IPR2017-00880
`U.S. Patent No. 6,197,696
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`GLOBALFOUNDRIES U.S. INC.,
`Petitioner,
`
`v.
`
`GODO KAISHA IP BRIDGE 1,
`Patent Owner.
`____________
`
`Case IPR2017-00880
`Patent 6,197,696
`____________
`
`PATENT OWNER’S OPPOSITION TO PETITIONER’S MOTION FOR
`JOINDER
`
`
`U.S. Patent No. 6,197,696
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`GLOBALFOUNDRIES U.S. INC.,
`Petitioner,
`
`v.
`
`GODO KAISHA IP BRIDGE 1,
`Patent Owner.
`____________
`
`Case IPR2017-00880
`Patent 6,197,696
`____________
`
`PATENT OWNER’S OPPOSITION TO PETITIONER’S MOTION FOR
`JOINDER
`
`
`
`
`I.
`
`INTRODUCTION
`
`IPR2017-00880
`U.S. Patent No. 6,197,696
`
`
`Patent Owner, Godo Kaisha IP Bridge 1 (“IP Bridge”) submits this
`
`Opposition To Petitioner’s Motion For Joinder in response to Petitioner
`
`GlobalFoundries, U.S. Inc.’s (“Global U.S.”) Motion for Joinder (Paper 2, “Mot.”)
`
`in IPR2017-00880.1 Global U.S. seeks to join IPR2017-00880 with IPR2016-
`
`01376, which was instituted on January 18, 2017. This Opposition To Petitioner’s
`
`Motion For Joinder is timely filed within one month of February 13, 2017, the date
`
`Petitioner served the Petition and Motion for Joinder on Patent Owner.
`
`II. ARGUMENT
`
`If the Board were to grant the Motion for Joinder without certain conditions
`
`placed on Global U.S., Patent Owner would be prejudiced. Global U.S.’s proposal
`
`“to remain in a circumscribed ‘understudy’ role without a separate opportunity to
`
`actively participate,” (Mot. at 5) should be further limited. Global U.S. should be
`
`1 Petitioner has stated that IPR2017-00880 will be withdrawn, but has failed to do
`
`so. GlobalFoundries U.S. Inc. v. Godo Kaisha IP Bridge 1, IPR2017-00921,
`
`Petition (Paper 2) at 60, fn13. Because the Petition in IPR2017-00921 indicates
`
`that at least GlobalFoundries, Inc. is also a real party-in-interest (id. at 60), the
`
`instant petition in IPR2017-00880 should be denied institution at least for failure to
`
`name GlobalFoundries, Inc. as an RPI. 37 C.F.R. §42.8.
`
`
`
`required to further agree that it will not file additional written submissions, pose
`
`IPR2017-00880
`U.S. Patent No. 6,197,696
`
`
`questions at depositions, or argue at oral hearing without the prior permission of
`
`the Board, rather than permission of TSMC as Global U.S. proposes. Requiring
`
`permission from only TSMC would make it very easy for Global U.S. to take an
`
`active role, thereby circumventing its agreement to remain in an understudy role
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`“without a separate opportunity to actively participate.” Moreover, Global U.S.
`
`stated: “Only in the event that TSMC settles will Global seek to become active in
`
`the joined IPR.” Mot. at 5.
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`Furthermore, Global U.S. should be required to agree to abide by the
`
`following conditions which are consistent with its proposal:
`
`1. Global U.S. agrees to proceed based solely on the arguments and evidence
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`presented and maintained by TSMC in IPR2016-01376.
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`2. Global U.S. consents to being added to the case caption of IPR2016-01376
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`as a Petitioner without any active participation or involvement that is
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`separate from TSMC.
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`3. Global U.S. agrees to remain in a circumscribed “understudy” role in
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`IPR2016-01376 without any right to separate briefing or discovery. Global
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`U.S. will not file additional written submissions, not pose questions at
`
`depositions and not argue at oral hearing without the prior authorization of
`
`the Board.
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`
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`4. TSMC will conduct cross-examination and other discovery on behalf of
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`IPR2017-00880
`U.S. Patent No. 6,197,696
`
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`TSMC and Global U.S., and Patent Owner is not required to provide
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`separate discovery responses or additional deposition time as a result of any
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`consolidation.
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`5. Global U.S. will seek authorization from the Board to become active in
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`IPR2016-01376 only in the event that TSMC settles.
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`6. Global U.S. acknowledges that the estoppel provisions of 35 U.S.C. § 315(e)
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`will be applicable to it even if it remains in a circumscribed “understudy”
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`role.
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`In an attempt to limit the prejudice to Patent Owner, Global U.S. should be
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`required to agree to abide by the above conditions before permitting it to join
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`IPR2016-01376.
`
`
`
`
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`III. CONCLUSION
`
`IPR2017-00880
`U.S. Patent No. 6,197,696
`
`
`For the foregoing reasons, Global U.S.’s motion for joinder should be denied
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`unless Global U.S. will abide by the above conditions.
`
`
`Dated: March 13, 2017
`
`
`
`Jordan M. Rossen
`Reg. No. 74,064
`ROPES & GRAY LLP
`2099 Pennsylvania Ave., NW
`Washington D.C. 20006-6807
`P: 202-508-4759/F: 202-508-4650
`jordan.rossen@ropesgray.com
`
`James L. Davis, Jr.
`Reg. No. 57,325
`ROPES & GRAY LLP
`1900 University Avenue, 6th
`Floor
`East Palo Alto, CA 94303-2284
`P: 650-617-4794/F: 650-566-4147
`james.l.davis@ropesgray.com
`
`
`
`
`Respectfully submitted by:
`
`
`
`
`
` /Jordan M. Rossen/
`Andrew N. Thomases (lead
`counsel) - Reg. No. 40,841
`ROPES & GRAY, LLP
`1900 University Ave., 6th Floor
`East Palo Alto, CA 94303
`P: 650-617-4712/F: 650-566-4275
`andrew.thomases@ropesgray.com
`
`J. Steven Baughman
`Reg. No. 47,414
`Paul, Weiss, Rifkind, Wharton &
`Garrison LLP
`2001 K Street, NW
`Washington, DC 20006-1047
`P: 202-223-7340/F: 202-403-3740
`sbaughman@paulweiss.com
`
`Attorneys For Patent Owner
`
`
`
`
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that a copy of PATENT OWNER’S
`
`OPPOSITION TO PETITIONER’S MOTION FOR JOINDER have been served in
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`their entirety by causing the aforementioned document to be electronically mailed,
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`pursuant to Petitioner’s agreement (Paper 1 at 62), to the following attorneys of
`
`record for the Petitioner listed below:
`
`
`Petitioner’s
`Counsel of
`Record:
`
`
`
`
`Christopher P. Carroll (Reg. No. 55,776)
`christopher.carroll@whitecase.com
`White & Case LLP
`75 State St, Boston, MA 02109-1814
`
`Shamita Etienne-Cummings (Reg. No. 46,072)
`setienne@whitecase.com
`White & Case LLP
`701 Thirteenth St NW
`Washington, DC 20005-3807
`
`Dated:
`
`March 13, 2017
`
`Respectfully submitted,
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`By:
`
`
`/Bridget McAuliffe/
`Name: Bridget McAuliffe
`
`ROPES & GRAY LLP
`
`
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