Paper 12
`Trials@uspto.gov
`571-272-7822
`
` Entered: November 18, 2014
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`FUJITSU SEMICONDUCTOR LIMITED and
`FUJITSU SEMICONDUCTOR AMERICA, INC.,
`Petitioners,
`v.
`
`ZOND, LLC,
`Patent Owner.
`____________
`
`Case IPR2014-00856
`Patent 6,805,779 B2
`____________
`
`
`
`
`Before KEVIN F. TURNER, JONI Y. CHANG, SUSAN L. C. MITCHELL,
`and JENNIFER M. MEYER, Administrative Patent Judges.
`
`CHANG, Administrative Patent Judge.
`
`
`DECISION
`Granting Revised Motion for Joinder
`37 C.F.R. § 42.122
`
`
`
`
`
`
`Trials@uspto.gov
`571-272-7822
`
` Entered: November 18, 2014
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`FUJITSU SEMICONDUCTOR LIMITED and
`FUJITSU SEMICONDUCTOR AMERICA, INC.,
`Petitioners,
`v.
`
`ZOND, LLC,
`Patent Owner.
`____________
`
`Case IPR2014-00856
`Patent 6,805,779 B2
`____________
`
`
`
`
`Before KEVIN F. TURNER, JONI Y. CHANG, SUSAN L. C. MITCHELL,
`and JENNIFER M. MEYER, Administrative Patent Judges.
`
`CHANG, Administrative Patent Judge.
`
`
`DECISION
`Granting Revised Motion for Joinder
`37 C.F.R. § 42.122
`
`
`
`
`
`
`
`Case IPR2014-00856
`Patent 6,805,779 B2
`
`
`
`
`
`
`INTRODUCTION
`Fujitsu Semiconductor Limited and Fujitsu Semiconductor America,
`Inc. (collectively, “Fujitsu”) filed a Petition requesting an inter partes
`review of U.S. Patent 6,805,779 B2 (Ex. 1201, “the ’779 patent”). Paper 1
`(“Pet.”). Pursuant to 37 C.F.R. § 42.122(b), Fujitsu also filed a revised
`Motion for Joinder, seeking to the instant proceeding with Taiwan
`Semiconductor Mfg. Co., Ltd. v. Zond, LLC., Case IPR2014-00828 (PTAB)
`(“IPR2014-00828”). Paper 9 (“Mot.”).
`Taiwan Semiconductor Manufacturing Company, Ltd. and TSMC
`North America Corporation (collectively, “TSMC”), the Petitioner in
`IPR2014-00828, does not oppose Fujitsu’s revised Motion for Joinder.
`Mot. 2. Patent Owner Zond, LLC (“Zond”) filed a Preliminary Response to
`the Petition (Paper 8, “Prelim. Resp.”) and an Opposition to Fujitsu’s revised
`Motion for Joinder (Paper 10, “Opp.”). In a separate decision, we institute
`an inter partes review as to the same claims on the same grounds of
`unpatentability for which we instituted trial in IPR2014-00828. For the
`reasons set forth below, Fujitsu’s revised Motion for Joinder is granted.
`
`
`ANALYSIS
`The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat.
`284 (2011) (“AIA”) permits joinder of like review proceedings. The Board,
`acting on behalf of the Director, has the discretion to join an inter partes
`review with another inter partes review. 35 U.S.C. § 315.
`
`
`
`2
`
`
`
`Case IPR2014-00856
`Patent 6,805,779 B2
`
`
`
`
`
`
`The statutory provision governing joinder of inter partes review
`proceedings is 35 U.S.C § 315(c), which provides:
`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.
`
`Joinder may be authorized when warranted, but the decision to grant
`joinder is discretionary. 35 U.S.C. § 315(c); 37 C.F.R. § 42.122. 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 35 U.S.C. § 316(b);
`37 C.F.R. § 42.1(b). The Board considers the impact of both substantive
`issues and procedural matters on the proceedings.
`As the moving party, Fujitsu bears the burden to show that joinder is
`appropriate. 37 C.F.R. §§ 42.20(c), 42.122(b). In its revised Motion for
`Joinder, Fujitsu contends that joinder, in this particular situation, is
`appropriate because: (1) “it is the most expedient way to secure the just,
`speedy, and inexpensive resolution of the related proceedings” (Mot. 5);
`(2) Fujitsu’s Petition is substantively identical to TSMC’s Petition filed in
`IPR2014-00828 (id. at 6); (3) Fujitsu agrees to consolidated filings and
`discovery (id. at 6–7); (4) joinder would not affect the schedule in
`IPR2014-00828 (id. at 7–8); and (5) joinder would streamline the
`proceedings, reduce the costs and burdens on the parties, and increase
`efficiencies for the Board without any prejudice to Zond (id. at 8).
`
`
`
`3
`
`
`
`Case IPR2014-00856
`Patent 6,805,779 B2
`
`
`
`
`
`
`We agree that the substantive issues in IPR2014-00828 would not be
`affected by joinder, because Fujitsu’s Petition is substantively identical to
`TSMC’s Petition filed in IPR2014-00828. Notably, Fujitsu’s Petition asserts
`identical grounds of unpatentability, challenging the same claims of the ’779
`patent. Compare Pet. 19– 60, with IPR2014-00828, Paper 2 (“’828 Pet.”),
`20–60. Fujitsu also submits identical claim constructions, as well as the
`same Declaration of Dr. Uwe Kortshagen. Compare Pet. 18–19, with ’828
`Pet. 19–20; compare Ex. 1202, with ’828 Ex. 1202. Moreover, we institute
`the instant trial based on the same grounds for which we instituted trial in
`IPR2014-00828. Therefore, Fujitsu’s Petition raises no new issues beyond
`those already before us in IPR2014-00828.
`In its Opposition, Zond indicates that it is not opposed to joinder.
`Opp. 1. Rather, Zond proposes a procedure for the joined proceeding to
`consolidate the schedule, filings, and discovery. Opp. 2–3.
`We agree with the parties that conducting a single joined proceeding
`for reviewing claims 16, 28, 41, 42, 45, and 46 of the ’779 patent is more
`efficient than conducting multiple proceedings, eliminating duplicate filings
`and discovery. Fujitsu agrees to consolidated filings for all substantive
`papers. Mot. 6–7. Fujitsu indicates that it will not file any paper with
`arguments different from those advanced by the consolidated filings,
`eliminating duplicate briefing. Id. Fujitsu further agrees to consolidated
`discovery, as each Petitioner proffers the same Declaration of
`Dr. Kortshagen. Id. at 7. Fujitsu indicates that Petitioners of the joined
`proceeding collectively will designate an attorney to conduct the
`cross-examination of any witnesses produced by Zond and the redirect of
`any witnesses produced by Petitioners, within the timeframe normally
`4
`
`
`
`
`
`Case IPR2014-00856
`Patent 6,805,779 B2
`
`
`
`
`
`
`allotted by the rules for one party. Id. at 7. Moreover, joinder will not
`require any change to the trial schedule in IPR2014-00828, allowing the trial
`still to be completed within one year. Id. at 7–8. Given that Fujitsu’s
`Petition raises no new issues, and Petitioners agree to consolidated filings
`and discovery, the impact of joinder on IPR2014-00828 will be minimal, and
`joinder will streamline the proceedings, reducing the costs and burdens on
`the parties and the Board.
`For the foregoing reasons, Fujitsu has met its burden of demonstrating
`that joinder of the instant proceeding with IPR2014-00828 is warranted
`under the circumstances.
`
`ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED that Fujitsu’s Motion for Joinder with IPR2014-00828 is
`granted;
`FURTHER ORDERED that the instant proceeding is joined with
`IPR2014-00828;
`FURTHER ORDERED that the grounds of unpatentability on which a
`trial was instituted in IPR2014-00828 are unchanged;
`FURTHER ORDERED that the Scheduling Order for IPR2014-00828
`(Paper 10) shall govern the joined proceeding; the initial conference call for
`the joined proceeding is scheduled on December 17, 2014 at 2:00 p.m. ET;
`FURTHER ORDERED that the instant proceeding is instituted,
`joined, and terminated under 37 C.F.R. § 42.72, and all further filings in the
`joined proceeding shall be made only in IPR2014-00828;
`
`
`
`5
`
`
`
`Case IPR2014-00856
`Patent 6,805,779 B2
`
`
`
`
`
`
`FURTHER ORDERED that, throughout IPR2014-00828, Petitioners
`(TSMC and Fujitsu) will file papers, except for motions which do not
`involve the other parties, as consolidated filings1; TSMC will identify each
`such filing as a consolidated filing and will be responsible for completing all
`consolidated filings; the page limits set forth in 37 C.F.R. § 42.24 will apply
`to all consolidated filings (e.g., a consolidated filing of a reply to a patent
`owner response should be 15 pages or less);
`FURTHER ORDERED that Zond will conduct the cross-examination
`of witnesses, as well as the redirect examination of any witness it produces,
`in the timeframes set forth in 37 C.F.R. § 42.53(c);
`FURTHER ORDERED that Petitioners collectively will designate
`attorneys to conduct the cross-examination of any witnesses produced by
`Zond and the redirect examination of any witnesses produced by Petitioners,
`within the timeframes set forth in 37 C.F.R. § 42.53(c) for one party; no
`individual Petitioner will receive any cross-examination or redirect
`examination time in addition to the time normally allotted by 37 C.F.R.
`§ 42.53(c) for one party;
`FURTHER ORDERED that Petitioners collectively will designate
`attorneys to present at the oral hearing (if requested) as a consolidated
`presentation;
`FURTHER ORDERED that the case caption in IPR2014-00828 shall
`be changed to reflect the joinder with the instant proceeding in accordance
`with the attached example; and
`
`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.
`6
`
`
`
`
`
`Case IPR2014-00856
`Patent 6,805,779 B2
`
`
`
`
`
`
`FURTHER ORDERED that a copy of this Decision be entered into
`the file of IPR2014-00828.
`
`
`
`For PETITIONER:
`David M. O’Dell
`David McCombs
`HAYNES AND BOONE, LLP
`david.odell.ipr@haynesboone.com
`david.mccombs.ipr@haynesboone.com
`
`Richard C. Kim
`DUANE MORRIS LLP
`rckim@duanemorris.com
`
`For PATENT OWNER:
`
`Gregory J. Gonsalves
`gonsalves@gonsalveslawfirm.com
`
`Bruce J. Barker
`CHAO HADIDI STARK & BARKER LLP
`bbarker@chsblaw.com
`
`
`
`
`
`
`7
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`TAIWAN SEMICONDUCTOR MANUFACTURING COMPANY, LTD.,
`TSMC NORTH AMERICA CORPORATION, FUJITSU
`SEMICONDUCTOR LIMITED, and
`FUJITSU SEMICONDUCTOR AMERICA, INC.,
`Petitioners,
`
`v.
`
`ZOND, LLC,
`Patent Owner.
`____________
`
`Case IPR2014-008281
`Patent 7,147,779 B2
`____________
`
`
`
`
`
`
`1 Case IPR2014-00856 has been joined with the instant proceeding.
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