Trials@uspto.gov
`571-272-7822
`
`
`
`Paper 13
`
`Entered: November 14, 2014
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`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.,
`Petitioners,
`
`v.
`
`ZOND, LLC,
`Patent Owner.
`____________
`Cases IPR2014-00578 and IPR2014-006041
`Patent 6,896,775 B2
`
`Cases IPR2014-01479 and IPR2014-014812
`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.
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`
`
`1 IPR2014-01494 has been joined with IPR2014-00578 and IPR2014-01482 has
`been joined with IPR2014-00604.
`2 IPR2014-01479 and IPR2014-01481 have been joined with IPR2014-00580 and
`IPR2104-00726, respectively.
`
`
`571-272-7822
`
`
`
`Paper 13
`
`Entered: November 14, 2014
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`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.,
`Petitioners,
`
`v.
`
`ZOND, LLC,
`Patent Owner.
`____________
`Cases IPR2014-00578 and IPR2014-006041
`Patent 6,896,775 B2
`
`Cases IPR2014-01479 and IPR2014-014812
`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.
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`
`
`1 IPR2014-01494 has been joined with IPR2014-00578 and IPR2014-01482 has
`been joined with IPR2014-00604.
`2 IPR2014-01479 and IPR2014-01481 have been joined with IPR2014-00580 and
`IPR2104-00726, respectively.
`
`
`
`IPR2014-00578, IPR2014-00604, IPR2014-01479, and IPR2014-01481
`Patents 6,896,775 B2 and 6,896,773 B2
`
`
`We instituted an inter partes review in the following proceedings,
`
`challenging U.S. Patent No. 6,896,775 B2: IPR2014-00578 and IPR2014-00604.
`
`Papers 13, 9, respectively. The Petitioner in each proceeding is The Gillette
`
`Company (“Gillette”). For efficiency, we synchronized the Scheduling Orders that
`
`set forth the due dates for the parties to take action for both reviews, ensuring that
`
`the reviews will be completed within one year of institution. IPR2014-00578,
`
`Paper 14; IPR2014-00604, Paper 10. We also instituted an inter partes review,
`
`challenging the same patent, in both of the following: IPR2014-01494 and
`
`IPR2014-01482 (Papers 12, 12, respectively) and subsequently granted Motions
`
`for Joinder filed by Taiwan Semiconductor Manufacturing Company, Ltd., TSMC
`
`North America Corp., Fujitsu Semiconductor Limited, and Fujitsu Semiconductor
`
`America (“TSMC/Fujitsu”). IPR2014-01494, Paper 13; IPR2014-01482, Paper 13.
`
`In addition, we instituted an inter partes review in the following
`
`proceedings, challenging U.S. Patent No. 6,896,773 B2: IPR2014-01479 and
`
`IPR2014-01481. Papers 11, 11, respectively. We also granted Motions for Joinder
`
`filed by TSMC/Fujitsu, joining those proceedings with IPR2014-00580 and
`
`IPR2104-00726, respectively. Papers 12, 12. A list of these Joinder Cases is
`
`provided in the Appendix of the instant Order.
`
`An initial conference call was held on November 13, 2014, between
`
`respective counsel for the parties for all four above-identified reviews and Judges
`
`Turner, 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
`
`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.
`
`2
`
`
`
`IPR2014-00578, IPR2014-00604, IPR2014-01479, and IPR2014-01481
`Patents 6,896,775 B2 and 6,896,773 B2
`
`
`Trial Schedule
`
`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 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. The parties may request a single-combined oral hearing in their
`
`requests for oral hearing before or on Due Date 4, on a per patent basis. Thus, a
`
`single oral hearing may be requested for all proceedings directed to U.S. Patent
`
`No. 6,896,775 B2, and a single oral hearing may be requested for all proceedings
`
`directed to U.S. Patent No. 6,896,773 B2.
`
`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 Order, in each of the original
`
`reviews. And the Joinder Decisions set forth a procedure for consolidated filings
`
`and discovery. 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 of the reviews.
`
`3
`
`
`
`IPR2014-00578, IPR2014-00604, IPR2014-01479, and IPR2014-01481
`Patents 6,896,775 B2 and 6,896,773 B2
`
`
`A question was raised about the usability of deposition transcripts in
`
`subsequent depositions. We indicated that prior transcripts can be utilized in
`
`subsequent questioning in another proceeding, but their use should be directed to
`
`the same issue in both or several cases and be relevant to the instituted grounds and
`
`claims in the particular proceeding for which the deposition is being taken. In
`
`addition, the deposition transcript from one patent can be cited in papers submitted
`
`about another patent as long as the particular, cited testimony is directed to the
`
`same issue in both. We acknowledged that although the patents at issue disclose
`
`and claim similar subject matter, there can be differences in the specifications of
`
`each patent that would inform the constructions of specific claim terms, for
`
`example. Any such process should not be burdensome on the declarant and any
`
`abuse of process should be brought to the panel’s attention immediately.
`
`Motions for Pro Hac Vice Admission and Withdrawal of Counsel
`
`During the conference call, we indicated that the Petitioners did not appear
`
`to be in agreement as to whether they opposed the Motions for Pro Hac Vice
`
`Admission filed by Zond. Gillette had appeared to indicate no opposition to those
`
`motions, but counsel for TSMC/Fujitsu indicated that the petitioner would not
`
`oppose those motions if: (1) a district court protective order is made of record in
`
`the proceedings; (2) the Board orders that the Zond admitted counsel comply with
`
`the protective order, including the prosecution bar provisions of paragraph 22; and
`
`(3) that the admitted counsel confirm in writing their assent to such compliance.
`
`
`
`During the call, we indicated that the district court’s protective order is not
`
`before us and is not an order that the Board will enforce. The parties are free to
`
`4
`
`
`
`IPR2014-00578, IPR2014-00604, IPR2014-01479, and IPR2014-01481
`Patents 6,896,775 B2 and 6,896,773 B2
`
`
`reach such agreements between themselves, but the Board need not be a part of any
`
`such agreement. We further indicated that we would not require compliance with
`
`the district court’s protective order in any decision on the motions. Subsequently,
`
`counsel for Zond seeking admission agreed to supply Petitioners with a statement
`
`indicating certain understandings, and Petitioners agreed to email the Board
`
`indications of their non-opposition.
`
`
`
`Upon further query, Petitioners also agreed to provide the same with respect
`
`to the motions for withdrawal of counsel filed in several proceedings. We also
`
`reminded the parties that given the complexities of the instant family of
`
`proceedings, it will be crucial for parties to indicate readily whether oppositions to
`
`motions will be made. In addition, we request that the parties provide appendices
`
`of related motions with any filings so that all such related motions can be
`
`considered at one time, if possible.
`
`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.
`
`5
`
`
`
`IPR2014-00578, IPR2014-00604, IPR2014-01479, and IPR2014-01481
`Patents 6,896,775 B2 and 6,896,773 B2
`
`
`Objection and Motion to Exclude Evidence
`
`As we noted during the conference call, certain due dates are set forth in the
`
`Scheduling Orders, 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 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 Order sets 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.
`
`
`
`It is
`
`ORDER
`
`ORDERED that the parties are authorized to request a single-combined oral
`
`hearing for inter partes reviews directed to the same patent; and
`
`FURTHER ORDERED that the parties are authorized to consolidate
`
`discovery for all inter partes reviews, so that the cross-examination and redirect
`
`examination may be usable in all reviews.
`
`
`
`
`
`6
`
`
`
`IPR2014-00578, IPR2014-00604, IPR2014-01479, and IPR2014-01481
`Patents 6,896,775 B2 and 6,896,773 B2
`
`
`
`
`APPENDIX
`
`Inter partes reviews for
`U.S. Patent No. 6,896,775 B2
`
`Joinder Cases
`
`IPR2014-00578 (Claims 1–29)
`
`IPR2014-01494
`
`IPR2014-00604 (Claims 30–37)
`
`IPR2014-01482
`
`Inter partes reviews for
`U.S. Patent No. 6,896,773 B2
`
`Joinder Cases
`
`IPR2014-00580 (Claims 1–20 and 34–39)
`
`IPR2014-01479
`
`IPR2014-00726 (Claims 21–33 and 40)
`
`IPR2014-01481
`
`
`
`
`
`
`
`7
`
`
`
`IPR2014-00578, IPR2014-00604, IPR2014-01479, and IPR2014-01481
`Patents 6,896,775 B2 and 6,896,773 B2
`
`
`For PATENT OWNER:
`
`Gregory J. Gonsalves
`gonsalves@gonsalveslawfirm.com
`
`Bruce J. Barker
`bbarker@chsblaw.com
`
`
`For PETITIONERS:
`
`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
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