`Trials@uspto.gov
`571-272-7822
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` Entered: October 24, 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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`THE GILLETTE COMPANY,
`Petitioners,
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`v.
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`ZOND, LLC,
`Patent Owner.
`____________
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`Case IPR2014-00990
`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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`IPR2014-00990
`Patent 7,811,421 B2
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`INTRODUCTION
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`On June 19, 2014, The Gillette Company (“Gillette”) filed a Petition
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`requesting an inter partes review of claims 3–7, 18–20, 31, 32, 36, 40, 41,
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`44, and 45 of U.S. Patent No. 7,811,421 B2 (“the ’421 patent”). Paper 1
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`(“Pet.”). Pursuant to 37 C.F.R. § 42.122(b), Gillette also filed a revised
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`Motion for Joinder, seeking to join the instant proceeding with Taiwan
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`Semiconductor Manuf. Co., Ltd. v. Zond, LLC., Case IPR2014-00805
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`(PTAB) (“IPR2014-00805”). Paper 9 (“Mot.”).
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`Taiwan Semiconductor Manufacturing Company, Ltd. and TSMC
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`North America Corporation (collectively, “TSMC”) and Fujitsu
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`Semiconductor Limited and Fujitsu Semiconductor America, Inc.
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`(collectively, “Fujitsu”), the First Petitioner and Second Petitioner,
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`respectively, in the joined proceeding IPR2014-00805, do not oppose
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`Gillette’s revised Motion for Joinder. Mot. 2, 8. Patent Owner, Zond, LLC
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`(“Zond”), filed a Preliminary Response to the Petition (Paper 8, “Prelim.
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`Resp.”) and an Opposition to Gillette’s revised Motion for Joinder (Paper
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`10, “Opp.”). In a separate decision, entered concurrently, we institute an
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`inter partes review as to the same claims on the same grounds of
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`unpatentability for which we instituted trial in IPR2014-00805. For the
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`reasons set forth below, Gillette’s revised 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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`IPR2014-00990
`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, Gillette 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, Gillette 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) Gillette’s Petition is substantively identical to TSMC’s Petition filed in
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`IPR2014-00805 (id. at 6); (3) Gillette 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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`IPR2014-00805 (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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`IPR2014-00990
`Patent 7,811,421 B2
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`We agree that the substantive issues in IPR2014-00805 would not be
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`affected by joinder, because Gillette’s Petition is substantively identical to
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`TSMC’s Petition filed in IPR2014-00805. Notably, Gillette’s Petition
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`asserts identical grounds of unpatentability, challenging the same claims of
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`the ’421 patent. Compare Pet. 13–60, with IPR2014-00805, Paper 1 (“’805
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`Pet.”), 14–60. Gillette also submits identical claim constructions, as well as
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`the same Declaration of Dr. Uwe Kortshagen. Compare Pet. 11–13, with
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`’805 Pet. 11–13; compare Ex. 1102, with ’805, Ex. 1102. Moreover, we
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`institute the instant trial based on the same grounds for which we instituted
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`trial in IPR2014-00805. Therefore, Gillette’s Petition raises no new issues
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`beyond those already before us in IPR2014-00805.
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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.
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`Opp. 1.
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`We agree with the parties that conducting a single joined proceeding
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`for reviewing claims 3–7, 18–20, 31, 32, 36, 40, 41, 44, and 45 of the ’421
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`patent is more efficient than conducting multiple proceedings, eliminating
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`duplicate filings and discovery. Gillette agrees to consolidated filings for all
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`substantive papers. Mot. 6–7. Gillette indicates that it will not file any
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`paper with arguments different from those advanced by the consolidated
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`filings, eliminating duplicate briefing. Id. Gillette further agrees to
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`consolidated discovery, as each Petitioner proffers the same Declaration of
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`Dr. Kortshagen. Id. at 7. Gillette 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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`IPR2014-00990
`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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`IPR2014-00805, allowing the trial still to be completed within one year. Id.
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`at 7–8. Given that Gillette’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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`IPR2014-00805 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, Gillette has met its burden of
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`demonstrating that joinder of the instant proceeding with IPR2014-00805 is
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`warranted 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 Gillette’s Motion for Joinder with IPR2014-00805 is
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`granted;
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`FURTHER ORDERED that the instant proceeding is joined with
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`IPR2014-00805;
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`FURTHER ORDERED that the grounds of unpatentability on which a
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`trial was instituted in IPR2014-00805 are unchanged;
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`FURTHER ORDERED that the Scheduling Order for IPR2014-00805
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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 IPR2014-00805;
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`IPR2014-00990
`Patent 7,811,421 B2
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`FURTHER ORDERED that, throughout IPR2014-00805, Petitioners
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`(TSMC, Fujitsu, and Gillette) will file papers, except for motions which do
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`not involve the other parties, as consolidated filings1; TSMC will identify
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`each such filing as a consolidated filing and will be responsible for
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`completing all consolidated filings; the page limits set forth in 37 C.F.R. §
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`42.24 will apply to all consolidated filings (e.g., a consolidated filing of a
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`reply to a patent 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 IPR2014-00805 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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`IPR2014-00990
`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 IPR2014-00805.
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`7
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`IPR2014-00990
`Patent 7,811,421 B2
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`For PETITIONER:
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`Michael Diener
`Larissa Park
`WILMER CUTLER PICKERING HALE AND DORR LLP
`michael.diener@wilmerhale.com
`larissa.park@wilmerhale.com
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`For PATENT OWNER:
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`Bruce J. Barker
`CHAO HADIDI STARK & BARKER LLP
`bbarker@chsblaw.com
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`Gregory J. Gonsalves
`gonsalves@gonsalveslawfirm.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,
`FUJITSU SEMICONDUCTOR AMERICA, INC.,
`and
`THE GILLETTE COMPANY,
`Petitioners,
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`v.
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`ZOND, LLC,
`Patent Owner.
`____________
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`Case IPR2014-008051
`Patent 7,811,421 B2
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`1 Cases IPR2014-00851 and IPR2014-00990 have been joined with the
`instant proceeding.
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