throbber
Trials@uspto.gov
`571-272-7822
`
`
`Paper No. 10
`Entered: August 8, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GLOBALFOUNDRIES U.S. INC.,
`Petitioner,
`
`v.
`
`GODO KAISHA IP BRIDGE 1,
`Patent Owner.
`____________
`
`Case IPR2017-00924
`Patent 6,197,696 B1
`____________
`
`
`Before JUSTIN T. ARBES, MICHAEL J. FITZPATRICK, and
`JENNIFER MEYER CHAGNON, Administrative Patent Judges.
`
`Opinion for the Board filed by Administrative Patent Judge CHAGNON.
`
`Opinion Concurring-in-Part, Dissenting-in-Part filed by Administrative
`Patent Judge FITZPATRICK.
`
`CHAGNON, Administrative Patent Judge.
`
`
`DECISION
`Granting Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`Granting Petitioner’s Motion for Joinder
`37 C.F.R. § 42.122
`
`
`
`
`
`

`

`IPR2017-00924
`Patent 6,197,696 B1
`
`
`I.
`
`INTRODUCTION
`GlobalFoundries U.S. Inc. (“Petitioner”) filed a Petition for inter
`partes review of claims 10 and 12 (“the challenged claims”) of U.S. Patent
`No. 6,197,696 B1 (Ex. 1001, “the ’696 patent”). Paper 1 (“Pet.”). Petitioner
`also filed a Motion for Joinder with Case IPR2016-01379 (“the -1379
`Case”). Paper 2 (“Mot.”). Godo Kaisha IP Bridge 1 (“Patent Owner”) filed
`an Opposition to Petitioner’s Motion for Joinder (Paper 7, “Opp.”) and a
`Preliminary Response (Paper 9, “Prelim. Resp.”). Petitioner filed a Reply to
`Patent Owner’s Opposition. Paper 8 (“Reply”).
`Pursuant to 35 U.S.C. § 314(a), the Director may not authorize an
`inter partes review unless the information in the petition and preliminary
`response “shows that there is a reasonable likelihood that the petitioner
`would prevail with respect to at least 1 of the claims challenged in the
`petition.” For the reasons that follow, we institute an inter partes review as
`to claims 10 and 12 of the ’696 patent, and grant Petitioner’s Motion for
`Joinder.
`
`A. Related Proceedings
`On July 12, 2016, Taiwan Semiconductor Manufacturing Company,
`Ltd. (“TSMC”) filed a petition in the -1379 Case requesting an inter partes
`review of the challenged claims of the ’696 patent. On January 18, 2017, we
`instituted an inter partes review. Taiwan Semiconductor Mfg. Co., Ltd. v.
`Godo Kaisha IP Bridge 1, Case IPR2016-01379 (PTAB Jan. 18, 2017)
`(Paper 11) (“-1379 Inst. Dec.”). Patent Owner filed its Patent Owner
`Response on April 14, 2017, and TSMC filed its Reply on July 21, 2017.
`
`
`
`2
`
`

`

`IPR2017-00924
`Patent 6,197,696 B1
`
`
`On February 13, 2017, Petitioner filed a petition in Case
`IPR2017-00883 requesting an inter partes review of the challenged claims
`based on the same asserted grounds as the petition in the -1379 Case, along
`with a Motion for Joinder. The petition listed Petitioner as the sole real
`party-in-interest. See IPR2017-00883, Paper 1, 65. Petitioner subsequently
`filed its Petition and Motion for Joinder in the instant proceeding on
`February 16, 2017, listing itself and GlobalFoundries, Inc. (Petitioner’s
`corporate parent) as real parties-in-interest. See Pet. 65. On April 25, 2017,
`we dismissed the petition in Case IPR2017-00883. See IPR2017-00883,
`Paper 9.
`
`B. The Applied References and Evidence
`Petitioner relies on the following references.
`Exhibit
`Reference
`Date
`U.S. Patent No. 6,140,226 (“Grill”)
`Oct. 31, 2000 Ex. 1005
`U.S. Patent No. 5,592,024 (“Aoyama”)
`Jan. 7, 1997
`Ex. 1018
`U.S. Patent No. 5,920,790 (“Wetzel”)
`July 6, 1999
`Ex. 1019
`
`Petitioner further relies on the Declaration of Bruce W. Smith, Ph.D.
`(Ex. 1002).
`
`C. The Asserted Grounds
`Petitioner sets forth its challenges to claims 10 and 12 as follows.
`Pet. 23–67.
`Reference(s)
`Grill and Wetzel
`Grill, Aoyama, and Wetzel
`
`Claim(s) Challenged
`10
`10, 12
`
`Basis
`§ 103
`§ 103
`
`
`
`3
`
`

`

`IPR2017-00924
`Patent 6,197,696 B1
`
`
`II. DISCUSSION
`A. The Petition
`Petitioner asserts the same grounds of unpatentability as those that we
`considered in the -1379 Case. See Pet. 23–67; -1379 Inst. Dec. 27–44.
`Further, Petitioner presents the same arguments as those made by TSMC in
`its petition in the -1379 Case. Compare Pet. generally, with
`IPR2016-01379, Paper 2 generally; see also Mot. 1 (Petitioner representing
`that the asserted grounds “are essentially the same”). Patent Owner’s
`Preliminary Response also presents the same arguments as those made in its
`preliminary response in the -1379 Case. Compare Prelim. Resp. generally,
`with IPR2016-01379, Paper 6 generally.
`We incorporate our previous analysis regarding the asserted grounds
`of unpatentability, and conclude, for the same reasons, that Petitioner has
`demonstrated a reasonable likelihood of prevailing on the ground
`challenging claims 10 and 12 under 35 U.S.C. § 103 as obvious in view of
`Grill, Aoyama, and Wetzel, but has not demonstrated a reasonable likelihood
`of prevailing on the ground challenging claim 10 under 35 U.S.C. § 103 as
`obvious in view of Grill and Wetzel. See -1379 Inst. Dec. 11–44.
`
`B. The Motion for Joinder
`The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat.
`284 (2011) (“AIA”), created administrative trial proceedings, including inter
`partes review, as an efficient, streamlined, and cost-effective alternative to
`district court litigation. 35 U.S.C. § 315(c) provides (emphasis added):
`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
`
`
`
`4
`
`

`

`IPR2017-00924
`Patent 6,197,696 B1
`
`
`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.
`“Any request for joinder must be filed, as a motion under § 42.22, no later
`than one month after the institution date of any inter partes review for which
`joinder is requested.” 37 C.F.R. § 42.122(b). Joinder may be authorized
`when warranted, but the decision to grant joinder is discretionary. See
`35 U.S.C. § 315(c); 37 C.F.R. § 42.122. The Board determines whether to
`grant joinder on a case-by-case basis, taking into account the particular facts
`of each case, substantive and procedural issues, and other considerations.
`See Sony Corp. of Am. v. Network-1 Security Solutions, Inc., Case
`IPR2013-00495, slip op. at 3 (PTAB Sept. 16, 2013) (Paper 13) (“Sony”).
`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).
`As the moving party, Petitioner has the burden of proof in establishing
`entitlement to the requested relief. 37 C.F.R. §§ 42.20(c), 42.122(b).
`A motion for joinder should (1) set forth the reasons why joinder is
`appropriate; (2) identify any new ground(s) of unpatentability asserted in the
`petition; and (3) explain what impact (if any) joinder would have on the trial
`schedule for the existing review. See Sony, at 3; Mot. 4–5. Petitioner
`should address specifically how briefing and/or discovery may be simplified
`to minimize schedule impact. See Kyocera Corp. v. SoftView LLC, Case
`IPR2013-00004, slip op. at 4 (PTAB Apr. 24, 2013) (Paper 15)
`(representative); Mot. 5.
`
`
`
`5
`
`

`

`IPR2017-00924
`Patent 6,197,696 B1
`
`
`1. Timeliness of the Motion for Joinder
`We instituted an inter partes review in the -1379 Case on January 18,
`2017, and Petitioner filed its Motion for Joinder in the instant proceeding on
`February 16, 2017. Thus, the Motion was filed within the one-month period
`set forth in 37 C.F.R. § 42.122(b).
`
`2. Substantive Issues
`Petitioner argues that joinder with the -1379 Case is appropriate
`because its asserted grounds and supporting evidence are “essentially the
`same” as in the -1379 Case. See Mot. 1; see Reply 2. Patent Owner does
`not dispute that the asserted grounds and evidence are identical to those on
`which a trial was instituted in the -1379 Case. Given the similarities in
`substantive issues between the instant proceeding and the -1379 Case, we
`conclude that the impact of joinder on the existing proceeding would be
`minimal.
`
`3. Procedural Issues
`Petitioner argues that because the asserted grounds and supporting
`evidence mirror what was presented in the -1379 Case, “joinder would not
`affect the pending schedule in [the -1379 Case] nor increase the complexity
`of that proceeding, minimizing costs.” Mot. 1. Petitioner further states that
`it “is willing to act as an ‘understudy’ to TSMC, only assuming an active
`role in the event TSMC settles with” Patent Owner. Id.; see Reply 2–3.
`Specifically, Petitioner
`proposes that as long as TSMC remains in the joined IPR,
`[Petitioner] agrees to remain in a circumscribed “understudy”
`role without a separate opportunity to actively participate.
`Thus, [Petitioner] will not file additional written submissions,
`
`
`
`6
`
`

`

`IPR2017-00924
`Patent 6,197,696 B1
`
`
`nor will [Petitioner] pose questions at depositions or argue at
`oral hearing without the prior permission of TSMC. Only in
`the event that TSMC settles will [Petitioner] seek to become
`active in the joined IPR.
`Mot. 5; see also Reply 3 (“Petitioner is willing to abide by such additional
`conditions as the Board deems appropriate.”). Because joinder would
`require no change to the existing trial schedule and Petitioner agrees to have
`only a limited “understudy” role if joined, the procedural impact of joinder
`on the -1379 Case would be minimal, which weighs in favor of joinder.
`Patent Owner argues that, if joinder is granted, we should impose
`additional conditions on Petitioner’s participation in the -1379 Case.
`Opp. 2–3. Much of what Patent Owner requests is already stated in
`Petitioner’s proposal above. We agree with Patent Owner, though, that
`given its “understudy” role, Petitioner should be permitted to file papers,
`engage in discovery, and participate in depositions and oral argument only
`after obtaining authorization from the Board, not TSMC. See id. Petitioner
`may request a conference call to obtain such authorization if necessary.
`
`4. Conclusion
`Based on all of the considerations above, we are persuaded that
`Petitioner has met its burden of demonstrating that joinder is warranted
`under the circumstances. Petitioner will have a limited role in the -1379
`Case, as set forth in the Order below. If at some point the -1379 Case is
`terminated with respect to TSMC, the role of any remaining party or parties
`in the proceeding will be reevaluated.
`
`
`
`7
`
`

`

`IPR2017-00924
`Patent 6,197,696 B1
`
`III. ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED that an inter partes review is instituted as to claims 10
`and 12 of the ’696 patent;
`FURTHER ORDERED that pursuant to 35 U.S.C. § 314(a), inter
`partes review of the ’696 patent is hereby instituted commencing on the
`entry date of this Decision, and pursuant to 35 U.S.C. § 314(c) and
`37 C.F.R. § 42.4, notice is hereby given of the institution of a trial;
`FURTHER ORDERED that the trial is limited to the following
`ground of unpatentability, and no other grounds are authorized: Claims 10
`and 12 under 35 U.S.C. § 103(a) as unpatentable over Grill, Aoyama, and
`Wetzel;
`FURTHER ORDERED that Petitioner’s Motion for Joinder with Case
`IPR2016-01379 is granted, and GlobalFoundries U.S. Inc. is joined as a
`party to Case IPR2016-01379;
`FURTHER ORDERED that Case IPR2017-00924 is instituted, joined,
`and terminated under 37 C.F.R. § 42.72, and all further filings in the joined
`proceeding shall be made in Case IPR2016-01379;
`FURTHER ORDERED that unless given prior authorization by the
`Board, Petitioner is not permitted to file papers, engage in discovery, or
`participate in any deposition or oral argument in Case IPR2016-01379.
`Petitioner, however, is permitted to appear in Case IPR2016-01379 so that it
`receives notification of filings and may attend depositions and oral
`
`
`
`8
`
`

`

`IPR2017-00924
`Patent 6,197,696 B1
`
`argument.1 Should Petitioner believe it necessary to take any further action,
`Petitioner should request a conference call to obtain authorization from the
`Board; and
`FURTHER ORDERED that a copy of this Decision be entered into
`the record of Case IPR2016-01379.
`
`
`1 Counsel for TSMC and Petitioner should refer to the Board’s website for
`information regarding filings in the Patent Trial and Appeal Board
`End-to-End (PTAB E2E) system.
`
`
`
`9
`
`

`

`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GLOBALFOUNDRIES U.S. INC.,
`Petitioner,
`
`v.
`
`GODO KAISHA IP BRIDGE 1,
`Patent Owner.
`____________
`
`Case IPR2017-00924
`Patent 6,197,696 B1
`____________
`
`
`
`FITZPATRICK, Administrative Patent Judge, concurring-in-part,
`dissenting-in-part.
`
`
`I concur with the majority’s decision to join GlobalFoundries U.S.
`Inc. (“Global”) as co-petitioner in the previously instituted inter partes
`review (Case IPR2016-01379). I dissent from the remainder of the
`majority’s decision, including the decision to grant the Motion for Joinder
`and to “institute[], join[], and terminate[]” Case IPR2017-00924.
`
`I. The Motion For Joinder Should Not Be Granted
`The Motion for Joinder seeks “joinder” of a Global-petitioned inter
`partes review with Case IPR2016-01379. Paper 2, 7 (“Global respectfully
`requests that its Petition for Inter Partes Review of U.S. Patent No.
`6,197,696 B1 be granted and that the proceedings be joined with Taiwan
`
` 1
`
`
`
`

`

`IPR2017-00924
`Patent 6,197,696 B1
`
`Semiconductor Manufacturing Company Limited (“TSMC”) v. Godo Kaisha
`IP Bridge 1, Case No. IPR2016-01379.”). But, the statutory sub-section
`under which Global seeks relief, 35 U.S.C. § 315(c), does not permit joining
`an inter partes review to another inter partes review. Id.; but cf. id. § 315(d)
`(referring to “consolidation” of a pending inter partes review and “another
`proceeding or matter involving the patent”). Section 315(c) refers to joining,
`rather, a “person” “as a party” to an instituted inter partes review. It states
`the following:
`(c) 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.
`35 U.S.C. § 315(c) (emphasis added). Hence, although I concur in the
`decision to join Global as co-petitioner in Case IPR2016-01379, I do not
`agree with the majority’s decision to grant the Motion for Joinder, which
`seeks relief not authorized by § 315(c) and not properly labeled “joinder.”
`
`II. The Petition Should Not be Granted
`Granting a petition for an additional inter partes review is not
`necessary to grant joinder. 35 U.S.C. § 315(c). As a prerequisite to joining
`a person as a party to an instituted inter partes review, the statute requires
`us—as the Director’s delegates2—to determine that the person to be joined
`has properly filed a petition that “warrants the institution of an inter partes
`
`2 Although § 325(d) refers only to determinations by “the Director,” the
`Director has delegated institution authority to the Board. See 37 C.F.R.
`§ 42.4(a).
`
`
`
`2
`
`

`

`IPR2017-00924
`Patent 6,197,696 B1
`
`review.” Granting the person’s petition (i.e., institution), however, is not a
`prerequisite to granting the person’s request for joinder.
`And, “a petition to institute an inter partes review” (35 U.S.C.
`§ 311(a)) is distinct from “a request for joinder” (35 U.S.C. § 315(b)). In
`fact, although “[a]n inter partes review may not be instituted if the petition
`requesting the proceeding is filed more than 1 year after the date on which
`the petitioner, real party in interest, or privy of the petitioner is served with a
`complaint alleging infringement of the patent,” that petitioner may still be
`joined to an instituted an inter partes review (if one exists) that was filed by
`a different petitioner. 35 U.S.C. § 315(b).
`As the majority notes supra, the Petition before us presents the same
`grounds of unpatentability as those that were previously presented to the
`Office in Case IPR2016-01379. I would deny the Petition under 35 U.S.C.
`§ 325(d). The majority implicitly recognizes that an additional inter partes
`review based on the Petition would be duplicative of Case IPR2016-01379
`and, thus, it terminates the inter partes review that it institutes. But, the
`majority does not explain the legal basis for terminating it. Clearly, Case
`IPR2017-00924 is not being terminated under 35 U.S.C. § 317. Nor is a
`final written decision being entered pursuant to 35 U.S.C. § 318.
`I concur with the majority’s decision to join Global as co-petitioner in
`Case IPR2016-01379, but I would not grant Global’s Motion for Joinder or
`its Petition.
`
`
`
`
`3
`
`

`

`
`
`
`PETITIONER:
`Christopher Carroll
`Shamita Etienne-Cummings
`WHITE & CASE, LLP
`christopher.carroll@whitecase.com
`setienne@whitecase.com
`
`PATENT OWNER:
`Andrew N. Thomases
`Jordan M. Rossen
`James L. Davis, Jr.
`ROPES & GRAY LLP
`andrew.thomases@ropesgray.com
`jordan.rossen@ropesgray.com
`james.l.davis@ropesgray.com
`
`J. Steven Baughman
`PAUL, WEISS, RIFKIND, WHARTON & GARRISON LLP
`sbaughman@paulweiss.com
`
`
`
`
`
`

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