`Trials@uspto.gov
`571-272-7822
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` Entered: October 17, 2014
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
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`THE GILLETTE COMPANY,
`Petitioner,
`
`v.
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`ZOND, LLC,
`Patent Owner.
`____________
`
`Case IPR2014-00975
`Patent 7,604,716 B2
`____________
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`
`
`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.
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`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
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`IPR2014-00975
`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 19–24 (“the challenged claims”) of U.S. Patent No.
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`7,604,716 B2 (Ex. 1301, “the ’716 patent”). Paper 3 (“Pet.”). Zond, LLC
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`(“Zond”) timely filed a Preliminary Response. Paper 7 (“Prelim. Resp.”).
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`We have jurisdiction under 35 U.S.C. § 314, which provides that an inter
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`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 19–24. Accordingly,
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`pursuant to 35 U.S.C. § 314, we authorize an inter partes review to be
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`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 IPR2014-00523;
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`Taiwan Semiconductor Manuf. Co., v. Zond, LLC., Case IPR2014-00808;
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`Fujitsu Semiconductor Ltd. v. Zond, LLC, Case IPR2014-00849; and
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`Advanced Micro Devices, Inc. v. Zond, LLC, Case IPR2014-01067.
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`IPR2014-00975
`Patent 7,604,716 B2
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`In IPR2014-00523, 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). IPR2014-00523, Paper 7; IPR2014-00520, Ex. 1023.
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`In each of IPR2014-00808, IPR2014-00849, and IPR2014-01067, we
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`instituted inter partes review of claims 19–24 of the ’716 patent, based on
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`the following ground of unpatentability:
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`Claims
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`21
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`Basis
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`References
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`§ 103 Wang and Kudryavtsev
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`19 and 20
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`§ 103 Wang, Kudryavtsev, and Lantsman
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`22–24
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`§ 103 Wang, Kudryavtsev, and Mozgrin
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`We joined IPR2014-00849 and IPR2014-01067 with IPR2014-00808, and
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`terminated IPR2014-00849 and IPR2014-01067. See IPR2014-00849, Paper
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`12; and IPR2014-01067, Paper 12.
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`Gillette filed a revised Motion for Joinder with IPR2014-00808.
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`Paper 10. In a separate Decision, we grant Gillette’s revised Motion, joining
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`the instant proceeding with IPR2014-00808, and terminating the instant
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`proceeding. Consequently, once that Decision is entered, IPR2014-00808
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`will be the only pending inter partes review for reviewing claims 19–24 of
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`the ’716 patent.
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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. 1304)
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`Lantsman US 6,190,512 B1
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` Feb. 20, 2001
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`(Ex. 1306)
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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. 1303) (“Mozgrin”).
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`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. 1305) ( “Kudryavtsev”).
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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. 1307) (“Mozgrin Thesis”).1
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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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`22–24
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`19, 20
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`21
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`21
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`19, 20
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`22–24
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`§ 103
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`§ 103
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`§ 103
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`§ 103
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`§ 103
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`§ 103
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`Mozgrin and Kudryavtsev
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`Mozgrin, Kudryavtsev, and Lantsman
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`Mozgrin, Kudryavtsev, and Mozgrin
`Thesis
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`Wang and Kudryavtsev
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`Wang, Kudryavtsev, and Lantsman
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`Wang, Kudryavtsev, and Mozgrin
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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 Taiwan
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`Semiconductor Manufacturing Company, Ltd. and TSMC North America
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`Corp. (collectively, “TSMC”) and Zond made in IPR2014-00808. Compare
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`1 The Mozgrin Thesis is a Russian-language reference. Petitioner has also
`submitted a certified English-language translation (Ex. 1308).
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`Pet. 13–15, with ’808 Pet. 13–15; compare Prelim. Resp. 15–20, with ’808
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`Prelim. Resp. 15–20.
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`We construed several claim terms identified by TSMC and Zond in
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`IPR2014-00808. See ’808 Dec. 6–11. For the purposes of the instant
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`decision, we incorporate our previous analysis and apply those claim
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`constructions here.
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`B. Obviousness over Wang in Combination with
`Other Cited Prior Art References
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`In its Petition, Gillette asserts the same three grounds of
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`unpatentability based on the combinations of Wang, Kudryavtsev,
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`Lantsman, and Mozgrin as those on which a trial was instituted in IPR2014-
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`00808. See Pet. 39–56; ’808 Dec. 31. Gillette’s arguments are substantively
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`identical to the arguments made by TSMC in IPR2014-00808. Compare
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`Pet. 39–56, with ’808 Pet. 39–56. Gillette also proffers the same Declaration
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`of Dr. Uwe Kortshagen that TSMC submitted in support of its Petition.
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`Compare Ex. 1302, with IPR2014-00808 Ex. 1302. Zond’s arguments in the
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`Preliminary Response are essentially identical to those arguments that it
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`made in IPR2014-00808. Compare Prelim. Resp. 20–59, with ’808 Prelim.
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`Resp. 20–59.
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`We incorporate our previous analysis regarding the asserted grounds
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`of unpatentability based on the combination of Wang, Kudryavtsev,
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`Lantsman, and Mozgrin (’808 Dec. 12–30), and determine that Gillette has
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`demonstrated a reasonable likelihood of prevailing on this ground of
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`unpatentability.
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`C. Other Asserted Grounds of Unpatentability
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`Gillette also asserts that claims 19 and 20 are unpatentable under 35
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`U.S.C. § 103 as obvious over Mozgrin, Kudryavtsev, and Lantsman; claim
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`21 is unpatentable under 35 U.S.C. § 103 as obvious over Mozgrin,
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`Kudryavtsev, and Mozgrin Thesis; and claims 22–24 are unpatentable under
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`35 U.S.C. § 103 as obvious over Mozgrin and Kudryavtsev. The Board’s
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`rules for inter partes review proceedings, including those pertaining to
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`institution, are “construed to secure the just, speedy, and inexpensive
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`resolution of every proceeding.” 37 C.F.R. § 42.1(b); see also 35 U.S.C.
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`§ 316(b) (regulations for inter partes review proceedings take into account
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`“the efficient administration of the Office” and “the ability of the Office to
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`timely complete [instituted] proceedings”). Therefore, we exercise our
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`discretion and do not institute a review based on these other asserted
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`grounds for reasons of administrative necessity to ensure timely completion
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`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 19–24 of the ’716 patent as
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`unpatentable under 35 U.S.C. § 103(a). At this stage in the proceeding, we
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`have not made a final determination with respect to the patentability of the
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`challenged claims.
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`Accordingly, it is:
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`IV. ORDER
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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 for the following grounds:
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`1. Claim 21 as unpatentable under 35 U.S.C. § 103 as obvious
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`over Wang and Kudryavtsev;
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`2. Claims 19 and 20 as unpatentable under 35 U.S.C. § 103 as
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`obvious over Wang, Kudryavtsev, and Lantsman; and
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`3. Claims 22–24 as unpatentable under 35 U.S.C. § 103 as
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`obvious over Wang, Kudryavtsev, and Mozgrin;
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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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`IPR2014-00975
`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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`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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