Paper 13
`Trials@uspto.gov
`571-272-7822
`
` Entered: October 23, 2014
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ADVANCED MICRO DEVICES, INC., RENESAS ELECTRONICS
`CORPORATION, RENESAS ELECTRONICS AMERICA, INC.,
`GLOBALFOUNDRIES U.S., INC., GLOBALFOUNDRIES DRESDEN
`MODULE ONE LLC & CO. KG, GLOBALFOUNDRIES DRESDEN
`MODULE TWO LLC & CO. KG, TOSHIBA AMERICA ELECTRONIC
`COMPONENTS, INC., TOSHIBA AMERICA INC., TOSHIBA
`AMERICA INFORMATION SYSTEMS, INC., and
`TOSHIBA CORPORATION,
`Petitioners,
`v.
`
`ZOND, LLC,
`Patent Owner.
`____________
`
`Case IPR2014-01057
`Patent 6,853,142 B2
`____________
`
`
`
`Before KEVIN F. TURNER, DEBRA K. STEPHENS, JONI Y. CHANG,
`SUSAN L.C. MITCHELL, and JENNIFER M. MEYER,
`Administrative Patent Judges.
`
`TURNER, Administrative Patent Judge.
`
`
`DECISION
`Granting Revised Motion for Joinder
`37 C.F.R. § 42.122
`
`
`
`
`
`Trials@uspto.gov
`571-272-7822
`
` Entered: October 23, 2014
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ADVANCED MICRO DEVICES, INC., RENESAS ELECTRONICS
`CORPORATION, RENESAS ELECTRONICS AMERICA, INC.,
`GLOBALFOUNDRIES U.S., INC., GLOBALFOUNDRIES DRESDEN
`MODULE ONE LLC & CO. KG, GLOBALFOUNDRIES DRESDEN
`MODULE TWO LLC & CO. KG, TOSHIBA AMERICA ELECTRONIC
`COMPONENTS, INC., TOSHIBA AMERICA INC., TOSHIBA
`AMERICA INFORMATION SYSTEMS, INC., and
`TOSHIBA CORPORATION,
`Petitioners,
`v.
`
`ZOND, LLC,
`Patent Owner.
`____________
`
`Case IPR2014-01057
`Patent 6,853,142 B2
`____________
`
`
`
`Before KEVIN F. TURNER, DEBRA K. STEPHENS, JONI Y. CHANG,
`SUSAN L.C. MITCHELL, and JENNIFER M. MEYER,
`Administrative Patent Judges.
`
`TURNER, Administrative Patent Judge.
`
`
`DECISION
`Granting Revised Motion for Joinder
`37 C.F.R. § 42.122
`
`
`
`
`
`
`IPR2014-01057
`Patent 6,853,142 B2
`
`
`
`
`
`
`I. INTRODUCTION
`Petitioners (collectively, “AMD”) filed a Petition requesting inter
`partes review of claims 2, 11, 13, 14, and 16 of U.S. Patent No. 6,853,142
`B2 (“the ’142 Patent”). Paper 1 (“Pet.”). Pursuant to 37 C.F.R. § 42.122(b),
`AMD also filed a revised Motion for Joinder, seeking to join the instant
`proceeding with Taiwan Semiconductor Manuf. Co. v. Zond, LLC., Case
`IPR2014-00821 (PTAB) (“IPR2014-00821”). Paper 10 (“Mot.”).
`Taiwan Semiconductor Manufacturing Company, Ltd. and TSMC
`North America Corp. (collectively, “TSMC”), one of the Petitioners in
`IPR2014-00821, does not oppose AMD’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 AMD’s revised
`Motion for Joinder (Paper 11, “Opp.”). In a separate decision, we institute
`inter partes review as to the same claims on the same ground of
`unpatentability for which we instituted trial in IPR2014-00821. For the
`reasons set forth below, AMD’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. See 35 U.S.C. § 315(c). 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
`
`
`
`2
`
`
`
`IPR2014-01057
`Patent 6,853,142 B2
`
`
`
`
`
`
`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, AMD 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, AMD 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. 7);
`(2) AMD’s Petition is substantively identical to TSMC’s Petition filed in
`IPR2014-00821 (id. at 7–8); (3) AMD agrees to consolidated filings and
`discovery (id. at 8–9); (4) joinder would not affect the schedule in
`IPR2014-00821 (id. at 9); (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 9–10).
`We agree that the substantive issues in IPR2014-00821 would not be
`affected by joinder, because AMD’s Petition is substantively identical to
`TSMC’s Petition filed in IPR2014-00821. Notably, AMD’s Petition asserts
`identical grounds of unpatentability, challenging the same claims of the ’142
`Patent. Compare Pet. 16–60, with IPR2014-00821, Paper 2 (“’821 Pet.”),
`15–60. AMD also submits identical proposed claim constructions, as well as
`the same Declaration of Dr. Uwe Kortshagen. Compare Pet. 14–16, with
`’821 Pet. 13–15; compare Ex. 1102, with ’821 Ex. 1102. Moreover, we
`institute the instant trial based on the same ground for which we instituted
`trial in IPR2014-00821. Therefore, AMD’s Petition raises no new issues
`beyond those already before us in IPR2014-00821.
`
`
`
`3
`
`
`
`IPR2014-01057
`Patent 6,853,142 B2
`
`
`
`
`
`
`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 2, 11, 13, 14, and 16 of the ’142 Patent is more
`efficient than conducting multiple proceedings, eliminating duplicate filings
`and discovery. As previously indicated, AMD agrees to consolidated filings
`for all substantive papers. Mot. 7. AMD further indicates that it will not file
`any paper with arguments separate from those advanced by the consolidated
`filings, eliminating duplicate briefing. Id. AMD further agrees to
`consolidated discovery, as each Petitioner proffers the same Declaration of
`Dr. Kortshagen. Id. at 8. AMD 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,
`within the timeframe normally allotted by the rules for one party. Id.
`Moreover, joinder will not require any change to the trial schedule in
`IPR2014-00821, allowing the trial still to be completed within one year. Id.
`at 9. Given that AMD’s Petition raises no new issues, and Petitioners agree
`to consolidated filings and discovery, the impact of joinder on IPR2014-
`00821 will be minimal, and joinder will streamline the proceedings,
`reducing the costs and burdens on the parties and the Board.
`For the foregoing reasons, AMD has met its burden of demonstrating
`that joinder of the instant proceeding with IPR2014-00821 is warranted
`under the circumstances.
`
`
`
`4
`
`
`
`IPR2014-01057
`Patent 6,853,142 B2
`
`
`
`
`ORDER
`
`
`
`Accordingly, it is:
`ORDERED that AMD’s Motion for Joinder with IPR2014-00821 is
`granted;
`FURTHER ORDERED that the instant proceeding is joined with
`IPR2014-00821;
`FURTHER ORDERED that the grounds of unpatentability on which a
`trial was instituted in IPR2014-00821 are unchanged;
`FURTHER ORDERED that the Scheduling Order for IPR2014-00821
`(Paper 10) shall govern the joined proceeding; the initial conference call for
`the joined proceeding is scheduled on November 25, 2014 at 3:00 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 IPR2014-00821;
`FURTHER ORDERED that, throughout IPR2014-00821, Petitioners
`(TSMC, Fujitsu, Gillette, and AMD) 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; no individual Petitioner will
`receive any additional pages in addition to the page limits set forth in
`37 C.F.R. § 42.24 for one party;
`
`
`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.
`5
`
`
`
`
`
`IPR2014-01057
`Patent 6,853,142 B2
`
`
`
`
`
`
`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 IPR2014-00821 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 IPR2014-00821.
`
`
`
`
`
`
`6
`
`
`
`
`
`IPR2014-01057
`Patent 6,853,142 B2
`
`
`
`
`
`
`For PETITIONER:
`John Feldhaus
`Pavan Agarwal
`Michael Houston
`FOLEY & LARDNER LLP
`jfeldhaus@foley.com
`pagarwal@foley.com
`mhouston@foley.com
`
`Brian M. Berliner
`Ryan K. Yagura
`Xin-Yi Zhou
`O’MELVENY & MYERS LLP
`bberliner@omm.com
`ryagura@omm.com
`vzhou@omm.com
`
`David M. Tennant
`WHITE & CASE LLP
`dtennant@whitecase.com
`
`Robinson Vu
`BAKER BOTTS LLP
`robinson.vu@bakerbotts.com
`
`
`
`For PATENT OWNER:
`
`Gregory Gonsalves
`THE GONSALVES LAW FIRM
`gonsalves@gonsalveslawfirm.com
`
`Bruce 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 CORP., FUJITSU SEMICONDUCTOR
`LIMITED, FUJITSU SEMICONDUCTOR AMERICA, INC., THE
`GILETTE COMPANY, ADVANCED MICRO DEVICES, INC.,
`RENESAS ELECTRONICS CORPORATION, RENESAS ELECTRONICS
`AMERICA, INC., GLOBALFOUNDRIES U.S., INC.,
`GLOBALFOUNDRIES DRESDEN MODULE ONE LLC & CO. KG,
`GLOBALFOUNDRIES DRESDEN MODULE TWO LLC & CO. KG,
`TOSHIBA AMERICA ELECTRONIC COMPONENTS, INC., TOSHIBA
`AMERICA INC., TOSHIBA AMERICA INFORMATION SYSTEMS,
`INC., and TOSHIBA CORPORATION
`Petitioner,
`
`v.
`
`ZOND, LLC,
`Patent Owner.
`____________
`
`Case IPR2014-008211
`Patent 6,853,142 B2
`____________
`
`
`
`
`1 Cases IPR2014-00863, IPR2014-01013, and IPR2014-01057 have been
`joined with the instant proceeding.
`
`
`
`
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