Paper 11
`Trials@uspto.gov
`571-272-7822
`
` Entered: October 23, 2014
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`FUJITSU SEMICONDUCTOR LIMITED and
`FUJITSU SEMICONDUCTOR AMERICA, INC.,
`Petitioner,
`v.
`
`ZOND, LLC,
`Patent Owner.
`____________
`
`Case IPR2014-00863
`Patent 6,853,142 B2
`____________
`
`
`
`
`Before KEVIN F. TURNER, DEBRA K. STEPHENS, JONI Y. CHANG,
`SUSAN L.C. MITCHELL, and JENNIFER M. MEYER,
`Administrative Patent Judges.
`
`TURNER, Administrative Patent Judge.
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`
`
`Trials@uspto.gov
`571-272-7822
`
` Entered: October 23, 2014
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`FUJITSU SEMICONDUCTOR LIMITED and
`FUJITSU SEMICONDUCTOR AMERICA, INC.,
`Petitioner,
`v.
`
`ZOND, LLC,
`Patent Owner.
`____________
`
`Case IPR2014-00863
`Patent 6,853,142 B2
`____________
`
`
`
`
`Before KEVIN F. TURNER, DEBRA K. STEPHENS, JONI Y. CHANG,
`SUSAN L.C. MITCHELL, and JENNIFER M. MEYER,
`Administrative Patent Judges.
`
`TURNER, Administrative Patent Judge.
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`
`
`
`IPR2014-00863
`Patent 6,853,142 B2
`
`
`
`
`
`
`I. INTRODUCTION
`Fujitsu Semiconductor Limited and Fujitsu Semiconductor America,
`Inc. (collectively, “Fujitsu”) filed a Petition requesting inter partes review of
`claims 2, 11, 13, 14, and 16 of U.S. Patent No. 6,853,142 B2 (“the ’142
`Patent”). Paper 1 (“Pet.”). Zond, LLC (“Zond”) timely filed a Preliminary
`Response. Paper 8 (“Prelim. Resp.”). We have jurisdiction under 35 U.S.C.
`§ 314, which provides that an inter partes review may not be instituted
`“unless . . . there is a reasonable likelihood that the petitioner would prevail
`with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C.
`§ 314(a).
`Upon consideration of the information presented in the Petition and
`the Preliminary Response, we determine that there is a reasonable likelihood
`that Petitioner would prevail in challenging claims 2, 11, 13, 14, and 16.
`Accordingly, pursuant to 35 U.S.C. § 314, we authorize an inter partes
`review to be instituted as to the challenged claims.
`
`A. Related District Court Proceedings
`
`Fujitsu indicates that the ’142 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 ’142 Patent. Id.
`
`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 IPR2014-00495;
`Taiwan Semiconductor Manuf. Co., v. Zond, LLC., Case IPR2014-00821;
`
`
`
`2
`
`
`
`IPR2014-00863
`Patent 6,853,142 B2
`
`
`
`
`
`
`The Gillette Co. v Zond, LLC, Case IPR2014-01013; and Advanced Micro
`Devices, Inc. v. Zond, LLC, Case IPR2014-01057.
`In IPR2014-00495, we terminated the proceeding, prior to institution,
`in light of the Joint Motion to Terminate and Written Settlement Agreement
`filed by Intel and Zond in accordance with 35 U.S.C. § 317(b) and 37 C.F.R.
`§ 42.74(b). IPR2014-00495, Paper 7; IPR2014-00494, Ex. 1018.
`In IPR2014-00821, we instituted inter partes review of claims 2, 11,
`13, 14, and 16 of the ’142 Patent, based on the following grounds of
`unpatentability:
`
`Claim(s)
`
`Basis
`
`References
`
`13 and 14
`2 and 11
`16
`
`§ 103(a)
`§ 103(a)
`§ 103(a)
`
`Wang and Lantsman
`Wang, Lantsman, and Kudryavtsev
`Wang, Lantsman, and Mozgrin Thesis
`
`
`Fujitsu filed a revised Motion for Joinder with IPR2014-00821. Paper 9. In
`a separate Decision, we grant Fujitsu’s revised Motion, joining the instant
`proceeding with IPR2014-00821, and terminating the instant proceeding.
`
`C. Prior Art Relied Upon
`
`Fujitsu relies upon the following prior art references:
`Lantsman
`
`US 6,190,512
`Feb. 20, 2001
`Wang
`
`
`US 6,413,382
`July 2, 2002
`
`
`(Ex. 1104)
`(Ex. 1105)
`
`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. 1103) (hereinafter
`“Mozgrin”).
`
`
`
`3
`
`
`
`IPR2014-00863
`Patent 6,853,142 B2
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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 (Jan. 1983) (Ex. 1106) (hereinafter “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. 1119) (hereinafter
`“Mozgrin Thesis”).1
`D. Asserted Grounds of Unpatentability
`Fujitsu asserts the following grounds of unpatentability:
`
`Claim(s)
`
`Basis
`
`References
`
`14
`13 and 14
`2 and 11
`2 and 11
`13 and 16
`16
`
`
`
`§ 103(a)
`§ 103(a)
`§ 103(a)
`§ 103(a)
`§ 103(a)
`§ 103(a)
`
`Mozgrin and Lantsman
`Wang and Lantsman
`Mozgrin, Lantsman, and Kudryavtsev
`Wang, Lantsman, and Kudryavtsev
`Mozgrin, Lantsman, and Mozgrin Thesis
`Wang, Lantsman, and Mozgrin Thesis
`
`II. ANALYSIS
`
`A. Claim Construction
`
`The parties make the same claim construction arguments that Taiwan
`Semiconductor Manufacturing Company, Ltd. and TSMC North America
`Corp. (collectively, “TSMC”) and Zond made in IPR2014-00821. Compare
`
`
`1 The Mozgrin Thesis is a Russian-language reference. The citations to the
`Mozgrin Thesis are to the certified English-language translation submitted
`by TSMC (Ex. 1118).
`
`
`
`4
`
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`IPR2014-00863
`Patent 6,853,142 B2
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`
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`
`
`
`Pet. 13–15, with ’821 Pet. 13–15; compare Prelim. Resp. 19–22, with ’821
`Prelim. Resp. 19–22.
`We construed several claim terms identified by TSMC and Zond in
`IPR2014-00821. See ’821 Dec. 8–10. For the purposes of the instant
`decision, we incorporate our previous analysis and apply those claim
`constructions here.
`
`B. Status of Mozgrin Thesis
`
`In its Petition, Fujitsu asserts that 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). Pet. 3–4. As support, Fujitsu proffers a
`copy of the catalogue entry for the Mozgrin Thesis at the Russian State
`Library. Ex. 1120. Zond responds that Fujitsu fails to demonstrate the
`Mozgrin Thesis is prior art under 35 U.S.C. § 102. Prelim. Resp. 56–58.
`Fujitsu’s assertions and Zond’s arguments are substantively identical
`to the arguments made by TSMC and Zond in IPR2014-00821. Compare
`Pet. 3–4, with ’821 Pet. 4. Compare Prelim. Resp. 56–58, with ’821 Prelim.
`Resp. 56–58. Compare Ex. 1120, with IPR2014-00821 Ex. 1120.
`We incorporate our previous analysis regarding the prior art status of
`Mozgrin Thesis (’821 Dec. 5–7), and determine that Fujitsu has shown
`sufficiently that Mozgrin Thesis is a “printed publication” within the
`meaning of 35 U.S.C. § 102(b).
`
`C. Obviousness over Wang and Lantsman
`In its Petition, Fujitsu asserts the same ground of unpatentability
`based on the combination of Wang and Lantsman, as that on which a trial
`
`
`
`5
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`IPR2014-00863
`Patent 6,853,142 B2
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`
`
`was instituted in IPR2014-00821. See Pet. 31–44; ’821 Dec. 32. Fujitsu’s
`arguments are substantively identical to the arguments made by TSMC in
`IPR2014-00821. Compare Pet. 31–44, with ’821 Pet. 31–44. Fujitsu also
`proffers the same Declaration of Dr. Uwe Kortshagen that TSMC submitted
`in support of its Petition. Compare Ex. 1102, with IPR2014-00821
`Ex. 1102. Zond’s arguments in the Preliminary Response are essentially
`identical to those arguments that it made in IPR2014-00821. Compare
`Prelim. Resp. 24–52, with ’821 Prelim. Resp. 24–52.
`We incorporate our previous analysis regarding the asserted ground of
`unpatentability based on the combination of Wang and Lantsman (’821 Dec.
`11–23), and determine that Fujitsu has demonstrated a reasonable likelihood
`of prevailing on this ground of unpatentability.
`
`D. Obviousness over Wang, Lantsman, and Kudryavtsev
`In its Petition, Fujitsu asserts the same ground of unpatentability
`based on the combination of Wang, Lantsman, and Kudryavtsev, as that on
`which a trial was instituted in IPR2014-00821. See Pet. 52–55; ’821 Dec.
`32. Fujitsu’s arguments are substantively identical to the arguments made
`by TSMC in IPR2014-00821. Compare Pet. 52–55, with ’821 Pet. 52–55.
`Zond’s arguments in the Preliminary Response are essentially identical to
`those arguments that it made in IPR2014-00821. Compare Prelim. Resp.
`40–44, with ’821 Prelim. Resp. 40–44.
`We incorporate our previous analysis regarding the asserted ground of
`unpatentability based on the combination of Wang, Lantsman, and
`Kudryavtsev (’821 Dec. 24–29), and determine that Fujitsu has
`
`
`
`6
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`IPR2014-00863
`Patent 6,853,142 B2
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`
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`
`
`demonstrated a reasonable likelihood of prevailing on this ground of
`unpatentability.
`
`E. Obviousness over Wang, Lantsman, and Mozgrin Thesis
`In its Petition, Fujitsu asserts the same ground of unpatentability
`based on the combination of Wang, Lantsman, and Mozgrin Thesis, as that
`on which a trial was instituted in IPR2014-00821. See Pet. 58–60; ’821 Dec.
`32. Fujitsu’s arguments are substantively identical to the arguments made
`by TSMC in IPR2014-00821. Compare Pet. 58–60, with ’821 Pet. 58–60.
`Zond opposes this latter ground (Prelim. Resp. 58-60), but essentially relies
`upon the same arguments presented in connection with the prior grounds that
`we do not find persuasive.
`We incorporate our previous analysis regarding the asserted ground of
`unpatentability based on the combination of Wang, Lantsman, and Mozgrin
`Thesis (’821 Dec. 29–30), and determine that Fujitsu has demonstrated a
`reasonable likelihood of prevailing on this ground of unpatentability.
`
`
`F. Other Asserted Ground of Unpatentability
`
`Fujitsu also asserts that claims 2, 11, 13, 14, and 16 are unpatentable
`on other grounds. 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]
`
`
`
`7
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`IPR2014-00863
`Patent 6,853,142 B2
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`
`
`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 2, 11, 13, 14, and 16 of the ’142
`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.
`
`IV. ORDER
`
`Accordingly, 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:
`
`Claim(s)
`
`Basis
`
`References
`
`13 and 14
`2 and 11
`16
`
`§ 103(a)
`§ 103(a)
`§ 103(a)
`
`Wang and Lantsman
`Wang, Lantsman, and Kudryavtsev
`Wang, Lantsman, and Mozgrin Thesis
`
`
`
`FURTHER ORDERED that no other ground of unpatentability
`asserted in the Petition is authorized for this inter partes review; and
`
`
`
`8
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`IPR2014-00863
`Patent 6,853,142 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
`
`
`
`IPR2014-00863
`Patent 6,853,142 B2
`
`
`
`
`
`
`For PETITIONER:
`David M. O’Dell
`David L. McCombs
`Haynes and Boone, LLP
`David.odell.ipr@haynesboone.com
`david.mccombs.ipr@haynesboone.com
`
`Richard C. Kim
`Duane Morris, LLP
`rckim@duanemorris.com
`
`PATENT OWNER:
`
`Gregory Gonsalves
`The Gonsalves Law firm
`gonsalves@gonsalveslawfirm.com
`
`Bruce Barker
`Chao Hadidi Stark & Barker LLP
`bbarker@chsblaw.com
`
`
`
`
`
`
`10
`
`
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