`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`SAMSUNG ELECTRONICS CO., LTD
`
`Petitioner
`
`v.
`
`DSS TECHNOLOGY MANAGEMENT, INC.
`Patent Owner
`
`
`
`
`Case IPR2014-01493
`U.S. Patent No. 5,652,084
`Title: METHOD FOR REDUCED PITCH LITHOGRAPHY
`
`
`
`
`Inter Partes Review No. IPR2014-01493
`
`
`
`
`
`
`
`
`
`PETITIONER’S MOTION FOR JOINDER UNDER 35 U.S.C. § 315(c) AND
`37 C.F.R. § 42.22 AND § 42.122(b)
`
`
`
`Petitioner’s Motion for Joinder (IPR2014-01493)
`
`
`
`I.
`
`INTRODUCTION
`
`Samsung Electronics Co., Ltd. (“Samsung”) has filed IPR2014-01493 (“the
`
`Samsung IPR”) requesting inter partes review of U.S. Patent No. 5,652,084 (“the
`
`’084 patent”) and hereby moves for joinder of the Samsung IPR with IPR2014-
`
`01030 (“the TSMC IPR”), which was filed by Taiwan Semiconductor
`
`Manufacturing, Ltd. (“TSMC”) for the same patent, and which the Board
`
`instituted on December 31, 2014. In a scheduling conference call held on January
`
`28, 2015 for the TSMC IPR, the Board authorized Samsung to file this motion by
`
`January 30, 2015.
`
`The present motion for joinder was discussed by all parties during the
`
`scheduling conference call, and during the call, all parties—Samsung, TSMC, and
`
`DSS Technology Management, Inc. (“Patent Owner” or “DSS”)—agreed to having
`
`the two proceedings joined. The present motion is exactly consistent with what
`
`was discussed and agreed to on the conference call.
`
`In support of its motion, Samsung stipulates and agrees to the following: (1)
`
`the joined proceeding will be limited to the same grounds upon which the Board
`
`has instituted review in the TSMC IPR, and Samsung will withdraw challenges set
`
`forth in the Samsung IPR based on additional grounds; (2) filing and discovery will
`
`be consolidated in the joined proceeding, with TSMC filing papers for both
`
`Samsung and TSMC as consolidated filings in accordance with the Board’s
`
`
`
`
`
`Petitioner’s Motion for Joinder (IPR2014-01493)
`
`established rules regarding page limits for a single Petitioner (except for motions
`
`that do not involve the other party—e.g., for TSMC to withdraw because of
`
`settlement); and (3) any cross-examination of any given witness produced by
`
`Patent Owner in the joined proceeding and any redirect of any given witness
`
`produced by Samsung or TSMC will be conducted within the timeframe normally
`
`allotted by the rules for one cross-examination or redirect examination. Further,
`
`because Samsung does not wish to prejudice TSMC or Patent Owner by delaying
`
`the TSMC IPR, Samsung’s request for joinder and the aforementioned stipulations
`
`are expressly conditioned on the scheduling order for the TSMC IPR applying to
`
`the joined proceeding. And to ensure that this joinder request does not result in
`
`inefficient consumption of the Board’s limited resources in the event TSMC
`
`settles, Samsung expressly conditions its request for joinder and the stipulations
`
`stated herein on Samsung having the ability to take over for TSMC and prosecute
`
`the IPR (and any appeals related thereto) without altering the scheduling order set
`
`forth in the TSMC IPR.
`
`In short, joining the Samsung IPR with the TSMC IPR subject to these
`
`conditions and stipulations will raise no new issues and will streamline the
`
`proceedings, thereby reducing the costs and burdens on the parties and the Board.
`
`Indeed, TSMC and Patent Owner indicated they support this motion during the
`
`scheduling conference call for the TSMC IPR held on January 28, 2015.
`
`
`
`2
`
`
`
`Petitioner’s Motion for Joinder (IPR2014-01493)
`
`Accordingly, Samsung respectfully requests that the Board grant its request to join
`
`the TSMC IPR.
`
`II. BACKGROUND AND RELATED PROCEEDINGS
`
`Patent Owner filed a complaint alleging infringement of the ’084 patent in the
`
`United States District Court for the Eastern District of Texas against Samsung and
`
`TSMC1 on March 10, 2014. See DSS Tech. Mgmt., Inc. v. Taiwan Semiconductor
`
`Mfg. Co., Ltd., et al., Case No. 2-14-cv-00199 (E.D. Tex.). Both the Samsung
`
`defendants and the TSMC defendants subsequently waived service of the
`
`complaint and summons. The TSMC IPR was filed on June 24, 2014, and the
`
`Samsung IPR was filed on September 12, 2014, with a corrected petition filed on
`
`October 3, 2014. The Samsung IPR was accorded a filing date of September 12,
`
`2014. IPR2014-01493, Paper 4, at 1. Thus, the Samsung IPR and TSMC IPR
`
`were both timely filed as prescribed by 35 U.S.C. § 315(b). Both the Samsung
`
`IPR and TSMC IPR challenged all claims (claims 1-16) of the ’084 patent.
`
`The TSMC IPR includes challenges based on one primary reference: Japanese
`
`Patent Appl. No. H04-71222 (“Jinbo”). On December 31, 2014, the Board
`
`instituted review of claims 1-8, 12, 15, and 16 as anticipated by Jinbo; claim 9 as
`
`obvious over Jinbo and U.S. Patent No. 4,931,351 (“McColgin”); and claims 10
`
`
`1 Several Samsung and TSMC entities as well as a third defendant, NEC
`Corporation of America, were also named in the complaint.
`
`
`
`3
`
`
`
`Petitioner’s Motion for Joinder (IPR2014-01493)
`
`and 11 as obvious over Jinbo and U.S. Patent No. 4,548,688 (“Matthews”).
`
`IPR2014-01030, Paper 7, at 19. The first three challenges in Samsung’s IPR raise
`
`the same reference combinations against the same claims. See Corrected Petition
`
`for Inter Parties Review by Samsung Electronics Co. Ltd., IPR2014-01493, filed
`
`October 3, 2014, at 26-40. The Samsung IPR also includes challenges based on
`
`U.S. Patent No. 5,667,940 (“Hsue”) as a primary reference; however, in support of
`
`its joinder request, Samsung will agree to limit its challenges to the same grounds
`
`upon which the Board has instituted review in the TSMC IPR and will withdraw
`
`additional challenges set forth in the Samsung IPR.
`
`On January 9, 2015, the defendants in the district court litigation filed a motion
`
`to stay pending the outcome of the TSMC IPR inter partes review. See DSS Tech.
`
`Mgmt., Inc. v. Taiwan Semiconductor Mfg. Co., Ltd., et al., Case No. 2-14-cv-
`
`00199 (E.D. Tex.), Dkt. 109.
`
`On January 28, 2015, a scheduling conference call was held for the TSMC IPR,
`
`during which counsel for Patent Owner and TSMC indicated they support this
`
`motion. The Board authorized Samsung to file this motion by January 30, 2015.
`
`III. DISCUSSION
`
`Samsung respectfully requests that the Board exercise its discretion to grant
`
`joinder of Samsung and TSMC IPR proceedings pursuant to 35 U.S.C. § 315(c),
`
`37 C.F.R. § 42.22, and 37 C.F.R. § 42.122(b). Here, joinder is appropriate
`
`
`
`4
`
`
`
`Petitioner’s Motion for Joinder (IPR2014-01493)
`
`because the two IPRs are directed toward the same issues and the parties will
`
`submit to consolidated filings and discovery. In other words, Samsung will agree
`
`to take an “understudy” role in the IPR, expressly conditioned on the ability to step
`
`into TSMC’s shoes in the event TSMC and DSS settle. Further, joinder need not
`
`alter the Board’s current schedule and will encourage final resolution of the issues
`
`before the Board. Finally, joining the Samsung IPR and TSMC IPR will not
`
`prejudice the Patent Owner.
`
`A. Joinder is Appropriate Because Both IPR Petitions Raise Identical
`Issues and the Parties Agree to Consolidated Filings and Discovery
`
`1.
`
`Samsung will limit its IPR to only the same grounds the TSMC IPR
`was instituted
`
`The Samsung IPR and TSMC IPRs should be joined together in order to
`
`efficiently resolve the disputes between the parties. As mentioned above, the first
`
`three challenges in the Samsung IPR raise the same reference combinations against
`
`the same claims on which the Board has instituted review in the TSMC IPR.
`
`Samsung agrees that the grounds for trial in the joined proceeding will be limited
`
`to the same grounds upon which the Board has instituted review in the TSMC
`
`IPR—namely, (1) claims 1-8, 12, 15, and 16 as anticipated by Jinbo; (2) claim 9 as
`
`obvious over Jinbo and U.S. Patent No. 4,931,351 (“McColgin”); and (3) claims
`
`10 and 11 as obvious over Jinbo and U.S. Patent No. 4,548,688
`
`(“Matthews”). Samsung will withdraw its challenges in the Samsung IPR to
`
`
`
`5
`
`
`
`Petitioner’s Motion for Joinder (IPR2014-01493)
`
`claims 13 and 14 and will withdraw its challenges to claims 1-8, 12, 15, and 16
`
`based on grounds other than those instituted in the TSMC IPR. Accordingly, the
`
`Patent Owner will face no prejudice because it need only address the issues already
`
`before it in the TSMC IPR.
`
`2.
`
`Samsung and TSMC will conduct consolidated filings and discovery
`
`Because Samsung agrees to limit its arguments to the grounds upon which the
`
`Board has instituted review in the TSMC IPR, Samsung and TSMC are amenable
`
`to consolidated filings. Specifically, Samsung and TSMC will agree to
`
`consolidated filings for all substantive papers in the proceeding (e.g., Reply to the
`
`Patent Owner’s Response, Opposition to Motion to Amend, Motion for
`
`Observation on Cross Examination Testimony of a Reply Witness, Motion to
`
`Exclude Evidence, Opposition to Motion to Exclude Evidence and Reply) except
`
`for motions that do not involve the other party (e.g., for TSMC to withdraw
`
`because of settlement). Further, Samsung agrees that TSMC will submit
`
`consolidated filings for both Samsung and TSMC subject to the ordinary rules for
`
`one party (e.g., page limits), which will also limit the impact on the Patent Owner
`
`in responding to arguments. Samsung will also agree not to request additional
`
`briefing to raise separate arguments from those advanced in the consolidated
`
`filings.
`
`
`
`6
`
`
`
`Petitioner’s Motion for Joinder (IPR2014-01493)
`
`Further, to simplify discovery in the joined proceeding, Samsung will rely upon
`
`expert declarant Dr. Richard Blanchard (who has submitted an expert declaration
`
`in support of the TSMC IPR petition) and will not rely upon expert declarant Bruce
`
`Smith (who has submitted a declaration in support of the Samsung IPR petition).
`
`Samsung also agrees that any cross-examination of any given witness produced
`
`by Patent Owner and any redirect of any given witness produced by Samsung or
`
`TSMC will be conducted within the timeframe normally allotted by the rules for
`
`one cross-examination or redirect examination. Samsung will not receive any
`
`separate cross-examination or redirect time. By providing consolidated filings and
`
`procedures, the parties will avoid lengthy and likely superfluous briefing and
`
`discovery.
`
`B. The Current Trial Schedule Should Be Maintained If Joinder Is
`Granted
`
`As noted above, Samsung’s request for joinder and the stipulations herein are
`
`expressly conditioned on the scheduling order for the TSMC IPR applying to the
`
`joined proceeding. Because the filings will be consolidated and the issues will be
`
`limited to those in the TSMC IPR, joinder will not require the Patent Owner to
`
`perform any additional work or require any additional time. Further, it may
`
`prejudice the Patent Owner to delay the Board’s current schedule. Indeed, should
`
`the district court in the related litigation grant the pending motion to stay, then
`
`consideration should be given to the Patent Owner’s ability to resolve its patent
`
`
`
`7
`
`
`
`Petitioner’s Motion for Joinder (IPR2014-01493)
`
`disputes in a timely manner. Because the only manner for such resolution would
`
`be through the joined Samsung and TSMC IPR proceeding, this schedule should
`
`not be delayed.
`
`C. Joinder Will Provide Reliability During the Review Process
`
`Joining the Samsung IPR with the TSMC IPR will also help ensure the Board
`
`does not unnecessarily expend the resources of beginning a review only to have the
`
`lead party settle before it can be resolved. To ensure that this joinder request does
`
`not result in inefficient consumption of the Board’s limited resources in the event
`
`TSMC settles, Samsung expressly conditions its request for joinder and the
`
`stipulations stated herein on Samsung having the ability to take over for TSMC and
`
`prosecute the IPR (and any appeals related thereto) without altering the scheduling
`
`order set forth in the TSMC IPR.
`
`This arrangement is similar to that of the Petitioners in Sony Corp. of Am. v.
`
`Network-1 Security Solutions, Inc., in which Petitioners Sony and Hewlett Packard
`
`successfully moved to join Dell and Avaya’s instituted IPR. IPR2013-00495,
`
`Paper 13 at 10-11. In Sony, Petitioners agreed to a limited “understudy” role in
`
`which Petitioners took a circumscribed role unless either Dell or Avaya settled out
`
`of the IPR; if one of them settled then Petitioners would take an active role in the
`
`IPR as “second chair,” and if both settled then Petitioners would become “first
`
`chair” of the IPR. Id. at 6. Samsung’s request for joinder is expressly conditioned
`
`
`
`8
`
`
`
`Petitioner’s Motion for Joinder (IPR2014-01493)
`
`on this same arrangement—i.e., Samsung will be TSMC’s “understudy,” but will
`
`take an active role in the IPR if TSMC settles.
`
`D. Patent Owner Will Not Be Prejudiced By Joining the Samsung and
`TSMC IPRs
`
`Samsung’s proposed joinder will streamline proceedings and reduce the costs
`
`and burdens on all parties—indeed, both TSMC and Patent Owner support this
`
`motion. Joinder will decrease the number of papers the parties must file, and cut in
`
`half the discovery time and costs required in separate proceedings. Further,
`
`Samsung will withdraw several arguments made in the Samsung IPR to which the
`
`Patent Owner will no longer need to respond. Rather than needlessly conducting
`
`duplicative proceedings, Samsung respectfully requests to have its IPR joined with
`
`the TSMC IPR.
`
`IV. PROPOSED ORDER
`Petitioner Samsung proposes a joinder order for consideration by the Board as
`
`follows, which TSMC and Patent Owner support:
`
`•
`
`•
`
`•
`
`The Samsung IPR will be instituted for the exact same grounds for
`
`which the TSMC IPR was instituted.
`
`The Samsung IPR will be joined with the TSMC IPR.
`
`The scheduling order for the TSMC IPR will also apply for the
`
`Samsung IPR (and thus the joined proceeding).
`
`
`
`9
`
`
`
`Petitioner’s Motion for Joinder (IPR2014-01493)
`
`•
`
`Throughout the joined proceeding, TSMC will file papers for both
`
`Samsung and TSMC as consolidated filings in accordance with the
`
`Board’s established rules regarding page limits for a single party
`
`(except for motions that do not involve the other party—e.g., for
`
`TSMC to withdraw because of settlement). So long as both Samsung
`
`and TSMC both continue to participate the joined proceeding, TSMC
`
`will be responsible for each such filing and will identify each such
`
`filing as a Consolidated Filing.
`
`•
`
`Cross-examination of any given witness produced by Patent Owner
`
`and redirect of any given witness produced by Samsung or TSMC will
`
`be conducted within the timeframe normally allotted by the rules for
`
`one cross-examination or redirect examination. Samsung and TSMC
`
`will not receive any separate cross-examination or redirect time.
`
`•
`
`Patent Owner will conduct cross-examination of any given witness
`
`jointly produced by Samsung or TSMC and the redirect of any given
`
`witness produced by Patent Owner within the timeframe normally
`
`allotted by the rules for one cross-examination or redirect
`
`examination.
`
`•
`
`Should TSMC settle its dispute with Patent Owner and the IPR is
`
`terminated with respect to TSMC, Samsung will take over for TSMC
`
`
`
`10
`
`
`
`Petitioner’s Motion for Joinder (IPR2014-01493)
`
`and prosecute the IPR (and any appeals related thereto) without
`
`altering the scheduling order set forth in the TSMC IPR.
`
`V. CONCLUSION
`For the reasons set forth above, Samsung respectfully requests the Board grant
`
`joinder of the Samsung and TSMC IPR proceedings.
`
`Dated: January 29, 2015
`
`
`
`
`
`
`
`Respectfully Submitted,
`/Christopher T. Marando/
`Lead Counsel for Petitioner
`Registration No. 67,898
`Weil, Gotshal & Manges LLP
`1300 Eye St, NW Suite 900
`Washington, DC 20005
`Phone: (202) 682-7094
`
`11
`
`
`
`
`
`Petitioner’s Motion for Joinder (IPR2014-01493)
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`Petition for Inter Partes Review
`In re patent of: Cleeves
`§
`
`§
`
`IPR-2014-01493
`§
`Customer No.: 506499
`U.S. Patent No. 5,652,084
`
`Issued: July 29, 1997
`
`Title:
`METHOD FOR REDUCED
`PITCH LITHOGRAPHY
`
`
`
`Real Party in Interest:
`Samsung Electronics Co., Ltd.
`
`
`
`
`§
`§
`§
`§
`§
`§
`
`CERTIFICATE OF SERVICE
`The undersigned certifies, in accordance with 37 C.F.R. §§ 42.105(b) and
`
`42.6(e), that service was made on the Patent Owner as detailed below.
`
`Date of service
`Manner of service
`Documents served
`
`January 29, 2015
`Petitioner’s Motion for Joinder under 35 U.S.C. § 315(c)
`and 37 C.F.R. § 42.22 and § 42.122(b)
`
`
`
`Persons served Andriy Lytvyn <andriy.lytvyn@smithhopen.com>
`Anton J. Hopen <anton.hopen@smithhopen.com>
`
`/Christopher T. Marando/
`Christopher T. Marando
`Lead Counsel for Petitioner
`Registration No. 67,898