Paper 12
`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 IPR2014-00985
`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 IPR2014-00985
`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
`
`
`
`
`
`
`
`
`
`
`IPR2014-00985
`Patent 7,147,759 B2
`
`
`
`
`
`
`I. INTRODUCTION
`The Gillette Company (“Gillette”) filed a Petition requesting an inter
`partes review of claims 20, 21, 34–36, 38, 39, 47, and 49 of U.S. Patent No.
`7,147,759 B2 (Ex. 1201, “the ’759 patent”). Paper 3 (“Pet.”). Zond, LLC
`(“Zond”), filed a Preliminary Response. Paper 7 (“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 20, 21, 34–36, 38, 39, 47, and 49 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 20, 21, 34–36, 38, 39, 47, and 49 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-11567-DJD (D. Mass.). Pet. 1. Gillette also identifies
`other proceedings in which Zond asserted the ’759 patent. Id.
`
`
`
`
`2
`
`
`
`IPR2014-00985
`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 IPR2014-00445;
`Taiwan Semiconductor Mfg. Co., Ltd. v. Zond, LLC., Case IPR2014-00781;
`Fujitsu Semiconductor Ltd. v. Zond, LLC, Case IPR2014-00845; and
`Advanced Micro Devices, Inc. v. Zond, LLC, Case IPR2014-01047.
`In each of IPR2014-00445, IPR2014-00781, IPR2014-00845, and
`IPR2014-01047, we instituted an inter partes review of claims 20, 21, 34–
`36, 38, 39, 47, and 49 of the ’759 patent, based on the following grounds of
`unpatentability:
`
`Claims
`20, 21, 34, 36, 47
`35
`38
`39
`
`49
`
`References
`Basis
`§ 103 Wang and Kudryavtsev
`§ 103 Wang, Kudryavtsev, and Li
`§ 103 Wang, Kudryavtsev, and Yamaguchi
`§ 103 Wang, Kudryavtsev, and Müller-Horsche
`Wang, Kudryavtsev, and the Mozgrin
`Thesis
`
`§ 103
`
`
`
`We terminated IPR2014-00445, IPR2014-00845, and IPR2014-01047,
`but not IPR2014-00781. In IPR2014-00445, 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. IPR2014-00445, Papers 14, 15;
`IPR2014-00443, Ex. 1035. We further joined IPR2014-00845 and
`
`
`
`3
`
`
`
`IPR2014-00985
`Patent 7,147,759 B2
`
`
`
`
`
`
`IPR2014-01047 with IPR2014-00781, and terminated IPR2014-00845 and
`IPR2014-01047.
`Additionally, Gillette filed a revised Motion for Joinder with
`IPR2014-00781. Paper 10 (“Mot.”). In a separate Decision, we grant
`Gillette’s revised Motion, joining the instant proceeding with
`IPR2014-00781, and terminating the instant proceeding.
`Consequently, once that Decision is entered, IPR2014-00781 will be
`the only inter partes review pending before us for reviewing claims 20, 21,
`34–36, 38, 39, 47, and 49 of the ’759 patent.
`
`
`C. Prior Art Relied Upon
`
`Gillette relies upon the following prior art references:
`Wang
`
`
`US 6,413,382 B1
` July 2, 2002
`Müller-Horsche
`US 5,247,531
` Sep. 21, 1993
`Yamaguchi
`
`EP 1 113 088 A1
` July 4, 2001
`
`(Ex. 1205)
`(Ex. 1221)
`(Ex. 1222)
`
`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”).
`
`A.A. Kudryavtsev and 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. 1204, “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. 1218, “Mozgrin Thesis”).1
`
`
`1 The Mozgrin Thesis is a Russian-language reference. The citations to the
`Mozgrin Thesis are to the certified English-language translation (Ex. 1217).
`
`
`
`
`4
`
`
`
`IPR2014-00985
`Patent 7,147,759 B2
`
`
`
`
`
`
`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. 1220, “Li”).
`
`
`D. Asserted Grounds of Unpatentability
`Gillette asserts the following grounds of unpatentability:
`
`Claims
`
`Basis
`
`References
`
`20, 34
`
`§ 103 Mozgrin and Kudryavtsev
`
`21, 47, 49
`
`§ 103 Mozgrin, Kudryavtsev, and the Mozgrin Thesis
`
`34–36
`
`38
`
`39
`20, 21, 34,
`36, 47
`35
`
`38
`
`39
`
`49
`
`
`
`§ 103 Mozgrin, Kudryavtsev, and Li
`
`§ 103 Mozgrin, Kudryavtsev, and Yamaguchi
`
`§ 103 Mozgrin, Kudryavtsev, and Müller-Horsche
`
`§ 103 Wang and Kudryavtsev
`
`§ 103 Wang, Kudryavtsev, and Li
`
`§ 103 Wang, Kudryavtsev, and Yamaguchi
`
`§ 103 Wang, Kudryavtsev, and Müller-Horsche
`
`§ 103 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 Taiwan
`Semiconductor Manufacturing Company, Ltd. and TSMC North America
`5
`
`
`
`
`
`IPR2014-00985
`Patent 7,147,759 B2
`
`
`
`
`
`
`Corp. (collectively, “TSMC”) made in IPR2014-00781 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. 3, with IPR2014-00781, Paper 2 (“’781
`Pet.”), 4. Gillette also proffers the same catalog entry for the Mozgrin
`Thesis at the Russian State Library. Compare Ex. 1219, with IPR2014-
`00781, Ex. 1219.
`In its Preliminary Response, Zond makes the same arguments that it
`made in IPR2014-00781 concerning the Mozgrin Thesis not being a prior art
`printed publication under 35 U.S.C. § 102. Compare Prelim. Resp. 57–59,
`with IPR2014-00781, Paper 11 (“’781 Prelim. Resp.”), 56–58.
`We incorporate our previous analysis regarding this issue, Decision on
`Institution entered in IPR2014-00781, Paper 13 (“’781 Dec.”), 6–8, 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 TSMC
`and Zond made in IPR2014-00781. Compare Pet. 15–18, with ’781 Pet. 15–
`18; compare Prelim. Resp. 17–21, with ’781 Prelim. Resp. 16–21.
`We construed the claim terms identified by TSMC and Zond in
`IPR2014-00781. See ’781 Dec. 8–12. For the purposes of the instant
`
`
`
`6
`
`
`
`IPR2014-00985
`Patent 7,147,759 B2
`
`
`
`
`
`
`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, Yamaguchi,
`Müller-Horsche, and the Mozgrin Thesis, as those on which a trial was
`instituted in IPR2014-00781. See Pet. 43–60; ’781 Dec. 29. Gillette’s
`arguments are substantively identical to the arguments made by TSMC in
`IPR2014-00781. Compare Pet. 43–60, with ’781 Pet. 43–60. Gillette also
`proffers the same Declaration of Dr. Uwe Kortshagen that TSMC submitted
`in support of its Petition. Compare Ex. 1202, with IPR2014-00781, Ex.
`1202. Zond’s arguments in the Preliminary Response are essentially
`identical to those arguments that it made in IPR2014-00781. Compare
`Prelim. Resp. 22–52, with ’781 Prelim. Resp. 21–51.
`We incorporate our previous analysis regarding the asserted grounds
`of unpatentability based on the aforementioned combinations of Wang,
`Kudryavtsev, and Mozgrin (’781 Dec. 12–27), and determine that Gillette
`has demonstrated a reasonable likelihood of prevailing on those asserted
`grounds of unpatentability.
`
`
`
`
`
`
`
`
`
`7
`
`
`
`IPR2014-00985
`Patent 7,147,759 B2
`
`
`
`
`
`
`D. Other Asserted Grounds of Unpatentability
`
`Gillette also asserts the following grounds of unpatentability:
`
`Claims
`20, 34
`21, 47, 49
`34–36
`38
`39
`
`References
`Basis
`§ 103(a) Mozgrin and Kudryavtsev
`§ 103(a) Mozgrin, Kudryavtsev, and the Mozgrin Thesis
`§ 103(a) Mozgrin, Kudryavtsev, and Li
`§ 103(a) Mozgrin, Kudryavtsev, and Yamaguchi
`§ 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
`our discretion and do not institute a review based on this asserted ground 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 20, 21, 34–36, 38, 39, 47, and
`49 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.
`
`
`
`8
`
`
`
`IPR2014-00985
`Patent 7,147,759 B2
`
`
`
`
`
`
`
`
`
`
`IV. ORDER
`For the foregoing reasons, 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:
`Claims
`Basis
`References
`20, 21, 34, 36, 47 § 103(a) Wang and Kudryavtsev
`
`35
`
`38
`
`39
`
`49
`
`§ 103(a) Wang, Kudryavtsev, and Li
`
`§ 103(a) Wang, Kudryavtsev, and Yamaguchi
`
`§ 103(a) Wang, Kudryavtsev, and Müller-Horsche
`§ 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
`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.
`
`
`
`
`
`
`
`9
`
`
`
`IPR2014-00985
`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
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
