`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`GLOBALFOUNDRIES U.S. INC.,
`Petitioner
`
`v.
`
`GODO KAISHA IP BRIDGE 1,
`Patent Owner
`
`IPR2017-00882
`U.S. Patent No. 6,197,696
`
`PETITIONER’S UNOPPOSED MOTION TO DISMISS PETITION
`FOR INTER PARTES REVIEW
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark
`Office P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`
`Motion to Dismiss Inter Partes Review No. IPR2017-00882
`
`I.
`
`INTRODUCTION
`
`The Board authorized Petitioner GlobalFoundries U.S. Inc. (“Global”) to file
`
`a motion to dismiss the petition for IPR2017-00882 regarding U.S. Patent No.
`
`6,197,696 (“the ’696 patent”) in an Order issued on April 4, 2017. Global now so
`
`moves. IPR2017-00882 is in its preliminary phase. Patent Owner Godo Kaisha IP
`
`Bridge 1 (“IP Bridge”) has not yet filed a Preliminary Response and the Board has
`
`yet to reach the merits and issue a decision on institution. Global has filed a new
`
`petition for IPR2017-00923 that includes the same invalidity challenges as the
`
`petition for IPR2017-00882, but also includes a second real party-in-interest
`
`GlobalFoundries, Inc. Therefore, Global requests the Board to dismiss the petition
`
`for IPR2017-00882, as the same invalidity challenges are included in the petition for
`
`IPR2017-00923, to preserve the Board’s and parties’ resources and to achieve a just,
`
`speedy, and inexpensive resolution to this dispute. Furthermore, counsel for
`
`Petitioner has conferred with counsel for Patent Owner, and Patent Owner does not
`
`
`
`
`
`
`
`oppose the relief sought by this Motion.
`
`II.
`
`FACTS
`
`1.
`
`2.
`
`IP Bridge is the owner of the ‘696 Patent.
`
`On February 13, 2017, Global filed a petition for inter partes review of
`
`claims 13 and 14 of the ‘696 Patent (IPR2017-00882). The petition, being assigned
`
`IPR2017-00882, includes the same invalidity challenges as in IPR2016-01378. The
`
`Petitioner also concurrently filed a motion for joinder of IPR2017-00882 with
`1
`
`
`
`
`Motion to Dismiss Inter Partes Review No. IPR2017-00882
`IPR2016-01378. IPR2017-00882 was filed with GlobalFoundries U.S. Inc. as the real
`
`
`
`party-in-interest. See IPR2017-00882, Petition, p. 53.
`
`3.
`
`On February 16, 2017, Global filed a new petition for inter partes
`
`review of the ‘696 Patent including the same invalidity challenges as in IPR2017-
`
`00882, but with a second real party-in-interest GlobalFoundries, Inc. (designated
`
`IPR2017-00923). The petition for IPR2017-00923 indicated the Petitioner’s intent to
`
`withdraw IPR2017-00882. See IPR2017-00923, Petition, p. 54, Footnote 6.
`
`4.
`
`The petition in IPR2017-00923 presents the same invalidity challenges
`
`and relies on the same evidence as the petition in IPR2017-00882.
`
`5.
`
`On March 31, 2017, counsel for the Petitioner sought authorization to
`
`file motions to dismiss the original petitions in Cases IPR2017-00880, IPR2017-
`
`00881, IPR2017-00882, and IPR2017-00883 via an email request to the Board. The
`
`Board issued an authorization to file the motions to dismiss the petition in each of
`
`Cases IPR2017-00880, IPR2017-00881, IPR2017-00882, and IPR2017-00883 on
`
`April 4, 2017 via an email. On April 13, 2017, counsel for the Patent Owner
`
`indicated that Patent Owner will not oppose the motions to dismiss in each of the
`
`Cases IPR2017-00880, IPR2017-00881, IPR2017-00882, and IPR2017-00883.
`
`
`
`
`
`III. STATEMENT OF REASONS FOR RELIEF REQUESTED
`
`Good cause exists to dismiss Global’s petition in IPR2017-00882. Dismissal
`
`would preserve the Board’s and the parties’ resources, and would expeditiously
`
`resolve Global’s request, furthering the purpose of IPR challenges. 37 C.F.R. §
`2
`
`
`
`
`
`Motion to Dismiss Inter Partes Review No. IPR2017-00882
`42.1(b). IPR2017-00882 is in its preliminary stage as the Board has not yet
`
`
`
`reached the merits and issued a decision on institution. IP Bridge would not be
`
`prejudiced by dismissal.
`
`The Board “may take up petitions or motions for decisions in any order, may
`
`grant, deny, or dismiss any petition or motion, and may enter any appropriate order.”
`
`37 C.F.R. § 42.71 (a). The Rules governing IPR proceedings “shall be construed
`
`to secure the just, speedy, and inexpensive resolution of every proceeding.” 37
`
`C.F.R. § 42.1(b). The Board has previously granted motions to dismiss using its
`
`authority under at least 37 C.F.R. §§ 42.5(a) and 42.71(a). See, e.g., Samsung
`
`Electronics Co. LTD v. Nvidia Corporation, IPR2015-01270, Paper 11 at p. 3
`
`(PTAB Dec. 9, 2015) (“Nonetheless, the rules provide us the discretion to ‘take up
`
`petitions or motions for decisions in any order’ and to ‘grant, deny, or dismiss any
`
`petition or motion’ or enter any appropriate order.”).
`
`Given that the petition in IPR2017-00923 includes the same challenges and
`
`relies on the same evidence as the petition in IPR2017-00882, the Board should
`
`grant Global’s motion because dismissal would further the purpose of the rules by
`
`justly and expeditiously resolving this dispute without subjecting the Board and the
`
`parties to unnecessary expense involved in further proceedings related to IPR2017-
`
`00882. Dismissal is also a just resolution, as IP Bridge will not be prejudiced by
`
`this Board dismissing IPR2017-00882, but rather will reap the benefit of preserving
`
`its own resources.
`
`
`
`3
`
`
`
`Motion to Dismiss Inter Partes Review No. IPR2017-00882
`
`
`IV. CONCLUSION
`
`The Petitioner respectfully requests that the Board dismiss the petition and
`
`terminate proceedings for IPR2017-00882.
`
`
`
`Date: April 18, 2017
`
`Respectfully submitted,
`
`
`
` /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
`
`4
`
`
`
`
`
`
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that a copy of the foregoing Petitioner’s
`
`Unopposed Motion to Dismiss Petition for Inter Partes Review was served on April
`
`18, 2017, via email directed to counsel of record for the Patent Owner at the
`
`following:
`
`Andrew.thomases@ropesgray.com
`sbaughman@paulweiss.com
`Jordan.rossen@ropesgray.com
`James.l.davis@ropesgray.com
`
`/Christopher Carroll/
`White & Case LLP
`75 State Street
`Boston, MA 02109-1814
`Telephone: (617) 979-9342
`Facsimile: (617) 439-6702
`Lead Counsel for Petitioner
`
`
`
`
`
`
`
`
`
`
`
`
`