`Trials@uspto.gov
`571-272-7822
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` Entered: October 10, 2014
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`
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`THE GILLETTE COMPANY,
`Petitioner,
`
`v.
`
`ZOND, LLC,
`Patent Owner.
`____________
`
`Cases IPR2014-00988
`Patent 7,147,759 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
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`IPR2014-00988
`Patent 7,147,759 B2
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`INTRODUCTION
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`The Gillette Company (“Gillette”) filed a Petition requesting an inter
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`partes review of claim 40 of U.S. Patent 7,147,759 B2 (Ex. 1001, “the ’759
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`patent”). Paper 3 (“Pet.”). Pursuant to 37 C.F.R. § 42.122(b), Gillette also
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`filed a revised Motion for Joinder with GLOBALFOUNDRIES U.S., Inc. v.
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`Zond, LLC., Case IPR2014-01083 (PTAB) (“IPR2014-01083”). Paper 10
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`(“Mot.”).
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`GlobalFoundries does not oppose Gillette’s request for joinder.
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`Mot. 1. Patent Owner, Zond, LLC (“Zond”), filed a Preliminary Response
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`to the Petition (Paper 7, “Prelim. Resp.”) and an Opposition to Gillette’s
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`revised Motion for Joinder (Paper 11, “Opp.”). In a separate decision,
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`entered concurrently, we institute an inter partes review as to the same claim
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`on the same ground of unpatentability for which we instituted trial in
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`IPR2014-01083. For the reasons set forth below, Gillette’s revised Motion
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`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. The statutory
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`provision governing joinder of inter partes review proceedings is
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`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
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`2
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`IPR2014-00988
`Patent 7,147,759 B2
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`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 GlobalFoundries’s Petition
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`filed in IPR2014-01083 (id. at 5–6); (3) Gillette agrees to consolidated
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`filings and discovery (id. at 6–7); (4) joinder would not affect the schedule
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`in IPR2014-01083 (id. at 7); (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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`We agree that the substantive issues in IPR2014-01083 would not be
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`affected by joinder, because Gillette’s Petition is substantively identical to
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`GlobalFoundries’s Petition filed in IPR2014-01083. Notably, Gillette’s
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`Petition asserts identical ground of unpatentability, challenging the same
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`claim of the ’759 patent. Compare Pet. 21–55, with IPR2014-01083,
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`3
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`IPR2014-00988
`Patent 7,147,759 B2
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`Paper 2 (“’1083 Pet.”), 20–54. Gillette also submits identical claim
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`constructions, as well as the same Declaration of Dr. Uwe Kortshagen.
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`Compare Pet. 15–21, with ’1083 Pet. 14–20; compare Ex. 1402, with ’1083
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`Ex. 1402. More importantly, we institute the instant trial based on the same
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`ground for which we instituted trial in IPR2014-01083. Therefore, Gillette’s
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`Petition raises no new issues beyond those already before us in
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`IPR2014-01083.
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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. Opp. 2–3.
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`We agree with the parties that conducting a single joined proceeding
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`for reviewing claim 40 of the ’759 patent is more efficient than conducting
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`multiple proceedings, eliminating duplicate filings and discovery. Gillette
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`agrees to consolidated filings for all substantive papers. Mot. 6–7. Gillette
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`indicates that it will not file any paper with arguments different from those
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`advanced by the consolidated filings, eliminating duplicate briefing. Id. at 6.
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`Gillette further agrees to consolidated discovery, as each Petitioner proffers
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`the same Declaration of Dr. Kortshagen. Id. at 7. Gillette indicates that
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`Petitioners of the joined proceeding collectively will designate an attorney to
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`conduct the cross-examination of any witnesses produced by Zond and the
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`redirect of any witnesses produced by Petitioners, within the timeframe
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`normally allotted by the rules for one party. Id. Moreover, joinder will not
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`require any change to the trial schedule in IPR2014-01083, allowing the trial
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`still to be completed within one year. Id. Given that Gillette’s Petition
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`raises no new issues, and Petitioners agree to consolidated filings and
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`discovery, the impact of joinder on IPR2014-01083 will be minimal, and
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`4
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`IPR2014-00988
`Patent 7,147,759 B2
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`joinder will streamline the proceedings, reducing the costs and burdens on
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`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 IPR2014-01083 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 IPR2014-01083 is
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`granted;
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`FURTHER ORDERED that the instant proceeding is joined with
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`IPR2014-01083;
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`FURTHER ORDERED that the ground of unpatentability on which a
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`trial was instituted in IPR2014-01083 are unchanged;
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`FURTHER ORDERED that the Scheduling Order for IPR2014-01083
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`(Paper 10) shall govern the joined proceeding; the initial conference call for
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`the joined proceeding is scheduled on October 27, 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 IPR2014-01083;
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`FURTHER ORDERED that, throughout IPR2014-01083, Petitioners
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`(GlobalFoundries and Gillette) will file papers, except for motions which do
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`not involve the other parties, as consolidated filings1; GlobalFoundries will
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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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`5
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`IPR2014-00988
`Patent 7,147,759 B2
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`identify 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;
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`no 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 IPR2014-01083 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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`FURTHER ORDERED that a copy of this Decision be entered into
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`the file of IPR2014-01083.
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`6
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`IPR2014-00988
`Patent 7,147,759 B2
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`For PETITIONER:
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`David Tennant
`Dohm Chankong
`White & Case LLP
`dtennant@whitecase.com
`dohm.chankong@whitecase.com
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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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`
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`For PATENT OWNER:
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`Gregory J. Gonsalves
`gonsalves@gonsalveslawfirm.com
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`Bruce J. Barker
`CHAO HADIDI STARK & BARKER LLP
`bbarker@chsblaw.com
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`7
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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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`
`
`
`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.
`____________
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`Case IPR2014-010831
`Patent 7,147,759 B2
`____________
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`1 Case IPR2014-00988 has been joined with the instant proceeding.