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 IPR2014-00988
`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 IPR2014-00988
`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
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`IPR2014-00988
`Patent 7,147,759 B2
`
`
`
`
`
`
`I. INTRODUCTION
`
`The Gillette Company (“Gillette”) filed a Petition requesting an inter
`
`partes review of claim 40 of U.S. Patent No. 7,147,759 B2 (Ex. 1401, “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
`
`claim 40 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
`
`claim 40 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
`
`
`
`IPR2014-00988
`Patent 7,147,759 B2
`
`
`
`
`
`
`B. Related Inter Partes Reviews
`
`The following Petitions for inter partes review also challenge the
`
`same claim based on the same grounds of unpatentability as those in the
`
`instant proceeding: Intel Corp. v. Zond, LLC., Case IPR2014-00447;
`
`GLOBALFOUNDRIES U.S., Inc. v. Zond, LLC., Case IPR2014-01083.
`
`In each of IPR2014-00447 and IPR2014-01083, we instituted an inter
`
`partes review of claim 40 of the ’759 patent, based on the sole ground that
`
`claim 40 is unpatentable under 35 U.S.C. § 103(a) over the combination of
`
`Wang and Kudryavtsev.
`
`In IPR2014-00447, 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. IPR2014-00447, Papers 15, 16;
`
`IPR2014-00443, Ex. 1035.
`
`Gillette filed a revised Motion for Joinder with IPR2014-01083.
`
`Paper 10. In a separate decision, we grant Gillette’s revised Motion for
`
`Joinder, joining the instant proceeding with IPR2014-01083, and terminating
`
`the instant proceeding.
`
`
`
`C. Prior Art Relied Upon
`
`Gillette relies upon the following prior art references:
`
`Wang
`
`
`
`
`
`
`US 6,413,382 B1
`
` July 2, 2002
`
`(Ex. 1405)
`
`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. 1403, “Mozgrin”).
`
`
`
`
`3
`
`
`
`IPR2014-00988
`Patent 7,147,759 B2
`
`
`
`
`
`
`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. 1404, “Kudryavtsev”).
`
`
`D. Asserted Grounds of Unpatentability
`
`Gillette asserts the following grounds of unpatentability:
`
`Claim
`
`Basis
`
`References
`
`40
`
`40
`
`
`
`§ 103(a)
`
`Mozgrin and Kudryavtsev
`
`§ 103(a)
`
`Wang and Kudryavtsev
`
`II. ANALYSIS
`
`A. Claim Construction
`
`The parties make the same claim interpretation arguments that
`
`GlobalFoundries and Zond made in IPR2014-01083. Compare Pet. 15–20,
`
`with IPR2014-01083, Paper 2 (“’1083 Pet.”), 14–20; compare Prelim. Resp.
`
`16–26, with IPR2014-01083, Paper 7 (“’1083 Prelim. Resp.”), 16–26.
`
`We construed the claim terms identified by GlobalFoundries and
`
`Zond in IPR2014-001083. See IPR2014-01083, Paper 9 (“’1083 Dec.”), 6–
`
`14. For the purposes of the instant decision, we incorporate our previous
`
`analysis and apply those claim constructions here.
`
`
`
`B. Obviousness over the Combination Wang and Kudryavtsev
`
`In its Petition, Gillette asserts the same ground of unpatentability
`
`based on the combination of Wang and Kudryavtsev, as the ground of
`
`unpatentability on which a trial was instituted in IPR2014-001083.
`
`
`
`4
`
`
`
`IPR2014-00988
`Patent 7,147,759 B2
`
`
`
`
`
`
`See Pet. 39–54; ’1083 Dec. 30. Gillette’s arguments are substantially
`
`identical to the arguments made by GlobalFoundries in IPR2014-001083.
`
`Compare Pet. 39–54, with ’1083 Pet. 38–53. Gillette also proffers the same
`
`Declaration of Dr. Uwe Kortshagen that GlobalFoundries submitted in
`
`support of its Petition. Compare Ex. 1402, with IPR2014-001083, Ex. 1402.
`
`Zond’s arguments in the Preliminary Response are essentially identical to
`
`those arguments that it made in IPR2014-001083. Compare Prelim. Resp.
`
`26–55, with ’1083 Prelim. Resp. 26–55.
`
`We incorporate our previous analysis regarding the asserted ground of
`
`unpatentability based on the combination of Wang and Kudryavtsev (’1083
`
`Dec. 14–29), and determine that Gillette has demonstrated a reasonable
`
`likelihood of prevailing on the asserted ground of unpatentability.
`
`
`
`C. Other Asserted Ground of Unpatentability
`
`Gillette also asserts that claim 40 is unpatentable under 35 U.S.C.
`
`§ 103(a) over the combination of 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 this asserted ground for
`
`reasons of administrative necessity to ensure timely completion of the
`
`instituted proceeding. See 37 C.F.R. § 42.108(a).
`
`
`
`
`
`5
`
`
`
`IPR2014-00988
`Patent 7,147,759 B2
`
`
`
`
`
`
`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 claim 40 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 claim, 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 sole ground that claim 40 of the ’759
`
`patent is unpatentable under 35 U.S.C. § 103(a) over the combination of
`
`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
`
`
`
`
`
`IPR2014-00988
`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
`
`
`
`
`
`7
`
`
`
`
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