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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: IPR2017-00923
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`Patent 6,197,696
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`REPLY TO PATENT OWNER’S OPPOSITION TO MOTION FOR
`JOINDER TO INTER PARTES REVIEW IPR2016-01378
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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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`IPR2017-00923
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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 citing 157
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`Cong. Rec. S1376 (daily ed. Mar. 8, 2011) (statement of Sen. Kyl) (“The Office
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`anticipates that joinder will be allowed as of right – if an inter partes review is
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`instituted on the 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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`II. 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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`IPR2017-00923
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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 2 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 IPR2016-01378. See
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`PO’s Opposition to Petitioner’s Motion for Joinder and Preliminary Response, Paper
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`6. The Petitioner believes that such additional conditions are not warranted as the
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`Petitioner is willing to have only a limited “understudy” role. However, Petitioner is
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`willing to abide by such additional conditions as the Board deems appropriate.
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`III . CONCLUSION
`For the foregoing reasons, Petitioner respectfully requests that its Petition for
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`Inter Partes Review of U.S. Patent No. 6,197,696 be instituted 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. IPR2016-01378.
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`IPR2017-00923
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`RESPECTFULLY SUBMITTED,
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`White & Case LLP
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`Date: April 12, 2017
`
`/Christopher P. Carroll/
`
`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
`
`Lead Counsel for Petitioner
`GLOBALFOUNDRIES U.S. INC.
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`IPR2017-00923
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`CERTIFICATE OF SERVICE
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`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 IPR2016-01378 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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`Andrew.thomases@ropesgray.com
`sbaughman@paulweiss.com
`Jordan.rossen@ropesgray.com
`James.l.davis@ropesgray.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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