UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`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
`
`
`
`
`
`
`
`
`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
`
`
`
`1
`
`
`
`
`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
`
`
`
`
`
`
`
`
`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
`
`
`
`1
`
`
`
`
`
`IPR2017-00926
`
`I. INTRODUCTION
`
`The Board routinely grants motions for joinder where the party seeking joinder
`
`presents identical arguments to those raised in the existing proceeding and agrees to
`
`reasonable limits on its role in the joined proceeding. See, e.g., Perfect World
`
`Entertainment, Inc., v. Uniloc USA, Inc. and Uniloc Luxembourg S.A., IPR2015-
`
`01026, Paper 10, (PTAB Aug. 3, 2015); ION Geophysical Corp. and Ion Int’l
`
`S.A.R.L. v. WesternGeco LLC, IPR2015-00567, Paper 14, (PTAB Apr. 23, 2015);
`
`Fujitsu Semiconductor Ltd v. Zond, LLC, IPR2014-00845, Paper 14 (PTAB Oct. 2,
`
`2014); Enzymotec Ltd. V. Neptune Techs. & Bioresources, Inc., IPR2014-00556,
`
`Paper 19 (PTAB Jul. 9, 2014). Such is the situation here and joinder should be
`
`granted consistent with the Board’s “policy preference for joining a party that
`
`does not present new issues that might complicate or delay an existing proceeding.”
`
`Enzymotec, Paper 19, p. 6 citing 157 Cong. Rec. S1376 (daily ed. Mar. 8, 2011)
`
`(statement of Sen. Kyl) (“The Office anticipates that joinder will be allowed as of
`
`right – if an inter partes review is instituted on the basis of a petition, for
`
`example, a party that files an identical petition will be joined to that proceeding, . .
`
`.”) (emphasis added).
`
`
`
`Further, the Board has waived the one-month requirement under 37 C.F.R.
`
`§ 42.122(b) and granted joinder where: 1) the Petitioner’s asserted grounds and
`
`arguments are identical to those already at issue in the existing proceedings, 2)
`
`joinder would require no change to the trial schedule, 3) joinder would impose no
`
`
`
`2
`
`
`
`
`
`IPR2017-00926
`
`added burden on the existing parties because the Petitioners were willing to have
`
`only a limited “understudy” role, and 4) the Petitioner attempted previously within
`
`the one-month requirement to be joined. All four criteria are met here. See e.g.,
`
`Sony Corp. of Amer., et al., v. Network-1 Security Soln’s, Inc., IPR2013-00495,
`
`Paper 13, (PTAB September 16, 2013).
`
`II.
`
`
`FACTS
`The petition and motion for joinder in this case were filed on February 17,
`
`2017, which was more than one month after institution of inter partes review in
`
`IPR2016-01247, the case for which joinder has been requested. See IPR2017-
`
`00926, Papers 1 and 3. However, a previous petition containing the same
`
`grounds as in this case and a motion for joinder to IPR2016-01247 was timely
`
`filed according to 37 C.F.R. § 42.122(b) in the name of GLOBALFOUNDRIES,
`
`INC., one of the real parties-in-interest in this case. See IPR2017-00850, Papers
`
`2 and 3. The petition in IPR2017-00850 was dismissed in favor of this petition,
`
`which includes an additional real party in interest GLOBALFOUNDRIES U.S.
`
`INC. See IPR2017-00850, Paper 12 and IPR2017-00926, Paper 1.
`
`III. ARGUMENTS
`
`Under 37 C.F.R. § 42.5(b), the Board “may waive or suspend a requirement
`
`of [part 42 of the Board’s rules] and may place conditions on the waiver or
`
`suspension.” See IPR2013-00495, Paper 13 at page 4 citing 37 C.F.R. § 42.5(b).
`
`As discussed below, consistent with the Board’s decision in IPP2013-00495,
`
`
`
`3
`
`
`
`
`
`IPR2017-00926
`
`Petitioner respectfully requests that the Board waive the one-month requirement
`
`under 37 C.F.R. § 42.122(b) and grant joinder to IPR2016-01247.
`
`
`
`Substantive Issues
`A.
`The Petition and Motion for Joinder raise no new substantive issues, which
`
`favors granting joinder:
`
`1)
`
`Joinder will not impact the Board’s ability to complete the proceedings
`
`in one year because the Petition does not raise any issues that are not already
`
`before the Board. See Motion for Joinder, Paper 3 at pages 4 and 5.
`
`2)
`
`The Petition asserts the same grounds of unpatentability as those on
`
`which a trial was instituted in case IPR2016-01247. See Petition, Paper 1.
`
`3)
`
`Petitioner’s arguments regarding the asserted prior art references are
`
`identical to the arguments made by Taiwan Semiconductor Manufacturing
`
`Company Limited (TSMC) in IPR2016-01247. See Petition, Paper 1.
`
`4)
`
`Petitioner submitted the same Expert Declaration as submitted by
`
`TSMC in IPR2016-01247. See Exhibit 1004.
`
`
`
`Thus, the Petition raises no new substantive issues beyond those already
`
`before the Board in the instituted proceedings, which weighs in favor of joinder.
`
`See IPR2013-00495, Paper 13 at page 5 citing 157 CONG. REC. S1376 (daily ed.
`
`Mar. 8, 2011) (statement of Sen. Kyl) (“The Office anticipates that joinder will be
`
`allowed as of right—if an inter partes review is instituted on the basis of a petition,
`
`
`
`4
`
`
`
`
`
`IPR2017-00926
`
`for example, a party that files an identical petition will be joined to that proceeding,
`
`and thus allowed to file its own briefs and make its own arguments.”) (emphasis
`
`added).
`
`B.
`
`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
`
`timely completion of the review. See Motion for Joinder, Paper 3 at pages 4
`
`and 5. As stated in the Petitioner’s motion for joinder, joinder is likely more
`
`convenient and efficient for IP Bridge by providing a single trial on the ‘174
`
`patent. By allowing all grounds of invalidity to be addressed in a single
`
`proceeding, the interests of all parties and the Board will be well served.
`
`Hence, the Patent Owner will not be prejudiced by the Board permitting
`
`joinder. See Motion for Joinder, Paper 3 at pages 5 and 6.
`
`2)
`
`Petitioner has agreed to have only a limited “understudy” role if joined
`
`with case IPR2016-01247 and, therefore, the procedural impact on the
`
`instituted proceedings will be minimal, if any. See Motion for Joinder, Paper
`
`3 at page 5.
`
`
`
`Because joinder will not require a change to the existing trial schedule and
`
`because the Petitioner has agreed to a limited “understudy” role, the procedural
`
`
`
`5
`
`
`
`
`
`IPR2017-00926
`
`impact on the instituted proceedings will be minimal, if it has any impact at all,
`
`which weighs in favor of joinder.
`
`C. Other Considerations
`
`The Board grants joinder on a case-by-case basis, taking into account the
`
`particular facts of each case, substantive and procedural issues, and other
`
`considerations. See 157 CONG. REC. S1376 (daily ed. Mar. 8, 2011) (statement of
`
`Sen. Kyl) (when determining whether and when to allow joinder, the Office may
`
`consider factors including “the breadth or unusualness of the claim scope” and
`
`claim construction issues). When exercising its discretion, the Board is mindful
`
`that patent trial regulations, including the rules for joinder, must be construed to
`
`secure the just, speedy, and inexpensive resolution of every proceeding. See
`
`IPR2013-00495, Paper 13 at page 3 citing 35 U.S.C. § 316(b); 37 C.F.R. § 42.1(b).
`
`A previous petition including the same grounds as in this case and a motion
`
`for joinder to IPR2016-01247 was timely filed according to 37 C.F.R. § 42.122(b)
`
`in the name of GLOBALFOUNDRIES, INC., one of the real parties-in-interest in
`
`this case. See IPR2017-00850, Papers 2 and 3. The petition in IPR2017-00850
`
`was dismissed in favor of this petition, which includes an additional real party in
`
`interest GLOBALFOUNDRIES U.S. INC. See IPR2017-00850, Paper 12 and
`
`IPR2017-00926, Paper 1.
`
`In IPR2013-00495, the Board recognized the petitioner’s previous attempts
`
`to be joined within the one-month period as a special circumstance that weighed
`
`
`
`6
`
`
`
`
`
`IPR2017-00926
`
`in favor of waiving the one-month requirement under 37 C.F.R. § 42.122(b) and
`
`the granting of joinder. In this case, the timely filed motion for joinder in
`
`IPR2017-00850 by one of the real parties-in-interest in this case should be
`
`considered a previous attempt to be joined within the one-month period under 37
`
`C.F.R. § 42.122(b).
`
`Hence, the previous motion for joinder by one of the real parties-in-interest
`
`in IPR2017-00850 should weigh in favor of granting joinder.
`
`
`
`Summary of Circumstances in Favor of Granting Joinder
`D.
`The circumstances presented here are similar to those circumstances
`
`considered by the Board in IPR2013-00495—namely, that Petitioners’ asserted
`
`grounds and arguments are identical to those already at issue in the existing
`
`proceeding, joinder will require no change to the trial schedule, joinder will impose
`
`no added burden on the existing parties because Petitioner is willing to have only a
`
`limited “understudy” role, and a real party-in-interest attempted to join within the
`
`one-month time period. Therefore, we respectfully request that the Board exercise
`
`its discretion to waive the one-month requirement under 37 C.F.R. § 42.122(b) and
`
`grant joinder under these circumstances. See IPR2013-00495, Paper 13 at page 9.
`
`E. Additional Real Party In Interest
`
`
`
`The Patent Owner has raised an unsupported and illusory issue regarding the
`
`identified real parties-in-interest (“RPI”) in this case based on RPI’s in two other
`
`
`
`7
`
`
`
`
`
`IPR2017-00926
`
`IPRs1. See PO’s Combined Opposition to Petitioner’s Motion for Joinder and
`
`Preliminary Response, Paper 8 at pages 4 and 10. See also IPR2017-00850 and
`
`IPR2017-00903. The Patent Owner suggests that further actions, e.g., discovery,
`
`may be required, which could result in adjustment of the schedule and impact the
`
`Board’s ability to complete the review in a timely manner. This argument is entirely
`
`speculative and illusory.
`
`With respect to IPR2017-00850, the petition in that case was filed out of an
`
`abundance of caution and added a
`
`second
`
`real party
`
`in
`
`interest,
`
`GLOBALFOUNDRIES U.S.
`
`INC., which
`
`is
`
`a
`
`subsidiary
`
`of
`
`GLOBALFOUNDRIES, INC., with the intent of avoiding burdening the parties and
`
`the Board with potential issues regarding the real party in interest. Simply adding a
`
`second real party in interest to the Petition does not raise an issue regarding the real
`
`party in interest as asserted by the Patent Owner. With respect to IPR2017-00903,
`
`the Patent Owner asserts that a statement regarding the timing of filing the petition
`
`in IPR-2017-00903, which relates to a different patent, i.e., U.S. Patent No.
`
`RE41,980, is relevant to an alleged issue regarding the real party in interest in this
`
`case. See PO’s Combined Opposition to Petitioner’s Motion for Joinder and
`
`Preliminary Response, Paper 8 at page 12. See also IPR2017-00903, Petition at
`
`pages 87-88. However, the fact that the real parties in interest in IPR2017-00903
`
`are the same as the real parties in interest for this case suggests instead that there is
`
`
`1 Patent Owner also referred to IPR2017-00753 and IPR2017-00757.
`8
`
`
`
`
`
`
`IPR2017-00926
`
`no issue with the real parties in interest in this case. Hence, the Patent Owner’s
`
`argument concerning an alleged issue regarding the real party in interest is not only
`
`speculative and unsupported by any evidence, but inconsistent with the existing
`
`facts. Giving any weight to the Patent Owner’s “red herring” threatens the Board’s
`
`objective of conducting the proceeding in an efficient manner.
`
`Nevertheless, to the extent any activity regarding the real parties-in-interest is
`
`pursued, and given the “understudy” role of the Petitioner, it seems highly unlikely
`
`that the existing schedule will be affected.
`
`Finally, Petitioner should not suffer the disproportionate penalty of denial of
`
`joinder for merely adding a real party in interest when there is no prima facie
`
`evidence of a genuine issue that would justify a schedule change and no
`
`demonstrable prejudice to the Patent Owner.
`
`F.
`
`Additional Conditions Proposed By Patent Owner
`
`
`
`In Petitioner’s motion for joinder, Petitioner has already proposed that:
`
`1)
`
`As long as TSMC remains in the joined IPR, Petitioner agrees to remain
`
`in a circumscribed “understudy” role without a separate opportunity to
`
`actively participate.
`
`2)
`
`Petitioner will not file additional written submissions, nor will
`
`Petitioner pose questions at depositions or argue at oral hearing without the
`
`prior permission of TSMC.
`
`3)
`
`Only in the event that TSMC settles will Petitioner seek to become
`9
`
`
`
`
`
`
`
`active in the joined IPR.
`
`
`
`IPR2017-00926
`
`Essentially, Petitioner agrees to not pursue an active role (i.e., a circumscribed
`
`“understudy” role without a separate opportunity to actively participate) in the
`
`joined case unless TSMC settles. See Motion for Joinder, Paper 3 at pages 4 and 5.
`
`However, the Patent Owner argues that the Board should require the Petitioner
`
`to abide by various additional conditions as a joined party in IPR2016-01247. See
`
`PO’s Combined Opposition to Petitioner’s Motion for Joinder and Preliminary
`
`Response, Paper 8 at pages 14 and 15. The Petitioner believes that such additional
`
`conditions are not warranted as the Petitioner is willing to have only a limited
`
`“understudy” role. However, Petitioner is willing to abide by such additional
`
`conditions as the Board deems appropriate.
`
`
`
`IV. CONCLUSION
`For the foregoing reasons, Petitioner respectfully requests that its Petition for
`
`Inter Partes Review of U.S. Patent No. 7,126,174 B1 be instituted and that
`
`the proceedings be joined with Taiwan Semiconductor Manufacturing Company
`
`Limited (“TSMC”) v. Godo Kaisha IP Bridge 1, Case No. IPR2016-01247.
`
`
`
`
`
`10
`
`
`
`IPR2017-00926
`
`Respectfully Submitted by:
`
` /Kent J. Cooper/
`Kent J. Cooper
`Reg. No. 37296
`Law Office of Kent J. Cooper
`9407 Scenic Bluff Drive
`Austin, TX 78733
`kent.cooper@kjcooperlaw.com
`
`Lead Counsel for Petitioner
`GLOBALFOUNDRIES U.S. INC.
`
`
`
`Date: April 13, 2017
`
`
`
`11
`
`
`
`
`
`
`
`
`
`
`
`
`
`IPR2017-00926
`
`CERTIFICATE OF SERVICE
`The undersigned hereby certifies that a copy of the foregoing REPLY TO
`
`PATENT OWNER’S OPPOSITION TO MOTION FOR JOINDER TO INTER
`
`PARTES REVIEW IPR2016-01247 was served on April 13, 2017, via email
`
`directed to counsel of record for the Patent Owner at the following:
`
`Michael J. Fink (mfink@gbpatent.com); and
`Neil F. Greenblum (ngreenblum@gbpatent.com); and
`Arnold Turk (aturk@gbpatent.com)
`
`Respectfully submitted,
`
`By: /Kent J. Cooper/
`Kent J. Cooper
`Reg. No. 37296
`Law Office of Kent J. Cooper
`9407 Scenic Bluff Drive
`Austin, TX 78733
`kent.cooper@kjcooperlaw.com
`
`
`12
`
`
`
`
`
`
`
`
`
`
`
`
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
