`Trials@uspto.gov
`571-272-7822
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` Entered: October 15, 2014
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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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`FUJITSU SEMICONDUCTOR LIMITED and
`FUJITSU SEMICONDUCTOR AMERICA, INC.,
`Petitioner,
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`v.
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`ZOND, LLC,
`Patent Owner.
`____________
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`Case IPR2014-00846
`Patent 7,604,716 B2
`____________
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`Before KEVIN F. TURNER, DEBRA K. STEPHENS, JONI Y. CHANG,
`SUSAN L.C. MITCHELL, and JENNIFER M. MEYER,
`Administrative Patent Judges.
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`MEYER, Administrative Patent Judge.
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`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
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`IPR2014-00846
`Patent 7,604,716 B2
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`I. INTRODUCTION
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`Fujitsu Semiconductor Limited and Fujitsu Semiconductor America,
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`Inc. (collectively, “Fujitsu”) filed a Petition requesting inter partes review of
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`claims 14–18 and 25–32 (“the challenged claims”) of U.S. Patent No.
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`7,604,716 B2 (Ex. 1201, “the ’716 patent”). Paper 1 (“Pet.”). Zond, LLC
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`(“Zond”) timely filed a Preliminary Response. Paper 8 (“Prelim. Resp.”).
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`We have jurisdiction under 35 U.S.C. § 314, which provides that an inter
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`partes review may not be instituted “unless . . . there is a reasonable
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`likelihood that the petitioner would prevail with respect to at least 1 of the
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`claims challenged in the petition.” 35 U.S.C. § 314(a).
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`Upon consideration of the information presented in the Petition and
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`the Preliminary Response, we determine that there is a reasonable likelihood
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`that Petitioner would prevail in challenging claims 14–18 and 25–32.
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`Accordingly, pursuant to 35 U.S.C. § 314, we authorize an inter partes
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`review to be instituted as to the challenged claims.
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`A. Related District Court Proceedings
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`Fujitsu indicates that the ’716 patent was asserted in Zond, LLC v.
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`Fujitsu, No.1:13-cv-11634-WGY (D. Mass.). Pet. 2. Fujitsu also identifies
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`other proceedings in which Zond asserted the ’716 patent. Id. at 2–3.
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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 IPR2014-00522;
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`Taiwan Semiconductor Manuf. Co., v. Zond, LLC., Case IPR2014-00807;
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`IPR2014-00846
`Patent 7,604,716 B2
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`The Gillette Co. v Zond, LLC, Case IPR2014-00974; and Advanced Micro
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`Devices, Inc. v. Zond, LLC, Case IPR2014-01065.
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`In IPR2014-00522, 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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`filed by Intel and Zond in accordance with 35 U.S.C. § 317(b) and 37 C.F.R.
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`§ 42.74(b). IPR2014-00522, Paper 7; IPR2014-00520, Ex. 1023.
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`In IPR2014-00807, we instituted inter partes review of claims 14–18
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`and 25–32 of the ’716 patent, based on the following ground of
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`unpatentability:
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`Claims
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`Basis
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`References
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`14–18, 25–32
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`§ 103 Wang and Kudryavtsev
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`Fujitsu filed a revised Motion for Joinder with IPR2014-00807. Paper 9. In
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`a separate Decision, we grant Fujitsu’s revised Motion, joining the instant
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`proceeding with IPR2014-00807, and terminating the instant proceeding.
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`C. Prior Art Relied Upon
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`Fujitsu relies upon the following prior art references:
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`Wang
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`US 6,413,382 B1
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` July 2, 2002
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`(Ex. 1204)
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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 400–409 (1995) (Ex. 1203) (“Mozgrin”).
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`A.A. Kudryavtsev and V.N. Skerbov, Ionization Relaxation in a
`Plasma Produced by a Pulsed Inert-Gas Discharge, 28 SOV. PHYS. TECH.
`PHYS. 30–35 (Jan. 1983) (Ex. 1205) ( “Kudryavtsev”).
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`D. Asserted Grounds of Unpatentability
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`Fujitsu 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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`14–18, 25–32
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`§ 103
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`Mozgrin and Kudryavtsev
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`14–18, 25–32
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`§ 103
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`Wang and Kudryavtsev
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`II. ANALYSIS
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`A. Claim Construction
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`The parties make the same claim construction arguments that Taiwan
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`Semiconductor Manufacturing Company, Ltd. and TSMC North America
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`Corp. (collectively, “TSMC”) and Zond made in IPR2014-00807. Compare
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`Pet. 12–14, with ’807 Pet. 12–14; compare Prelim. Resp. 15–19, with ’807
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`Prelim. Resp. 15–20.
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`We construed several claim terms identified by TSMC and Zond in
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`IPR2014-00807. See ’807 Dec. 6–11. For the purposes of the instant
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`decision, we incorporate our previous analysis and apply those claim
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`constructions here.
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`B. Obviousness over Wang and Kudryavtsev
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`In its Petition, Fujitsu asserts the same ground of unpatentability
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`based on the combination of Wang and Kudryavtsev, as that on which a trial
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`was instituted in IPR2014-00807. See Pet. 40–59; ’807 Dec. 24. Fujitsu’s
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`arguments are substantively identical to the arguments made by TSMC in
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`IPR2014-00807. Compare Pet. 40–59, with ’807 Pet. 40–59. Fujitsu also
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`proffers the same Declaration of Dr. Uwe Kortshagen that TSMC submitted
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`in support of its Petition. Compare Ex. 1202, with IPR2014-00807
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`Ex. 1202. Zond’s arguments in the Preliminary Response are essentially
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`identical to those arguments that it made in IPR2014-00807. Compare
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`Prelim. Resp. 20–55, with ’807 Prelim. Resp. 20–55.
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`We incorporate our previous analysis regarding the asserted ground of
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`unpatentability based on the combination of Wang and Kudryavtsev (’807
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`Dec. 12–24), and determine that Fujitsu has demonstrated a reasonable
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`likelihood of prevailing on this ground of unpatentability.
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`C. Other Asserted Ground of Unpatentability
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`Fujitsu also asserts that claims 14–18 and 25–32 are unpatentable
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`under 35 U.S.C. § 103 as obvious over Mozgrin and Kudryavtsev. The
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`Board’s rules for inter partes review proceedings, including those pertaining
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`to institution, are “construed to secure the just, speedy, and inexpensive
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`resolution of every proceeding.” 37 C.F.R. § 42.1(b); see also 35 U.S.C.
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`§ 316(b) (regulations for inter partes review proceedings take into account
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`“the efficient administration of the Office” and “the ability of the Office to
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`timely complete [instituted] proceedings”). Therefore, we exercise our
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`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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`Fujitsu would prevail in challenging claims 14–18 and 25–32 of the ’716
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`patent as unpatentable under 35 U.S.C. § 103(a). At this stage in the
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`proceeding, we have not made a final determination with respect to the
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`patentability of the challenged claims.
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`Accordingly, 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 as to claims 14–18 and 25–32 as unpatentable
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`under 35 U.S.C. § 103 as obvious over Wang and Kudryavtsev;
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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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`Patent 7,604,716 B2
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`For PETITIONER:
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`David McCombs
`david.mccombs.ipr@haynesboone.com
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`David M. O’Dell
`david.odell.ipr@haynesboone.com
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`Richard C. Kim
`rckim@duanemorris.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
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