`571-272-7822
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` Paper 12
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`Entered: October 17, 2014
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`
`THE GILLETTE COMPANY,
`Petitioner,
`
`v.
`
`ZOND, LLC,
`Patent Owner.
`____________
`
`Case IPR2014-00972
`Patent 7,604,716 B2
`____________
`
`
`
`
`
`
`
`Before KEVIN F. TURNER, DEBRA K. STEPHENS, JONI Y. CHANG,
`SUSAN L.C. MITCHELL, and JENNIFER M. MEYER,
`Administrative Patent Judges.
`
`
`MEYER, Administrative Patent Judge.
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
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`
`
`
`
`
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`IPR2014-00972
`Patent 7,604,716 B2
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`I. INTRODUCTION
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`The Gillette Company (“Gillette”) filed a Petition requesting inter
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`partes review of claims 1–11 and 33 (“the challenged claims”) of U.S.
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`Patent No. 7,604,716 B2 (Ex. 1001, “the ’716 patent”). Paper 1 (“Pet.”).
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`Zond, LLC (“Zond”) timely filed a Preliminary Response. Paper 7 (“Prelim.
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`Resp.”). We have jurisdiction under 35 U.S.C. § 314, which provides that
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`an inter partes review may not be instituted “unless . . . there is a reasonable
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`likelihood that the petitioner would prevail with respect to at least 1 of the
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`claims challenged in the petition.” 35 U.S.C. § 314(a).
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`Upon consideration of the information presented in the Petition and
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`the Preliminary Response, we determine that there is a reasonable likelihood
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`that Petitioner would prevail in challenging claims 1–11 and 33.
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`Accordingly, pursuant to 35 U.S.C. § 314, we authorize an inter partes
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`review to be instituted as to the challenged claims.
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`A. Related District Court Proceedings
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`Gillette indicates that the ’716 patent was asserted in Zond, LLC v.
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`Gillette Co., No. 1:13-cv-11567-DJC (D. Mass.). Pet. 1. Gillette also
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`identifies other proceedings in which Zond asserted the ’716 patent. Id.
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`B. Related Inter Partes Reviews
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`The following Petitions for inter partes review also challenge the
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`same claims, based on the same grounds of unpatentability as those in the
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`instant proceeding: Intel Corp. v. Zond, LLC., Case IPR2014-00520; and
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`GLOBALFOUNDRIES U.S., INC., v. Zond, LLC., Case IPR2014-01099.
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`IPR2014-00972
`Patent 7,604,716 B2
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`In IPR2014-00520, we terminated the proceeding, prior to institution,
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`in light of the Joint Motion to Terminate and Written Settlement Agreement
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`filed by Intel and Zond in accordance with 35 U.S.C. § 317(b) and 37 C.F.R.
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`§ 42.74(b). IPR2014-00520, Paper 7, Ex. 1023.
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`In IPR2014-01099, we instituted inter partes review of claims 1–11
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`and 33 of the ’716 patent, based on the following ground of unpatentability:
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`Claims
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`Basis
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`References
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`1–11, 33
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`§ 102 Wang
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`Gillette filed a revised Motion for Joinder with IPR2014-01099. Paper 10.
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`In a separate Decision, we grant Gillette’s revised Motion, joining the instant
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`proceeding with IPR2014-01099, and terminating the instant proceeding.
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`C. Prior Art Relied Upon
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`Gillette relies upon the following prior art references:
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`Wang
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`US 6,413,382 B1
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` July 2, 2002
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`(Ex. 1004)
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`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”)
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`D.V. Mozgrin, High-Current Low-Pressure Quasi-Stationary
`Discharge in a Magnetic Field: Experimental Research, Thesis at Moscow
`Engineering Physics Institute (1994) (Ex. 1006) (“Mozgrin Thesis”).1
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`1 The Mozgrin Thesis is a Russian-language reference. Petitioner has also
`submitted a certified English-language translation (Ex. 1005).
`3
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`IPR2014-00972
`Patent 7,604,716 B2
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`D. Asserted Grounds of Unpatentability
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`Gillette asserts the following grounds of unpatentability:
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`Claims
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`Basis
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`References
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`1–5, 8–11, 33 § 102
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`Mozgrin
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`6, 7
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`§ 103
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`Mozgrin and Mozgrin Thesis
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`1–11, 33
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`§ 102
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`Wang
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`II. ANALYSIS
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`A. Claim Construction
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`The parties make the same claim construction arguments that
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`GLOBALFOUNDRIES U.S., Inc., GLOBALFOUNDRIES Dresden Module
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`One LLC & Co. KG, and GLOBALFOUNDRIES Dresden Module Two
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`LLC & Co. KG (collectively, “GlobalFoundries”) and Zond made in
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`IPR2014-01099. Compare Pet. 11–14, with ’1099 Pet. 12–14; compare
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`Prelim. Resp. 11–16, with ’1099 Prelim. Resp. 11–16.
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`We construed several claim terms identified by GlobalFoundries and
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`Zond in IPR2014-01099. See ’1099 Dec. 6–16. For the purposes of the
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`instant decision, we incorporate our previous analysis and apply those claim
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`constructions here.
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`B. Anticipation by Wang
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`In its Petition, Gillette asserts the same ground of unpatentability
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`based on Wang, as that on which a trial was instituted in IPR2014-01099.
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`See Pet. 39–58; ’1099 Dec. 23. Gillette’s arguments are substantively
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`IPR2014-00972
`Patent 7,604,716 B2
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`identical to the arguments made by GlobalFoundries in IPR2014-01099.
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`Compare Pet. 39–58, with ’1099 Pet. 39–60. Gillette also proffers the same
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`Declaration of Dr. Uwe Kortshagen that GlobalFoundries submitted in
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`support of its Petition. Compare Ex. 1002, with IPR2014-01099 Ex. 1002.
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`Zond’s arguments in the Preliminary Response are essentially identical to
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`those arguments that it made in IPR2014-01099. Compare Prelim. Resp.
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`16–33, with ’1099 Prelim. Resp. 16–33.
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`We incorporate our previous analysis regarding the asserted ground of
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`unpatentability based on Wang (’1099 Dec. 16–22), and determine that
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`Gillette has demonstrated a reasonable likelihood of prevailing on this
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`ground of unpatentability.
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`C. Other Asserted Ground of Unpatentability
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`Gillette also asserts that claims 1–5, 8–11, and 33 are unpatentable
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`under 35 U.S.C. § 102 as anticipated by Mozgrin, and that claims 6 and 7 are
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`unpatentable under 35 U.S.C. § 103 as obvious over the combination of
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`Mozgrin and the Mozgrin Thesis. The Board’s rules for inter partes review
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`proceedings, including those pertaining to institution, are “construed to
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`secure the just, speedy, and inexpensive resolution of every proceeding.”
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`37 C.F.R. § 42.1(b); see also 35 U.S.C. § 316(b) (regulations for inter partes
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`review take into account “the efficient administration of the Office” and “the
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`ability of the Office to timely complete [instituted] proceedings”).
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`Therefore, we exercise our discretion and do not institute a review based on
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`these asserted grounds for reasons of administrative necessity to ensure
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`timely completion of the instituted proceeding. See 37 C.F.R. § 42.108(a).
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`III. CONCLUSION
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`For the foregoing reasons, we determine that the information
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`presented in the Petition shows that there is a reasonable likelihood that
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`Gillette would prevail in challenging claims 1–11 and 33 of the ’716 patent
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`as unpatentable under 35 U.S.C. § 102. At this stage in the proceeding, we
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`have not made a final determination with respect to the patentability of any
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`of the challenged claims.
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`IV. ORDER
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`Accordingly, it is:
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`ORDERED that pursuant to 35 U.S.C. § 314(a), an inter partes
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`review is hereby instituted as to claims 1–11 and 33 as unpatentable under
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`35 U.S.C. § 102 as anticipated by Wang;
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`FURTHER ORDERED that no other ground of unpatentability
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`asserted in the Petition is authorized for this inter partes review; and
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`FURTHER ORDERED that pursuant to 35 U.S.C. § 314(c) and
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`37 C.F.R. § 42.4, notice is hereby given of the institution of a trial; the trial
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`will commence on the entry date of this decision.
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`IPR2014-00972
`Patent 7,604,716 B2
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`For PETITIONER:
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`Michael Diener
`Larissa Park
`WILMER CUTLER PICKERING HALE AND DORR LLP
`michael.diener@wilmerhale.com
`larissa.park@wilmerhale.com
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`
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`For PATENT OWNER:
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`Bruce J. Barker
`CHAO HADIDI STARK & BARKER LLP
`bbarker@chsblaw.com
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`Gregory J. Gonsalves
`gonsalves@gonsalveslawfirm.com
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