`Trials@uspto.gov
`571-272-7822
`
` Entered: October 23, 2014
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`
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`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 IPR2014-00866
`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
`
`
`
`
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`
`
`IPR2014-00866
`Patent 6,853,142 B2
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`I. INTRODUCTION
`Fujitsu Semiconductor Limited and Fujitsu Semiconductor America,
`Inc. (collectively, “Fujitsu”) filed a Petition requesting inter partes review of
`claims 1, 3–10, 12, 15, 17–20, and 42 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 1, 3–10, 12, 15, 17–20,
`and 42. 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 IPR2014-00494;
`Taiwan Semiconductor Manuf. Co., v. Zond, LLC., Case IPR2014-00818;
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`Patent 6,853,142 B2
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`The Gillette Co. v Zond, LLC, Case IPR2014-01012; and Advanced Micro
`Devices, Inc. v. Zond, LLC, Case IPR2014-01075.
`In IPR2014-00494, 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). IPR2014-00494, Paper 7; Ex. 1018.
`In IPR2014-00818, we instituted inter partes review of claims 1, 3–
`10, 12, 15, 17–20, and 42 of the ’142 Patent, based on the following grounds
`of unpatentability:
`
`Claims
`1, 3–7, 9, 10, 12, 15, 19, 20,
`and 42
`8, 17, and 18
`
`Basis
`
`References
`
`§ 103(a) Wang and Lantsman
`
`§ 103(a) Wang, Lantsman, and Mozgrin
`
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`Fujitsu filed a revised Motion for Joinder with IPR2014-00818. Paper 9. In
`a separate Decision, we grant Fujitsu’s revised Motion, joining the instant
`proceeding with IPR2014-00818, and terminating the instant proceeding.
`
`C. Prior Art Relied Upon
`
`Fujitsu relies upon the following prior art references:
`Lantsman
`
`US 6,190,512 B1 Feb. 20, 2001
`Wang
`
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`US 6,413,382 B1 July 2, 2002
`
`
`(Ex. 1004)
`(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) (hereinafter “Mozgrin”).
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`D. Asserted Grounds of Unpatentability
`Fujitsu asserts the following grounds of unpatentability:
`Claims
`Basis
`References
`
`1, 3–10, 12, 15, 17–20,
`and 42
`1, 3–7, 9, 10, 12, 15, 19,
`20, and 42
`8, 17, and 18
`
`
`§ 103(a) Mozgrin and Lantsman
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`§ 103(a) Wang and Lantsman
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`§ 103(a) Wang, Lantsman, and Mozgrin
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`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 IPR2014-00818. Compare
`Pet. 12–14, with ’818 Pet. 12–14; compare Prelim. Resp. 19–22, with ’818
`Prelim. Resp. 19–22.
`We construed several claim terms identified by TSMC and Zond in
`IPR2014-00818. See ’818 Dec. 5–7. For the purposes of the instant
`decision, we incorporate our previous analysis and apply those claim
`constructions here.
`
`B. 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
`was instituted in IPR2014-00818. See Pet. 39–57; ’818 Dec. 23. Fujitsu’s
`arguments are substantively identical to the arguments made by TSMC in
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`IPR2014-00818. Compare Pet. 39–57, with ’818 Pet. 39–57. Fujitsu also
`proffers the same Declaration of Dr. Uwe Kortshagen that TSMC submitted
`in support of its Petition. Compare Ex. 1002, with IPR2014-00818
`Ex. 1002. Zond’s arguments in the Preliminary Response are essentially
`identical to those arguments that it made in IPR2014-00818. Compare
`Prelim. Resp. 22–48, with ’818 Prelim. Resp. 22–48.
`We incorporate our previous analysis regarding the asserted ground of
`unpatentability based on the combination of Wang and Lantsman (’818 Dec.
`9–20), and determine that Fujitsu has demonstrated a reasonable likelihood
`of prevailing on this ground of unpatentability.
`
`C. Obviousness over Wang, Lantsman, and Mozgrin
`
`In its Petition, Fujitsu asserts the same ground of unpatentability
`based on the combination of Wang, Lantsman, and Mozgrin, as that on
`which a trial was instituted in IPR2014-00818. See Pet. 57–59; ’818 Dec.
`23. Fujitsu’s arguments are substantively identical to the arguments made
`by TSMC in IPR2014-00818. Compare Pet. 57–59, with ’818 Pet. 57–59.
`Zond opposes this latter ground (Prelim. Resp. 52-53), but essentially relies
`upon the same arguments presented in connection with the prior ground 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
`(’818 Dec. 20–21), and determine that Fujitsu has demonstrated a reasonable
`likelihood of prevailing on this ground of unpatentability.
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`D. Other Asserted Ground of Unpatentability
`
`Fujitsu also asserts that claims 1, 3–10, 12, 15, 17–20, and 42 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]
`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 1, 3–10, 12, 15, 17–20, and 42
`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:
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`Basis
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`References
`
`§ 103(a) Wang and Lantsman
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`§ 103(a) Wang, Lantsman, and Mozgrin
`
`Claims
`1, 3–7, 9, 10, 12, 15, 19, 20,
`and 42
`8, 17, and 18
`
`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.
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`IPR2014-00866
`Patent 6,853,142 B2
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`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
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