Paper 17
`Trials@uspto.gov
`571-272-7822
`
` Entered: December 18, 2014
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`THE GILLETTE COMPANY,
`Petitioner,
`v.
`
`ZOND, LLC,
`Patent Owner.
`____________
`
`Case IPR2014-001003
`Patent 6,806,652 B1
`____________
`
`
`
`
`Before KEVIN F. TURNER, JONI Y. CHANG, SUSAN L. C. MITCHELL,
`and JENNIFER M. MEYER, Administrative Patent Judges.
`
`MITCHELL, Administrative Patent Judge.
`
`
`DECISION
`Granting Revised Motion for Joinder
`37 C.F.R. § 42.122
`
`
`
`
`
`
`Trials@uspto.gov
`571-272-7822
`
` Entered: December 18, 2014
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`THE GILLETTE COMPANY,
`Petitioner,
`v.
`
`ZOND, LLC,
`Patent Owner.
`____________
`
`Case IPR2014-001003
`Patent 6,806,652 B1
`____________
`
`
`
`
`Before KEVIN F. TURNER, JONI Y. CHANG, SUSAN L. C. MITCHELL,
`and JENNIFER M. MEYER, Administrative Patent Judges.
`
`MITCHELL, Administrative Patent Judge.
`
`
`DECISION
`Granting Revised Motion for Joinder
`37 C.F.R. § 42.122
`
`
`
`
`
`
`
`IPR2014-01003
`Patent 6,806,652 B1
`
`
`INTRODUCTION
`The Gillette Company (“Gillette”) filed a Petition requesting an inter
`partes review of claims 18–34 of U.S. Patent 6,806,652 B2 (Ex. 1101, “the
`’652 patent”). Paper 3 (“Pet.”). Pursuant to 37 C.F.R. § 42.122(b), Gillette
`also filed a renewed Motion for Joinder, seeking to join the instant
`proceeding with Taiwan Semiconductor Manuf. Co., Ltd. v. Zond, LLC, Case
`IPR2014-00861 (“IPR2014-00861”). Paper 10 (“Mot.”).
`Taiwan Semiconductor Manufacturing Company, Ltd. and TSMC
`North America Corporation (collectively, “TSMC”), the Petitioner in
`IPR2014-00861, does not oppose Gillette’s revised Motion for Joinder.
`Mot. 2. Patent Owner, Zond, LLC (“Zond”), filed a Preliminary Response
`to the Petition (Paper 12, “Prelim. Resp.”) and an Opposition to Gillette’s
`renewed Motion for Joinder (Paper 11, “Opp.”). In a separate decision,
`entered concurrently, we institute an inter partes review as to the same
`claims on the same grounds of unpatentability for which we instituted trial in
`IPR2014-00861. For the reasons set forth below, Gillette’s renewed 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
`
`
`
`
`
`
`
`IPR2014-01003
`Patent 6,806,652 B1
`
`
`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, Gillette bears the burden to show that joinder is
`appropriate. 37 C.F.R. §§ 42.20(c), 42.122(b). In its renewed Motion for
`Joinder, Gillette 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) Gillette’s Petition is substantively identical to TSMC’s Petition filed in
`IPR2014-00861 (id. at 6); (3) Gillette agrees to consolidated filings and
`discovery (id. at 6–7); (4) joinder would not affect the schedule in
`IPR2014-00861 (id. at 7); (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
`
`
`
`
`
`
`
`IPR2014-01003
`Patent 6,806,652 B1
`
`
`We agree that the substantive issues in IPR2014-00861 would not be
`affected by joinder, because Gillette’s Petition is substantively identical to
`TSMC’s Petition filed in IPR2014-00861. Notably, Gillette’s Petition
`asserts identical grounds of unpatentability, challenging the same claims of
`the ’652 patent. Compare Pet. 20–60, with IPR2014-00861, Paper 2 (“’861
`Pet.”), 20–60. Gillette also submits identical claim constructions, as well as
`the same Declaration of Dr. Uwe Kortshagen. Compare Pet. 11–12, with
`’861 Pet. 13–15; compare Ex. 1102, with ’861, Ex. 1102. Moreover, we
`institute the instant trial based on the same grounds for which we instituted
`trial in IPR2014-00861. Therefore, Gillette’s Petition raises no new issues
`beyond those already before us in IPR2014-00861.
`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 18–34 of the ’652 patent is more efficient than
`conducting multiple proceedings, eliminating duplicate filings and
`discovery. Gillette agrees to consolidated filings for all substantive papers.
`Mot. 6–7. Gillette indicates that it will not file any paper with arguments
`different from those advanced by the consolidated filings, eliminating
`duplicate briefing. Id. at 6. Gillette further agrees to consolidated
`discovery, as each Petitioner proffers the same Declaration of
`Dr. Kortshagen. Id. at 7. Gillette indicates that Petitioners, 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,
`
` 4
`
`
`
`
`
`
`
`IPR2014-01003
`Patent 6,806,652 B1
`
`
`within the timeframe normally allotted by the rules for one party. Id.
`Moreover, joinder will not require any change to the trial schedule in
`IPR2014-00861, allowing the trial still to be completed within one year. Id.
`at 7. Given that Gillette’s Petition raises no new issues, and Petitioners
`agree to consolidated filings and discovery, the impact of joinder on
`IPR2014-00861 will be minimal, and joinder will streamline the
`proceedings, reducing the costs and burdens on the parties and the Board.
`For the foregoing reasons, Gillette has met its burden of
`demonstrating that joinder of the instant proceeding with IPR2014-00861 is
`warranted under the circumstances.
`
`ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED that Gillette’s Motion for Joinder with IPR2014-00861 is
`granted;
`FURTHER ORDERED that the instant proceeding is joined with
`IPR2014-00861;
`FURTHER ORDERED that the grounds of unpatentability on which a
`trial was instituted in IPR2014-00861 are unchanged;
`FURTHER ORDERED that the Scheduling Order for IPR2014-00861
`shall govern the joined proceeding; an initial conference call will be held on
`January 12, 2015 at 2:00 pm 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 IPR2014-00861;
`
` 5
`
`
`
`
`
`
`
`IPR2014-01003
`Patent 6,806,652 B1
`
`
`FURTHER ORDERED that, throughout IPR2014-00861, Petitioners
`(TSMC, Fujitsu, and Gillette) 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;
`
`
`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
`
`
`
`
`
`
`
`IPR2014-01003
`Patent 6,806,652 B1
`
`
`FURTHER ORDERED that the case caption in IPR2014-00861 shall
`be changed to reflect the joinder with the instant proceeding in accordance
`with the attached example; and
`FURTHER ORDERED that a copy of this Decision be entered into
`the file of IPR2014-00861.
`
`
` 7
`
`
`
`
`
`
`
`IPR2014-01003
`Patent 6,806,652 B1
`
`
`PETITIONER:
`
`Michael A. Diener
`Larissa Bifano Park
`WILMER, CUTLER, PICKERING, HALE AND DORR, LLP
`Michael.Diener@wilmerhale.com
`Larissa.Park@wilmerhale.com
`
`
`
`PATENT OWNER:
`
`Tarek Fahmi
`Tarek.fahmi@ascendalaw.com
`
`Gregory J. Gonsalves
`gonsalves@gonsalveslawfirm.com
`
`
`
`
`
`
`
` 8
`
`
`
`
`
`
`
`IPR2014-01003
`Patent 6,806,652 B1
`
`
`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.,
`THE GILLETTE COMPANY,
`Petitioners,
`
`v.
`
`ZOND, LLC,
`Patent Owner.
`____________
`
`Case IPR2014-008612
`Patent 8,806,652 B1
`____________
`
`
`
`
`
`2 Cases IPR2014-00864 and IPR2014-01003 have been joined with the
`instant proceeding.
`
` 9
`
`
`
`
`
`
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