Paper 14
`Trials@uspto.gov
`571-272-7822
`
` Entered: November 18, 2014
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`THE GILLETTE COMPANY,
`Petitioner,
`v.
`
`ZOND, LLC,
`Patent Owner.
`____________
`
`Cases IPR2014-01019
`Patent 6,805,779 B2
`____________
`
`
`
`
`Before KEVIN F. TURNER, DEBRA K. STEPHENS, 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
`____________
`
`THE GILLETTE COMPANY,
`Petitioner,
`v.
`
`ZOND, LLC,
`Patent Owner.
`____________
`
`Cases IPR2014-01019
`Patent 6,805,779 B2
`____________
`
`
`
`
`Before KEVIN F. TURNER, DEBRA K. STEPHENS, 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
`
`
`
`
`
`
`
`IPR2014-01019
`Patent 6,805,779 B2
`
`
`
`
`
`
`INTRODUCTION
`The Gillette Company (“Gillette”) filed a Petition requesting an inter
`partes review of U.S. Patent 6,805,779 B2 (Ex. 1101, “the ’779 patent”).
`Paper 3 (“Pet.”). Pursuant to 37 C.F.R. § 42.122(b), Gillette also filed a
`revised Motion for Joinder with GLOBALFOUNDRIES U.S., Inc. v. Zond,
`LLC, Case IPR2014-01076 (PTAB) (“IPR2014-01076”). Paper 11 (“Mot.”).
`GlobalFoundries does not oppose Gillette’s request for joinder.
`Mot. 1. Patent Owner Zond, LLC (“Zond”) filed a Preliminary Response to
`the Petition (Paper 9, “Prelim. Resp.”) and an Opposition to Gillette’s
`revised Motion for Joinder (Paper 12, “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 IPR2014-01076. For the
`reasons set forth below, Gillette’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. 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.
`
`
`
`2
`
`
`
`IPR2014-01019
`Patent 6,805,779 B2
`
`
`
`
`
`
`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 revised 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 GlobalFoundries’s Petition
`filed in IPR2014-01076 (id. at 5–6); (3) Gillette agrees to consolidated
`filings and discovery (id. at 6–7); (4) joinder would not affect the schedule
`in IPR2014-01076 (id. at 7); 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).
`We agree that the substantive issues in IPR2014-01076 would not be
`affected by joinder, because Gillette’s Petition is substantively identical to
`the Petition filed in IPR2014-01076. Notably, Gillette’s Petition asserts
`identical grounds of unpatentability, challenging the same claims of the ’779
`patent. Compare Pet. 18–60, with IPR2014-01076, Paper 2 (“’1076 Pet.”),
`18–60. Gillette also submits identical claim construction arguments, as well
`as the same Declaration of Dr. Uwe Kortshagen. Compare Pet. 17–18, with
`’1076 Pet. 17–18; compare Ex. 1102, with ’1076 Ex. 1102. More
`3
`
`
`
`
`
`IPR2014-01019
`Patent 6,805,779 B2
`
`
`
`
`
`
`importantly, we institute the instant trial based on the same grounds for
`which we instituted trial in IPR2014-01076. Therefore, Gillette’s Petition
`raises no new issues beyond those already before us in IPR2014-01076.
`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 5, 6, 8, 19, 22, 23, and 43 of the ’779 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 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 allotted by
`the rules for one party. Id. Moreover, joinder will not require any change to
`the trial schedule in IPR2014-01076, allowing the trial still to be completed
`within one year. Id. Given that Gillette’s Petition raises no new issues, and
`Petitioners agree to consolidated filings and discovery, the impact of joinder
`on IPR2014-01076 will be minimal, and joinder will streamline the
`proceedings, reducing the costs and burdens on the parties and the Board.
`
`
`
`4
`
`
`
`IPR2014-01019
`Patent 6,805,779 B2
`
`
`
`
`
`
`For the foregoing reasons, Gillette has met its burden of
`demonstrating that joinder of the instant proceeding with IPR2014-01076 is
`warranted under the circumstances.
`
`ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED that Gillette’s Motion for Joinder with IPR2014-01076 is
`granted;
`FURTHER ORDERED that the instant proceeding is joined with
`IPR2014-01076;
`FURTHER ORDERED that the grounds of unpatentability on which a
`trial was instituted in IPR2014-01076 are unchanged;
`FURTHER ORDERED that the Scheduling Order for IPR2014-01076
`(Paper 12) 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 IPR2014-01076;
`FURTHER ORDERED that, throughout IPR2014-01076, Petitioners
`(GlobalFoundries and Gillette) will file papers, except for motions which do
`not involve the other parties, as consolidated filings1; GlobalFoundries 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.
`
`
`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
`
`
`
`
`
`IPR2014-01019
`Patent 6,805,779 B2
`
`
`
`
`
`
`§ 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 IPR2014-01076 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 IPR2014-01076.
`
`
`
`
`6
`
`
`
`IPR2014-01019
`Patent 6,805,779 B2
`
`
`
`
`
`
`For PETITIONER:
`
`Michael Diener
`Larissa Park
`WILMER, CUTLER, PICKERING, HALE AND DORR, LLP
`michael.diener@wilmerhale.com
`larissa.park@wilmerhale.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
`____________
`
`
`
`GLOBAL FOUNDRIES U.S., INC., GLOBALFOUNDRIES DRESDEN
`MODULE ONE LLC & CO. KG, GLOBALFOUNDRIES DRESDEN
`MODULE TWO LLC & CO. KG, and
`THE GILLETTE COMPANY
`Petitioners,
`
`v.
`
`ZOND, LLC,
`Patent Owner.
`____________
`
`Case IPR2014-010761
`Patent 7,147,779 B2
`____________
`
`
`
`
`
`
`1 Case IPR2014-001019 has been joined with the instant proceeding.
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
