Paper No.
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________________________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________________________________
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`TAIWAN SEMICONDUCTOR MANUFACTURING COMPANY, LTD.
`TSMC NORTH AMERICA CORP.
`FUJITSU SEMICONDUCTOR LIMITED
`FUJITSU SEMICONDUCTOR AMERICA, INC.
`Petitioner
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`v.
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`ZOND, LLC
`Patent Owner
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`Case IPR2014-01482
`U.S. PATENT NO. 6,896,775
`CLAIMS 30-37
`Title: High-power pulsed magnetically enhanced plasma processing
`____________________________________________
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`__________________________________________________________________
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`PETITIONER’S MOTION FOR JOINDER UNDER
` 35 U.S.C. § 315(c) AND 37 C.F.R. § 42.22 AND § 42.122(b)
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________________________________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________________________________
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`
`TAIWAN SEMICONDUCTOR MANUFACTURING COMPANY, LTD.
`TSMC NORTH AMERICA CORP.
`FUJITSU SEMICONDUCTOR LIMITED
`FUJITSU SEMICONDUCTOR AMERICA, INC.
`Petitioner
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`v.
`
`ZOND, LLC
`Patent Owner
`
`Case IPR2014-01482
`U.S. PATENT NO. 6,896,775
`CLAIMS 30-37
`Title: High-power pulsed magnetically enhanced plasma processing
`____________________________________________
`
`
`
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`__________________________________________________________________
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`PETITIONER’S MOTION FOR JOINDER UNDER
` 35 U.S.C. § 315(c) AND 37 C.F.R. § 42.22 AND § 42.122(b)
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`Petitioner’s Motion for Joinder (IPR2014-01482)
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`I.
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`INTRODUCTION
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`Taiwan Semiconductor Manufacturing Company, Limited, TSMC North
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`America Corp., Fujitsu Semiconductor Limited, and Fujitsu Semiconductor
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`America, Inc., (collectively “Petitioner” or “TSMC and Fujitsu”) submit the
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`present Motion for Joinder pursuant to 37 C.F.R. § 42.122(b), authorizing the filing
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`of a “motion under § 42.22, no later than one month after the institution date of any
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`inter partes review for which joinder is requested.”1 Petitioner submits that the
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`present Motion for Joinder is timely filed since the inter partes review proceeding
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`for which joinder is requested has not yet been instituted.
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`Petitioner hereby moves for joinder of the present petition for inter partes
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`review IPR2014-01482 (the “TSMC/FUJITSU IPR”) with IPR2014-00604 (the
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`“GILLETTE
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`IPR”),
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`filed by
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`the Gillette Company
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`(“Gillette”). The
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`TSMC/FUJITSU IPR is identical to the GILLETTE IPR in all substantive respects,
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`includes identical exhibits to the GILLETTE IPR, and relies upon the same expert
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`declarant as the GILLETTE IPR. Gillette does not oppose this motion.
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`1In its May 29, 2014 Order (Paper 5) of related proceedings IPR2014-00781 and
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`IPR2014-00782, the Board articulated that prior authorization for filing a motion
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`for joinder is not required if sought prior to one month after the institution date of
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`any inter partes review for which joinder is requested.
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`2
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`Petitioner’s Motion for Joinder (IPR2014-01482)
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`II. BACKGROUND AND RELATED PROCEEDINGS
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`The TSMC/FUJITSU IPR and the GILLETTE IPR are among a family of
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`inter partes review proceedings relating to U.S. Patent Nos. 6,896,773 and
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`6,896,775 that are being asserted by Zond, LLC (“Zond”) against numerous
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`defendants: 1:14-cv-12438-WGY (Zond v. Fujitsu Semiconductor Limited et al);
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`1:14-cv-00721-LPS (TSMC Technology Inc. et al v. Zond LLC.); and 1:13-cv-
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`11567-DJC (Zond, Inc. v. Gillette Company, the et al.).
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`In particular, a complaint in 1:14-cv-12438-WGY (Zond v. Fujitsu
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`Semiconductor Limited et al) was first served on June 10, 2014, and a complaint in
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`1:14-cv-00721-LPS (TSMC Technology Inc. et al v. Zond LLC.) was first served on
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`June 6, 2014. Accordingly, all petitions for inter partes review that have been filed
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`by Petitioner TSMC and Fujitsu are timely as prescribed by 35 U.S.C. § 315(b).
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`Currently, the family of inter partes review proceedings relating to the
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`above identified Zond patents (the “Zond IPRs”) consists of the following
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`proceedings that involve TSMC, Fujitsu, and Gillette:
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`Petitioner’s Motion for Joinder (IPR2014-01482)
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`In addition to the present Motion for Joinder, Petitioner is presently filing
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`Motions for Joinder of other Zond IPR petitions with the corresponding petitions
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`filed by Gillette, subject to the same conditions sought by this motion. Gillette
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`does not oppose the motions.
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`III. DISCUSSION
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`If the Director institutes an inter partes review, Petitioner respectfully
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`requests
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`that
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`the Board exercise
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`its discretion
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`to grant
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`joinder of
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`the
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`TSMC/FUJITSU IPR and GILLETTE IPR proceedings pursuant to 35 U.S.C. §
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`315(c), 37 C.F.R. § 42.22, and 37 C.F.R. § 42.122(b). In support of this motion,
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`Petitioner proposes consolidated filings and other procedural accommodations
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`designed to streamline the proceedings.
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`1. Reasons Why Joinder Is Appropriate
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`Joinder is appropriate in this case because it is the most expedient way to
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`secure the just, speedy, and inexpensive resolution of the related proceedings. See
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`35 U.S.C. § 316(b); 37 C.F.R. § 42.1(b). Intentionally, the TSMC/FUJITSU IPR is
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`substantively identical to the corresponding GILLETTE IPR in an effort to avoid
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`multiplication of issues before the Board. Given the duplicative nature of these
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`petitions, joinder of the related proceedings is appropriate. As discussed below,
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`Petitioner will agree to consolidated filings and discovery, and procedural
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`concessions, which Gillette does not oppose and which do not prejudice Zond.
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`4
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`Petitioner’s Motion for Joinder (IPR2014-01482)
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`a. Substantively Identical Petitions
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`Petitioner represents that the TSMC/FUJITSU IPR is identical to the
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`GILLETTE IPR in all substantive respects. It includes identical grounds, analysis,
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`and exhibits and relies upon the same expert declarant and declaration as the
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`GILLETTE IPR. Accordingly, if instituted, maintaining the TSMC/FUJITSU IPR
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`proceeding separate from that of the GILLETTE IPR would entail needless
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`duplication of effort.
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`b. Consolidated Filings and Discovery
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`Because the grounds of unpatentability in the TSMC/FUJITSU IPR and
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`GILLETTE IPR are the same, the case is amenable to consolidated filings.
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`Petitioner will agree to consolidated filings for all substantive papers in the
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`proceeding (e.g., Reply to the Patent Owner’s Response, Opposition to Motion to
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`Amend, Motion for Observation on Cross Examination Testimony of a Reply
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`Witness, Motion to Exclude Evidence, Opposition to Motion to Exclude Evidence
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`and Reply). Specifically, Petitioner will agree to incorporate its filings with those
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`of Gillette in a consolidated filing, subject to the ordinary rules for one party on
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`page limits. Gillette and Petitioner will be jointly responsible for the consolidated
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`filings.
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`5
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`Petitioner’s Motion for Joinder (IPR2014-01482)
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`Petitioner agrees not to be permitted any arguments separate from those
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`advanced by Petitioner and Gillette in the consolidated filings. These limitations
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`avoid lengthy and duplicative briefing.
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`Consolidated discovery is also appropriate given that Petitioner and Gillette
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`are using the same expert declarant who has submitted the same, identical
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`declaration in the two proceedings. Petitioner and Gillette will designate an
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`attorney to conduct the cross-examination of any given witness produced by Zond
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`and the redirect of any given witness produced by Petitioner or Gillette within the
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`time frame normally allotted by the rules for one party. Petitioner and Gillette will
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`not receive any separate cross-examination or redirect time.
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`Petitioner will agree to the foregoing conditions regarding consolidated
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`filings and discovery even in the event other IPRs filed by other, third-party
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`petitioners are joined with the GILLETTE IPR.
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`2. No New Grounds of Unpatentability
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`The TSMC/FUJITSU IPR raises no new grounds of unpatentability from
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`those of the GILLETTE IPR because, in fact, the petitions are identical.
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`3. No Impact on IPR Trial Schedule
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`The small difference between the filing date of the TSMC/FUJITSU IPR and
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`the GILLETTE IPR is without consequence should the proceedings be joined. The
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`trial schedule for the GILLETTE IPR would not need to be delayed to effect
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`6
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`Petitioner’s Motion for Joinder (IPR2014-01482)
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`joinder based on Zond’s preliminary response and the later-filed TSMC/FUJITSU
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`IPR. The joint proceeding would allow the Board and parties to focus on the
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`merits in one consolidated proceeding without unnecessary duplication of effort,
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`and in a timely manner.
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`4. Briefing and Discovery Will Be Simplified
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`Joinder will simplify briefing and discovery because Petitioner seeks an
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`order similar to that issued in Motorola Mobility LLC v. Softview LLC, IPR2013-
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`00256 (PTAB June 20, 2013) (Paper 10). As discussed above, Petitioner and
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`Gillette will engage in consolidated filings and discovery, which will simplify the
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`briefing and discovery process.
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`5. No Prejudice to Zond if Proceedings Are Joined
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`Petitioner proposes joinder to streamline the proceedings and reduce the
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`costs and burdens on the parties. Petitioner believes joinder will achieve these
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`goals for several reasons. First, joinder will most certainly decrease the number of
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`papers the parties must file, by eliminating a duplicative proceeding. Second,
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`joinder will also reduce by half the time and expense for depositions and other
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`discovery required in separate proceedings.
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` Third, joinder creates case
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`management efficiencies for the Board and parties without any prejudice to Zond.
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`7
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`Petitioner’s Motion for Joinder (IPR2014-01482)
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`IV. PROPOSED ORDER
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`Petitioner proposes a joinder order for consideration by the Board as
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`follows, which Gillette does not oppose:
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`• If review is instituted on any ground in the GILLETTE IPR, the
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`TSMC/FUJITSU IPR will be instituted and will be joined with the
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`GILLETTE IPR on the same grounds. Grounds not instituted because
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`the GILLETTE IPR failed to establish a reasonable likelihood of
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`prevailing, if any, will be similarly denied in the TSMC/FUJITSU
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`IPR.
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`• The scheduling order for the GILLETTE IPR will apply for the joined
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`proceeding.
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`• Throughout the proceeding, Gillette and TSMC and Fujitsu will file
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`papers as consolidated filings, except for motions that do not involve
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`the other party, in accordance with the Board’s established rules
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`regarding page limits. So long as they both continue to participate in
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`the merged proceeding, Gillette and TSMC and Fujitsu will identify
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`each such filing as a Consolidated Filing and will be responsible for
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`completing all consolidated filings.
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`• Gillette and TSMC and Fujitsu will designate an attorney to conduct
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`the cross examination of any given witness produced by Zond and the
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`8
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`Petitioner’s Motion for Joinder (IPR2014-01482)
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`redirect of any given witness produced by Gillette or TSMC and
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`Fujitsu within the time frame normally allotted by the rules for one
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`party. Gillette and TSMC and Fujitsu will not receive any separate
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`cross-examination or redirect time.
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`• Zond will conduct any cross examination of any given witness jointly
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`produced by Gillette or TSMC and Fujitsu and the redirect of any
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`given witness produced by Zond within the time frame normally
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`allotted by
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`the rules for one cross-examination or redirect
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`examination.
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`V. CONCLUSION
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` For the foregoing reasons, if the Director institutes inter partes review,
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`Petitioner TSMC and Fujitsu respectfully requests that the Board grant joinder of
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`the TSMC/FUJITSU IPR and GILLETTE IPR proceedings.
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`Respectfully submitted,
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`Date: September 24, 2014
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`/David M. O’Dell/
`David M. O’Dell
`Registration No. 42,044
`Counsel for Petitioner
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`HAYNES AND BOONE, LLP.
`2323 VICTORY AVENUE SUITE 700
`DALLAS TEXAS 75219
`TEL: (972) 739-8635
`FAX: (214) 200-0853
`EMAIL: david.odell.ipr@haynesboone.com
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`Petitioner’s Motion for Joinder (IPR2014-01482)
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. §§ 42.6(e) and 42.105(a), this is to certify that I
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`caused to be served a true and correct copy of the foregoing “PETITIONER’S
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`MOTION FOR JOINDER UNDER 35 U.S.C. § 315(c) AND 37 C.F.R. §§ 42.22
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`AND 42.122(b)” as detailed below:
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`Date of service September 24, 2014
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`Manner of service Email: gonsalves@gonsalveslawfirm.com;
`bbarker@chsblaw.com; kurt@rauschenbach.com
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`Documents served PETITIONER’S MOTION FOR JOINDER UNDER 35
`U.S.C. § 315(c) AND 37 C.F.R. §§ 42.22 AND 42.122(b)
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`Persons Served Dr. Gregory J. Gonsalves
`2216 Beacon Lane
`Falls Church, Virginia 22043
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`Bruce Barker
`Chao Hadidi Stark & Barker LLP
`176 East Mail Street, Suite 6
`Westborough, MA 01581
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`/David M. O’Dell/
`David M. O’Dell
`Registration No. 42,044
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