UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`
`
`GLOBALFOUNDRIES U.S. INC.,
`Petitioner,
`v.
`
`Godo Kaisha IP Bridge 1,
`Patent Owner.
`
`Case: IPR2017-00926
`Patent 7,126,174 B1
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`
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`AMENDED REPLY TO PATENT OWNER’S OPPOSITION TO MOTION
`FOR JOINDER TO INTER PARTES REVIEW IPR2016-01247
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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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`
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`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`GLOBALFOUNDRIES U.S. INC.,
`Petitioner,
`v.
`
`Godo Kaisha IP Bridge 1,
`Patent Owner.
`
`Case: IPR2017-00926
`Patent 7,126,174 B1
`
`
`
`
`
`
`
`
`AMENDED REPLY TO PATENT OWNER’S OPPOSITION TO MOTION
`FOR JOINDER TO INTER PARTES REVIEW IPR2016-01247
`
`
`
`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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`
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`IPR2017-00926
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`I. INTRODUCTION
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`
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`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,
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`2) 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. 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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`suspension.” See IPR2013-00495, Paper 13 at page 4 citing 37 C.F.R. § 42.5(b).
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`As will be discussed in the following remarks, for similar reasons and
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`circumstances as considered by
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`the Board
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`in IPP2013-00495, Petitioner
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`respectfully requests that the Board waive the one-month requirement under 37
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`C.F.R. § 42.122(b) and grant joinder to IPR2016-01247.
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`1
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`Substantive Issues
`A.
`The Petition and Motion for Joinder raise no new substantive issues which
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`IPR2017-00926
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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 pages 4 and 5.
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`2)
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`Petitioner’s Petition asserts the same grounds of unpatentability as
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`those on which a trial was instituted in case IPR2016-01247. See Petition,
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`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 IPR2016-01247. 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 IPR2016-01247. See Exhibit 1004.
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`B.
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`Procedural Issues
`
`The Petition and Motion for Joinder raise no new procedural issues which
`
`favors granting joinder:
`
`1)
`
`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 pages 4
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`2
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`IPR2017-00926
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`and 5. Hence, the Patent Owner will not be prejudiced by the Board
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`permitting joinder. See Motion for Joinder, Paper 3 at pages 5 and 6.
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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 IPR2016-01247 and, therefore, the procedural impact on the
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`instituted proceedings will be minimal. See Motion for Joinder, Paper 3 at
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`page 5.
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`C. Other Considerations
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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 IPR2016-01247 was timely filed according to 37 C.F.R.
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`§ 42.122(b) in the name of GLOBALFOUNDRIES, INC., one of the real parties
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`in interest in this case. See IPR2017-00850, Papers 2 and 3. The petition in
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`IPR2017-00850 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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`00850, Paper 12 and IPR2017-00926, 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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`granting joinder. In this case, the timely filed motion for joinder in IPR2017-
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`00850 by one of the real parties in interest in this case should be considered a
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`3
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`IPR2017-00926
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`previous attempt to be joined within the one-month period under 37 C.F.R.
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`§ 42.122(b).
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` D. Additional Real Party In Interest
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`
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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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`IPRs. 1 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 IPR2017-00850 and
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`IPR2017-00903. This argument is entirely speculative and illusory.
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`With respect to IPR2017-00850, 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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`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 fact that the real parties in interest in IPR2017-00903 are the same as the real
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`parties in interest for this case suggests instead that there is no issue with the real
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`parties in interest in this case. Hence, the Patent Owner’s argument concerning an
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`alleged issue regarding the real party in interest is not only speculative and
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`1 Patent Owner also referred to IPR2017-00753 and IPR2017-00757.
`4
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`IPR2017-00926
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`unsupported by any evidence, but inconsistent with the existing facts. Giving any
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`weight to the Patent Owner’s “red herring” threatens the Board’s objective of
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`conducting the proceeding in an efficient manner.
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`Finally, Petitioner should not suffer the disproportionate penalty of denial of
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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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`E. Additional Conditions Proposed By Patent Owner
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`
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`The Petitioner believes that 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
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`For the foregoing reasons, Petitioner respectfully requests that its Petition for
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`Inter Partes Review of U.S. Patent No. 7,126,174 B1 be instituted and that
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`the proceedings be joined with Case No. IPR2016-01247.
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`
`Date: April 17, 2017
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`
`
`
`
`/Kent J. Cooper/
`
`
`
`Kent J. Cooper (Reg. No. 37296)
`9407 Scenic Bluff Drive
`Austin, TX 78733
`Telephone: (512) 852-8091
`kent.cooper@kjcooperlaw.com
`
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`5
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`IPR2017-00926
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`CERTIFICATE OF SERVICE
`The undersigned hereby certifies
`that a copy of
`
`the foregoing
`
`AMENDED REPLY TO PATENT OWNER’S OPPOSITION TO MOTION
`
`FOR JOINDER TO INTER PARTES REVIEW IPR2016-01247 was served on
`
`April 17, 2017, via email directed to counsel of record for the Patent Owner at
`
`the following:
`
`Ngreenblum@gbpatent.com
`MFink@gbpatent.com
`Aturk@gbpatent.com
`
`/Kent J. Cooper/
`Law Office of Kent J. Cooper
`9407 Scenic Bluff Drive
`Austin, TX 78733
`Telephone: (512) 852-8091
`Lead Counsel for Petitioner
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