Trials@uspto.gov
`571-272-7822
`
`
`
` Paper 11
`
`Entered: October 24, 2014
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ADVANCED MICRO DEVICES, INC., RENESAS ELECTRONICS
`CORPORATION, RENESAS ELECTRONICS AMERICA, INC.,
`GLOBALFOUNDRIES U.S., INC., GLOBALFOUNDRIES DRESDEN
`MODULE ONE LLC & CO. KG, GLOBALFOUNDRIES DRESDEN
`MODULE TWO LLC & CO. KG, TOSHIBA AMERICA ELECTRONIC
`COMPONENTS, INC., TOSHIBA AMERICA INC., TOSHIBA
`AMERICA INFORMATION SYSTEMS, INC., AND TOSHIBA
`CORPORATION,
`Petitioner,
`
`v.
`
`ZOND, LLC,
`Patent Owner.
`____________
`
`Case IPR2014-01069
`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 11
`
`Entered: October 24, 2014
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ADVANCED MICRO DEVICES, INC., RENESAS ELECTRONICS
`CORPORATION, RENESAS ELECTRONICS AMERICA, INC.,
`GLOBALFOUNDRIES U.S., INC., GLOBALFOUNDRIES DRESDEN
`MODULE ONE LLC & CO. KG, GLOBALFOUNDRIES DRESDEN
`MODULE TWO LLC & CO. KG, TOSHIBA AMERICA ELECTRONIC
`COMPONENTS, INC., TOSHIBA AMERICA INC., TOSHIBA
`AMERICA INFORMATION SYSTEMS, INC., AND TOSHIBA
`CORPORATION,
`Petitioner,
`
`v.
`
`ZOND, LLC,
`Patent Owner.
`____________
`
`Case IPR2014-01069
`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
`
`
`
`
`IPR2014-01069
`Patent 7,811,421 B2
`
`
`I. INTRODUCTION
`On June 30, 2014, Advanced Micro Devices, Inc., Renesas
`
`Electronics Corporation, Renesas Electronics America, Inc.,
`
`GLOBALFOUNDRIES U.S., Inc., GLOBALFOUNDRIES Dresden Module
`
`One LLC & Co. KG, GLOBALFOUNDRIES Dresden Module Two LLC &
`
`Co. KG, Toshiba America Electronic Components, Inc., Toshiba America
`
`Inc., Toshiba America Information Systems, Inc., and Toshiba Corporation
`
`(collectively, “AMD”) filed a Petition requesting inter partes review of
`
`claims 3–7, 18–20, 31, 32, 36, 40, 41, 44, and 45 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 7 (“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 AMD would prevail in challenging claims 3–7,
`
`18–20, 31, 32, 36, 40, 41, 44, and 45 as unpatentable under 35 U.S.C.
`
`§ 103(a). Pursuant to 35 U.S.C. § 314, we hereby authorize an inter partes
`
`2
`
`
`
`
`IPR2014-01069
`Patent 7,811,421 B2
`
`
`review to be instituted as to claims 3–7, 18–20, 31, 32, 36, 40, 41, 44, and 45
`
`of the ’421 patent.
`
`A. Related District Court Proceedings
`
`
`
`AMD indicates that the ’421 patent was asserted in Zond, LLC v.
`
`AMD, Inc., No.1:13-cv-11577-DPW (D. Mass.); Zond, LLC v. Toshiba Am.
`
`Elec. Comp. Inc., No.1:13-cv-11581-DJC (D. Mass.); Zond, LLC v. Renesas
`
`Elec. Corp., No.1:13-cv-11625-NMG (D. Mass.). Pet. 1; Paper 5. AMD
`
`also identifies other matters where Zond asserted the claims of the ’421
`
`patent against third parties. Id.
`
`B. Related Inter Partes Reviews
`
`Intel Corporation (“Intel”) filed a Petition to institute an inter partes
`
`review in Intel Corp. v. Zond, LLC., Case IPR2014-00473 (PTAB)
`
`(“IPR2014-00468”), challenging the same claims based on the same grounds
`
`of unpatentability as those in the instant proceeding. Compare IPR2014-
`
`00473, Paper 2 (“’473 Pet.”), 4–60, with Pet. 3–60. On September 2, 2014,
`
`we instituted an inter partes review of claims 3–7, 18–20, 31, 32, 36, 40, 41,
`
`44, and 45 of the ’421 patent in IPR2014-00473 (Paper 11, “’473 Dec.”),
`
`based on the following grounds of unpatentability:
`
`Claims
`
`Basis References
`
`3–5, 18–20, 36, 40, 41
`
`§ 103 Wang and Kawamata
`
`6, 31, 44, and 45
`
`§ 103 Wang and Lantsman
`
`7 and 32
`
`§ 103 Wang, Lantsman, and Kawamata
`
`
`
`3
`
`
`
`
`IPR2014-01069
`Patent 7,811,421 B2
`
`
`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. IPR2014-00473, Papers 13, 14. AMD has filed a Motion for
`
`Joinder, seeking to join the instant proceeding with IPR2014-00473. Paper 6
`
`(“Mot.”).
`
`The following Petitions for inter partes review also challenge the
`
`same claims based on the same grounds of unpatentability as those in
`
`IPR2014-00473 and in the instant proceeding: Taiwan Semiconductor
`
`Manuf. Co., Ltd. v. Zond, LLC., Case IPR2014-00805; Fujitsu
`
`Semiconductor Ltd. v. Zond, LLC, Case IPR2014-00851; and The Gillette
`
`Company v. Zond, LLC, Case IPR2014-00990.
`
`AMD also filed a revised Motion for Joinder, seeking to join the
`
`instant proceeding with Taiwan Semiconductor Manufacturing Co., Ltd. v.
`
`Zond, LLC., Case IPR2014-00805 (PTAB) (“IPR2014-00805”). Paper 9
`
`(“Mot.”). In a separate decision, we grant AMD’s revised Motion for
`
`Joinder, joining the instant proceeding with IPR2014-00805, and terminating
`
`the instant proceeding.
`
`
`
`C. The Prior Art Relied Upon
`
`AMD relies upon the following prior art references:
`
`Wang
`Lantsman
`Kawamata
`
`
` US 6,413,382 B1
` US 6,190,512 B1
` US 5,958,155
`
`
`July 2, 2002
`Feb. 20, 2001
`Sep. 28, 1999
`
`(Ex. 1104)
`(Ex. 1105)
`(Ex. 1109)
`
`4
`
`
`
`
`IPR2014-01069
`Patent 7,811,421 B2
`
`
`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. 1103) (hereinafter “Mozgrin”).
`
`
`
`
`
`
`D. The Asserted Grounds of Unpatentability
`
`AMD asserts the following grounds of unpatentability:
`
`Claims
`
`Basis
`
`References
`
`3–5, 36, 40, and 41
`
`§ 103 Mozgrin and Kawamata
`
`3–5, 18–20, 36, 40, and 41
`
`§ 103 Wang and Kawamata
`
`6, 31, 44, and 45
`
`§ 103 Mozgrin and Lantsman
`
`7, 18–20, and 32
`
`§ 103 Mozgrin, Lantsman, and Kawamata
`
`6, 31, 44, and 45
`
`§ 103 Wang and Lantsman
`
`7 and 32
`
`§ 103 Wang, Lantsman, and Kawamata
`
`II. DISCUSSION
`
`A. Claim Interpretation
`
`The parties make the same claim interpretation arguments that TSMC
`
`and Zond made in IPR2014-00805. Compare Pet. 12–15, with ’805 Pet. 11–
`
`13; compare Prelim. Resp. 17–19, with ’805 Prelim. Resp. 17–19.
`
`We construed the claim terms identified by TSMC and Zond in IPR2014-
`
`00805. See ’805 Dec. 7–10. For the purposes of the instant decision, we
`
`incorporate our previous analysis and apply those claim constructions here.
`
`5
`
`
`
`
`IPR2014-01069
`Patent 7,811,421 B2
`
`
`B. Obviousness over Wang in Combination with Other Cited
`Prior Art References
`
`In its Petition, AMD asserts the same grounds of unpatentability based
`
`on the combinations of Wang, Lantsman, and Kawanata, as those on which a
`
`trial was instituted in IPR2014-00805. See Pet. 29–42, 54–59; ’805 Dec.
`
`26–27. AMD’s arguments are substantively identical to the arguments made
`
`by TSMC in IPR2014-00805. Compare Pet. 29–42, 54–59, with ’805 Pet.
`
`30–42, 55–60. AMD also proffers the same Declaration of Dr. Uwe
`
`Kortshagen that TSMC submitted in support of its Petition. Compare Ex.
`
`1102, with IPR2014-00805 Ex. 1102. Zond’s arguments in the Preliminary
`
`Response are essentially identical to those arguments that it made in
`
`IPR2014-00805. Compare Prelim. Resp. 44–52, with ’805 Prelim. Resp.
`
`44–52.
`
`We incorporate our previous analysis regarding the asserted grounds
`
`of unpatentability based on the combinations of Wang and other cited prior
`
`art references (’805 Dec. 11–25), and determine that AMD has demonstrated
`
`a reasonable likelihood of prevailing on the proffered grounds of
`
`unpatentability.
`
`6
`
`
`
`
`IPR2014-01069
`Patent 7,811,421 B2
`
`
`C. Other Asserted Grounds of Unpatentability
`
`AMD also asserts the following ground of unpatentability:
`
`Claims
`
`Basis
`
`References
`
`3–5, 36, 40, and 41
`
`§ 103
`
`Mozgrin and Kawamata
`
`6, 31, 44, and 45
`
`§ 103
`
`Mozgrin and Lantsman
`
`7, 18–20, and 32
`
`§ 103
`
`Mozgrin, Lantsman, and Kawamata
`
`
`
`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 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, taking into account Zond’s Preliminary Response,
`
`AMD has demonstrated a reasonable likelihood that at least one of the
`
`challenged claims is unpatentable based on the grounds set forth in the
`
`ORDER. Therefore, we institute an inter partes review of claims 3–7, 18–
`
`20, 31, 32, 36, 40, 41, 44, and 45. At this stage in the proceeding, we have
`
`7
`
`
`
`
`IPR2014-01069
`Patent 7,811,421 B2
`
`
`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:
`
`Claim
`
`Basis
`
`References
`
`3–5, 18–20, 36, 40, and 41
`
`§ 103 Wang and Kawamata
`
`6, 31, 44, and 45
`
`§ 103 Wang and Lantsman
`
`7 and 32
`
`
`
`§ 103 Wang, Lantsman, and Kawamata
`
`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
`
`
`
`
`IPR2014-01069
`Patent 7,811,421 B2
`
`
`
`
`For PETITIONER:
`
`Brian M. Berliner
`bberliner@omm.com
`
`Ryan K. Yagura
`ryagura@omm.com
`
`John Feldhaus
`jfeldhaus@foley.com
`
`Pavan K. Agarwal
`pagarwal@foley.com
`
`John J. Feldhaus
`jfeldhaus@foley.com
`
`Michael R. Houston
`mhouston@foley.com
`
`David M. Tennant
`dtennant@whitecase.com
`
`Robinson Vu
`robinson.vu@bakerbotts.com
`
`PATENT OWNER:
`
`Bruce J. Barker
`bbarker@chsblaw.com
`
`Gregory J. Gonsalves
`gonsalves@gonsalveslawfirm.com
`
`
`
`9
`
`
`
`
`IPR2014-01069
`IPR2014-01069
`Patent 7,811,421 B2
`Patent 7,811,421 B2
`
`
`
`
`10
`10
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
