Paper 11
`Trials@uspto.gov
`571-272-7822
`
` Entered: November 18, 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 IPR2014-00859
`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
`
`
`
`
`
`
`Trials@uspto.gov
`571-272-7822
`
` Entered: November 18, 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 IPR2014-00859
`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
`
`
`
`
`
`
`
`IPR2014-00859
`Patent 6,805,779 B2
`
`
`
`
`
`
`I. INTRODUCTION
`Fujitsu Semiconductor Limited and Fujitsu Semiconductor America,
`Inc. (collectively, “Fujitsu”) filed a Petition requesting an inter partes
`review of claims 16, 28, 41, 42, 45, and 46 of U.S. Patent No. 6,805,779 B2
`(Ex. 1301, “the ’779 patent”). Paper 1 (“Pet.”). Zond, LLC (“Zond”) filed a
`Preliminary Response. Paper 8 (“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 16, 28, 41, 42, 45, and 46 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 16, 28, 41, 42, 45, and 46 of the ’779 patent.
`
`
`A. Related District Court Proceedings
`
`Fujitsu indicates that the ’779 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 ’779 patent. Id.
`
`
`
`
`2
`
`
`
`IPR2014-00859
`Patent 6,805,779 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 IPR2014-00820; Taiwan
`Semiconductor Mfg. Co., Ltd. v. Zond, LLC, Case IPR2014-00829; The
`Gillette Co. v Zond, LLC, Case IPR2014-001020; and Advanced Micro
`Devices, Inc. v. Zond, LLC, Case IPR2014-01072.
`In IPR2014-00820, we terminated the proceeding, prior to institution,
`in light of the Joint Motion to Terminate and 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 Corp. and
`Zond. IPR2014-00820, Papers 6, 7; IPR2014-00598, Ex. 1013.
`In IPR2014-00829, we instituted an inter partes review of claims 16,
`28, 41, 42, 45, and 46 of the ’779 patent, based on the following grounds of
`unpatentability, IPR2014-00829, Paper 9 (“’829 Dec.”), 31:
`
`Claims
`
`46
`
`Basis
`
`References
`
`§ 102(b)
`
`Iwamura
`
`Iwamura, Angelbeck, and Pinsley
`
`16, 28, 41, 42, and 45 § 103(a)
`
`Fujitsu filed a revised Motion for Joinder, seeking to join with
`IPR2014-00829, and Zond filed an Opposition to Fujitsu’s Motion.
`Papers 9, 10. In a separate decision, we grant Fujitsu’s revised Motion for
`Joinder, joining the instant proceeding with IPR2014-00829, and terminating
`the instant proceeding.
`
`
`
`3
`
`
`
`IPR2014-00859
`Patent 6,805,779 B2
`
`
`
`
`
`
`C. Prior Art Relied Upon
`
`Fujitsu relies upon the following prior art references:
`Pinsley
`
`US 3,761,836
`Sept. 25, 1973
`(Ex. 1305)
`Angelbeck
`US 3,514,714
`May 26, 1970
`(Ex. 1306)
`Iwamura
`US 5,753,886
`May 19, 1998
`(Ex. 1307)
`
`
`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”).
`
`
`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”).
`
`
`D. Asserted Grounds of Unpatentability
`Fujitsu asserts the following grounds of unpatentability:
`
`Claims
`
`46
`
`Basis
`
`References
`
`§ 102(b)
`
`Iwamura
`
`Iwamura, Angelbeck, and Pinsley1
`16, 28, 41, 42, 45 § 103(a)
`41
`§ 103(a) Mozgrin, Kudryavtsev, and Pinsley
`16, 28, 42, 45, 46 § 103(a) Mozgrin, Kudryavtsev, Pinsley, and
`Iwamura
`
`
`
`
`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 Fujitsu 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.
`
`
`
`4
`
`
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`IPR2014-00859
`Patent 6,805,779 B2
`
`
`
`
`
`
`II. ANALYSIS
`
`A. Claim Construction
`
`The parties make the same claim interpretation arguments that TSMC
`and Zond made in IPR2014-00829. Compare Pet. 18–19, with IPR2014-
`00829, Paper 2 (“’829 Pet.”), 19–20; Compare Prelim. Resp. 19, with
`IPR2014-00829, Paper 8 (“’829 Prelim. Resp.”), 19.
`We construed several claim terms in the Decision on Institution for
`IPR2014-00829. See ’829 Dec. 6–13. For the purposes of the instant
`decision, we incorporate our previous analysis and apply those claim
`constructions here.
`
`
`B. Grounds of Unpatentability Based on Iwamura, alone or in
`Combination with Angelbeck and Pinsley
`In its Petition, Fujitsu asserts the same grounds of unpatentability
`based on Iwamura, alone or in combination with Angelbeck and Pinsley, as
`those on which a trial was instituted in IPR2014-00829. See Pet. 42–60;
`’829 Dec. 31. Fujitsu’s arguments are substantively identical to the
`arguments made by TSMC in IPR2014-00829. Compare Pet. 42–60, with
`’829 Pet. 41–60. Fujitsu also proffers the same Declaration of Dr. Uwe
`Kortshagen that TSMC submitted in support of its Petition. Compare
`Ex. 1302, with IPR2014-00829 Ex. 1302. Zond’s arguments in the
`Preliminary Response are essentially identical to those arguments that it
`made in IPR2014-00829. Compare Prelim. Resp. 19–54, with ’829 Prelim.
`Resp. 19–54.
`
`
`
`5
`
`
`
`IPR2014-00859
`Patent 6,805,779 B2
`
`
`
`
`We incorporate our previous analysis regarding the asserted grounds
`of unpatentability based on Iwamura, alone or in combination with
`Angelbeck and Pinsley (’829 Dec. 12–30), and determine that Fujitsu has
`demonstrated a reasonable likelihood of prevailing on those grounds of
`unpatentability.
`
`
`C. Other Asserted Grounds of Unpatentability
`
`Fujitsu also asserts the following grounds of unpatentability:
`
`
`
`
`
`Claims
`
`41
`
`16, 28, 42, 45, and 46
`
`Basis
`
`References
`
`§ 103(a) Mozgrin, Kudryavtsev, and Pinsley
`§ 103(a) Mozgrin, Kudryavtsev, Pinsley, and
`Iwamura
`
`
`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).
`
`
`III. CONCLUSION
`For the foregoing reasons, we determine that the information
`presented in the Petition shows that there is a reasonable likelihood that
`6
`
`
`
`
`
`IPR2014-00859
`Patent 6,805,779 B2
`
`
`
`
`
`
`Fujitsu would prevail in challenging claim 46 of the ’779 patent as
`unpatentable under 35 U.S.C. § 102(b), and in challenging claims 16, 28, 41,
`42, and 45 of the ’779 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:
`
`Claims
`
`46
`
`Basis
`
`References
`
`§ 102(b)
`
`Iwamura
`
`Iwamura, Angelbeck, and Pinsley
`
`16, 28, 41, 42, and 45 § 103(a)
`
`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
`
`
`
`
`
`
`
`IPR2014-00859
`Patent 6,805,779 B2
`
`
`
`
`
`
`For PETITIONER:
`
`David M. O’Dell
`David McCombs
`HAYNES AND BOONE, LLP
`david.odell.ipr@haynesboone.com
`david.mccombs.ipr@haynesboone.com
`
`Richard C. Kim
`DUANE MORRIS LLP
`rckim@duanemorris.com
`
`For PATENT OWNER:
`
`Gregory J. Gonsalves
`gonsalves@gonsalveslawfirm.com
`
`Bruce J. Barker
`CHAO HADIDI STARK & BARKER LLP
`bbarker@chsblaw.com
`
`
`
`
`
`
`8
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