Paper 12
`Trials@uspto.gov
`571-272-7822
`
` Entered: November 20, 2014
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`THE GILLETTE COMPANY,
`Petitioner,
`
`v.
`
`ZOND, LLC,
`Patent Owner.
`____________
`
`Case IPR2014-01020
`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
`
`
`
`
`
`
`
`
`Trials@uspto.gov
`571-272-7822
`
` Entered: November 20, 2014
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`THE GILLETTE COMPANY,
`Petitioner,
`
`v.
`
`ZOND, LLC,
`Patent Owner.
`____________
`
`Case IPR2014-01020
`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
`
`
`
`
`
`
`
`
`
`IPR2014-01020
`Patent 6,805,779 B2
`
`
`
`
`
`
`I. INTRODUCTION
`
`The Gillette Company (“Gillette”) filed a Petition requesting an inter
`
`partes review of claims 16, 28, 41, 42, 45, and 46 of U.S. Patent No.
`
`6,805,779 B2 (Ex. 1301, “the ’779 patent”). Paper 3 (“Pet.”). Zond, LLC
`
`(“Zond”), filed a Preliminary Response. Paper 11 (“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
`
`claim 46 as unpatentable under 35 U.S.C. 102(b), and claims 16, 28, 41, 42,
`
`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 16, 28, 41, 42, 45, and 46 of the ’779 patent.
`
`
`
`A. Related District Court Proceedings
`
`
`
`Gillette indicates that the ’779 patent was asserted in Zond, LLC v.
`
`Gillette, No.1:13-cv-11567-DJC (D. Mass.). Pet. 1. Gillette also identifies
`
`other proceedings in which Zond asserted the ’779 patent. Id.
`
`
`
`2
`
`
`
`IPR2014-01020
`Patent 6,805,779 B2
`
`
`
`
`
`
`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 IPR2014-00820; Taiwan
`
`Semiconductor Mfg. Co., Ltd. v. Zond, LLC, Case IPR2014-00829; Fujitsu
`
`Semiconductor Ltd. v. Zond, LLC, Case IPR2014-00859; and Advanced
`
`Micro Devices, Inc. v. Zond, LLC, Case IPR2014-01072.
`
`In IPR2014-00820, 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. IPR2014-00820, Papers 6, 7; IPR2014-00598, Ex. 1013.
`
`In each of IPR2014-0829, IPR2014-00859, and IPR2014-01072, we
`
`instituted an inter partes review of claims 16, 28, 41, 42, 45, and 46 of the
`
`’779 patent, based on the following grounds of unpatentability (see, e.g.,
`
`IPR2014-00829, Paper 9 (“’829 Dec.”), 31):
`
`Claims
`
`Basis
`
`References
`
`46
`
`§ 102(b)
`
`Iwamura
`
`16, 28, 41, 42, and 45 § 103(a)
`
`Iwamura, Angelbeck, and Pinsley
`
`
`We further joined IPR2014-00859 and IPR2014-01072 with IPR2014-
`
`00829, and terminated both IPR2014-00859 and IPR2014-01072. See, e.g.,
`
`IPR2014-00859, Paper 12.
`
`Gillette filed a revised Motion for Joinder, seeking to join with
`
`IPR2014-00829, and Zond filed an Opposition to Gillette’s Motion.
`
`
`
`3
`
`
`
`IPR2014-01020
`Patent 6,805,779 B2
`
`
`
`
`
`
`Papers 9, 10. In a separate decision, we grant Gillette’s revised Motion for
`
`Joinder, joining the instant proceeding with IPR2014-00829, and terminating
`
`the instant proceeding. Once that Decision is entered, IPR2014-00829 will
`
`be the only inter partes review pending before us for reviewing claims 16,
`
`28, 41, 42, 45, and 46 of the ’779 patent.
`
`
`
`C. Prior Art Relied Upon
`
`Gillette relies upon the following prior art references:
`
`
`Pinsley
`Angelbeck
`Iwamura
`
`
`US 3,761,836
`US 3,514,714
`US 5,753,886
`
`Sept. 25, 1973
`May 26, 1970
`May 19, 1998
`
`(Ex. 1305)
`(Ex. 1306)
`(Ex. 1307)
`
`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. 1303, “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 (1983) (Ex. 1304, “Kudryavtsev”).
`
`
`
`
`4
`
`
`
`IPR2014-01020
`Patent 6,805,779 B2
`
`
`
`
`
`
`D. Asserted Grounds of Unpatentability
`
`Gillette asserts the following grounds of unpatentability:
`
`Claims
`
`Basis
`
`References
`
`46
`
`§ 102(b)
`
`Iwamura
`
`16, 28, 41, 42, 45 § 103(a)
`
`Iwamura, Angelbeck, and Pinsley1
`
`41
`
`§ 103(a) Mozgrin, Kudryavtsev, and Pinsley
`
`16, 28, 42, 45, 46 § 103(a)
`
`Mozgrin, Kudryavtsev, Pinsley, and
`Iwamura
`
`
`
`II. ANALYSIS
`
`A. Claim Construction
`
`Gillette makes the same claim interpretation arguments that TSMC
`
`made in IPR2014-00829. Compare Pet. 18–19, with IPR2014-00829, Paper
`
`2 (“’829 Pet.”), 19–20. We construed several claim terms in the Decision on
`
`Institution for IPR2014-00829. See ’829 Dec. 6–13. For the purposes of the
`
`instant decision, we incorporate our previous analysis and apply those claim
`
`constructions here.
`
`
`1 Pinsley is omitted inadvertently from the statement of this asserted ground
`of unpatentability, although included in the corresponding analysis. See
`Pet. 42, 44. Therefore, we treat the statement as harmless error and presume
`that Gillette intended to assert that claims 16, 28, 41, 42, and 45 are
`unpatentable under § 103(a) based on the combination of Iwamura,
`Angelbeck, and Pinsley.
`
`
`
`5
`
`
`
`IPR2014-01020
`Patent 6,805,779 B2
`
`
`
`
`
`
`B. Grounds of Unpatentability Based on Iwamura, alone or in
`Combination with Other Cited References
`
`In its Petition, Gillette asserts the same grounds of unpatentability
`
`based on Iwamura, alone or in combination with Angelbeck and Pinsley, as
`
`those on which a trial was instituted in IPR2014-00829. See Pet. 42–60;
`
`’829 Dec. 31. Gillette’s arguments are substantively identical to the
`
`arguments made by TSMC in IPR2014-00829. Compare Pet. 42–60, with
`
`’829 Pet. 41–60. Gillette also proffers the same Declaration of Dr. Uwe
`
`Kortshagen that TSMC submitted in support of its Petition. Compare
`
`Ex. 1302, with IPR2014-00829 Ex. 1302. Zond’s arguments in the
`
`Preliminary Response are essentially identical to those arguments that it
`
`made in IPR2014-00829. Compare Prelim. Resp. 19–54, with ’829 Prelim.
`
`Resp. 19–54.
`
`We incorporate our previous analysis regarding the asserted grounds
`
`of unpatentability based on Iwamura, alone or in combination with
`
`Angelbeck and Pinsley (’829 Dec. 13–30), and determine that Gillette has
`
`demonstrated a reasonable likelihood of prevailing on those grounds of
`
`unpatentability.
`
`
`
`6
`
`
`
`IPR2014-01020
`Patent 6,805,779 B2
`
`
`
`
`C. Other Asserted Grounds of Unpatentability
`
`Gillette also asserts the following grounds of unpatentability:
`
`
`
`
`
`Claims
`
`41
`
`Basis
`
`References
`
`§ 103(a) Mozgrin, Kudryavtsev, and Pinsley
`
`16, 28, 42, 45, and 46
`
`§ 103(a)
`
`Mozgrin, Kudryavtsev, Pinsley, and
`Iwamura
`
`
`
`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
`
`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 claim 46 of the ’779 patent as
`
`unpatentable under 35 U.S.C. § 102(b), and in challenging claims 16, 28, 41,
`
`42, and 45 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.
`
`
`
`7
`
`
`
`IPR2014-01020
`Patent 6,805,779 B2
`
`
`
`
`
`
`
`
`
`
`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
`
`Basis
`
`References
`
`46
`
`§ 102(b)
`
`Iwamura
`
`16, 28, 41, 42, and 45 § 103(a)
`
`Iwamura, Angelbeck, and Pinsley
`
`
`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
`
`
`
`
`
`
`
`
`
`
`
`
`
`9
`
`IPR2014-01020
`Patent 6,805,779 B2
`
`
`For PETITIONER:
`
`Michael Diener
`michael.diener@wilmerhale.com
`
`Larissa Park
`larissa.park@wilmerhale.com
`
`
`
`PATENT OWNER:
`
`Gregory J. Gonsalves
`gonsalves@gonsalveslawfirm.com
`
`Bruce J. Barker
`bbarker@chsblaw.com
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