`Trials@uspto.gov
`571-272-7822
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` Entered: November 12, 2014
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`
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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 CORP., FUJITSU SEMICONDUCTOR
`LIMITED, and FUJITSU SEMICONDUCTOR AMERICA, INC.,
`Petitioner,
`
`v.
`
`ZOND, LLC,
`Patent Owner.
`____________
`
`Case IPR2014-01481
`Patent 6,896,773 B2
`____________
`
`
`
`
`Before KEVIN F. TURNER, JONI Y. CHANG, SUSAN L.C. MITCHELL,
`and JENNIFER M. MEYER, Administrative Patent Judges.
`
`
`TURNER, Administrative Patent Judge.
`
`DECISION
`Granting Motion for Joinder
`37 C.F.R. § 42.122
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`IPR2014-01481
`Patent 6,896,773 B2
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`INTRODUCTION
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`Taiwan Semiconductor Manufacturing Company, Ltd., TSMC North
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`America Corp., Fujitsu Semiconductor Limited, and Fujitsu Semiconductor
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`America (collectively, “Petitioner”) filed a Petition requesting inter partes
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`review of claims 21–33 and 40 of U.S. Patent No. 6,896,773 B2 (Ex. 1101,
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`“the ’773 Patent”). Paper 3 (“Pet.”). Pursuant to 37 C.F.R. § 42.122(b),
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`Petitioner also filed a Motion for Joinder, seeking to join the instant
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`proceeding with The Gillette Company v. Zond, LLC, Case IPR2014-00726
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`(PTAB) (“IPR2014-00726”). Paper 5 (“Mot.”).
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`The Gillette Company (“Gillette”), the Petitioner in IPR2014-00726,
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`does not oppose the instant Petitioner’s Motion for Joinder. Mot. 2. Patent
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`Owner, Zond, LLC (“Zond”), filed a Preliminary Response to the Petition
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`(Paper 10, “Prelim. Resp.”), and an Opposition to Petitioner’s Motion for
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`Joinder (Paper 9, “Opp.”). In a separate decision, we institute inter partes
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`review as to the same claims on the same ground of unpatentability for
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`which we instituted trial in IPR2014-00726. For the reasons set forth below,
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`Petitioner’s 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. See 35 U.S.C. § 315(c). Joinder
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`may be authorized when warranted, but the decision to grant joinder is
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`discretionary. 35 U.S.C. § 315(c); 37 C.F.R. § 42.122. When exercising its
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`discretion, the Board is mindful that patent trial regulations, including the
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`2
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`IPR2014-01481
`Patent 6,896,773 B2
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`rules for joinder, must be construed to secure the just, speedy, and
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`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, Petitioner bears the burden to show that joinder
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`is appropriate. 37 C.F.R. §§ 42.20(c), 42.122(b). In its Motion for Joinder,
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`Petitioner contends that joinder, in this particular situation, is appropriate
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`because: (1) “it is the most expedient way to secure the just, speedy, and
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`inexpensive resolution of the related proceedings” (Mot. 4); (2) Petitioner’s
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`Petition is substantively identical to Gillette’s Petition filed in IPR2014-
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`00726 (id. at 5); (3) Petitioner agrees to consolidated filings and discovery
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`(id. at 5–6); (4) joinder would not affect the schedule in IPR2014-00726
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`(id. at 6–7); and (5) joinder would streamline the proceedings, reduce the
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`costs and burdens on the parties, and increase efficiencies for the Board
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`without any prejudice to Zond (id. at 7).
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`We agree that the substantive issues in IPR2014-00726 would not be
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`affected by joinder, because the instant Petition is substantively identical to
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`Gillette’s Petition filed in IPR2014-00726. Notably, the instant Petition
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`asserts identical grounds of unpatentability, challenging the same claims of
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`the ’773 Patent. Compare Pet. 22–35, 47–50, 54–58, with IPR2014-00726,
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`Paper 3 (“’726 Pet.”), 23–36, 47–50, 55–59. Petitioner also submits
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`identical proposed claim constructions, as well as the same Declaration of
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`Mr. Richard DeVito. Compare Pet. 4–6, with ’726 Pet. 4–6; compare
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`Ex. 1105, with ’726 Ex. 1105. Moreover, we institute the instant trial based
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`on the same ground for which we instituted trial in IPR2014-00726.
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`3
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`IPR2014-01481
`Patent 6,896,773 B2
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`Therefore, the instant Petition raises no new issues beyond those already
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`before us in IPR2014-00726.
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`In its Opposition, Zond indicates that it has specific requirements for
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`joinder, although it does not raise specific objections. Opp. 1. Zond
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`proposes a procedure for the joined proceeding to consolidate the schedule,
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`filings, and discovery. Opp. 1–3.
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`We agree with the parties that conducting a single joined proceeding
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`for reviewing claims 21–33 and 40 of the ’773 Patent is more efficient than
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`conducting multiple proceedings, eliminating duplicate filings and
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`discovery. As previously indicated, Petitioner agrees to consolidated filings
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`for all substantive papers. Mot. 5–6. Petitioner further indicates that it will
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`not file any paper with arguments separate from those advanced by the
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`consolidated filings, eliminating duplicate briefing. Id. at 6. Petitioner
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`further agrees to consolidated discovery, as each Petitioner proffers the same
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`Declaration of Mr. DeVito. Id. Petitioner indicates that Petitioners of the
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`joined proceeding (Gillette and Petitioner) collectively will designate an
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`attorney to conduct the cross-examination of any witnesses produced by
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`Zond and the redirect of any witnesses produced by Petitioners, within the
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`timeframe normally allotted by the rules for one party. Id. Moreover,
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`joinder will not require any change to the trial schedule in IPR2014-00726,
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`allowing the trial still to be completed within one year. Id. at 8–9. Given
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`that the instant Petition raises no new issues, and Petitioners agree to
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`consolidated filings and discovery, the impact of joinder on IPR2014-00726
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`will be minimal, and joinder will streamline the proceedings, reducing the
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`costs and burdens on the parties and the Board.
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`4
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`IPR2014-01481
`Patent 6,896,773 B2
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`For the foregoing reasons, Petitioner has met its burden of
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`demonstrating that joinder of the instant proceeding with IPR2014-00726 is
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`warranted under the circumstances.
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`Accordingly, it is:
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`ORDER
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`ORDERED that Petitioner’s Motion for Joinder with IPR2014-00726
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`is granted;
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`FURTHER ORDERED that the instant proceeding is joined with
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`IPR2014-00726;
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`FURTHER ORDERED that the grounds of unpatentability on which a
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`trial was instituted in IPR2014-00726 are unchanged;
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`FURTHER ORDERED that the Scheduling Order for IPR2014-00726
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`(Paper 9) shall govern the joined proceeding, with the exception of the initial
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`conference call; the initial conference call for this proceeding is scheduled
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`on November 13, 2014 at 2:00 PM 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 IPR2014-00726;
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`FURTHER ORDERED that, throughout IPR2014-00726, Petitioners
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`(Gillette and Petitioner) will file papers, except for motions which do not
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`involve the other parties, as consolidated filings1; Gillette will identify each
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`such filing as a consolidated filing and will be responsible for completing all
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`1 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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`5
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`IPR2014-01481
`Patent 6,896,773 B2
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`consolidated filings; the page limits set forth in 37 C.F.R. § 42.24 will apply
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`to all consolidated filings; no individual Petitioner will receive any
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`additional pages in addition to the page limits set forth in 37 C.F.R. § 42.24
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`for one party;
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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 IPR2014-00726 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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`FURTHER ORDERED that a copy of this Decision be entered into
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`the file of IPR2014-00726.
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`6
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`IPR2014-01481
`Patent 6,896,773 B2
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`For PETITIONER:
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`
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`
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`David M. O’Dell
`David L. McCombs
`Haynes and Boone, LLP
` david.odell.ipr@haynesboone.com
`david.mccombs.ipr@haynesboone.com
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`
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`PATENT OWNER:
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`Gregory Gonsalves
`The Gonsalves Law firm
`gonsalves@gonsalveslawfirm.com
`
`Bruce Barker
`Chao Hadidi Stark & Barker LLP
`bbarker@chsblaw.com
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`7
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`
`THE GILLETTE COMPANY, TAIWAN SEMICONDUCTOR
`MANUFACTURING COMPANY, LTD., TSMC NORTH AMERICA
`CORP., FUJITSU SEMICONDUCTOR LIMITED, and FUJITSU
`SEMICONDUCTOR AMERICA, INC.,
`Petitioner,
`
`v.
`
`ZOND, LLC,
`Patent Owner.
`____________
`
`Case IPR2014-007261
`Patent 6,896,773 B2
`____________
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`1 Case IPR2014-01481 has been joined with the instant proceeding.