UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`GLOBALFOUNDRIES, INC.,
`Petitioner
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`v.
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`GODO KAISHA IP BRIDGE 1,
`Patent Owner
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`IPR2017-00753
`U.S. Patent No. 6,538,324
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`PETITIONER’S UNOPPOSED MOTION TO DISMISS PETITION
`FOR INTER PARTES REVIEW
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`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark
`Office P.O. Box 1450
`Alexandria, VA 22313-1450
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`GLOBALFOUNDRIES, INC.,
`Petitioner
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`v.
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`GODO KAISHA IP BRIDGE 1,
`Patent Owner
`
`IPR2017-00753
`U.S. Patent No. 6,538,324
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`PETITIONER’S UNOPPOSED MOTION TO DISMISS PETITION
`FOR INTER PARTES REVIEW
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`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark
`Office P.O. Box 1450
`Alexandria, VA 22313-1450
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`Motion to Dismiss Inter Partes Review No. IPR2017-00753
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`I.
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`INTRODUCTION
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`The Board authorized Petitioner GlobalFoundries, Inc. (“Global”) to file a
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`motion to dismiss the petition for IPR2017-00753 regarding U.S. Patent No.
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`6,538,324 (“the ’324 patent”) in an Order issued on February 23, 2017. Global now
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`so moves. IPR2017-00753 is in its preliminary phase. Patent Owner Godo Kaisha
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`IP Bridge 1 (“IP Bridge”) has not yet filed a Preliminary Response and the Board
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`has yet to reach the merits and issue a decision on institution. Global has filed a
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`new petition for IPR2017-00919 that includes the same invalidity challenges as the
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`petition for IPR2017-00753, but also includes a second real party-in-interest
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`GlobalFoundries U.S. Inc. Therefore, Global requests the Board to dismiss the
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`petition for IPR2017-00753, as the same invalidity challenges are included in the
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`petition for IPR2017-00919, to preserve the Board’s and parties’ resources and to
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`achieve a just, speedy, and inexpensive resolution to this dispute. Furthermore,
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`counsel for Petitioner has conferred with counsel for Patent Owner, and Patent
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`Owner does not oppose the relief sought by this Motion.
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`II.
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`FACTS
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`1.
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`2.
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`IP Bridge is the owner of the ‘324 Patent.
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`On January 23, 2017, Global filed a petition for inter partes review of
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`claims 1-3, 5-7, and 9 of the ‘324 Patent (IPR2017-00753). The petition, being
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`assigned IPR2017-00753, includes the same invalidity challenges as in IPR2016-
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`01249. The Petitioner also concurrently filed a motion for joinder of IPR2017-00753
`2
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`Motion to Dismiss Inter Partes Review No. IPR2017-00753
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`with IPR2016-01249. IPR2017-00753 was filed with GlobalFoundries, Inc. as the
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`real party-in-interest. See IPR2017-00753, Petition, p. 34.
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`3.
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`On February 16, 2017, Global filed a new petition for inter partes
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`review of the ‘324 Patent including the same invalidity challenges as in IPR2017-
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`00753, but with a second real party-in-interest GlobalFoundries U.S. Inc. (designated
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`IPR2017-00919). The petition for IPR2017-00919 indicated the Petitioner’s intent to
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`withdraw IPR2017-00753. See IPR2017-00919, Petition, p. 34, Footnote 13.
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`4.
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`The petition in IPR2017-00919 presents the same invalidity challenges
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`and relies on the same evidence as the petition in IPR2017-00753.
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`5.
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`On February 21, 2017, counsel for the Patent Owner requested a
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`conference call with the Board. On February 22, 2017, the Board held a conference
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`call with the Petitioner and Patent Owner regarding IPR2017-00753, IPR2017-00757,
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`IPR2017-00919, and IPR2017-00920 (pursuant to the ‘324 Patent) and IPR2017-
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`00849, IPR2017-00850, IPR2017-00925, and IPR2017-00926 (pursuant to U.S.
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`Patent No. 7,126,174). During the call, the Patent Owner requested an extension of
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`time to file any oppositions to the motion for joinder and mandatory disclosures for
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`IPR2017-00753. The Petitioner had no objection to extending the deadlines for Patent
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`Owner’s oppositions to the motion for joinder. The Petitioner sought authorization to
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`file motions to dismiss the original petitions once the new petitions were accorded
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`filing dates. The Patent Owner had no objections to Petitioner filing motions to
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`dismiss. See IPR2017-00753, Order, Paper 12 at p. 2.
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`3
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`Motion to Dismiss Inter Partes Review No. IPR2017-00753
`6.
`On February 23, 2017, the Board issued an Order authorizing the
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`Petitioner to file a motion to dismiss the petition in each of the original cases
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`according to 37 C.F.R. § 42.71(a) within one week of notice according a filing date
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`for the new petitions. See IPR2017-00753, Order, Paper 12.
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`7.
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`On February 23, 2017, the PTAB accorded a filing date for IPR2017-
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`00919. See IPR2017-00919, Notice of Filing Date Accorded to Petitioner, Paper 5.
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`III. STATEMENT OF REASONS FOR RELIEF REQUESTED
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`Good cause exists to dismiss Global’s petition in IPR2017-00753. Dismissal
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`would preserve the Board’s and the parties’ resources, and would expeditiously
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`resolve Global’s request, furthering the purpose of IPR challenges. 37 C.F.R. §
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`42.1(b). IPR2017-00753 is in its preliminary stage as the Board has not yet
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`reached the merits and issued a decision on institution. IP Bridge would not be
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`prejudiced by dismissal.
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`The Board “may take up petitions or motions for decisions in any order, may
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`grant, deny, or dismiss any petition or motion, and may enter any appropriate order.”
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`37 C.F.R. § 42.71 (a). The Rules governing IPR proceedings “shall be construed
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`to secure the just, speedy, and inexpensive resolution of every proceeding.” 37
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`C.F.R. § 42.1(b). The Board has previously granted motions to dismiss using its
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`authority under at least 37 C.F.R. §§ 42.5(a) and 42.71(a). See, e.g., Samsung
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`Electronics Co. LTD v. Nvidia Corporation, IPR2015-01270, Paper 11 at p. 3
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`(PTAB Dec. 9, 2015) (“Nonetheless, the rules provide us the discretion to ‘take up
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`Motion to Dismiss Inter Partes Review No. IPR2017-00753
`petitions or motions for decisions in any order’ and to ‘grant, deny, or dismiss any
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`petition or motion’ or enter any appropriate order.”).
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`Given that the petition in IPR2017-00919 includes the same challenges and
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`relies on the same evidence as the petition in IPR2017-00753, the Board should
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`grant Global’s motion because dismissal would further the purpose of the rules by
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`justly and expeditiously resolving this dispute without subjecting the Board and the
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`parties to unnecessary expense involved in further proceedings related to IPR2017-
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`00753. Dismissal is also a just resolution, as IP Bridge will not be prejudiced by
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`this Board dismissing IPR2017-00753, but rather will reap the benefit of preserving
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`its own resources.
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`IV. CONCLUSION
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`The Petitioner respectfully requests that the Board dismiss the petition and
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`terminate proceedings for IPR2017-00753.
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`Date: March 1, 2017
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`Respectfully submitted,
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`
` /Christopher Carroll/
`Christopher Carroll
`White & Case LLP
`75 State Street
`Boston, MA 02109-1814
`Telephone: (617) 979-9342
`Facsimile: (617) 439-6702
`Lead Counsel for Petitioner
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`5
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that a copy of the foregoing Petitioner’s
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`Unopposed Motion to Dismiss Petition for Inter Partes Review was served on
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`March 1, 2017, via email directed to counsel of record for the Patent Owner at the
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`following:
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`Ngreenblum@gbpatent.com
`MFink@gbpatent.com
`Aturk@gbpatent.com
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`/Christopher Carroll/
`White & Case LLP
`75 State Street
`Boston, MA 02109-1814
`Telephone: (617) 979-9342
`Facsimile: (617) 439-6702
`Lead Counsel for Petitioner
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