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`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
`Patent 6,538,324 B1
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`REPLY TO PATENT OWNER’S OPPOSITION TO MOTION FOR
`JOINDER TO INTER PARTES REVIEW IPR2016-01264
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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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`IPR2017-00920
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`I. INTRODUCTION
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`The Board routinely grants motions for joinder where the party seeking joinder
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`presents identical arguments to those raised in the existing proceeding and agrees to
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`reasonable limits on its role in the joined proceeding. See, e.g., Perfect World
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`Entertainment, Inc., v. Uniloc USA, Inc. and Uniloc Luxembourg S.A., IPR2015-
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`01026, Paper 10, (PTAB Aug. 3, 2015); ION Geophysical Corporation and Ion
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`International S.A.R.L. v. WesternGeco LLC, IPR2015-00567, Paper 14, (PTAB Apr.
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`23, 2015); Fujitsu Semiconductor Limited v. Zond, LLC, IPR2014-
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`00845, Paper 14 (PTAB Oct. 2, 2014); Enzymotec Ltd. V. Neptune Technologies &
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`Bioresources, Inc., IPR2014-00556, Paper 19 (PTAB Jul. 9, 2014). Such is the
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`situation here and joinder should be granted consistent with the Board’s “policy
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`preference for joining a party that does not present new issues that might complicate
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`or delay an existing proceeding.” Enzymotec, Paper 19, p. 6, FN1 citing 157 Cong.
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`Rec. S1376 (daily ed. Mar. 8, 2011) (statement of Sen. Kyl) (“The Office anticipates
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`that joinder will be allowed as of right – if an inter partes review is instituted on the
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`basis of a petition, for example, a party that files an identical
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`petition will be joined to that proceeding, . . .”) (emphasis added).
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`Further, the Board has waived the one-month requirement under 37 C.F.R. §
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`42.122(b) and granted joinder where: 1) the Petitioner’s asserted grounds and
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`arguments are identical to those already at issue in the existing proceedings, 2)
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`IPR2017-00920
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`joinder would require no change to the trial schedule, 3) joinder would impose no
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`added burden on the existing parties because the Petitioners were willing to have
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`only a limited “understudy” role, and 4) the Petitioner attempted previously within
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`the one-month requirement to be joined. All four criteria are met here. See Sony
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`Corporation of America et al., v. Network-1 Security Solutions, Inc., IPR2013-
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`00495, Paper 13, (PTAB September 16, 2013).
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`II.
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`FACTS
`The petition and motion for joinder in this case were filed on February 16,
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`2016, which was more than one month after institution of inter partes review in
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`IPR2016-01264, the case for which joinder is being requested. See IPR2017-
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`00920, Papers 1 and 3. However, a previous petition containing the same
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`grounds as in this case and a motion for joinder to IPR2016-01264 was timely
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`filed according to 37 C.F.R. § 42.122(b) in the name of GLOBALFOUNDRIES,
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`INC., one of the real parties-in-interest in this case. See IPR2017-00757, Papers
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`2 and 3. The petition in IPR2017-00757 was dismissed in favor of this petition,
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`which includes an additional real party in interest GLOBALFOUNDRIES U.S.
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`INC. See IPR2017-00757, Paper 15 and IPR2017-00920, Paper 1.
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`III. ARGUMENTS
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`Under 37 C.F.R. § 42.5(b), the Board “may waive or suspend a requirement
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`of [part 42 of the Board’s rules] and may place conditions on the waiver or
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`IPR2017-00920
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`suspension.” See IPR2013-00495, Paper 13 at page 4 citing 37 C.F.R. § 42.5(b).
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`As discussed below, consistent with the Board’s decision in IPP2013-00495,
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`Petitioner respectfully requests that the Board waive the one-month requirement
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`under 37 C.F.R. § 42.122(b) and grant joinder to IPR2016-01264.
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`A.
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`Substantive Issues
`The Petition and Motion for Joinder raise no new substantive issues, which
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`favors granting joinder:
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`1)
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`Joinder will not impact the Board’s ability to complete the proceedings
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`in one year because the Petition does not raise any issues that are not already
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`before the Board. See Motion for Joinder, Paper 3 at page 6.
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`2)
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`The Petition asserts the same grounds of unpatentability as those on
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`which a trial was instituted in case IPR2016-01264. See Petition, Paper 1.
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`3)
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`Petitioner’s arguments regarding the asserted prior art references are
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`identical to the arguments made by Taiwan Semiconductor Manufacturing
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`Company Limited (TSMC) in IPR2016-01264. See Petition, Paper 1.
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`4)
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`Petitioner submitted the same Expert Declaration as submitted by
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`TSMC in IPR2016-01264. See Exhibit 1003.
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`Thus, the Petition raises no new substantive issues beyond those already
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`before the Board in the instituted proceedings, which weighs in favor of joinder.
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`IPR2017-00920
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`See IPR2013-00495, Paper 13 at page 5 citing 157 CONG. REC. S1376 (daily ed.
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`Mar. 8, 2011) (statement of Sen. Kyl) (“The Office anticipates that joinder will be
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`allowed as of right—if an inter partes review is instituted on the basis of a petition,
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`for example, a party that files an identical petition will be joined to that proceeding,
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`and thus allowed to file its own briefs and make its own arguments.”) (emphasis
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`added).
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`B.
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`Procedural Issues
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`The Petition and Motion for Joinder raise no new procedural issues, which
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`favors granting joinder:
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`1)
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`Joinder will not require any change to the trial schedule or affect
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`timely completion of the review. See Motion for Joinder, Paper 3 at page 6.
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`As stated in the Petitioner’s motion for joinder, joinder is likely more
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`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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`Hence, the Patent Owner will not be prejudiced by the Board permitting
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`joinder. See Motion for Joinder, Paper 3 at pages 7 and 8.
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`2)
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`Petitioner has agreed to have only a limited “understudy” role if joined
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`with case IPR2016-01264 and, therefore, the procedural impact on the
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`instituted proceedings will be minimal, if any. See Motion for Joinder, Paper
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`IPR2017-00920
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`3 at page 7.
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`Because joinder will not require a change to the existing trial schedule and
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`because the Petitioner has agreed to a limited “understudy” role, the procedural
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`impact on the instituted proceedings will be minimal, if it has any impact at all,
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`which weighs in favor of joinder.
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`C. Other Considerations
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`The Board grants joinder on a case-by-case basis, taking into account the
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`particular facts of each case, substantive and procedural issues, and other
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`considerations. See 157 CONG. REC. S1376 (daily ed. Mar. 8, 2011) (statement of
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`Sen. Kyl) (when determining whether and when to allow joinder, the Office may
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`consider factors including “the breadth or unusualness of the claim scope” and
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`claim construction issues). When exercising its discretion, the Board is mindful that
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`patent trial regulations, including the rules for joinder, must be construed to secure
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`the just, speedy, and inexpensive resolution of every proceeding. See IPR2013-
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`00495, Paper 13 at page 3 citing 35 U.S.C. § 316(b); 37 C.F.R. § 42.1(b).
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`A previous petition including the same grounds as in this case and a motion
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`for joinder to IPR2016-01264 was timely filed according to 37 C.F.R. §
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`IPR2017-00920
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`42.122(b) in the name of GLOBALFOUNDRIES, INC., one of the real parties-in-
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`interest in this case. See IPR2017-00757, Papers 2 and 3. The petition in
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`IPR2017-00757 was dismissed in favor of this petition, which includes an
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`additional real party in interest GLOBALFOUNDRIES U.S. INC. See IPR2017-
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`00757, Paper 15 and IPR2017-00920, Paper 1.
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`In IPR2013-00495, the Board recognized the petitioner’s previous attempts
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`to be joined within the one-month period as a special circumstance that weighed
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`in favor of waiving the one-month requirement under 37 C.F.R. § 42.122(b) and
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`the granting of joinder. In this case, the timely filed motion for joinder in
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`IPR2017-00757 by one of the real parties-in-interest in this case should be
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`considered a previous attempt to be joined within the one-month period under 37
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`C.F.R. § 42.122(b).
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`Hence, the previous motion for joinder by one of the real parties-in-interest
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`in IPR2017-00757 should weigh in favor of granting joinder.
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`D.
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`Summary of Circumstances in Favor of Granting Joinder
`The unique circumstances presented here are similar to the unique
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`circumstances considered by
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`the Board
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`in
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`IPR2013-00495—namely,
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`that
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`Petitioners’ asserted grounds and arguments are identical to those already at issue in
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`the existing proceeding, joinder will require no change to the trial schedule, joinder
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`IPR2017-00920
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`will impose no added burden on the existing parties because Petitioner is willing to
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`have only a limited “understudy” role, and a real party-in-interest attempted to join
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`within the one-month time period. Therefore, we respectfully request that the Board
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`exercise its discretion to waive the one-month requirement under 37 C.F.R. §
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`42.122(b) and grant joinder under these circumstances. See IPR2013-00495, Paper
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`13 at page 9.
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`E. Additional Real Party In Interest
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`The Patent Owner has raised an unsupported and illusory issue regarding the
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`identified real parties in interest (“RPI”) in this case based on RPIs in two other
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`IPRs1. See PO’s Combined Opposition to Petitioner’s Motion for Joinder and
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`Preliminary Response, Paper 8 at pages 4 and 10. See also IPR2017-00757 and
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`IPR2017-00903. The Patent Owner suggests that further actions, e.g., discovery,
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`may be required, which could result in adjustment of the schedule and impact the
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`Board’s ability to complete the review in a timely manner. This argument is entirely
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`speculative and illusory.
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`With respect to IPR2017-00757, the Petition in this case was filed out of an
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`abundance of caution and added a
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`second
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`real party
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`in
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`interest,
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`GLOBALFOUNDRIES U.S.
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`INC., which
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`is
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`a
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`subsidiary
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`of
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`1 Patent Owner also referred to IPR2017-00849 and IPR2017-00850.
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`IPR2017-00920
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`GLOBALFOUNDRIES, INC., with the intent of avoiding burdening the parties and
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`the Board with potential issues regarding the real party in interest. Simply adding a
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`second real party in interest to the Petition does not raise an issue regarding the real
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`party in interest as asserted by the Patent Owner. With respect to IPR2017-00903,
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`the Patent Owner asserts that a statement regarding the timing of filing the petition
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`in IPR-2017-00903, which relates to a different patent, i.e., U.S. Patent No.
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`RE41,980, is relevant to an alleged issue regarding the real party in interest in this
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`case. See PO’s Combined Opposition to Petitioner’s Motion for Joinder and
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`Preliminary Response, Paper 8 at page 12. See also IPR2017-00903, Petition at
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`pages 87-88. However, the fact that the real parties in interest in IPR2017-00903
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`are the same as the real parties in interest for this case suggests instead that there is
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`no issue with the real parties in interest in this case. Hence, the Patent Owner’s
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`argument concerning an alleged issue regarding the real party in interest is not only
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`speculative and unsupported by any evidence, but inconsistent with the existing
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`facts. Giving any weight to the Patent Owner’s “red herring” threatens the Board’s
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`objective of conducting the proceeding in an efficient manner.
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`Nevertheless, to the extent any activity regarding the real parties-in-interest is
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`pursued, and given the “understudy” role of the Petitioner, it seems highly unlikely
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`that the existing schedule will be affected.
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`Finally, Petitioner should not suffer the disproportionate penalty of denial of
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`IPR2017-00920
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`joinder for merely adding a real party in interest when there is no prima facie
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`evidence of a genuine issue that would justify a schedule change and no
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`demonstrable prejudice to the Patent Owner.
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`F.
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`Additional Conditions Proposed By Patent Owner
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`In Petitioner’s motion for joinder, Petitioner has already proposed that:
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`1)
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`As long as TSMC remains in the joined IPR, Petitioner agrees to remain
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`in a circumscribed “understudy” role without a separate opportunity to
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`actively participate.
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`2)
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`Petitioner will not file additional written submissions, nor will
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`Petitioner pose questions at depositions or argue at oral hearing without the
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`prior permission of TSMC.
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`3)
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`Only in the event that TSMC settles will Petitioner seek to become
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`active in the joined IPR.
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`Essentially, Petitioner agrees to not pursue an active role (i.e., a circumscribed
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`“understudy” role without a separate opportunity to actively participate) in the
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`joined case unless TSMC settles. See Motion for Joinder, Paper 3 at pages 6 and 7.
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`However, the Patent Owner argues that the Board should require the Petitioner
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`to abide by various additional conditions as a joined party in IPR2016-01264. See
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`PO’s Combined Opposition to Petitioner’s Motion for Joinder and Preliminary
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`Response, Paper 8 at pages 14 and 15. The Petitioner believes that such additional
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`IPR2017-00920
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`conditions are not warranted as the Petitioner is willing to have only a limited
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`“understudy” role. However, Petitioner is willing to abide by such additional
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`conditions as the Board deems appropriate.
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`IV . CONCLUSION
`For the foregoing reasons, Petitioner respectfully requests that its Petition for
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`Inter Partes Review of U.S. Patent No. 6,538,324 B1 be instituted and that
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`the 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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`IPR2017-00920
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`RESPECTFULLY SUBMITTED,
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`White & Case LLP
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`Date: April 12, 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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`IPR2017-00920
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`CERTIFICATE OF SERVICE
`The undersigned hereby certifies that a copy of the foregoing REPLY TO
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`PATENT OWNER’S OPPOSITION TO MOTION FOR JOINDER TO INTER
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`PARTES REVIEW IPR2016-01264 was served on April 12, 2017, via email
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`directed to counsel of record for the Patent Owner at the 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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