UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`GLOBALFOUNDRIES U.S. INC.,
`Petitioner,
`v.
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`Godo Kaisha IP Bridge 1,
`Patent Owner.
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`Case: IPR2017-00920
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`Patent 6,538,324 B1
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`MOTION FOR JOINDER PURSUANT TO
`35 U.S.C. § 315 (c) 37 C.F.R. §§ 42.22 AND 42.122(b)
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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 U.S. INC.,
`Petitioner,
`v.
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`Godo Kaisha IP Bridge 1,
`Patent Owner.
`
`Case: IPR2017-00920
`
`Patent 6,538,324 B1
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`MOTION FOR JOINDER PURSUANT TO
`35 U.S.C. § 315 (c) 37 C.F.R. §§ 42.22 AND 42.122(b)
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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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`TABLE OF CONTENTS
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`Global’s Motion for Joinder with
`Case IPR2016-01264
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`Page
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`I.
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`II.
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`STATEMENT OF THE PRECISE RELIEF REQUESTED ..........................1
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`STATEMENT OF MATERIAL FACTS ........................................................2
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`III. STATEMENT OF REASONS FOR RELIEF REQUESTED ........................3
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`A.
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`B.
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`Joinder will not impact the Board’s ability to complete the
`review in a timely manner .....................................................................4
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`Joinder will promote efficiency by consolidating issues,
`avoiding duplicate efforts, and preventing inconsistencies ..................5
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`C.
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`Joinder will not prejudice IP Bridge…… .............................................5
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`I V . CONCLUSION................................................................................................6
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`i
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`Global’s Motion for Joinder with
`Case IPR2016-01264
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`TABLE OF AUTHORITIES
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`CASES
`Dell, Inc. v. Network-1 Security Solutions, Inc., IPR2013-00385 ............................4
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`Page(s)
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`STATUTES
`35 U.S.C. § 103 ..........................................................................................................2
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`35 U.S.C. § 315(c) .................................................................................................1, 3
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`35 U.S.C. § 316(a)(1).................................................................................................6
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`35 U.S.C. § 316(a)(11)...............................................................................................4
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`OTHER AUTHORITIES
`37 C.F.R. § 42.22 ...................................................................................................1, 2
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`37 C.F.R. § 42.100(c).............................................................................................4, 6
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`37 C.F.R. § 42.122(a).................................................................................................3
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`37 C.F.R. § 42.122(b) .............................................................................................1, 2
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`ii
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`Global’s Motion for Joinder with
`Case IPR2016-01264
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`I. STATEMENT OF THE PRECISE RELIEF REQUESTED
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`GlobalFoundries U.S. Inc. (“Global”) respectfully submits this Motion for
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`Joinder, together with a Petition for Inter Partes Review of U.S. Patent No.
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`6,538,324 B1 (“the ’324 Patent”) (“Petition”). Pursuant to 35 U.S.C. § 315(c),
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`37 C.F.R. §§ 42.22 and 42.122(b), Global requests institution of an inter partes
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`review and joinder with the inter partes review concerning the same patent in
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`Taiwan Semiconductor Manufacturing Company Limited (“TSMC”) v. Godo
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`Kaisha IP Bridge 1, Case No. IPR2016-01264 (the “Second TSMC IPR”), which
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`was instituted on December 21, 2016.
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`Global submits that: (1) joinder is appropriate because it will promote
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`efficient determination of the validity of the ’324 Patent without prejudice to
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`Godo Kaisha IP Bridge 1 (“IP Bridge”); (2) Global’s Petition includes grounds that
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`are essentially the same as the ground instituted in the Second TSMC IPR; (3)
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`joinder would not affect the pending schedule in the Second TSMC IPR nor
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`increase the complexity of that proceeding, minimizing costs; and (4) Global is
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`willing to act as an “understudy” to TSMC, only assuming an active role in the
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`event TSMC settles with IP Bridge. Thus, Petitioner does not seek to alter the
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`grounds upon which the Board has already found support in instituting the Second
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`TSMC IPR, and joinder will have no impact on the existing schedule in the Second
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`TSMC IPR.
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`Global’s Motion for Joinder with
`Case IPR2016-01264
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`This Motion for Joinder is filed after the one month date on which the
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`Second TSMC IPR was instituted under 37 C.F.R. §§ 42.22 and 42.122(b).
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`II. STATEMENT OF MATERIAL FACTS
`1.
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`Godo Kaisha IP Bridge 1 is the owner of the ’324 Patent.
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`2. On June 24, 2016, TSMC filed its petition for inter partes review of
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`claims 1-3, 5-7, and 9 of the ‘324 Patent.
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`3. On December 21, 2016, a decision instituting inter partes review
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`of claims 1-3, 5-7, and 9 of the ’324 Patent was entered in the Second TSMC
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`IPR (Paper No. 7, IPR2016-01264) on the grounds that claims 1-3, 5-7, and 9
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`were unpatentable over U.S. Patent No. 5,893,752 (“the ’752 patent” or “Zhang”)
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`in view of U.S. Patent No. 6,887,353 (“the ’353 patent” or “Ding”) under 35
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`U.S.C. § 103 or unpatentable under 35 U.S.C. § 103 over Zhang in view of Ding
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`and Sun1.
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`4. On December 21, 2016, a decision instituting inter partes review of
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`claims 1-3, 5-7, and 9 of the ’324 Patent was entered in a First TSMC IPR
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`(Paper No. 7, IPR2016-01249) on the grounds that claims 1-3, 5-7, and 9 were
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`unpatentable over Ding in view of Zhang under 35 U.S.C. § 103.
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`5.
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` Oral argument is currently scheduled for August 8, 2017 in the
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`1 Sun et al., “Properties of reactively sputter-deposited Ta – N thin films,” Thin Solid Films, Vol.
`236 (1993), pp. 347–351.
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`Second TSMC IPR.
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`Global’s Motion for Joinder with
`Case IPR2016-01264
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`6. Concurrently with this Motion for Joinder, Global is filing a
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`petition for inter partes review of claims 1-3, 5-7 and 9 of the ’324 Patent.
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`7. The Petition includes grounds that are essentially the same as the
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`ground instituted in the Second TSMC IPR.
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`III. STATEMENT OF REASONS FOR RELIEF REQUESTED
`The Leahy-Smith America Invents Act (“AIA”) permits joinder of like
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`review proceedings, e.g., an inter partes review (“IPR”) may be joined with
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`another inter partes review. 37 C.F.R. § 42.122(a). The statutory provision
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`governing joinder of inter partes review proceedings is 35 U.S.C. § 315(c), which
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`states:
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`If the Director institutes an inter partes review, the Director, in
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`his or her discretion, may join as a party to that inter partes
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`review any person who properly files a petition under section
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`311 that the Director, after receiving a preliminary response
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`under section 313 or the expiration of the time for filing such a
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`response, determines warrants the institution of an inter partes
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`review under section 314.
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`In exercising its discretion to grant joinder, the Board considers the impact
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`of substantive and procedural issues on the proceedings, as well as other
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`Global’s Motion for Joinder with
`Case IPR2016-01264
`considerations, while being “mindful that patent trial regulations, including the
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`rule for joinder, must be construed to secure the just, speedy, and inexpensive
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`resolution of every proceeding.” See Dell, Inc. v. Network-1 Security Solutions,
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`Inc., Case IPR2013-00385, Paper No. 17 (July 29, 2013) at 3. The Board should
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`consider “the policy preference for joining a party that does not present new issues
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`that might complicate or delay an existing proceeding.” Id. at 10. Under this
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`framework, joinder of the present Petition with the SecondTSMC IPR is
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`appropriate.
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`“A motion for joinder should: (1) set forth the reasons why joinder is
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`appropriate; (2) identify any new grounds of unpatentability asserted in the
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`petition; (3) explain what impact (if any) joinder would have on the trial schedule
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`for the existing review; and (4) address specifically how briefing and discovery
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`may be simplified.” Id. at 4. Each of these is addressed fully below.
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`A.
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`Joinder will not impact the Board’s ability to complete the review
`in a timely manner
`Joinder in this case will not impact the Board’s ability to complete its review
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`in a timely manner. 35 U.S.C. § 316(a)(11) and associated rule 37 C.F.R. §
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`42.100(c) provide that inter partes review proceedings should be completed and
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`the Board’s final decision issued within one year of institution of the review. In
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`this case, joinder will not affect the Board’s ability to issue the decision because
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`Global will be joining the grounds on which the Second TSMC IPR has been
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`Global’s Motion for Joinder with
`Case IPR2016-01264
`instituted. In fact, Global’s grounds are essentially identical to the grounds for
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`which the Board instituted the Second TSMC IPR.
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`In addition, Global respectfully proposes that as long as TSMC remains in
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`the joined IPR, Global agrees to remain in a circumscribed “understudy” role
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`without a separate opportunity to actively participate. Thus, Global will not file
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`additional written submissions, nor will Global pose questions at depositions or
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`argue at oral hearing without the prior permission of TSMC. Only in the event that
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`TSMC settles will Global seek to become active in the joined IPR.
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`B.
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`Joinder will promote efficiency by consolidating issues, avoiding
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`duplicate efforts, and preventing inconsistencies
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`Global would not be time barred from filing the present Petition
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`without a corresponding motion for joinder. However, determining the same
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`validity questions concerning the ’324 patent in separate concurrent proceedings
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`would duplicate efforts, and create a risk of inconsistent results and piecemeal
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`review. Proceeding with a consolidated inter partes review would avoid
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`inefficiency and potential inconsistency and would result in a final written decision
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`without any delay.
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`Joinder will not prejudice IP Bridge
`C.
`Permitting joinder will not prejudice IP Bridge. If joinder is granted,
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`Global will be joining the grounds instituted in the Second TSMC IPR, thus the
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`Global’s Motion for Joinder with
`Case IPR2016-01264
`primarily issues will already be before the Board, such that joinder would not
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`affect the timing of the Second TSMC IPR or the content of IP Bridge’s Patent
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`Owner response due on March 7, 2017. But, to the extent necessary, any extension
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`to the schedule that may be required is permitted by law and the applicable
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`rules. 35 U.S.C. § 316(a)(1); 37 C.F.R. § 42.100(c). In fact, joinder is likely
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`more convenient and efficient for IP Bridge by providing a single trial on the ’324
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`patent. By allowing all grounds of invalidity to be addressed in a single
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`proceeding, the interests of all parties and the Board will be well served.
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`I V . CONCLUSION
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`For the foregoing reasons, Global respectfully requests that its Petition for
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`Inter Partes Review of U.S. Patent No. 6,538,324 B1 be granted and that the
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`proceedings be joined with Taiwan Semiconductor Manufacturing Company
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`Limited (“TSMC”) v. Godo Kaisha IP Bridge 1, Case No. IPR2016-01264.
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`Joinder will ensure a just, speedy and inexpensive resolution in both proceedings.
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`Global’s Motion for Joinder with
`Case IPR2016-01264
`The Patent Trial and Appeal Board is hereby authorized to charge any
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`additional fees associated with this filing to Deposit Account No. 50-3672
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`(Customer ID No. 106,224).
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`RESPECTFULLY SUBMITTED,
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`White & Case LLP
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`Date: February 16, 2017
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`/Christopher P. Carroll/
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`Christopher P. Carroll (Reg. No. 55776)
`75 State Street
`Boston, MA 02109-1814
`Telephone: 617-979-9342
`Fax: 617-979-9301
`christopher.carroll@whitecase.com
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`Lead Counsel for Petitioner
`GLOBALFOUNDRIES U.S. INC.
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`Global’s Motion for Joinder with
`Case IPR2016-01264
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`CERTIFICATION OF
`SERVICE
`Pursuant to 37 C.F.R. § 42.6(e), the undersigned certifies that on the 16th
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`day of February 2017, a complete copy of the foregoing “MOTION FOR
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`JOINDER UNDER 35 U.S.C. § 315(c), 37 C.F.R. §§ 42.22 AND 42.122(b)”
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`and all supporting exhibits were served via Fedex to the Patent Owner by
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`serving the correspondence address of record for the ’324 Patent to:
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`Attn: Paul J. Esatto, Jr.
`SCULLY SCOTT MURPHY & PRESSER, PC
`400 Garden City
`Plaza Suite 300
`Garden City NY 11530
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`Courtesy copies of the foregoing were also served via Fedex on counsel
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`of record for the Petitioner and Patent Owner in Taiwan Semiconductor
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`Manufacturing Company Limited (“TSMC”) v. Godo Kaisha IP Bridge 1,
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`Case No. IPR2016-01264 as follows:
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`E. Robert Yoches
`Finnegan, Henderson, Farabow, Garrett & Dunner LLP
`901 New York Avenue,
`NW Washington DC
`20001-4413
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`Michael Fink
`Greenblum & Bernstein, P.L.C.
`1950 Roland Park Place
`Reston, VA 20191
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`Global’s Motion for Joinder with
`Case IPR2016-01264
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`Respectfully submitted,
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`White & Case LLP
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`By: /Christopher P. Carroll/
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`Christopher P. Carroll
`Reg. No. 55776
`White & Case LLP
`75 State Street
`Boston, MA 02109-1814
`christopher.carroll@whitecase.com
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`Attorneys for Petitioner
`GLOBALFOUNDRIES U.S. INC.
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