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 IPR2014-00991
`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 IPR2014-00991
`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
`
`
`
`
`
`
`
`IPR2014-00991
`Patent 7,811,421 B2
`
`
`I. INTRODUCTION
`
`On June 19, 2014, The Gillette Company (“Gillette”) filed a Petition
`
`requesting an inter partes review of claims 1, 2, 8, 10–13, 15–17, 22–25,
`
`27–30, 33, 34, 38, 39, 42, 43, and 46–48 (“the challenged claims”) of U.S.
`
`Patent No. 7,811,421 B2 (“the ’421 patent”). Paper 1 (“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 Preliminary Response, and based on the
`
`information presented in the Petition, we are persuaded a reasonable
`
`likelihood exists that Gillette would prevail in challenging claims 1, 2, 8,
`
`10–13, 15–17, 22–25, 27–30, 33, 34, 38, 39, 42, 43, and 46–48 as
`
`unpatentable. Pursuant to 35 U.S.C. § 314, we hereby authorize an inter
`
`partes review as to claims 1, 2, 8, 10–13, 15–17, 22–25, 27–30, 33, 34, 38,
`
`39, 42, 43, and 46–48 of the ’421 patent.
`
`A. Related District Court Proceedings
`
`
`
`Gillette indicates that the ’421 patent was asserted in Zond, LLC v.
`
`The Gillette Company, No.1:13-cv-11567-DJC (D. Mass.). Pet. 1; Paper 5.
`
`2
`
`
`
`IPR2014-00991
`Patent 7,811,421 B2
`
`
`Gillette also identifies other proceedings in which Zond asserted the ’421
`
`patent. Id.
`
`B. Related Inter Partes Review
`
`Intel Corporation (“Intel”) filed a Petition to institute an inter partes
`
`review in Intel Corp. v. Zond, LLC., Case IPR2014-00468 (PTAB)
`
`(“IPR2014-00468”), challenging the same claims based on the same grounds
`
`of unpatentability as those in the instant proceeding. Compare IPR2014-
`
`00468, Paper 4 (“’468 Pet.”), 2–58, with Pet. 3–59. On September 2, 2014,
`
`we instituted an inter partes review of claims 1, 2, 8, 10–13, 15–17, 22–25,
`
`27–30, 33, 34, 38, 39, 42, 43, and 46–48 of the ’421 patent in IPR2014-
`
`00468 (Paper 12, “’468 Dec.”), based on the following grounds of
`
`unpatentability:
`
`Claims
`
`Basis
`
`References
`
`1, 2, 8, 10–13, 16, 17, 22–25,
`28–30, 33, 34, 39, 42, 43, 46–48
`15, 27, 38
`
`§ 102 Wang
`
`§ 103 Wang and Mozgrin
`
`
`
`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. IPR2014-00468, Papers 14, 15. Gillette has filed a Motion for
`
`Joinder, seeking to join the instant proceeding with IPR2014-00468. Paper 7
`
`(“Mot.”).
`
`The following Petitions for inter partes review also challenge the
`
`3
`
`
`
`IPR2014-00991
`Patent 7,811,421 B2
`
`
`same claims based on the same grounds of unpatentability as those in
`
`IPR2014-00468 and in the instant proceeding: Taiwan Semiconductor
`
`Manufacturing Co., Ltd. v. Zond, LLC, Case IPR 2014-00800 (PTAB),
`
`Paper 1; Fujitsu Semiconductor Ltd. v. Zond, LLC, Case IPR2014-00844
`
`(PTAB), Paper 1; and Advanced Micro Devices, Inc. v. Zond, LLC,
`
`Case IPR2014-01037 (PTAB), Paper 2.
`
`Gillette also filed a revised Motion for Joinder, seeking to join the
`
`instant proceeding with Taiwan Semiconductor Manufacturing Co., Ltd. v.
`
`Zond, LLC., Case IPR2014-00800 (PTAB) (“IPR2014-00800”). Paper 10
`
`(“Mot.”). In a separate decision, we grant Gillette’s revised Motion for
`
`Joinder, joining the instant proceeding with IPR2014-00800, 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
`
`(Ex. 1004)
`(Ex. 1005)
`
` US 6,413,382 B1
` US 6,190,512 B1
`
`Wang
`Lantsman
`
`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) (hereinafter “Mozgrin”).
`
`
`4
`
`
`
`IPR2014-00991
`Patent 7,811,421 B2
`
`
`D. The Asserted Grounds of Unpatentability
`
`Gillette asserts the following grounds of unpatentability:
`
`Claims
`
`Basis
`
`References
`
`1, 2, 8, 10–13, 15, 16, 34, 38,
`39, 43, and 46–48
`1, 2, 8, 10–13, 16, 17, 22–25,
`28–30, 33, 34, 39, 42, 43, and
`46–48
`
`§ 102 Mozgrin
`
`§ 102 Wang
`
`17, 22–25, 27–30, 33, and 42
`
`§ 103 Mozgrin and Lantsman
`
`15, 27, and 38
`
`§ 103 Wang and Mozgrin
`
`
`
`II. DISCUSSION
`
`A. Claim Interpretation
`
`The parties make the same claim interpretation arguments that Taiwan
`
`Semiconductor Manufacturing Company, Ltd. And TSMC North America
`
`Corporation (collectively, “TSMC”) and Zond made in IPR2014-00800.
`
`Compare Pet. 11–14, with ’800 Pet. 12–14; compare Prelim. Resp. 13–15,
`
`with ’800 Prelim. Resp. 13–15.
`
`We construed the claim terms identified by TSMC and Zond in
`
`IPR2014-00800. See ’800 Dec. 5-8. For the purposes of the instant
`
`decision, we incorporate our previous analysis and apply those claim
`
`constructions here.
`
`B. Anticipation over Wang
`
`In its Petition, Gillette asserts the same ground of unpatentability based
`
`on Wang, as that on which a trial was instituted in IPR2014-00800. See Pet.
`
`5
`
`
`
`IPR2014-00991
`Patent 7,811,421 B2
`
`
`33–50; ’800 Dec. 22. Gillette’s arguments are substantively identical to the
`
`arguments made by TSMC in IPR2014-00800. Compare Pet. 33–50, with
`
`’800 Pet. 33–50. Gillette also proffers the same Declaration of Dr. Uwe
`
`Kortshagen that TSMC submitted in support of its Petition. Compare Ex.
`
`1002, with IPR2014-00800, Ex. 1002. Zond’s arguments in the Preliminary
`
`Response are essentially identical to those arguments that it made in
`
`IPR2014-00800. Compare Prelim. Resp. 26–29, with ’800 Prelim. Resp.
`
`26–29.
`
`We incorporate our previous analysis regarding the asserted ground of
`
`unpatentability based on Wang (’800 Dec., 11–17), and determine that
`
`Gillette has demonstrated a reasonable likelihood of prevailing on that
`
`ground of unpatentability.
`
`C. Obviousness over Wang and Mozgrin
`
`In its Petition, Gillette asserts the same ground of unpatentability
`
`based on Wang and Mozgrin, as that on which a trial was instituted in
`
`IPR2014-00800. See Pet. 56–59; ’800 Dec. 22. Gillette’s arguments are
`
`substantively identical to the arguments made by TSMC in IPR2014-00800.
`
`Compare Pet. 56–59, with ’800 Pet. 56–59. Gillette also proffers the same
`
`Declaration of Dr. Kortshagen that TSMC submitted in support of its
`
`Petition. Compare Ex. 1002, with IPR2014-00800, Ex. 1002.
`
`Zond’s arguments in the Preliminary Response are essentially
`
`identical to those arguments that it made in IPR2014-00800. Compare
`
`Prelim. Resp. 33–34, with ’800 Prelim. Resp. 33–34.
`
`6
`
`
`
`IPR2014-00991
`Patent 7,811,421 B2
`
`
`We incorporate our previous analysis regarding the asserted ground of
`
`unpatentability based on Wang and Mozgrin (’800 Dec. 17–21), and
`
`determine that Gillette has demonstrated a reasonable likelihood of
`
`prevailing on that ground of unpatentability.
`
`D. Other Asserted Grounds of Unpatentability
`
`Gillette also asserts the following grounds of unpatentability:
`
`Claims
`
`Basis
`
`References
`
`1, 2, 8, 10–13, 15, 16, 34, 38, 39,
`43, and 46–48
`
`§ 102
`
`Mozgrin
`
`17, 22–25, 27–30, 33, and 42
`
`§ 103
`
`Mozgrin and Lantsman
`
`
`
`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 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 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 based on the information
`
`presented in the Petition, taking into account Zond’s Preliminary Response,
`
`7
`
`
`
`IPR2014-00991
`Patent 7,811,421 B2
`
`
`Gillette has demonstrated a reasonable likelihood that the challenged claims
`
`are unpatentable based on the grounds set forth in the ORDER. Therefore,
`
`we authorize an inter partes review of claims 1, 2, 8, 10–13, 15–17, 22–25,
`
`27–30, 33, 34, 38, 39, 42, 43, and 46–48. 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 hereby:
`
`IV. ORDER
`
`ORDERED that pursuant to 35 U.S.C. § 314(a), an inter partes
`
`review is hereby authorized for the following grounds of unpatentability for
`
`the ’421 patent:
`
`Claims
`
`Basis
`
`References
`
`1, 2, 8, 10–13, 16, 17, 22–25, 28–
`30, 33, 34, 39, 42, 43, and 46–48
`
`§ 102
`
`Wang
`
`15, 27, and 38
`
`§ 103
`
`Wang and Mozgrin
`
`
`
`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
`
`
`
`IPR2014-00991
`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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