`Trials@uspto.gov
`571-272-7822
`
` Entered: November 7, 2014
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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 IPR2014-01482
`Patent 6,896,775 B2
`____________
`
`
`
`
`Before KEVIN F. TURNER, DEBRA K. STEPHENS, 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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`IPR2014-01482
`Patent 6,896,775 B2
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`INTRODUCTION
`Taiwan Semiconductor Manufacturing Company, Ltd., TSMC North
`America Corp., Fujitsu Semiconductor Limited, and Fujitsu Semiconductor
`America (“Petitioner”) filed a Petition requesting inter partes review of
`claims 30–37 of U.S. Patent No. 6,896,775 B2 (“the ’775 Patent”). Paper 1
`(“Pet.”). Pursuant to 37 C.F.R. § 42.122(b), Petitioner also filed a Motion
`for Joinder, seeking to join the instant proceeding with The Gillette
`Company v. Zond, LLC, Case IPR2014-00604 (PTAB) (“IPR2014-00604”).
`Paper 5 (“Mot.”).
`The Gillette Company (“Gillette”), the Petitioner in IPR2014-00604,
`does not oppose the instant Petitioner’s Motion for Joinder. Mot. 2. Patent
`Owner, Zond, LLC (“Zond”), filed a Preliminary Response to the Petition
`(Paper 10, “Prelim. Resp.”), and an Opposition to Petitioner’s Motion for
`Joinder (Paper 9, “Opp.”). In a separate decision, we institute inter partes
`review as to the same claims on the same ground of unpatentability for
`which we instituted trial in IPR2014-00604. For the reasons set forth below,
`Petitioner’s revised Motion for Joinder is granted.
`
`ANALYSIS
`The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat.
`284 (2011) (“AIA”) permits joinder of like review proceedings. The Board,
`acting on behalf of the Director, has the discretion to join an inter partes
`review with another inter partes review. See 35 U.S.C. § 315(c). Joinder
`may be authorized when warranted, but the decision to grant joinder is
`discretionary. 35 U.S.C. § 315(c); 37 C.F.R. § 42.122. When exercising its
`discretion, the Board is mindful that patent trial regulations, including the
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`IPR2014-01482
`Patent 6,896,775 B2
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`rules for joinder, must be construed to secure the just, speedy, and
`inexpensive resolution of every proceeding. See 35 U.S.C. § 316(b);
`37 C.F.R. § 42.1(b). The Board considers the impact of both substantive
`issues and procedural matters on the proceedings.
`As the moving party, Petitioner bears the burden to show that joinder
`is appropriate. 37 C.F.R. §§ 42.20(c), 42.122(b). In its Motion for Joinder,
`Petitioner contends that joinder, in this particular situation, is appropriate
`because: (1) “it is the most expedient way to secure the just, speedy, and
`inexpensive resolution of the related proceedings” (Mot. 4); (2) Petitioner’s
`Petition is substantively identical to Gillette’s Petition filed in IPR2014-
`00604 (id. at 5); (3) Petitioner agrees to consolidated filings and discovery
`(id. at 5–6); (4) joinder would not affect the schedule in IPR2014-00604
`(id. at 6–7); and (5) joinder would streamline the proceedings, reduce the
`costs and burdens on the parties, and increase efficiencies for the Board
`without any prejudice to Zond (id. at 7).
`We agree that the substantive issues in IPR2014-00604 would not be
`affected by joinder, because Petitioner’s Petition is substantively identical to
`Gillette’s Revised Petition filed in IPR2014-00604. Notably, Petitioner’s
`Petition asserts identical grounds of unpatentability, challenging the same
`claims of the ’775 Patent. Compare Pet. 16–58, with IPR2014-00604, Paper
`9 (“’604 Pet.”), 15–58. Petitioner also submits identical proposed claim
`constructions, as well as the same Declaration of Mr. Richard DeVito.
`Compare Pet. 12–15, with ’604 Pet. 12–15; compare Ex. 1111, with ’604
`Ex. 1111. Moreover, we institute the instant trial based on the same ground
`for which we instituted trial in IPR2014-00604. Therefore, Petitioner’s
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`IPR2014-01482
`Patent 6,896,775 B2
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`Petition raises no new issues beyond those already before us in
`IPR2014-00604.
`In its Opposition, Zond indicates that it has specific requirements for
`joinder, although it does not raise specific objections. Opp. 1. Zond
`proposes a procedure for the joined proceeding to consolidate the schedule,
`filings, and discovery. Opp. 1–3.
`We agree with the parties that conducting a single joined proceeding
`for reviewing claims 30–37 of the ’775 Patent is more efficient than
`conducting multiple proceedings, eliminating duplicate filings and
`discovery. As previously indicated, Petitioner agrees to consolidated filings
`for all substantive papers. Mot. 5–6. Petitioner further indicates that it will
`not file any paper with arguments separate from those advanced by the
`consolidated filings, eliminating duplicate briefing. Id. at 6. Petitioner
`further agrees to consolidated discovery, as each Petitioner proffers the same
`Declaration of Mr. DeVito. Id. Petitioner indicates that Petitioners
`collectively will designate an attorney to conduct the cross-examination of
`any witnesses produced by Zond and the redirect of any witnesses produced
`by Petitioners, within the timeframe normally allotted by the rules for one
`party. Id. Moreover, joinder will not require any change to the trial
`schedule in IPR2014-00604, allowing the trial still to be completed within
`one year. Id. at 8–9. Given that Petitioner’s Petition raises no new issues,
`and Petitioners agree to consolidated filings and discovery, the impact of
`joinder on IPR2014-00604 will be minimal, and joinder will streamline the
`proceedings, reducing the costs and burdens on the parties and the Board.
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`IPR2014-01482
`Patent 6,896,775 B2
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`For the foregoing reasons, Petitioner has met its burden of
`demonstrating that joinder of the instant proceeding with IPR2014-00604 is
`warranted under the circumstances.
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`ORDER
`
`Accordingly, it is:
`ORDERED that Petitioner’s Motion for Joinder with IPR2014-00604
`is granted;
`FURTHER ORDERED that the instant proceeding is joined with
`IPR2014-00604;
`FURTHER ORDERED that the grounds of unpatentability on which a
`trial was instituted in IPR2014-00604 are unchanged;
`FURTHER ORDERED that the Scheduling Order for IPR2014-00604
`(Paper 10) shall govern the joined proceeding; the initial conference call for
`the joined proceeding is scheduled on November 13, 2014 at 2:00 PM ET;
`FURTHER ORDERED that the instant proceeding is instituted,
`joined, and terminated under 37 C.F.R. § 42.72, and all further filings in the
`joined proceeding shall be made only in IPR2014-00604;
`FURTHER ORDERED that, throughout IPR2014-00604, Petitioners
`(Gillette and Petitioner) will file papers, except for motions which do not
`involve the other parties, as consolidated filings1; Gillette will identify each
`such filing as a consolidated filing and will be responsible for completing all
`consolidated filings; the page limits set forth in 37 C.F.R. § 42.24 will apply
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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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`IPR2014-01482
`Patent 6,896,775 B2
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`to all consolidated filings; no individual Petitioner will receive any
`additional pages in addition to the page limits set forth in 37 C.F.R. § 42.24
`for one party;
`FURTHER ORDERED that Zond will conduct the cross-examination
`of witnesses, as well as the redirect examination of any witness it produces,
`in the timeframes set forth in 37 C.F.R. § 42.53(c);
`FURTHER ORDERED that Petitioners collectively will designate
`attorneys to conduct the cross-examination of any witnesses produced by
`Zond and the redirect examination of any witnesses produced by Petitioners,
`within the timeframes set forth in 37 C.F.R. § 42.53(c) for one party; no
`individual Petitioner will receive any cross-examination or redirect
`examination time in addition to the time normally allotted by 37 C.F.R.
`§ 42.53(c) for one party;
`FURTHER ORDERED that Petitioners collectively will designate
`attorneys to present at the oral hearing (if requested) as a consolidated
`presentation;
`FURTHER ORDERED that the case caption in IPR2014-00604 shall
`be changed to reflect the joinder with the instant proceeding in accordance
`with the attached example; and
`FURTHER ORDERED that a copy of this Decision be entered into
`the file of IPR2014-00604.
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`IPR2014-01482
`Patent 6,896,775 B2
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`For PETITIONER:
`David M. O’Dell
`David L. McCombs
`Haynes and Boone, LLP
` david.odell.ipr@haynesboone.com
`david.mccombs.ipr@haynesboone.com
`
`
`PATENT OWNER:
`Gregory Gonsalves
`The Gonsalves Law firm
`gonsalves@gonsalveslawfirm.com
`
`Bruce Barker
`Chao Hadidi Stark & Barker LLP
`bbarker@chsblaw.com
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
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`
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`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.
`____________
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`Case IPR2014-006041
`Patent 6,896,775 B2
`____________
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`1 Case IPR2014-01482 has been joined with the instant proceeding.
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