Paper 15
`Trials@uspto.gov
`571-272-7822
`
` Entered: October 10, 2014
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`THE GILLETTE COMPANY,
`Petitioner,
`
`v.
`
`ZOND, LLC,
`Patent Owner.
`____________
`
`Case IPR2014-00981
`Patent 7,147,759 B2
`____________
`
`
`
`
`Before KEVIN F. TURNER, DEBRA K. STEPHENS, JONI Y. CHANG,
`SUSAN L.C. MITCHELL, and JENNIFER M. MEYER,
`Administrative Patent Judges.
`
`
`CHANG, Administrative Patent Judge.
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`
`
`
`
`
`
`Trials@uspto.gov
`571-272-7822
`
` Entered: October 10, 2014
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`THE GILLETTE COMPANY,
`Petitioner,
`
`v.
`
`ZOND, LLC,
`Patent Owner.
`____________
`
`Case IPR2014-00981
`Patent 7,147,759 B2
`____________
`
`
`
`
`Before KEVIN F. TURNER, DEBRA K. STEPHENS, JONI Y. CHANG,
`SUSAN L.C. MITCHELL, and JENNIFER M. MEYER,
`Administrative Patent Judges.
`
`
`CHANG, Administrative Patent Judge.
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`IPR2014-00981
`Patent 7,147,759 B2
`
`
`
`
`
`
`I. INTRODUCTION
`
`The Gillette Company (“Gillette”) filed a Petition requesting an inter
`
`partes review of claims 1, 4, 10–12, 17, 18, and 44 of U.S. Patent No.
`
`7,147,759 B2 (Ex. 1001, “the ’759 patent”). Paper 3 (“Pet.”). Zond, LLC
`
`(“Zond”), filed a Preliminary Response. Paper 8 (“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 Gillette would prevail in challenging
`
`claims 1, 4, 10–12, 17, 18, and 44 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 1, 4, 10–12, 17, 18, and 44 of the ’759 patent.
`
`
`
`A. Related District Court Proceedings
`
`
`
`Gillette indicates that the ’759 patent was asserted in Zond, LLC v.
`
`Gillette, No.1:13-cv-11570-RGS (D. Mass.). Pet. 1. Gillette also identifies
`
`other proceedings in which Zond asserted the ’759 patent. Id.
`
`
`
`
`
`2
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`
`
`IPR2014-00981
`Patent 7,147,759 B2
`
`
`
`
`
`
`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 IPR2014-00443;
`
`GLOBALFOUNDRIES U.S., Inc. v. Zond, LLC., Case IPR2014-01086.
`
`In each of IPR2014-00444 and IPR2014-01087, we instituted an inter
`
`partes review of claims 1, 4, 10–12, 17, 18, and 44 of the ’759 patent, based
`
`on the following grounds of unpatentability:
`
`
`
`Claims
`
`Basis
`
`References
`
`1, 4, 10, 12
`
`§ 103(a) Wang and Kudryavtsev
`
`11
`
`17
`
`18
`
`44
`
`
`
`§ 103(a) Wang, Kudryavtsev, and Li
`
`§ 103(a) Wang, Kudryavtsev, and Müller-Horsche
`
`§ 103(a) Wang, Kudryavtsev, and Kobayashi
`
`§ 103(a) Wang, Kudryavtsev, and the Mozgrin Thesis
`
`In IPR2014-00443, we terminated the proceeding in light of the
`
`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 and Zond. IPR2014-00443, Papers 17, 18,
`
`Ex. 1035.
`
`Gillette filed a revised Motion for Joinder, seeking to join the instant
`
`proceeding with IPR2014-01086. Paper 13. In a separate decision, we grant
`
`Gillette’s revised Motion for Joinder, joining the instant proceeding with
`
`IPR2014-01087, and terminating the instant proceeding.
`
`
`
`3
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`
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`IPR2014-00981
`Patent 7,147,759 B2
`
`
`
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`
`
`C. Prior Art Relied Upon
`
`Gillette relies upon the following prior art references:
`
`
`
`Wang
`Müller-Horsche
`Kobayashi
`
`
`
`US 6,413,382 B1 July 2, 2002
`US 5,247,531
`Sept. 21, 1993
`US 5,968,327
`Oct. 19, 1999
`
`(Ex. 1005)
`(Ex. 1021)
`(Ex. 1022)
`
`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”).
`
`
`A. A. Kudryavtsev & V.N. Skrebov, Ionization Relaxation in a
`Plasma Produced by a Pulsed Inert-Gas Discharge, 28(1) SOV. PHYS.
`TECH. PHYS. 30–35 (1983) (Ex. 1004, “Kudryavtsev”).
`
`D.V. Mozgrin, High-Current Low-Pressure Quasi-Stationary
`Discharge in a Magnetic Field: Experimental Research, Thesis at
`Moscow Engineering Physics Institute (1994) (Ex. 1018, “Mozgrin
`Thesis”).1
`
`Li et al., Low-Temperature Magnetron Sputter-Deposition, Hardness,
`and Electrical Resistivity of Amorphous and Crystalline Alumina Thin
`Films, 18 J. VAC. SCI. TECH. A 2333–38 (2000) (Ex. 1020, “Li”).
`
`
`
`
`1 The Mozgrin Thesis is a Russian-language reference. The citations to the
`Mozgrin Thesis are to the certified English-language translation submitted
`by Intel (Ex. 1017).
`
`
`
`
`4
`
`
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`IPR2014-00981
`Patent 7,147,759 B2
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`
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`
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`D. Asserted Grounds of Unpatentability
`
`Gillette asserts the following grounds of unpatentability:
`
`Claims
`
`Basis
`
`References
`
`1, 10, 18
`
`§ 103(a) Mozgrin and Kudryavtsev
`
`4, 44
`
`§ 103(a) Mozgrin, Kudryavtsev, and the Mozgrin Thesis
`
`10–12
`
`§ 103(a) Mozgrin, Kudryavtsev, and Li
`
`17
`
`§ 103(a) Mozgrin, Kudryavtsev, and Müller-Horsche
`
`1, 4, 10, 12 § 103(a) Wang and Kudryavtsev
`
`11
`
`17
`
`18
`
`44
`
`
`
`§ 103(a) Wang, Kudryavtsev, and Li
`
`§ 103(a) Wang, Kudryavtsev, and Müller-Horsche
`
`§ 103(a) Wang, Kudryavtsev, and Kobayashi
`
`§ 103(a) Wang, Kudryavtsev, and the Mozgrin Thesis
`
`II. ANALYSIS
`
`A. Printed Publication under 35 U.S.C. § 102
`
`In its Petition, Gillette makes the same assertion that GlobalFoundries
`
`made in IPR2014-01086 concerning the Mozgrin Thesis—namely, the
`
`Mozgrin Thesis is a doctoral thesis at Moscow Engineering Physics Institute,
`
`published in 1994, and it is prior art under 35 U.S.C. § 102(b). Compare
`
`Pet. 4, with IPR2014-01086, Paper 2 (“’1086 Pet.”), 3. Gillette also proffers
`
`the same catalog entry for the Mozgrin Thesis at the Russian State Library.
`
`Compare Ex. 1019, with IPR2014-01086, Ex. 1019.
`
`In its Preliminary Response, Zond makes the same arguments that it
`
`made in IPR2014-01086 concerning the Mozgrin Thesis not being a prior art
`
`
`
`5
`
`
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`IPR2014-00981
`Patent 7,147,759 B2
`
`
`
`
`
`
`printed publication under 35 U.S.C. § 102. Compare Prelim. Resp. 56–58,
`
`with IPR2014-01086, Paper 11 (“’01086 Prelim. Resp.”), 56–58.
`
`We incorporate our previous analysis regarding this issue,
`
`IPR2014-01086, Paper 11 (“’1086 Dec.”), 7–9, and determine that Gillette
`
`has shown sufficiently at this stage of the proceeding that the Mozgrin
`
`Thesis is a “printed publication” within the meaning of 35 U.S.C. § 102(b).
`
`Consequently, the Mozgrin Thesis is available as prior art for the purposes
`
`of this decision to demonstrate that the challenged claims are unpatentable
`
`under 35 U.S.C. § 103(a).
`
`
`
`B. Claim Construction
`
`The parties make the same claim interpretation arguments that
`
`GlobalFoundries and Zond made in IPR2014-01086. Compare Pet. 15–18,
`
`with ’1086 Pet. 15–18; compare Prelim. Resp. 15–20, with ’1086 Prelim.
`
`Resp. 15–19.
`
`We construed the claim terms identified by GlobalFoundries and
`
`Zond in IPR2014-01086. See ’1086 Dec. 9–13. For the purposes of the
`
`instant decision, we incorporate our previous analysis and apply those claim
`
`constructions here.
`
`
`
`C. Obviousness over Wang in Combination with Other Cited Prior
`Art References
`
`In its Petition, Gillette asserts the same five grounds of unpatentability
`
`based on various combinations of Wang, Kudryavtsev, Li, Müller-Horsche,
`
`Kobayashi, and the Mozgrin Thesis, as those on which a trial was instituted
`
`in IPR2014-01086. See Pet. 41–60; ’1086 Dec. 29. Gillette’s arguments are
`
`
`
`6
`
`
`
`IPR2014-00981
`Patent 7,147,759 B2
`
`
`
`
`
`
`identical to the arguments made by GlobalFoundries in IPR2014-01086.
`
`Compare Pet. 41–60, with ’1086 Pet. 41–60. Gillette also proffers the same
`
`Declaration of Dr. Uwe Kortshagen that GlobalFoundries submitted in
`
`support of its Petition. Compare Ex. 1002, with IPR2014-01086 Ex. 1002.
`
`Zond’s arguments in the Preliminary Response are essentially identical to
`
`those arguments that it made in IPR2014-01086. Compare Prelim.
`
`Resp. 20–51, with ’1086 Prelim. Resp. 20–52.
`
`We incorporate our previous analysis regarding the five asserted
`
`grounds of unpatentability based on various combinations of Wang and
`
`other cited prior art references (’1086 Dec. 14–28), and determine that
`
`Gillette has demonstrated a reasonable likelihood of prevailing on those five
`
`grounds of unpatentability.
`
`
`
`D. Other Asserted Grounds of Unpatentability
`
`Gillette also asserts that the following grounds of unpatentability:
`
`Claims
`
`Basis
`
`References
`
`1, 10, 18
`
`§ 103(a) Mozgrin and Kudryavtsev
`
`4, 44
`
`10–12
`
`17
`
`
`
`§ 103(a) Mozgrin, Kudryavtsev, and the Mozgrin Thesis
`
`§ 103(a) Mozgrin, Kudryavtsev, and Li
`
`§ 103(a) Mozgrin, Kudryavtsev, and Müller-Horsche
`
`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
`
`
`
`7
`
`
`
`IPR2014-00981
`Patent 7,147,759 B2
`
`
`
`
`
`
`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
`
`Gillette would prevail in challenging claims 1, 4, 10–12, 17, 18, and 44 of
`
`the ’759 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, including the claim construction.
`
`
`
`
`
`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 for the following grounds of unpatentability:
`
`Claims
`
`Basis
`
`References
`
`1, 4, 10, 12
`
`§ 103(a) Wang and Kudryavtsev
`
`11
`
`17
`
`18
`
`44
`
`
`
`§ 103(a) Wang, Kudryavtsev, and Li
`
`§ 103(a) Wang, Kudryavtsev, and Müller-Horsche
`
`§ 103(a) Wang, Kudryavtsev, and Kobayashi
`
`§ 103(a) Wang, Kudryavtsev, and the Mozgrin Thesis
`
`FURTHER ORDERED that no other ground of unpatentability
`
`asserted in the Petition is authorized for this inter partes review; and
`
`
`
`8
`
`
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`IPR2014-00981
`Patent 7,147,759 B2
`
`
`
`
`
`
`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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`9
`
`
`
`IPR2014-00981
`Patent 7,147,759 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:
`
`Gregory J. Gonsalves
`gonsalves@gonsalveslawfirm.com
`
`Bruce J. Barker
`CHAO HADIDI STARK & BARKER LLP
`bbarker@chsblaw.com
`
`
`
`
`
`
`10
`
`
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