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