Paper 12
`Trials@uspto.gov
`571-272-7822
`
` Entered: November 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 IPR2014-01016
`Patent 6,853,142 B2
`____________
`
`
`
`
`Before KEVIN F. TURNER, DEBRA K. STEPHENS, JONI Y. CHANG,
`SUSAN L. C. MITCHELL, and JENNIFER M. MEYER,
`Administrative Patent Judges.
`
`
`TURNER, Administrative Patent Judge.
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`
`
`
`
`
`
`Trials@uspto.gov
`571-272-7822
`
` Entered: November 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 IPR2014-01016
`Patent 6,853,142 B2
`____________
`
`
`
`
`Before KEVIN F. TURNER, DEBRA K. STEPHENS, JONI Y. CHANG,
`SUSAN L. C. MITCHELL, and JENNIFER M. MEYER,
`Administrative Patent Judges.
`
`
`TURNER, Administrative Patent Judge.
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`IPR2014-01016
`Patent 6,853,142 B2
`
`
`
`
`
`
`I. INTRODUCTION
`
`The Gillette Company (“Gillette”) filed a Petition requesting an inter
`
`partes review of claims 40 and 41 of U.S. Patent No. 6,853,142 B2
`
`(Ex. 1401, “the ’142 Patent”). Paper 3 (“Pet.”). Zond, LLC (“Zond”), filed
`
`a 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.
`
`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 40 and 41 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 40 and 41 of the ’142 Patent.
`
`
`
`A. Related District Court Proceedings
`
`
`
`Gillette indicates that the ’142 Patent was asserted in Zond, LLC v.
`
`The Gillette Co., No.1:13-cv-11567-DJC (D. Mass.). Pet. 1. Gillette also
`
`identifies other proceedings in which Zond asserted the ’142 Patent. Id.
`
`
`
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`2
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`IPR2014-01016
`Patent 6,853,142 B2
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`
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`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 IPR2014-00498; and
`
`GLOBALFOUNDRIES U.S., Inc. v. Zond, LLC, Case IPR2014-01098.
`
`In IPR2014-00498, we terminated the proceeding, prior to institution,
`
`in light of the Joint Motion to Termination and 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
`
`Corp. and Zond. IPR2014-00498, Papers 7, 8; IPR2014-00494, Ex. 1018.
`
`In IPR2014-01098, we instituted an inter partes review as to claims
`
`40 and 41 as unpatentable under the following grounds:
`
`Claim
`
`Basis
`
`References
`
`40
`
`41
`
`§ 103(a)
`
`Wang and Lantsman
`
`§ 103(a)
`
`Wang and Kudryavtsev
`
`See IPR2014-01098, Paper 9 (“’1098 Dec.”).
`
`Gillette filed a renewed Motion for Joinder, seeking to join with
`
`IPR2014-01098. Paper 10. In a separate decision, we grant Gillette’s
`
`renewed Motion for Joinder, joining the instant proceeding with
`
`IPR2014-01098, and terminating the instant proceeding.
`
`
`
`C. Prior Art Relied Upon
`
`Gillette relies upon the following prior art references:
`
`Lantsman
`Wang
`
`
`
`
`
`US 6,190,512 B1 Feb. 20, 2001
`US 6,413,382 B1 July 2, 2002
`
`(Ex. 1406)
`(Ex. 1405)
`
`
`
`3
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`
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`IPR2014-01016
`Patent 6,853,142 B2
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`
`
`
`
`
`
`
`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) (hereinafter
`“Mozgrin”).
`
`A. A. Kudryavtsev and V.N. Skerbov, Ionization Relaxation in a
`Plasma Produced by a Pulsed Inert-Gas Discharge, 28 SOV. PHYS.
`TECH. PHYS. 30–35 (Jan. 1983) (Ex. 1404) (hereinafter
`“Kudryavtsev”).
`
`
`D. Asserted Grounds of Unpatentability
`
`Gillette asserts the following grounds of unpatentability:
`
`Claim
`
`Basis
`
`References
`
`40
`
`40
`
`41
`
`41
`
`
`
`§ 103(a)
`
`Mozgrin and Lantsman
`
`§ 103(a)
`
`Wang and Lantsman
`
`§ 103(a)
`
`Mozgrin and Kudryavtsev
`
`§ 103(a)
`
`Wang and Kudryavtsev
`
`II. ANALYSIS
`
`A. Claim Construction
`
`Gillette makes the same claim interpretation arguments that
`
`GLOBALFOUNDRIES U.S., INC., GLOBALFOUNDRIES Dresden
`
`Module One LLC & Co. KG, and GLOBALFOUNDRIES Dresden Module
`
`Two LLC & Co. KG (collectively, “GF”) made in IPR2014-01098.
`
`Compare Pet. 12–17, with IPR2014-01098, Paper 2 (“’1098 Pet.”), 12–16.
`
`
`
`4
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`IPR2014-01016
`Patent 6,853,142 B2
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`
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`We construed several claim terms in the Decision on Institution for
`
`IPR2014-01098. See ’1098 Dec. 6–14. 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 Kudryavtsev and
`Lantsman
`
`In its Petition, Gillette asserts the same grounds of unpatentability
`
`based on the combinations of Wang with Kudryavtsev and Lantsman, as the
`
`ground on which a trial was instituted in IPR2014-01098. See Pet. 33–44,
`
`53–60; ’1098 Dec. 29. Gillette’s arguments are substantively identical to the
`
`arguments made by GF in IPR2014-01098. Compare Pet. 33–44, 53–60,
`
`with ’1098 Pet. 33–43, 53–60. Gillette also proffers the same Declaration of
`
`Dr. Uwe Kortshagen that GF submitted in support of its Petition. Compare
`
`Ex. 1402, with IPR2014-01098 Ex. 1402. Zond’s arguments in the
`
`Preliminary Response are essentially identical to those arguments that it
`
`made in IPR2014-01098. Compare Prelim. Resp. 27–53, with IPR2014-
`
`01098, Paper 7 (“’1098 Prelim. Resp.”), 27–53.
`
`We incorporate our previous analysis regarding the asserted ground of
`
`unpatentability over the combinations of Wang with Kudryavtsev and
`
`Lantsman (’1098 Dec. 15–28), and determine that Gillette has demonstrated
`
`a reasonable likelihood of prevailing on those grounds of unpatentability.
`
`
`
`C. Other Asserted Grounds of Unpatentability
`
`Gillette also asserts that claims 40 and 41 are unpatentable on other
`
`grounds. The Board’s rules for inter partes review proceedings, including
`
`
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`5
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`IPR2014-01016
`Patent 6,853,142 B2
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`
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`
`
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`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 these 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 that the information
`
`presented in the Petition shows that there is a reasonable likelihood that
`
`Gillette would prevail in challenging claims 40 and 41 of the ’142 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.
`
`
`
`
`
`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:
`
`
`
`6
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`IPR2014-01016
`Patent 6,853,142 B2
`
`
`
`
`
`
`Claim
`
`Basis
`
`References
`
`40
`
`41
`
`
`
`§ 103(a)
`
`Wang and Lantsman
`
`§ 103(a)
`
`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.
`
`
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`7
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`IPR2014-01016
`Patent 6,853,142 B2
`
`
`For PETITIONER:
`
`
`
`
`
`Michael A. Deiner
`Larissa B. Park
`Wilmer, Cutler, Pickering, Hale and Dorr, LLP
`Michael.Diener@wilmerhale.com
`Larissa.Park@wilmerhale.com
`
`
`
`PATENT OWNER:
`
`Gregory Gonsalves
`The Gonsalves Law firm
`gonsalves@gonsalveslawfirm.com
`
`Bruce Barker
`Chao Hadidi Stark & Barker LLP
`bbarker@chsblaw.com
`
`
`
`8
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`
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