Paper 11
`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 IPR2014-00855
`Patent 7,808,184 B2
`____________
`
`
`
`
`Before KEVIN F. TURNER, DEBRA K. STEPHENS, JONI Y. CHANG,
`SUSAN L.C. MITCHELL, and JENNIFER M. MEYER,
`Administrative Patent Judges.
`
`
`MITCHELL, 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 IPR2014-00855
`Patent 7,808,184 B2
`____________
`
`
`
`
`Before KEVIN F. TURNER, DEBRA K. STEPHENS, JONI Y. CHANG,
`SUSAN L.C. MITCHELL, and JENNIFER M. MEYER,
`Administrative Patent Judges.
`
`
`MITCHELL, Administrative Patent Judge.
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`
`
`IPR2014-00855
`Patent 7,808,184 B2
`
`
`
`
`
`
`I. INTRODUCTION
`
`Fujitsu Semiconductor Limited and Fujitsu Semiconductor America,
`
`Inc. (collectively, “Fujitsu”) filed a Petition requesting an inter partes
`
`review of claims 1–5 and 11–15 of U.S. Patent No. 7,808,184 B2 (Ex. 1001,
`
`“the ’184 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 1–5 and 11–15 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 1–5 and 11–15 of the ’184 patent.
`
`A. Related District Court Proceedings
`
`
`
`Fujitsu indicates that the ’184 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 ’184 patent. Id.
`
`
`
`2
`
`
`
`IPR2014-00855
`Patent 7,808,184 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 Intel
`
`Corp. v. Zond, LLC., Case IPR2014-00455 and in the instant proceeding:
`
`Taiwan Semiconductor Manufacturing Co., Ltd. v. Zond, LLC, Case
`
`IPR2014-00799, Paper 1; The Gillette Co. v Zond, LLC, Case IPR2014-
`
`00995, Paper 2; and Advanced Micro Devices, Inc. v. Zond, LLC, Case
`
`IPR2014-01042, Paper 1.
`
`In each of IPR2014-00455 and IPR2014-00799, we instituted an inter
`
`partes review of claims 1–5 and 11–15 based on the ground that these claims
`
`are unpatentable under 35 U.S.C. § 103(a) as obvious over the combination
`
`of Wang and Kudryavtsev. IPR2014-00455 (Paper 12); IPR2014-00799
`
`(Paper 10). In IPR2014-00455, 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. Intel Corp. v. Zond, IPR2014-00455
`
`(PTAB) (Papers 14, 15; Ex. 1025).
`
`Fujitsu also filed a revised Motion for Joinder, seeking to join the
`
`instant proceeding with Taiwan Semiconductor Manufacturing Company,
`
`Ltd. v. Zond, LLC., Case IPR2014-00799 (PTAB) (“IPR2014-00799”).
`
`Paper 9 (“Mot.”). In a separate decision, we grant Fujitsu’s revised Motion
`
`for Joinder, joining the instant proceeding with IPR2014-00799, and
`
`terminating the instant proceeding.
`
`
`
`3
`
`
`
`IPR2014-00855
`Patent 7,808,184 B2
`
`
`
`
`
`
`C. Prior Art Relied Upon
`
`Fujitsu relies upon the following prior art references:
`
`Wang
`
`
`
`US 6,413,382 B1
`
`July 2, 2002
`
`(Ex. 1005)
`
`
`
`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. 1003) (“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 (Jan. 1983) (Ex. 1004) (“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. 1007) (“Mozgrin
`Thesis”).1
`
`
`D. Asserted Grounds of Unpatentability
`
`Fujitsu asserts the following grounds of unpatentability:
`
`Claims
`
`Basis
`
`References
`
`1, 2, 4, 5, 11, 12, 14,
`and 15
`1, 2, 4, 5, 11, 12, 14,
`and 15
`
`3 and 13
`
`3 and 13
`
`§ 103(a) Mozgrin and Kudryavtsev
`
`§ 103(a) Mozgrin and the Mozgrin Thesis
`
`§ 103(a) Mozgrin, Kudryavtsev, and Wang
`
`§ 103(a) Mozgrin, Mozgrin Thesis, and Wang
`
`1–5 and 11–15
`
`§ 103(a) Wang and Kudryavtsev
`
`
`
`
`1 The Mozgrin Thesis is a Russian-language reference. Fujitsu provided a
`certified English-language translation (Ex. 1006).
`
`
`
`
`4
`
`
`
`IPR2014-00855
`Patent 7,808,184 B2
`
`
`
`
`
`
`II. ANALYSIS
`
`A. Claim Construction
`
`The parties make the same claim interpretation arguments that Taiwan
`
`Semiconductor Manufacturing Company, Ltd. and TSMC North America
`
`Corporation (collectively, “TSMC”) and Zond made in IPR2014-00799.
`
`Compare Pet. 13–15, with ’799 Pet. 13–15; compare Prelim. Resp. 10–16,
`
`with ’799 Prelim. Resp. 10–16; see also Prelim. Resp. 1 (stating Patent
`
`Owner repeated in this Preliminary Response the bases upon which it
`
`opposed the Petitioner in IPR2014-00455).
`
`We construed the claim terms identified by Intel and Zond in
`
`IPR2014-00799. See ’799 Dec. 8–12. For the purposes of the instant
`
`decision, we incorporate our previous analysis and apply those claim
`
`constructions here.
`
`B. Obviousness over Wang and Kudryavtsev
`
`In its Petition, Fujitsu asserts the same ground of unpatentability
`
`based on Wang and Kudryavtsev, as that on which a trial was instituted in
`
`IPR2014-00799. See Pet. 43–60; ’799 Dec. 28. Fujitsu’s arguments are
`
`substantively identical to the arguments made by TSMC in IPR2014-00799.
`
`Compare Pet. 42–58, with ’799 Pet. 42–58. Fujitsu also proffers the same
`
`Declaration of Dr. Richard DeVito that Intel submitted in support of its
`
`Petition. Compare Ex. 1002, with IPR2014-00799, Ex. 1002; Pet. 4, n.3
`
`(stating “attached declaration at Ex. 1002 is a copy of Dr. Devito’s
`
`declaration filed in IPR2014-00455”). Zond’s arguments in the Preliminary
`
`Response are essentially identical to those arguments that it made in
`
`
`
`5
`
`
`
`IPR2014-00855
`Patent 7,808,184 B2
`
`
`
`
`
`
`IPR2014-00799. Compare Prelim. Resp. 46–51, with ’799 Prelim. Resp.
`
`46–51.
`
`We incorporate our previous analysis regarding the asserted ground of
`
`unpatentability based on Wang and Kudryavtsev (’799 Dec. 14–28), and
`
`determine that Fujitsu has demonstrated a reasonable likelihood of
`
`prevailing on that ground of unpatentability.
`
`C. Other Asserted Grounds of Unpatentability
`
`Fujistu also asserts the following grounds of unpatentability:
`
`Claims
`1, 2, 4, 5, 11,
`12, 14, and 15
`1, 2, 4, 5, 11,
`12, 14, and 15
`3 and 13
`3 and 13
`
`
`
`Basis
`
`References
`
`§ 103(a) Mozgrin and Kudryavtsev
`
`§ 103(a) Mozgrin and the Mozgrin Thesis
`
`§ 103(a) Mozgrin, Kudryavtsev, and Wang
`§ 103(a) Mozgrin, Mozgrin Thesis, and Wang
`
`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
`
`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).
`
`
`
`
`
`6
`
`
`
`IPR2014-00855
`Patent 7,808,184 B2
`
`
`
`
`
`
`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 1–5 and 11–15 of the ’184
`
`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 claim
`
`construction or that patentability of the challenged claims.
`
`
`
`
`
`For the foregoing reasons, it is:
`
`IV. ORDER
`
`ORDERED that pursuant to 35 U.S.C. § 314(a), an inter partes
`
`review is hereby instituted on the ground that claims 1–5 and 11–15 are
`
`unpatentable under 35 U.S.C. § 103(a) as obvious over the combination of
`
`Wang and Kudryavtsev.
`
`FURTHER ORDERED that no other ground of unpatentability
`
`asserted in the Petition is authorized for this inter partes review; and
`
`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.
`
`
`
`
`
`7
`
`
`
`
`
`
`
`IPR2014-00855
`Patent 7,808,184 B2
`
`
`For PETITIONER:
`
`
`
`
`
`David M. O’Dell
`david.odell.ipr@haynesboone.com
`
`David McCombs
`david.mccombs.ipr@haynesboone.com
`
`
`
`PATENT OWNER:
`
`Gregory J. Gonsalves
`gonsalves@gonsalveslawfirm.com
`
`Bruce J. Barker
`bbarker@chsblaw.com
`
`
`
`
`8
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