Paper 13
`Trials@uspto.gov
`571-272-7822
`
` Entered: October 2, 2014
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`FUJITSU SEMICONDUCTOR LIMITED and
`FUJITSU SEMICONDUCTOR AMERICA, INC.,
`Petitioners,
`v.
`
`ZOND, LLC,
`Patent Owner.
`____________
`
`Case IPR2014-00845
`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
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`
`
`Trials@uspto.gov
`571-272-7822
`
` Entered: October 2, 2014
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`FUJITSU SEMICONDUCTOR LIMITED and
`FUJITSU SEMICONDUCTOR AMERICA, INC.,
`Petitioners,
`v.
`
`ZOND, LLC,
`Patent Owner.
`____________
`
`Case IPR2014-00845
`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
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`
`
`
`IPR2014-00845
`Patent 7,147,759 B2
`
`
`
`
`
`
`I. INTRODUCTION
`Fujitsu Semiconductor Limited and Fujitsu Semiconductor America,
`Inc. (collectively, “Fujitsu”) filed a Petition requesting an inter partes
`review of claims 20, 21, 34–36, 38, 39, 47, and 49 of U.S. Patent No.
`7,147,759 B2 (Ex. 1201, “the ’759 patent”). Paper 1 (“Pet.”). Zond, LLC
`(“Zond”), filed a Preliminary Response. Paper 7 (“Prelim. Resp.”).
`We have jurisdiction under 35 U.S.C. § 314. The standard for
`instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which
`provides:
`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.
`Upon consideration of the Petition and Preliminary Response, we
`conclude that the information presented in the Petition demonstrates that
`there is a reasonable likelihood that Fujitsu would prevail in challenging
`claims 20, 21, 34–36, 38, 39, 47, and 49 as unpatentable under 35 U.S.C.
`§ 103(a). Pursuant to 35 U.S.C. § 314, we hereby authorize an inter partes
`review to be instituted as to claims 20, 21, 34–36, 38, 39, 47, and 49 of the
`’759 patent.
`
`A. Related District Court Proceedings
`
`Fujitsu indicates that the ’759 patent was asserted in Zond, LLC v.
`
`Fujitsu, No.1:13-cv-11634-WGY (D. Mass.). Pet. 1. Fujitsu also identifies
`other proceedings in which Zond asserted the ’759 patent. Id.
`
`
`
`
`2
`
`
`
`IPR2014-00845
`Patent 7,147,759 B2
`
`
`
`
`
`
`B. Related Inter Partes Reviews
`
`The following Petitions for inter partes review also challenge the
`same claims based on the same grounds of unpatentability as those in the
`instant proceeding: Intel Corp. v. Zond, LLC., Case IPR2014-00445;
`Taiwan Semiconductor Manuf. Co., Ltd. v. Zond, LLC.,
`Case IPR2014-00781; The Gillette Co. v Zond, LLC, Case IPR2014-00985;
`and Advanced Micro Devices, Inc. v. Zond, LLC, Case IPR2014-01047.
`In each of IPR2014-00445 and IPR2014-00781, we instituted an inter
`partes review of claims 20, 21, 34–36, 38, 39, 47, and 49 of the ’759 patent,
`based on the following grounds of unpatentability (see, e.g.,
`IPR2014-00781, Paper 13, “’781 Dec.”):
`
`Claims
`20, 21, 34, 36, 47
`35
`38
`39
`
`49
`
`References
`Basis
`§ 103 Wang and Kudryavtsev
`§ 103 Wang, Kudryavtsev, and Li
`§ 103 Wang, Kudryavtsev, and Yamaguchi
`§ 103 Wang, Kudryavtsev, and Müller-Horsche
`§ 103 Wang, Kudryavtsev, and the Mozgrin
`Thesis
`
`
`
`
`
`In IPR2014-00445, we terminated the proceeding in light of the
`Written Settlement Agreement, made in connection with the termination of
`the proceeding in accordance with 35 U.S.C. § 317(b) and 37 C.F.R.
`§ 42.74(b), between Intel and Zond. IPR2014-00445, Papers 14, 15;
`IPR2014-00443, Ex. 1035.
`Fujitsu filed a revised Motion for Joinder with IPR2014-00781.
`Paper 11. In a separate decision, we grant Fujitsu’s revised Motion for
`3
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`IPR2014-00845
`Patent 7,147,759 B2
`
`
`
`
`
`
`Joinder, joining the instant proceeding with IPR2014-00781, and terminating
`the instant proceeding.
`
`
`C. Prior Art Relied Upon
`
`Fujitsu relies upon the following prior art references:
`Wang
`
`
`US 6,413,382 B1
` July 2, 2002
`Müller-Horsche
`US 5,247,531
` Sep. 21, 1993
`Yamaguchi
`
`EP 1 113 088 A1
` July 4, 2001
`
`(Ex. 1205)
`(Ex. 1221)
`(Ex. 1222)
`
`D.V. Mozgrin, et al., High-Current Low-Pressure Quasi-Stationary
`Discharge in a Magnetic Field: Experimental Research, 21 PLASMA
`PHYSICS REPORTS 400–409 (1995) (Ex. 1203, “Mozgrin”).
`
`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. 1204, “Kudryavtsev”).
`
`D.V. Mozgrin, High-Current Low-Pressure Quasi-Stationary
`Discharge in a Magnetic Field: Experimental Research, Thesis at Moscow
`Engineering Physics Institute (1994) (Ex. 1218, “Mozgrin Thesis”).1
`Li et al., Low-Temperature Magnetron Sputter-Deposition, Hardness,
`and Electrical Resistivity of Amorphous and Crystalline Alumina Thin
`Films, 18 J. VAC. SCI. TECH. A 2333–38 (2000) (Ex. 1220, “Li”).
`
`
`
`
`
`
`
`
`
`1 The Mozgrin Thesis is a Russian-language reference. The citations to the
`Mozgrin Thesis are to the certified English-language translation (Ex. 1217).
`
`
`
`
`4
`
`
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`IPR2014-00845
`Patent 7,147,759 B2
`
`
`
`
`
`
`D. Asserted Grounds of Unpatentability
`Fujitsu asserts the following grounds of unpatentability:
`
`Claims
`
`20, 34
`21, 47, 49
`34–36
`38
`39
`20, 21, 34,
`36, 47
`35
`38
`39
`49
`
`
`
`Basis
`
`§ 103
`§ 103
`§ 103
`§ 103
`§ 103
`
`§ 103
`
`§ 103
`§ 103
`§ 103
`§ 103
`
`References
`
`Mozgrin and Kudryavtsev
`Mozgrin, Kudryavtsev, and the Mozgrin Thesis
`Mozgrin, Kudryavtsev, and Li
`Mozgrin, Kudryavtsev, and Yamaguchi
`Mozgrin, Kudryavtsev, and Müller-Horsche
`
`Wang and Kudryavtsev
`
`Wang, Kudryavtsev, and Li
`Wang, Kudryavtsev, and Yamaguchi
`Wang, Kudryavtsev, and Müller-Horsche
`Wang, Kudryavtsev, and the Mozgrin Thesis
`
`II. ANALYSIS
`
`A. Printed Publication under 35 U.S.C. § 102
`
`In its Petition, Fujitsu makes the same assertion that TSMC made in
`IPR2014-00781 concerning the Mozgrin Thesis—namely, the Mozgrin
`Thesis is a doctoral thesis at Moscow Engineering Physics Institute,
`published in 1994, and it is prior art under 35 U.S.C. § 102(b). Compare
`Pet. 4, with ’781 Pet. 4. Fujitsu also proffers the same catalog entry for the
`Mozgrin Thesis at the Russian State Library. Compare Ex. 1219, with
`IPR2014-00781, Ex. 1219.
`
`
`
`5
`
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`IPR2014-00845
`Patent 7,147,759 B2
`
`
`
`
`
`
`In its Preliminary Response, Zond makes the same arguments that it
`made in IPR2014-00781 concerning the Mozgrin Thesis not being a prior art
`printed publication under 35 U.S.C. § 102. Compare Prelim. Resp. 56–58,
`with IPR2014-00781, Paper 11 (“’781 Prelim. Resp.”), 56–58.
`We incorporate our previous analysis regarding this issue (’781
`Dec. 6–8), and determine that Fujitsu has shown sufficiently at this stage of
`the proceeding that the Mozgrin Thesis is a “printed publication” within the
`meaning of 35 U.S.C. § 102(b). Consequently, the Mozgrin Thesis is
`available as prior art for the purposes of this decision to demonstrate that the
`challenged claims are unpatentable under 35 U.S.C. § 103(a).
`
`
`B. Claim Construction
`
`The parties make the same claim interpretation arguments that TSMC
`and Zond made in IPR2014-00781. Compare Pet. 16–19, with ’781 Pet. 16–
`19; compare Prelim. Resp. 16–21, with ’781 Prelim. Resp. 16–21.
`We construed the claim terms identified by TSMC and Zond in
`IPR2014-00781. See ’781 Dec. 8–12. For the purposes of the instant
`decision, we incorporate our previous analysis and apply those claim
`constructions here.
`
`
`C. Obviousness over Wang in Combination with Other Cited
`Prior Art References
`In its Petition, Fujitsu asserts the same five grounds of unpatentability
`based on various combinations of Wang, Kudryavtsev, Li, Yamaguch,
`Müller-Horsche, and the Mozgrin Thesis, as those on which a trial was
`instituted in IPR2014-00781. See Pet. 43–60; ’781 Dec. 29. Fujitsu’s
`6
`
`
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`IPR2014-00845
`Patent 7,147,759 B2
`
`
`
`
`
`
`arguments are substantively identical to the arguments made by TSMC in
`IPR2014-00781. Compare Pet. 43–60, with ’781 Pet. 43–60. Fujitsu also
`proffers the same Declaration of Dr. Uwe Kortshagen that TSMC submitted
`in support of its Petition. Compare Ex. 1202, with IPR2014-00781
`Ex. 1202. Zond’s arguments in the Preliminary Response are essentially
`identical to those arguments that it made in IPR2014-00781. Compare
`Prelim. Resp. 21–51, with ’781 Prelim. Resp. 21–51.
`We incorporate our previous analysis regarding the five asserted
`grounds of unpatentability based on various combinations of Wang and
`other cited prior art references (’781 Dec. 13–27), and determine that Fujitsu
`has demonstrated a reasonable likelihood of prevailing on those five grounds
`of unpatentability.
`
`
`D. Other Asserted Grounds of Unpatentability
`
`Fujitsu also asserts the following grounds of unpatentability:
`
`Claims
`20, 34
`21, 47, 49
`34–36
`38
`39
`
`Basis
`§ 103
`§ 103
`§ 103
`§ 103
`§ 103
`
`References
`Mozgrin and Kudryavtsev
`Mozgrin, Kudryavtsev, and the Mozgrin Thesis
`Mozgrin, Kudryavtsev, and Li
`Mozgrin, Kudryavtsev, and Yamaguchi
`Mozgrin, Kudryavtsev, and Müller-Horsche
`
`
`
`The Board’s rules for inter partes review proceedings, including those
`pertaining to institution, are “construed to secure the just, speedy, and
`inexpensive resolution of every proceeding.” 37 C.F.R. § 42.1(b); see also
`35 U.S.C. § 316(b) (regulations for inter partes review proceedings take into
`
`
`
`7
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`IPR2014-00845
`Patent 7,147,759 B2
`
`
`
`
`
`
`account “the efficient administration of the Office” and “the ability of the
`Office to timely complete [instituted] proceedings”). Therefore, we exercise
`our discretion and do not institute a review based on these other asserted
`grounds for reasons of administrative necessity to ensure timely completion
`of the instituted proceeding. See 37 C.F.R. § 42.108(a).
`
`
`III. CONCLUSION
`For the foregoing reasons, we determine that the information
`presented in the Petition shows that there is a reasonable likelihood that
`Fujitsu would prevail in challenging claims 20, 21, 34–36, 38, 39, 47, and 49
`of the ’759 patent as unpatentable under 35 U.S.C. § 103(a). At this stage in
`the proceeding, we have not made a final determination with respect to the
`patentability of the challenged claims, including the claim construction.
`
`
`
`IV. ORDER
`For the foregoing reasons, it is:
`ORDERED that pursuant to 35 U.S.C. § 314(a), an inter partes
`review is hereby instituted for the following grounds of unpatentability:
`
`Basis References
`Claims
`20, 21, 34, 36, 47 § 103 Wang and Kudryavtsev
`35
`§ 103 Wang, Kudryavtsev, and Li
`38
`§ 103 Wang, Kudryavtsev, and Yamaguchi
`39
`§ 103 Wang, Kudryavtsev, and Müller-Horsche
`49
`§ 103 Wang, Kudryavtsev, and the Mozgrin Thesis
`
`FURTHER ORDERED that no other ground of unpatentability
`asserted in the Petition is authorized for this inter partes review; and
`8
`
`
`
`
`
`
`
`IPR2014-00845
`Patent 7,147,759 B2
`
`
`
`
`
`
`FURTHER ORDERED that 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; the trial
`will commence on the entry date of this decision.
`
`
`
`
`
`
`
`
`9
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`IPR2014-00845
`Patent 7,147,759 B2
`
`
`
`
`
`
`For PETITIONER:
`David McCombs
`david.mccombs.ipr@haynesboone.com
`
`David M. O’Dell
`david.odell.ipr@haynesboone.com
`
`Richard C. Kim
`rckim@duanemorris.com
`
`
`PATENT OWNER:
`
`Gregory J. Gonsalves
`gonsalves@gonsalveslawfirm.com
`
`Bruce J. Barker
`bbarker@chsblaw.com
`
`
`
`
`
`
`10
`
`
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