`Trials@uspto.gov
`571-272-7822
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` Entered: November 18, 2014
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`THE GILLETTE COMPANY,
`Petitioner,
`v.
`
`ZOND, LLC,
`Patent Owner.
`____________
`
`Case IPR2014-01017
`Patent 6,805,779 B2
`____________
`
`
`
`
`Before KEVIN F. TURNER, 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
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`IPR2014-01017
`Patent 6,805,779 B2
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`I. INTRODUCTION
`The Gillette Company (“Gillette”) filed a Petition requesting an inter
`partes review of claims 1–4, 10–15, 17, 18, 24–27, and 29 of U.S. Patent
`No. 6,805,779 B2 (Ex. 1001, “the ’779 patent”). Paper 3 (“Pet.”). Zond,
`LLC (“Zond”), filed a Preliminary Response. Paper 9 (“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 1–4, 10–15, 17, 18, 24–27, and 29 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 1–4, 10–15, 17, 18, 24–27, and 29 of the
`’779 patent.
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`A. Related District Court Proceedings
`
`Gillette indicates that the ’779 patent was asserted in Zond, LLC v.
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`The Gillette Co., No.1:13-cv-11567-DJC (D. Mass.). Pet. 1. Gillette also
`identifies other proceedings in which Zond asserted the ’779 patent. Id.
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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 IPR2014-00598; and
`GLOBALFOUNDRIES U.S., Inc. v. Zond, LLC, Case IPR2014-01073.
`In IPR2014-00598, we terminated the proceeding, prior to institution,
`in light of the Joint Motion to Terminate 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. IPR2014-00598, Papers 8, 9, Ex. 1013.
`In IPR2014-01073, we instituted an inter partes review as to claims
`1–4, 10–15, 17, 18, 24–27, and 29 as unpatentable under 35 U.S.C. § 103(a)
`as obvious over the combination of Iwamura, Angelbeck, and Pinsley.
`IPR2014-01073, Paper 11 (“’1073 Dec.”), 25.
`Gillette filed a revised Motion for Joinder, seeking to join with
`IPR2014-01073, and Zond filed an Opposition to Gillette’s revised Motion.
`Papers 11, 12. In a separate decision, we grant Gillette’s revised Motion for
`Joinder, joining the instant proceeding with IPR2014-01073, and terminating
`the instant proceeding.
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`C. Prior Art Relied Upon
`
`Gillette relies upon the following prior art references:
`Pinsley
`
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`US 3,761,836
`Sept. 25, 1973
`Angelbeck
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`US 3,514,714
`May 26, 1970
`Iwamura
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`US 5,753,886
`May 19, 1998
`
`
`(Ex. 1005)
`(Ex. 1006)
`(Ex. 1007)
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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, NO. 5, 400–409 (1995) (Ex. 1003, “Mozgrin”).
`
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`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. 1004, “Kudryavtsev”).
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`D. Asserted Grounds of Unpatentability
`Gillette asserts the following grounds of unpatentability:
`
`Claims
`1–4, 10–15, 17, 18,
`24–27, and 29
`1–4, 10–15, 17, 18,
`24–27, and 29
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`Basis
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`References
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`§ 103(a) Mozgrin, Kudryavtsev, and Pinsley
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`§ 103(a)
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`Iwamura, Angelbeck, and Pinsley1
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`II. ANALYSIS
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`A. Claim Construction
`
`Gillette makes the same claim interpretation arguments that
`GlobalFoundries made in IPR2014-01073. Compare Pet. 17, with
`IPR2014-01073, Paper 2 (“’1073 Pet.”), 17. We construed several claim
`
`1 Pinsley is omitted inadvertently from the statement of this asserted ground
`of unpatentability, although included in the substantive analysis. Pet. 40, 48.
`Therefore, we treat the statement as mere harmless error and presume that
`Gillette intended to assert that the challenged claims are unpatentable under
`§ 103(a) based on the combination of Iwamura, Angelbeck, and Pinsley.
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`terms in the Decision on Institution for IPR2014-01073. See ’1073 Dec. 6–
`9. For the purposes of the instant decision, we incorporate our previous
`analysis and apply those claim constructions here.
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`B. Obviousness over Iwamura, Angelbeck, and Pinsley
`In its Petition, Gillette asserts the same ground of unpatentability
`based on the combination of Iwamura, Angelbeck, and Pinsley, as the
`ground on which a trial was instituted in IPR2014-01073. See Pet. 38–60;
`’1073 Dec. 25. Gillette’s arguments are substantively identical to the
`arguments made by GlobalFoundries in IPR2014-01073. Compare Pet. 38–
`60, with ’1073 Pet. 38–60. Gillette also proffers the same Declaration of
`Dr. Uwe Kortshagen that GlobalFoundries submitted in support of its
`Petition. Compare Ex. 1002, with IPR2014-01073 Ex. 1002. Zond’s
`arguments in the Preliminary Response are essentially identical to those
`arguments that it made in IPR2014-01073. Compare Prelim. Resp. 18–50,
`with IPR2014-01073, Paper 9 (“’1073 Prelim. Resp.”), 18–50.
`We incorporate our previous analysis regarding the asserted ground of
`unpatentability over the combination of Iwamura, Angelbeck, and Pinsley
`(’1073 Dec. 10–24), and determine that Gillette has demonstrated a
`reasonable likelihood of prevailing on those grounds of unpatentability.
`
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`C. Other Asserted Ground of Unpatentability
`
`Gillette also asserts that claims 1–4, 10–15, 17, 18, 24–27, and 29 of
`the ’779 patent are unpatentability under 35 U.S.C. § 103(a) as obvious over
`the combination of Mozgrin, Kudryavtsev, and Pinsley. Pet. 18–40. The
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`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 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).
`
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`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 1–4, 10–15, 17, 18, 24–27, and
`29 of the ’779 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.
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`IV. ORDER
`For the foregoing reasons, it is:
`ORDERED that pursuant to 35 U.S.C. § 314(a), an inter partes
`review is hereby instituted as to claims 1–4, 10–15, 17, 18, 24–27, and 29 as
`unpatentable under 35 U.S.C. § 103(a) as obvious over the combination of
`Iwamura, Angelbeck, and Pinsley;
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`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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`For PETITIONER:
`Michael Diener
`Larissa Park
`WILMER, CUTLER, PICKERING, HALE AND DORR, LLP
`michael.diener@wilmerhale.com
`larissa.park@wilmerhale.com
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`PATENT OWNER:
`
`Gregory J. Gonsalves
`gonsalves@gonsalveslawfirm.com
`
`Bruce J. Barker
`CHAO HADIDI STARK & BARKER LLP
`bbarker@chsblaw.com
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