Paper 16
`Trials@uspto.gov
`571-272-7822
`
` Entered: December 11, 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 IPR2014-00864
`Patent 6,806,652 B1
`____________
`
`
`
`
`Before KEVIN F. TURNER, 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: December 11, 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 IPR2014-00864
`Patent 6,806,652 B1
`____________
`
`
`
`
`Before KEVIN F. TURNER, 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
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`IPR2014-00864
`Patent 6,806,652 B1
`
`
`
`
`
`
`I. INTRODUCTION
`
`Fujitsu Semiconductor Limited and Fujitsu Semiconductor America,
`
`Inc. (collectively, “Fujitsu”) filed a Petition requesting an inter partes
`
`review of claims 18–34 of U.S. Patent No. 6,806,652 B1 (Ex. 1101, “the
`
`’652 patent”). Paper 1 (“Pet.”). Zond, LLC (“Zond”), filed a Preliminary
`
`Response. Paper 9 (“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 18–34 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 18–34 of the ’652 patent.
`
`A. Related District Court Proceedings
`
`
`
`Fujitsu indicates that the ’652 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 ’652 patent. Id.
`
`
`
`2
`
`
`
`IPR2014-00864
`Patent 6,806,652 B1
`
`
`
`
`
`
`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 IPR2014-00843; Taiwan
`
`Semiconductor Mfg. Co., Ltd. v. Zond, LLC, Case IPR2014-00861; Gillette
`
`Company v. Zond, LLC, Case IPR2014-01003; and Renesas Electronics
`
`Corp. v. Zond, LLC, Case IPR2014-01066.
`
`In IPR2014-00843, 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. Intel Corp. v. Zond, Case IPR2014-00843 (Papers 7, 8; Ex. 1115).
`
`Fujitsu also filed a revised Motion for Joinder, seeking to join the
`
`instant proceeding with Taiwan Semiconductor Manufacturing Company,
`
`Ltd. v. Zond, LLC, Case IPR2014-00861 (“IPR2014-00861”). Paper 11
`
`(“Mot.”). In a separate decision, we grant Fujitsu’s revised Motion for
`
`Joinder, joining the instant proceeding with IPR2014-00861, and terminating
`
`the instant proceeding.
`
`C. Prior Art Relied Upon
`
`Fujitsu relies upon the following prior art references:
`
`
`
`
`
`Iwamura et al.
`
`US 5,753,886
`
`May 19, 1998
`
`(Ex. 1108)
`
`Campbell et al. US 5,429,070
`
`July 4, 1995
`
`(Ex. 1114)
`
`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. 1103) (“Mozgrin”).
`
`
`
`
`3
`
`
`
`IPR2014-00864
`Patent 6,806,652 B1
`
`
`
`
`
`
` 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) (“Kudryavtsev”).
`
`D. W. Fahey, W. F. Parks, and L. D. Schearer, High Flux Beam
`
`Source of Thermal Rare-Gas Metastable Atoms, 13 J. PHYS. E: SCI.
`INSTRUM. 381–383 (1980) (Ex. 1105) (“Fahey”).
`
`
`D. Asserted Grounds of Unpatentability
`
`Fujitsu asserts the following grounds of unpatentability:
`
`Claims
`
`Basis
`
`References
`
`18–30, 33, and 34
`
`§ 103(a) Mozgrin, Kudryavtsev, and Fahey
`
`31 and 32
`
`§ 103(a)
`
`18–30, 33, and 34
`
`§ 103(a)
`
`§ 103(a)
`
`31 and 32
`
`18–30
`
`31 and 32
`
`33 and 34
`
`
`
`Mozgrin, Kudryavtsev, Fahey, and
`Campbell
`Mozgrin, Kudryavtsev, Fahey, and
`Iwamura
`Mozgrin, Kudryavtsev, Fahey,
`Campbell, and Iwamura
`
`§ 103(a) Mozgrin and Iwamura
`
`§ 103(a) Mozgrin, Iwamura, and Campbell
`
`§ 103(a) Mozgrin, Iwamura, and Fahey
`
`
`
`
`
`
`
`4
`
`
`
`IPR2014-00864
`Patent 6,806,652 B1
`
`
`
`
`
`
`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 IPR2014-00861.
`
`Compare Pet. 11–12, with ’861 Pet. 11–12; compare Prelim. Resp. 8–11,
`
`with ’861 Prelim. Resp. 8–11.
`
`We addressed the proposed constructions of the claim terms identified
`
`by TSMC and Zond in IPR2014-00861. See ’861 Dec. 9–13. For the
`
`purposes of the instant decision, we incorporate our previous analysis and
`
`apply those claim constructions here.
`
`B. Obviousness over Mozgrin in Combination with
`Other Cited References
`
`In its Petition, Fujitsu asserts the same grounds of unpatentability as
`
`those on which a trial was instituted in IPR2014-00861. See Pet. 45–60;
`
`’861 Dec. 31. These grounds are set forth in the table below.
`
`Claims
`
`Basis
`
`References
`
`18–30, 33, and 34
`
`§ 103(a)
`
`31 and 32
`
`18–30
`
`31 and 32
`
`33 and 34
`
`
`
`Mozgrin, Kudryavtsev, Fahey, and
`Iwamura
`Mozgrin, Kudryavtsev, Fahey,
`Campbell, and Iwamura
`
`§ 103(a)
`
`§ 103(a) Mozgrin and Iwamura
`
`§ 103(a) Mozgrin, Iwamura, and Campbell
`
`§ 103(a) Mozgrin, Iwamura, and Fahey
`
`
`
`5
`
`
`
`IPR2014-00864
`Patent 6,806,652 B1
`
`
`
`
`
`
`Fujitsu’s arguments are substantively identical to the arguments made
`
`by TSMC in IPR2014-00861. Compare Pet. 45–60, with ’861 Pet. 45–60.
`
`Fujitsu also proffers the same Declaration of Dr. Uwe Kortshagen that
`
`TSMC submitted in support of its Petition. Compare Ex. 1102, with
`
`IPR2014-00861, Ex. 1102. Zond’s arguments in the Preliminary Response
`
`are essentially identical to those arguments that it made in IPR2014-00861.
`
`Compare Prelim. Resp. 12–48, with ’861 Prelim. Resp. 12–48.
`
`We incorporate our previous analysis regarding the asserted grounds
`
`of unpatentability based on various combinations of Mozgrin, Kudryavtsev,
`
`Fahey, Campbell, and Iwamura (’861 Dec. 14–31), and determine that
`
`Fujitsu has demonstrated a reasonable likelihood of prevailing on those
`
`grounds of unpatentability.
`
`C. Other Asserted Grounds of Unpatentability
`
`Fujistu also asserts the following grounds of unpatentability:
`
`Claims
`18–30, 33,
`and 34
`
`Basis
`
`References
`
`§ 103(a) Mozgrin, Kudryavtsev, and Fahey
`
`31 and 32
`
`§ 103(a) Mozgrin, Kudryavtsev, Fahey, and Campbell
`
`
`
`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
`
`
`
`6
`
`
`
`IPR2014-00864
`Patent 6,806,652 B1
`
`
`
`
`
`
`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 18–34 of the ’652 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 following grounds;
`
`Claims
`
`Basis
`
`References
`
`18–30, 33, and 34
`
`§ 103(a)
`
`31 and 32
`
`18–30
`
`31 and 32
`
`33 and 34
`
`Mozgrin, Kudryavtsev, Fahey, and
`Iwamura
`Mozgrin, Kudryavtsev, Fahey,
`Campbell, and Iwamura
`
`§ 103(a)
`
`§ 103(a) Mozgrin and Iwamura
`
`§ 103(a) Mozgrin, Iwamura, and Campbell
`
`§ 103(a) Mozgrin, Iwamura, and Fahey
`
`FURTHER ORDERED that no other ground of unpatentability
`
`asserted in the Petition is authorized for this inter partes review; and
`
`
`
`7
`
`
`
`IPR2014-00864
`Patent 6,806,652 B1
`
`
`
`
`
`
`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.
`
`
`
`
`
`
`
`
`
`
`
`
`
`8
`
`
`
`IPR2014-00864
`Patent 6,806,652 B1
`
`
`For PETITIONER:
`
`
`
`
`
`David McCombs
`david.mccombs.ipr@haynesboone.com
`
`David M. O’Dell
`david.odell.ipr@haynesboone.com
`
`
`PATENT OWNER:
`
`Gregory J. Gonsalves
`gonsalves@gonsalveslawfirm.com
`
`Bruce J. Barker
`bbarker@chsblaw.com
`
`
`
`
`
`
`9
`
`
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