Paper 12
`Trials@uspto.gov
`571-272-7822
`
` Entered: October 17, 2014
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`THE GILLETTE COMPANY,
`Petitioner,
`
`v.
`
`ZOND, LLC,
`Patent Owner.
`____________
`
`Case IPR2014-00974
`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
`
`
`
`
`
`
`
`
`
`Trials@uspto.gov
`571-272-7822
`
` Entered: October 17, 2014
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`THE GILLETTE COMPANY,
`Petitioner,
`
`v.
`
`ZOND, LLC,
`Patent Owner.
`____________
`
`Case IPR2014-00974
`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
`
`
`
`
`
`
`
`
`
`
`IPR2014-00974
`Patent 7,604,716 B2
`
`
`
`
`
`
`I. INTRODUCTION
`
`The Gillette Company (“Gillette”) filed a Petition requesting inter
`
`partes review of claims 14–18 and 25–32 (“the challenged claims”) of U.S.
`
`Patent No. 7,604,716 B2 (Ex. 1201, “the ’716 patent”). Paper 3 (“Pet.”).
`
`Zond, LLC (“Zond”) timely filed a Preliminary Response. Paper 7 (“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 14–18 and 25–32.
`
`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
`
`
`
`Gillette indicates that the ’716 patent was asserted in Zond, LLC v.
`
`Gillette, Co., No.1:13-cv-11567-DJC (D. Mass.). Pet. 1. Gillette also
`
`identifies other proceedings in which Zond asserted the ’716 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 IPR2014-00522;
`
`Taiwan Semiconductor Manuf. Co., v. Zond, LLC., Case IPR2014-00807;
`
`Fujitsu Semiconductor Ltd. v. Zond, LLC, Case IPR2014-00846; and
`
`Advanced Micro Devices, Inc. v. Zond, LLC, Case IPR2014-01065.
`
`
`
`2
`
`
`
`IPR2014-00974
`Patent 7,604,716 B2
`
`
`
`
`
`
`In IPR2014-00522, 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). IPR2014-00522, Paper 7; IPR2014-00520, Ex. 1023.
`
`In each of IPR2014-00807, IPR2014-00846, and IPR2014-01065, we
`
`instituted inter partes review of claims 14–18 and 25–32 of the ’716 patent,
`
`based on the following ground of unpatentability:
`
`Claims
`
`Basis
`
`References
`
`14–18, 25–32
`
`§ 103 Wang and Kudryavtsev
`
`
`We joined IPR2014-00846 and IPR2014-01065 with IPR2014-00807, and
`
`terminated IPR2014-00846 and IPR2014-01065. See IPR2014-00846, Paper
`
`12; IPR2014-01065, Paper 12.
`
`Gillette filed a revised Motion for Joinder with IPR2014-00807.
`
`Paper 10. In a separate Decision, we grant Gillette’s revised Motion, joining
`
`the instant proceeding with IPR2014-00807, and terminating the instant
`
`proceeding. Consequently, once that Decision is entered, IPR2014-00807
`
`will be the only pending inter partes review for reviewing claims 14–18 and
`
`25–32 of the ’716 patent.
`
`C. Prior Art Relied Upon
`
`Gillette relies upon the following prior art references:
`
`Wang
`
`US 6,413,382 B1
`
` July 2, 2002
`
`(Ex. 1204)
`
`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. 1203) (“Mozgrin”).
`
`
`
`
`3
`
`
`
`IPR2014-00974
`Patent 7,604,716 B2
`
`
`
`
`
`
`A.A. Kudryavtsev and V.N. Skerbov, Ionization Relaxation in a
`Plasma Produced by a Pulsed Inert-Gas Discharge, 28 SOV. PHYS. TECH.
`PHYS. 30–35 (Jan. 1983) (Ex. 1205) ( “Kudryavtsev”).
`
`D. Asserted Grounds of Unpatentability
`
`Gillette asserts the following grounds of unpatentability:
`
`Claims
`
`Basis
`
`References
`
`14–18, 25–32
`
`§ 103
`
`Mozgrin and Kudryavtsev
`
`14–18, 25–32
`
`§ 103
`
`Wang and Kudryavtsev
`
`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 IPR2014-00807. Compare
`
`Pet. 12–14, with ’807 Pet. 12–14; compare Prelim. Resp. 15–20, with ’807
`
`Prelim. Resp. 15–20.
`
`We construed several claim terms identified by TSMC and Zond in
`
`IPR2014-00807. See ’807 Dec. 6–11. For the purposes of the instant
`
`decision, we incorporate our previous analysis and apply those claim
`
`constructions here.
`
`B. Obviousness over Wang and Kudryavtsev
`
`In its Petition, Gillette asserts the same ground of unpatentability
`
`based on the combination of Wang and Kudryavtsev, as that on which a trial
`
`was instituted in IPR2014-00807. See Pet. 41–60; ’807 Dec. 24. Gillette’s
`
`arguments are substantively identical to the arguments made by TSMC in
`
`
`
`4
`
`
`
`IPR2014-00974
`Patent 7,604,716 B2
`
`
`
`
`
`
`IPR2014-00807. Compare Pet. 41–60, with ’807 Pet. 40–59. Gillette also
`
`proffers the same Declaration of Dr. Uwe Kortshagen that TSMC submitted
`
`in support of its Petition. Compare Ex. 1202, with IPR2014-00807
`
`Ex. 1202. Zond’s arguments in the Preliminary Response are essentially
`
`identical to those arguments that it made in IPR2014-00807. Compare
`
`Prelim. Resp. 20–55, with ’807 Prelim. Resp. 20–55.
`
`We incorporate our previous analysis regarding the asserted ground of
`
`unpatentability based on the combination of Wang and Kudryavtsev (’807
`
`Dec. 12–24), and determine that Gillette has demonstrated a reasonable
`
`likelihood of prevailing on this ground of unpatentability.
`
`C. Other Asserted Ground of Unpatentability
`
`Gillette also asserts that claims 14–18 and 25–32 are unpatentable
`
`under 35 U.S.C. § 103 as obvious over Mozgrin and Kudryavtsev. 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
`
`
`
`5
`
`
`
`IPR2014-00974
`Patent 7,604,716 B2
`
`
`
`
`
`
`Gillette would prevail in challenging claims 14–18 and 25–32 of the ’716
`
`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.
`
`Accordingly, it is:
`
`IV. ORDER
`
`ORDERED that pursuant to 35 U.S.C. § 314(a), an inter partes
`
`review is hereby instituted as to claims 14–18 and 25–32 as unpatentable
`
`under 35 U.S.C. § 103 as obvious over Wang and Kudryavtsev;
`
`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.
`
`
`
`
`
`6
`
`
`
`
`
`
`
`IPR2014-00974
`Patent 7,604,716 B2
`
`
`For PETITIONER:
`
`
`
`
`
`Michael Diener
`Larissa Park
`WILMER CUTLER PICKERING HALE AND DORR LLP
`michael.diener@wilmerhale.com
`larissa.park@wilmerhale.com
`
`
`
`For PATENT OWNER:
`
`Bruce J. Barker
`CHAO HADIDI STARK & BARKER LLP
`bbarker@chsblaw.com
`
`Gregory J. Gonsalves
`gonsalves@gonsalveslawfirm.com
`
`
`
`7
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