patent litigation attorney and
`has been practicing law, with a focus on patent litigation and other intellectual
`property matters. Ex. 2001 ¶ viii. Mr. Lahav also declares that he has established
`familiarity with the subject matter at issue in the proceedings identified in the
`
`
`3 For the purpose of clarity and expediency, we treat IPR2014-00807 as
`representative, and all citations are to IPR2014-00807 unless otherwise noted.
`2
`
`
`
`IPR2014-00807 (Patent 7,604,716 B2) et al.
`
`Appendix, as he has been representing Zond in the related district court litigation
`that involves the same patents being challenged in the proceedings before us. Id. ¶
`ix. Additionally, Mr. Lahav’s Declaration complies with the requirements set forth
`in the Board’s Order authorizing motions for pro hac vice admission. Id. ¶¶ i–ix.
`On this record, we determine that Mr. Lahav has sufficient legal and
`technical qualifications to represent Zond in the proceedings identified in the
`Appendix. We further recognize that there is a need for Zond to have its counsel in
`the co-pending litigation involved in the proceedings before us. Accordingly, Zond
`has established that there is good cause for Mr. Lahav’s admission.
`Dr. Granovsky declares that she is an experienced patent litigation attorney
`and has been practicing law, with a focus on patent litigation and other intellectual
`property matters. Ex. 2002 ¶ viii. Dr. Granovsky also declares that she has
`established familiarity with the subject matter at issue in the proceedings identified
`in the Appendix, as she has been representing Zond in the related district court
`litigation that involves the same patents being challenged in the proceedings before
`us. Id. ¶ ix. Additionally, Dr. Granovsky’s Declaration complies with the
`requirements set forth in the Board’s Order authorizing motions for pro hac vice
`admission. Id. ¶¶ i–ix.
`On this record, we determine that Dr. Granovsky has sufficient legal and
`technical qualifications to represent Zond in the proceedings identified in the
`Appendix. We further recognize that there is a need for Zond to have its counsel in
`the co-pending litigation involved in the proceedings before us. Accordingly, Zond
`has established that there is good cause for Dr. Granovsky’s admission.
`Mr. Vardanian declares that he is an experienced patent litigation attorney
`and has been practicing law, with a focus on patent litigation and other intellectual
`3
`
`
`
`IPR2014-00807 (Patent 7,604,716 B2) et al.
`
`property matters. Ex. 2003 ¶ viii. Mr. Vardanian also declares that he has
`established familiarity with the subject matter at issue in the proceedings identified
`in the Appendix, as he has been representing Zond in the related district court
`litigation that involves the same patents being challenged in the proceedings before
`us. Id. ¶ ix. Additionally, Mr. Vardanian’s Declaration complies with the
`requirements set forth in the Board’s Order authorizing motions for pro hac vice
`admission. Id. ¶¶ i–ix.
`On this record, we determine that Mr. Vardanian has sufficient legal and
`technical qualifications to represent Zond in the proceedings identified in the
`Appendix. We further recognize that there is a need for Zond to have its counsel in
`the co-pending litigation involved in the proceedings before us. Accordingly, Zond
`has established that there is good cause for Mr. Vardanian’s admission.
`For the foregoing reasons, it is
`ORDERED that Zond’s motions for pro hac vice admission of Mr. Lahav,
`Dr. Granovsky, and Mr. Vardanian for the instant proceeding are granted; they are
`authorized to represent Patent Owner as back-up counsel in the proceedings
`identified in the Appendix;
`FURTHER ORDERED that Patent Owner is to continue to have a registered
`practitioner as lead counsel in the instant proceedings; and
`FURTHER ORDERED that Mr. Lahav, Dr. Granovsky, and Mr. Vardanian
`are to comply with the Office Patent Trial Practice Guide and the Board’s Rules of
`Practice for Trials, as set forth in Title 37, Part 42 of the C.F.R., and they are to be
`subject to the Office’s disciplinary jurisdiction under 37 C.F.R. § 11.19(a), and the
`USPTO Rules of Professional Conduct set forth in 37 C.F.R. §§ 11.101 et seq.
`
`
`
`4
`
`
`
`IPR2014-00807 (Patent 7,604,716 B2) et al.
`
`
`
`U.S. Patent Number
`
`7,604,716 B2
`
`
`
`
`
`APPENDIX
`
`Inter Partes Reviews
`IPR2014-00807
`IPR2014-00808
`IPR2014-01099
`IPR2014-01100
`
`Paper Nos. for Motions
`24, 25, 26
`23, 24, 25
`18, 19, 20
`18, 19, 20
`
`5
`
`
`
`IPR2014-00807 (Patent 7,604,716 B2) et al.
`
`For PETITIONER:
`TSMC and Fujitsu:
`David M O’Dell
`David L. McCombs
`Donald D. Jackson
`Gregory P. Huh
`HAYNES AND BOONE, LLP
`david.odell.ipr@haynesboone.com
`david.mccombs.ipr@haynesboone.com
`donald.jackson@haynesboone.com
`gregory.huh.ipr@haynesboone.com
`
`Richard C. Kim
`Anothy J. Fitzpatrick
`DUANE MORRIS, LLP
`rckim@duanemorris.com
`AJFitzpatrick@duanemorris.com
`
`
`GlobalFoundries:
`David Tennant
`Dohm Chankong
`WHITE & CASE LLP
`dtennant@whitecase.com
`dohm.chankong@whitecase.com
`
`Gillette:
`Michael A. Diener
`Larissa B. Park
`WILMER, CUTLER, PICKERING, HALE AND DORR, LLP
`michael.diener@wilmerhale.com
`larissa.park@wilmerhale.com
`
`6
`
`
`
`
`
`IPR2014-00807 (Patent 7,604,716 B2) et al.
`
`AMD:
`David M. Tennant
`WHITE & CASE LLP
`dtennant@whitecase.com
`
`Brian M. Berliner
`Byan K. Yagura
`Xin-Yi Zhou
`O’MELVENY & MEYERS LLO
`bberliner@omm.com
`ryagura@omm.com
`vzhou@omm.com
`
`For PATENT OWNER:
`Tarek Fahmi
`tarek.fahmi@ascendalaw.com
`
`Gregory J. Gonsalves
`gonsalves@gonsalveslawfirm.com
`
`
`
`7
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