`Trials@uspto.gov
`571-272-7822
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` Entered: November 20, 2014
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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.
`____________
`
`Case IPR2014-01020
`Patent 6,805,779 B2
`____________
`
`
`
`
`Before KEVIN F. TURNER, JONI Y. CHANG, SUSAN L.C. MITCHELL,
`and JENNIFER M. MEYER, Administrative Patent Judges.
`
`
`CHANG, Administrative Patent Judge.
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
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`IPR2014-01020
`Patent 6,805,779 B2
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`I. INTRODUCTION
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`The Gillette Company (“Gillette”) filed a Petition requesting an inter
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`partes review of claims 16, 28, 41, 42, 45, and 46 of U.S. Patent No.
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`6,805,779 B2 (Ex. 1301, “the ’779 patent”). Paper 3 (“Pet.”). Zond, LLC
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`(“Zond”), filed a Preliminary Response. Paper 11 (“Prelim. Resp.”).
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`We have jurisdiction under 35 U.S.C. § 314. The standard for
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`instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which
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`provides:
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`THRESHOLD.—The Director may not authorize an inter
`partes review to be instituted unless the Director determines
`that the information presented in the petition filed under section
`311 and any response filed under section 313 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.
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`Upon consideration of the Petition and Preliminary Response, we
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`conclude that the information presented in the Petition demonstrates that
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`there is a reasonable likelihood that Gillette would prevail in challenging
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`claim 46 as unpatentable under 35 U.S.C. 102(b), and claims 16, 28, 41, 42,
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`and 45 as unpatentable under 35 U.S.C. § 103(a). Pursuant to 35 U.S.C.
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`§ 314, we hereby authorize an inter partes review to be instituted as to
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`claims 16, 28, 41, 42, 45, and 46 of the ’779 patent.
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`A. Related District Court Proceedings
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`Gillette indicates that the ’779 patent was asserted in Zond, LLC v.
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`Gillette, No.1:13-cv-11567-DJC (D. Mass.). Pet. 1. Gillette also identifies
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`other proceedings in which Zond asserted the ’779 patent. Id.
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`IPR2014-01020
`Patent 6,805,779 B2
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`B. Related Inter Partes Reviews
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`The following Petitions for inter partes review also challenge the
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`same claims based on the same grounds of unpatentability as those in the
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`instant proceeding: Intel Corp. v. Zond, LLC, Case IPR2014-00820; Taiwan
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`Semiconductor Mfg. Co., Ltd. v. Zond, LLC, Case IPR2014-00829; Fujitsu
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`Semiconductor Ltd. v. Zond, LLC, Case IPR2014-00859; and Advanced
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`Micro Devices, Inc. v. Zond, LLC, Case IPR2014-01072.
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`In IPR2014-00820, we terminated the proceeding, prior to institution,
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`in light of the Joint Motion to Terminate and Written Settlement Agreement
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`made in connection with the termination of the proceeding in accordance
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`with 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(b) between Intel Corp. and
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`Zond. IPR2014-00820, Papers 6, 7; IPR2014-00598, Ex. 1013.
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`In each of IPR2014-0829, IPR2014-00859, and IPR2014-01072, we
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`instituted an inter partes review of claims 16, 28, 41, 42, 45, and 46 of the
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`’779 patent, based on the following grounds of unpatentability (see, e.g.,
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`IPR2014-00829, Paper 9 (“’829 Dec.”), 31):
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`Claims
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`Basis
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`References
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`46
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`§ 102(b)
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`Iwamura
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`16, 28, 41, 42, and 45 § 103(a)
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`Iwamura, Angelbeck, and Pinsley
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`We further joined IPR2014-00859 and IPR2014-01072 with IPR2014-
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`00829, and terminated both IPR2014-00859 and IPR2014-01072. See, e.g.,
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`IPR2014-00859, Paper 12.
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`Gillette filed a revised Motion for Joinder, seeking to join with
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`IPR2014-00829, and Zond filed an Opposition to Gillette’s Motion.
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`Patent 6,805,779 B2
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`Papers 9, 10. In a separate decision, we grant Gillette’s revised Motion for
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`Joinder, joining the instant proceeding with IPR2014-00829, and terminating
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`the instant proceeding. Once that Decision is entered, IPR2014-00829 will
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`be the only inter partes review pending before us for reviewing claims 16,
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`28, 41, 42, 45, and 46 of the ’779 patent.
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`C. Prior Art Relied Upon
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`Gillette relies upon the following prior art references:
`
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`Pinsley
`Angelbeck
`Iwamura
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`
`US 3,761,836
`US 3,514,714
`US 5,753,886
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`Sept. 25, 1973
`May 26, 1970
`May 19, 1998
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`(Ex. 1305)
`(Ex. 1306)
`(Ex. 1307)
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`D.V. Mozgrin, et al., High-Current Low-Pressure Quasi-Stationary
`Discharge in a Magnetic Field: Experimental Research, 21 PLASMA
`PHYSICS REPORTS, NO. 5, 400–409 (1995) (Ex. 1303, “Mozgrin”).
`
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`A. A. Kudryavtsev and V.N. Skrebov, Ionization Relaxation in a
`Plasma Produced by a Pulsed Inert-Gas Discharge, 28(1) SOV. PHYS.
`TECH. PHYS. 30–35 (1983) (Ex. 1304, “Kudryavtsev”).
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`Patent 6,805,779 B2
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`D. Asserted Grounds of Unpatentability
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`Gillette asserts the following grounds of unpatentability:
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`Claims
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`Basis
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`References
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`46
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`§ 102(b)
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`Iwamura
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`16, 28, 41, 42, 45 § 103(a)
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`Iwamura, Angelbeck, and Pinsley1
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`41
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`§ 103(a) Mozgrin, Kudryavtsev, and Pinsley
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`16, 28, 42, 45, 46 § 103(a)
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`Mozgrin, Kudryavtsev, Pinsley, and
`Iwamura
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`II. ANALYSIS
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`A. Claim Construction
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`Gillette makes the same claim interpretation arguments that TSMC
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`made in IPR2014-00829. Compare Pet. 18–19, with IPR2014-00829, Paper
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`2 (“’829 Pet.”), 19–20. We construed several claim terms in the Decision on
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`Institution for IPR2014-00829. See ’829 Dec. 6–13. For the purposes of the
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`instant decision, we incorporate our previous analysis and apply those claim
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`constructions here.
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`1 Pinsley is omitted inadvertently from the statement of this asserted ground
`of unpatentability, although included in the corresponding analysis. See
`Pet. 42, 44. Therefore, we treat the statement as harmless error and presume
`that Gillette intended to assert that claims 16, 28, 41, 42, and 45 are
`unpatentable under § 103(a) based on the combination of Iwamura,
`Angelbeck, and Pinsley.
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`B. Grounds of Unpatentability Based on Iwamura, alone or in
`Combination with Other Cited References
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`In its Petition, Gillette asserts the same grounds of unpatentability
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`based on Iwamura, alone or in combination with Angelbeck and Pinsley, as
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`those on which a trial was instituted in IPR2014-00829. See Pet. 42–60;
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`’829 Dec. 31. Gillette’s arguments are substantively identical to the
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`arguments made by TSMC in IPR2014-00829. Compare Pet. 42–60, with
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`’829 Pet. 41–60. Gillette also proffers the same Declaration of Dr. Uwe
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`Kortshagen that TSMC submitted in support of its Petition. Compare
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`Ex. 1302, with IPR2014-00829 Ex. 1302. Zond’s arguments in the
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`Preliminary Response are essentially identical to those arguments that it
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`made in IPR2014-00829. Compare Prelim. Resp. 19–54, with ’829 Prelim.
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`Resp. 19–54.
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`We incorporate our previous analysis regarding the asserted grounds
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`of unpatentability based on Iwamura, alone or in combination with
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`Angelbeck and Pinsley (’829 Dec. 13–30), and determine that Gillette has
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`demonstrated a reasonable likelihood of prevailing on those grounds of
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`unpatentability.
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`C. Other Asserted Grounds of Unpatentability
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`Gillette also asserts the following grounds of unpatentability:
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`Claims
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`41
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`Basis
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`References
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`§ 103(a) Mozgrin, Kudryavtsev, and Pinsley
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`16, 28, 42, 45, and 46
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`§ 103(a)
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`Mozgrin, Kudryavtsev, Pinsley, and
`Iwamura
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`The Board’s rules for inter partes review proceedings, including those
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`pertaining to institution, are “construed to secure the just, speedy, and
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`inexpensive resolution of every proceeding.” 37 C.F.R. § 42.1(b); see also
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`35 U.S.C. § 316(b) (regulations for inter partes review proceedings take into
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`account “the efficient administration of the Office” and “the ability of the
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`Office to timely complete [instituted] proceedings”). Therefore, we exercise
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`our discretion and do not institute a review based on these other asserted
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`grounds for reasons of administrative necessity to ensure timely completion
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`of the instituted proceeding. See 37 C.F.R. § 42.108(a).
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`III. CONCLUSION
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`For the foregoing reasons, we determine that the information
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`presented in the Petition shows that there is a reasonable likelihood that
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`Gillette would prevail in challenging claim 46 of the ’779 patent as
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`unpatentable under 35 U.S.C. § 102(b), and in challenging claims 16, 28, 41,
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`42, and 45 of the ’779 patent as unpatentable under 35 U.S.C. § 103(a).
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`At this stage in the proceeding, we have not made a final determination with
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`respect to the patentability of the challenged claims, including the claim
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`construction.
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`For the foregoing reasons, it is:
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`IV. ORDER
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`ORDERED that pursuant to 35 U.S.C. § 314(a), an inter partes
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`review is hereby instituted for the following grounds of unpatentability:
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`Claims
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`Basis
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`References
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`46
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`§ 102(b)
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`Iwamura
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`16, 28, 41, 42, and 45 § 103(a)
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`Iwamura, Angelbeck, and Pinsley
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`FURTHER ORDERED that no other ground of unpatentability
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`asserted in the Petition is authorized for this inter partes review; and
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`FURTHER ORDERED that pursuant to 35 U.S.C. § 314(c) and
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`37 C.F.R. § 42.4, notice is hereby given of the institution of a trial; the trial
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`will commence on the entry date of this decision.
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`IPR2014-01020
`Patent 6,805,779 B2
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`For PETITIONER:
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`Michael Diener
`michael.diener@wilmerhale.com
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`Larissa Park
`larissa.park@wilmerhale.com
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`PATENT OWNER:
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`Gregory J. Gonsalves
`gonsalves@gonsalveslawfirm.com
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`Bruce J. Barker
`bbarker@chsblaw.com