Trials@uspto.gov
`571-272-7822
`
`
`
` Paper 12
`
`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 IPR2014-00992
`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
`
`
`571-272-7822
`
`
`
` Paper 12
`
`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 IPR2014-00992
`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
`
`
`
`
`IPR2014-00992
`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 9, 14, 21, 26, 35, and 37 of U.S.
`
`Patent No. 7,811,421 B2 (“the ’421 patent”). Paper 3 (“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 9,
`
`14, 21, 26, 35, and 37 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 9, 14, 21, 26, 35, and 37 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-567-DJC (D. Mass.). Pet. 1; Paper 5.
`
`Gillette also identifies other matters where Zond asserted the claims of the
`
`’421 patent against third parties. Id.
`
`2
`
`
`
`
`IPR2014-00992
`Patent 7,811,421 B2
`
`
`B. Related Inter Partes Reviews
`
`Intel Corporation (“Intel”) filed a Petition to institute an inter partes
`
`review in Intel Corp. v. Zond, LLC., Case IPR2014-00470 (PTAB)
`
`(“IPR2014-00470”), challenging the same claims based on the same grounds
`
`of unpatentability as those in the instant proceeding. Compare IPR2014-
`
`00470, Paper 1 (“’470 Pet.”), 2–58, with Pet. 3–58. On September 2, 2014,
`
`we instituted an inter partes review of claims 9, 14, 21, 26, 35, and 37 of the
`
`’421 patent in IPR2014-00470 (Paper 11, “’470 Dec.”), based on the
`
`following grounds of unpatentability:
`
`Claims
`
`9, 21, and 35
`
`14, 26, and 37
`
`
`
`Basis
`
`§ 103
`
`§ 103
`
`References
`
`Wang and Kudryavtsev
`
`Wang and Mozgrin Thesis
`
`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
`
`TSMC and Zond. IPR2014-00470, Papers 13, 14. Gillette has filed a
`
`Motion for Joinder, seeking to join the instant proceeding with IPR2014-
`
`00470. Paper 7 (“Mot.”).
`
`The following Petitions for inter partes review also challenge the
`
`same claims based on the same grounds of unpatentability as those in those
`
`in IPR2014-00470 and in the instant proceeding: Taiwan Semiconductor
`
`Manuf. Co., v. Zond, LLC., Case IPR2014-00802; Fujitsu Semiconductor
`
`Ltd. v. Zond, LLC, Case IPR2014-00848; and Advanced Micro Devices, Inc.
`3
`
`
`
`
`IPR2014-00992
`Patent 7,811,421 B2
`
`
`v. Zond, LLC, Case IPR2014-01071.
`
`Gillette filed a revised Motion for Joinder, seeking to join the instant
`
`proceeding with Taiwan Semiconductor Manufacturing Co., Ltd. v. Zond,
`
`LLC., Case IPR2014-00802 (PTAB)(“IPR2014-00802”). Paper 10. In a
`
`separate Decision, we grant Gillette’s revised Motion, joining the instant
`
`proceeding with IPR2014-00802, 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. 1204)
`(Ex. 1205)
`
` 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. 1203) (hereinafter “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 (January 1983) (Ex. 1206) (hereinafter “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. 1207) (hereinafter “Mozgrin Thesis”).1
`
`
`
`
`1 Mozgrin Thesis is a Russian-language reference (Ex. 1208). The citations
`to Mozgrin Thesis are to a certified English-language translation by Fujitsu
`(Ex. 1207).
`
`4
`
`
`
`
`IPR2014-00992
`Patent 7,811,421 B2
`
`
`D. The Asserted Grounds of Unpatentability
`
`Gillette asserts the following grounds of unpatentability:
`
`Claim(s)
`
`Basis
`
`References
`
`9 and 35
`
`§ 103
`
`Mozgrin and Kudryavtsev
`
`14 and 37
`
`§ 103
`
`Mozgrin and Mozgrin Thesis
`
`21
`
`26
`
`§ 103
`
`Mozgrin, Lantsman, and Kudryavtsev
`
`§ 103
`
`Mozgrin, Lantsman, and Mozgrin Thesis
`
`9, 21, and 35
`
`§ 103
`
`Wang and Kudryavtsev
`
`14, 26, and 37
`
`§ 103
`
`Wang and Mozgrin Thesis
`
`
`
`II. DISCUSSION
`
`A. Printed Publication under 35 U.S.C. § 102
`
`In its Petition, Gillette makes the same assertion that TSMC made in
`
`IPR2014-00802 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 ’802 Pet. 4. Gillette also proffers the same catalog entry for the
`
`Mozgrin Thesis at the Russian State Library. Compare Ex. 1209, with
`
`IPR2014-00802, Ex. 1209.
`
`In its Preliminary Response, Zond makes the same arguments that it
`
`made in IPR2014-00802 concerning the Mozgrin Thesis not being a prior art
`
`printed publication under 35 U.S.C. § 102. Compare Prelim. Resp. 52–55,
`
`with IPR2014-00802, Paper 8 (“’802 Prelim. Resp.”), 52–55.
`
`5
`
`
`
`
`IPR2014-00992
`Patent 7,811,421 B2
`
`
`We incorporate our previous analysis regarding this issue (’802
`
`Dec. 7–8), 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 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 IPR2014-00802.
`
`Compare Pet. 12–15 with ’802 Pet. 12–14; compare Prelim. Resp. 14-16
`
`with ’802 Prelim. Resp. 13–15.
`
`We construed the claim terms identified by TSMC and Zond in
`
`IPR2014-00802. See ’470 Dec. 7–10. 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 grounds of unpatentability
`
`based on the combinations of (i) Wang and Kudryavtsev and (ii) Wang and
`
`Mozgrin Thesis, as those on which a trial was instituted in IPR2014-00802.
`
`See Pet. 43–58; ’802 Dec. 26–27. Gillette’s arguments are substantively
`
`identical to the arguments made by TSMC in IPR2014-00802. Compare
`
`Pet. 43–58, with ’802 Pet. 43–58. Gillette also proffers the same Declaration
`
`6
`
`
`
`
`IPR2014-00992
`Patent 7,811,421 B2
`
`
`of Dr. Uwe Kortshagen that TSMC submitted in support of its Petition.
`
`Compare Ex. 1202, with IPR2014-00802, Ex. 1202. Zond’s arguments in
`
`the Preliminary Response are essentially identical to those arguments that it
`
`made in IPR2014-00802. Compare Prelim. Resp. 43–56, with ’802 Prelim.
`
`Resp. 43–56.
`
`We incorporate our previous analysis regarding the asserted grounds
`
`of unpatentability based on the combinations of Wang and other cited prior
`
`art references (’802 Dec. 12–25), 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 the following grounds of unpatentability:
`
`Claim(s)
`
`Basis
`
`References
`
`9 and 35
`
`§ 103
`
`Mozgrin and Kudryavtsev
`
`14 and 37
`
`§ 103
`
`Mozgrin and Mozgrin Thesis
`
`21
`
`26
`
`
`
`§ 103
`
`Mozgrin, Lantsman, and Kudryavtsev
`
`§ 103
`
`Mozgrin, Lantsman, and Mozgrin Thesis
`
`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
`
`7
`
`
`
`
`IPR2014-00992
`Patent 7,811,421 B2
`
`
`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, Gillette has demonstrated a reasonable likelihood
`
`that at least one of the challenged claims is unpatentable based on the
`
`asserted grounds. Therefore, we institute an inter partes review of claims 9,
`
`14, 21, 26, 35, and 37. 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
`
`9, 21, and 35
`
`14, 26, and 37
`
`
`
`Basis
`
`§ 103
`
`§ 103
`
`References
`
`Wang and Kudryavtsev
`
`Wang and Mozgrin Thesis
`
`FURTHER ORDERED that no other ground of unpatentability
`
`asserted in the Petition is authorized for this inter partes review; and
`
`8
`
`
`
`
`IPR2014-00992
`Patent 7,811,421 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.
`
`
`
`
`
`9
`
`
`
`
`IPR2014-00992
`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
`
`
`10
`
`
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