`Trials@uspto.gov
`571-272-7822
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` Entered: October 6, 2014
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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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`FUJITSU SEMICONDUCTOR LIMITED and
`FUJITSU SEMICONDUCTOR AMERICA, INC.,
`Petitioners,
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`v.
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`ZOND, LLC,
`Patent Owner.
`____________
`
`Case IPR2014-00848
`Patent 7,811,421 B2
`____________
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`Before KEVIN F. TURNER, DEBRA K. STEPHENS, JONI Y. CHANG,
`SUSAN L.C. MITCHELL, and JENNIFER M. MEYER,
`Administrative Patent Judges.
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`STEPHENS, Administrative Patent Judge.
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`DECISION
`Granting Revised Motion for Joinder
`37 C.F.R. § 42.122
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`IPR2014-00848
`Patent 7,811,421 B2
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`INTRODUCTION
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`On May 29, 2014, Fujitsu Semiconductor Limited and Fujitsu
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`Semiconductor America, Inc. (collectively, “Fujitsu”) filed a Petition
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`requesting an inter partes review of claims 9, 14, 21, 26, 35, and 37 of U.S.
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`Patent No. 7,811,421 B2 (“the ’421 patent”). Paper 1 (“Pet.”). Pursuant to
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`37 C.F.R. § 42.122(b), Fujitsu also filed a revised Motion for Joinder,
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`seeking to join the instant proceeding with Taiwan Semiconductor Manuf.
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`Co., Ltd. v. Zond, LLC., Case IPR2014-00802 (PTAB) (“IPR2014-00802”).
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`Paper 9 (“Mot.”).
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`Taiwan Semiconductor Manufacturing Company, Ltd. and TSMC
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`North America Corporation (collectively, “TSMC”), the Petitioner in
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`IPR2014-00802, does not oppose Fujitsu’s revised Motion for Joinder.
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`Mot. 2, 5–6. Patent Owner, Zond, LLC (“Zond”), filed a Preliminary
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`Response to the Petition (Paper 8, “Prelim. Resp.”) and an Opposition to
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`Fujitsu’s revised Motion for Joinder (Paper 10, “Opp.”). In a separate
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`decision, entered concurrently, we institute an inter partes review as to the
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`same claims on the same grounds of unpatentability for which we instituted
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`trial in IPR2014-00802. For the reasons set forth below, Fujitsu’s revised
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`Motion for Joinder is granted.
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`ANALYSIS
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`The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat.
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`284 (2011) (“AIA”) permits joinder of like review proceedings. The Board,
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`acting on behalf of the Director, has the discretion to join an inter partes
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`review with another inter partes review. 35 U.S.C. § 315.
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`IPR2014-00848
`Patent 7,811,421 B2
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`The statutory provision governing joinder of inter partes review
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`proceedings is 35 U.S.C § 315(c), which provides:
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`JOINDER.—If the Director institutes an inter partes review, the
`Director, in his or her discretion, may join as a party to that
`inter partes review any person who properly files a petition
`under section 311
`that
`the Director, after receiving a
`preliminary response under section 313 or the expiration of the
`time for filing such a response, determines warrants the
`institution of an inter partes review under section 314.
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`Joinder may be authorized when warranted, but the decision to grant
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`joinder is discretionary. 35 U.S.C. § 315(c); 37 C.F.R. § 42.122. When
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`exercising its discretion, the Board is mindful that patent trial regulations,
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`including the rules for joinder, must be construed to secure the just, speedy,
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`and inexpensive resolution of every proceeding. See 35 U.S.C. § 316(b);
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`37 C.F.R. § 42.1(b). The Board considers the impact of both substantive
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`issues and procedural matters on the proceedings.
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`As the moving party, Fujitsu bears the burden to show that joinder is
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`appropriate. 37 C.F.R. §§ 42.20(c), 42.122(b). In its revised Motion for
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`Joinder, Fujitsu contends that joinder, in this particular situation, is
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`appropriate because: (1) “it is the most expedient way to secure the just,
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`speedy, and inexpensive resolution of the related proceedings” (Mot. 5);
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`(2) Fujitsu’s Petition is substantively identical to TSMC’s Petition filed in
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`IPR2014-00802 (id. at 6); (3) Fujitsu agrees to consolidated filings and
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`discovery (id. at 6–7); (4) joinder would not affect the schedule in
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`IPR2014-00802 (id. at 7–8); (5) joinder would streamline the proceedings,
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`reduce the costs and burdens on the parties, and increase efficiencies for the
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`Board without any prejudice to Zond (id. at 8).
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`IPR2014-00848
`Patent 7,811,421 B2
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`We agree that the substantive issues in IPR2014-00802 would not be
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`affected by joinder, because Fujitsu’s Petition is substantively identical to
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`TSMC’s Petition filed in IPR2014-00802. Notably, Fujitsu’s Petition asserts
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`identical grounds of unpatentability, challenging the same claims of the ’184
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`patent. Compare Pet. 15–58, with IPR2014-00802, Paper 1 (“’802 Pet.”),
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`15–58. Fujitsu also submits identical claim constructions, as well as the
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`same Declaration of Dr. Uwe Kortshagen. Compare Pet. 11–14, with ’802
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`Pet. 11–14; compare Ex. 1202, with ’802, Ex. 1202. Moreover, we institute
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`the instant trial based on the same grounds for which we instituted trial in
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`IPR2014-00802. Therefore, Fujitsu’s Petition raises no new issues beyond
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`those already before us in IPR2014-00802.
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`In its Opposition, Zond indicates that it is not opposed to joinder.
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`Opp. 1. Rather, Zond proposes a procedure for the joined proceeding to
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`consolidate the schedule, filings, and discovery of ALL joined parties. Opp.
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`1.
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`We agree with the parties that conducting a single joined proceeding
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`for reviewing claims 9, 14, 21, 26, 35, and 37 of the ’421 patent is more
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`efficient than conducting multiple proceedings, eliminating duplicate filings
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`and discovery. Fujitsu agrees to consolidated filings for all substantive
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`papers. Mot. 6–7. Fujitsu indicates that it will not file any paper with
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`arguments different from those advanced by the consolidated filings,
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`eliminating duplicate briefing. Id. at 7. Fujitsu further agrees to
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`consolidated discovery, as each Petitioner proffers the same Declaration of
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`Dr. Kortshagen. Id. Fujitsu indicates that Petitioners collectively will
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`designate an attorney to conduct the cross-examination of any witnesses
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`produced by Zond and the redirect of any witnesses produced by Petitioners,
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`IPR2014-00848
`Patent 7,811,421 B2
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`within the timeframe normally allotted by the rules for one party. Id.
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`Moreover, joinder will not require any change to the trial schedule in
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`IPR2014-00802, allowing the trial still to be completed within one year. Id.
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`at 7–8. Given that Fujitsu’s Petition raises no new issues, and Petitioners
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`agree to consolidated filings and discovery, the impact of joinder on
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`IPR2014-00802 will be minimal, and joinder will streamline the
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`proceedings, reducing the costs and burdens on the parties and the Board.
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`For the foregoing reasons, Fujitsu has met its burden of demonstrating
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`that joinder of the instant proceeding with IPR2014-00802 is warranted
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`under the circumstances.
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`In consideration of the foregoing, it is hereby:
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`ORDER
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`ORDERED that Fujitsu’s Motion for Joinder with IPR2014-00802 is
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`granted;
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`FURTHER ORDERED that the instant proceeding is joined with
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`IPR2014-00802;
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`FURTHER ORDERED that the grounds of unpatentability on which a
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`trial was instituted in IPR2014-00802 are unchanged;
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`FURTHER ORDERED that the Scheduling Order for IPR2014-00802
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`shall govern the joined proceeding; the initial conference call for the joined
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`proceeding is scheduled on October 29, 2014 at 2:00 p.m. ET;
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`FURTHER ORDERED that the instant proceeding is instituted,
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`joined, and terminated under 37 C.F.R. § 42.72, and all further filings in the
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`joined proceeding shall be made only in IPR2014-00802;
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`5
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`IPR2014-00848
`Patent 7,811,421 B2
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`FURTHER ORDERED that, throughout IPR2014-00802, Petitioners
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`(TSMC and Fujitsu) will file papers, except for motions which do not
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`involve the other parties, as consolidated filings1; TSMC will identify each
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`such filing as a consolidated filing and will be responsible for completing all
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`consolidated filings; the page limits set forth in 37 C.F.R. § 42.24 will apply
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`to all consolidated filings (e.g., a consolidated filing of a reply to a patent
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`owner response should be 15 pages or less);
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`FURTHER ORDERED that Zond will conduct the cross-examination
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`of witnesses, as well as the redirect examination of any witness it produces,
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`in the timeframes set forth in 37 C.F.R. § 42.53(c);
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`FURTHER ORDERED that Petitioners collectively will designate
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`attorneys to conduct the cross-examination of any witnesses produced by
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`Zond and the redirect examination of any witnesses produced by Petitioners,
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`within the timeframes set forth in 37 C.F.R. § 42.53(c) for one party; no
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`individual Petitioner will receive any cross-examination or redirect
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`examination time in addition to the time normally allotted by 37 C.F.R.
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`§ 42.53(c) for one party;
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`FURTHER ORDERED that Petitioners collectively will designate
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`attorneys to present at the oral hearing (if requested) as a consolidated
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`presentation;
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`FURTHER ORDERED that the case caption in IPR2014-00802 shall
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`be changed to reflect the joinder with the instant proceeding in accordance
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`with the attached example; and
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`1 The parties are directed to the Board’s website, in particular FAQs C3, D5,
`and G8, for information regarding filings in the Patent Review Processing
`System (PRPS). See http://www.uspto.gov/ip/boards/bpai/prps.jsp.
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`IPR2014-00848
`Patent 7,811,421 B2
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`FURTHER ORDERED that a copy of this Decision be entered into
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`the file of IPR2014-00802.
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`7
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`IPR2014-00848
`Patent 7,811,421 B2
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`For PETITIONER:
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`David M. O’Dell
`david.odell.ipr@haynesboone.com
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`David L. McCombs
`david.mccombs@haynesboone.com
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`PATENT OWNER:
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`Gregory J. Gonsalves
`gonsalves@gonsalveslawfirm.com
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`Bruce J. Barker
`bbarker@chsblaw.com
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`8
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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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`TAIWAN SEMICONDUCTOR MANUFACTURING COMPANY, LTD.,
`TSMC NORTH AMERICA CORPORATION, FUJITSU
`SEMICONDUCTOR LIMITED, and
`FUJITSU SEMICONDUCTOR AMERICA, INC.,
`Petitioners,
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`v.
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`ZOND, LLC,
`Patent Owner.
`____________
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`Case IPR2014-008021
`Patent 7,811,421 B2
`____________
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`1 Case IPR2014-00848 has been joined with the instant proceeding.
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