Paper 12
`Trials@uspto.gov
`571-272-7822
`
` Entered: October 24, 2014
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`THE GILLETTE COMPANY,
`Petitioner,
`
`v.
`
`ZOND, LLC,
`Patent Owner.
`____________
`
`Case IPR2014-00990
`Patent 7,811,421 B2
`____________
`
`
`
`
`
`Before KEVIN F. TURNER, DEBRA K. STEPHENS, JONI Y. CHANG,
`SUSAN L. C. MITCHELL, and JENNIFER M. MEYER,
`Administrative Patent Judges.
`
`
`STEPHENS, Administrative Patent Judge.
`
`
`
`
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`Trials@uspto.gov
`571-272-7822
`
` Entered: October 24, 2014
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`THE GILLETTE COMPANY,
`Petitioner,
`
`v.
`
`ZOND, LLC,
`Patent Owner.
`____________
`
`Case IPR2014-00990
`Patent 7,811,421 B2
`____________
`
`
`
`
`
`Before KEVIN F. TURNER, DEBRA K. STEPHENS, JONI Y. CHANG,
`SUSAN L. C. MITCHELL, and JENNIFER M. MEYER,
`Administrative Patent Judges.
`
`
`STEPHENS, Administrative Patent Judge.
`
`
`
`
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`IPR2014-00990
`Patent 7,811,421 B2
`
`
`I. INTRODUCTION
`
`On June 19, 2014, The Gillette Company ( “Gillette”) filed a Petition
`
`requesting inter partes review of claims 3–7, 18–20, 31, 32, 36, 40, 41, 44,
`
`and 45 of U.S. Patent No. 7,811,421 B2 (“the ’421 patent”). Paper 2
`
`(“Pet.”). Zond, LLC (“Zond”) filed a Patent Owner 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.
`
`Taking into account Zond’s Patent Owner Preliminary Response, we
`
`conclude that the information presented in the Petition demonstrates there is
`
`a reasonable likelihood that Gillette would prevail in challenging claims 3–7,
`
`18–20, 31, 32, 36, 40, 41, 44, and 45 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 3–7, 18–20, 31, 32, 36, 40, 41, 44, and 45
`
`of the ’421 patent.
`
`A. Related District Court Proceedings
`
`
`
`Gillette indicates the ’421 patent was asserted in Zond, LLC v. The
`
`Gillette Company, No.1:13-cv-11567-DJC (D. Mass.). Pet. 1; Paper 6.
`
`2
`
`
`
`
`IPR2014-00990
`Patent 7,811,421 B2
`
`
`Gillette also identifies other matters where Zond asserted the claims of the
`
`’421 patent against third parties. Id.
`
`B. Related Inter Partes Reviews
`
`Intel Corporation (“Intel”) filed a Petition to institute an inter partes
`
`review in Intel Corp. v. Zond, LLC., Case IPR2014-00473 (PTAB)
`
`(“IPR2014-00473”), challenging the same claims based on the same grounds
`
`of unpatentability as those in the instant proceeding. Compare IPR2014-
`
`00473, Paper 2 (“’473 Pet.”), 3–60, with Pet. 3–60. On September 2, 2014,
`
`we instituted an inter partes review of claims 3–7, 18–20, 31, 32, 36, 40, 41,
`
`44, and 45 of the ’421 patent in IPR2014-00473 (Paper 11, “’473 Dec.”),
`
`based on the following grounds of unpatentability:
`
`Claims
`
`Basis References
`
`3–5, 18–20, 36, 40, 41
`
`§ 103 Wang and Kawamata
`
`6, 31, 44, and 45
`
`§ 103 Wang and Lantsman
`
`7 and 32
`
`§ 103 Wang, Lantsman, and Kawamata
`
`
`
`The trial, however, was terminated 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. IPR2014-00473, Papers 13, 14. Gillette has filed a Motion for
`
`Joinder, seeking to join the instant proceeding with IPR2014-00473. Paper 7
`
`(“Mot.”).
`
`The following Petitions for inter partes review also challenge the
`
`3
`
`
`
`
`IPR2014-00990
`Patent 7,811,421 B2
`
`
`same claims based on the same grounds of unpatentability as those in
`
`IPR2014-00473 and in the instant proceeding: Taiwan Semiconductor
`
`Manuf. Co., Ltd. v. Zond, LLC., Case IPR2014-00805; Fujitsu
`
`Semiconductor Ltd. v. Zond, LLC, Case IPR2014-00851; and Advanced
`
`Micro Devices, Inc. v. Zond, LLC, Case IPR2014-01069.
`
`Gillette also filed a revised Motion for Joinder, seeking to join the
`
`instant proceeding with Taiwan Semiconductor Manufacturing Co., Ltd. v.
`
`Zond, LLC., Case IPR2014-00805 (PTAB) (“IPR2014-00805”). Paper 9
`
`(“Mot.”). In a separate decision, we grant Gillette’s revised Motion for
`
`Joinder, joining the instant proceeding with IPR2014-00805, and terminating
`
`the instant proceeding.
`
`
`
`C. The Prior Art Relied Upon
`
`Gillette relies upon the following prior art references:
`
`July 2, 2002
`Feb. 20, 2001
`Sep. 28, 1999
`
`(Ex. 1104)
`(Ex. 1105)
`(Ex. 1109)
`
` US 6,413,382 B1
` US 6,190,512 B1
` US 5,958,155
`
`
`Wang
`Lantsman
`Kawamata
`
`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. 1103) (hereinafter “Mozgrin”).
`
`
`
`
`
`
`4
`
`
`
`
`IPR2014-00990
`Patent 7,811,421 B2
`
`
`D. The Asserted Grounds of Unpatentability
`
`Gillette asserts the following grounds of unpatentability:
`
`Claims
`
`Basis
`
`References
`
`3–5, 36, 40, and 41
`
`§ 103 Mozgrin and Kawamata
`
`3–5, 18–20, 36, 40, and 41
`
`§ 103 Wang and Kawamata
`
`6, 31, 44, and 45
`
`§ 103 Mozgrin and Lantsman
`
`7, 18–20, and 32
`
`§ 103 Mozgrin, Lantsman, and Kawamata
`
`6, 31, 44, and 45
`
`§ 103 Wang and Lantsman
`
`7 and 32
`
`§ 103 Wang, Lantsman, and Kawamata
`
`
`
`II. DISCUSSION
`
`A. Claim Interpretation
`
`The parties make the same claim interpretation arguments that TSMC
`
`and Zond made in IPR2014-00805. Compare Pet. 12–15, with ’805 Pet. 11–
`
`13; compare Prelim. Resp. 17–19, with ’805 Prelim. Resp. 17–19.
`
`We construed the claim terms identified by TSMC and Zond in IPR2014-
`
`00805. See ’805 Dec. 7–10. For the purposes of the instant decision, we
`
`incorporate our previous analysis and apply those claim constructions here.
`
`B. Obviousness over Wang in Combination with Other Cited
`Prior Art References
`
`In its Petition, Gillette asserts the same grounds of unpatentability
`
`based on the combinations of Wang, Lantsman, and Kawanata, as those on
`
`which a trial was instituted in IPR2014-00805. See Pet. 30–42, 55–60; ’805
`
`Dec. 26–27. Gillette’s arguments are substantively identical to the
`5
`
`
`
`
`IPR2014-00990
`Patent 7,811,421 B2
`
`
`arguments made by TSMC in IPR2014-00805. Compare Pet. 30–42, 55–60,
`
`with ’805 Pet. 30–42, 55–60. Gillette also proffers the same Declaration of
`
`Dr. Uwe Kortshagen that TSMC submitted in support of its Petition.
`
`Compare Ex. 1102, with IPR2014-00805 Ex. 1102. Zond’s arguments in the
`
`Preliminary Response are essentially identical to those arguments that it
`
`made in IPR2014-00805. Compare Prelim. Resp. 44–52, with ’805 Prelim.
`
`Resp. 44–52.
`
`We incorporate our previous analysis regarding the asserted grounds
`
`of unpatentability based on the combinations of Wang and other cited prior
`
`art references (’805 Dec. 11–25), and determine that Gillette has
`
`demonstrated a reasonable likelihood of prevailing on the proffered grounds
`
`of unpatentability.
`
`
`
`C. Other Asserted Grounds of Unpatentability
`
`Gillette also asserts the following ground of unpatentability:
`
`Claims
`
`Basis
`
`References
`
`3–5, 36, 40, and 41
`
`§ 103
`
`Mozgrin and Kawamata
`
`6, 31, 44, and 45
`
`§ 103
`
`Mozgrin and Lantsman
`
`7, 18–20, and 32
`
`§ 103
`
`Mozgrin, Lantsman, and Kawamata
`
`
`
`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
`
`6
`
`
`
`
`IPR2014-00990
`Patent 7,811,421 B2
`
`
`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 the other 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 based on the information
`
`presented in the Petition, taking into account Zond’s Preliminary Response,
`
`Gillette has demonstrated a reasonable likelihood that at least one of the
`
`challenged claims is unpatentable based on the grounds set forth in the
`
`ORDER. Therefore, we institute an inter partes review of claims 3–7, 18–
`
`20, 31, 32, 36, 40, 41, 44, and 45. 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:
`
`7
`
`
`
`
`IPR2014-00990
`Patent 7,811,421 B2
`
`
`Claim
`
`Basis
`
`References
`
`3–5, 18–20, 36, 40, and 41
`
`§ 103 Wang and Kawamata
`
`6, 31, 44, and 45
`
`§ 103 Wang and Lantsman
`
`7 and 32
`
`
`
`§ 103 Wang, Lantsman, and Kawamata
`
`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.
`
`
`
`
`
`
`
`8
`
`
`
`
`IPR2014-00990
`Patent 7,811,421 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
`
`
`
`
`
`9
`
`
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