Paper 11
`Trials@uspto.gov
`571-272-7822
`
` Entered: November 12, 2014
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`TAIWAN SEMICONDUCTOR MANUFACTURING COMPANY, LTD.
`TSMC NORTH AMERICA CORP., FUJITSU SEMICONDUCTOR
`LIMITED, and FUJITSU SEMICONDUCTOR AMERICA, INC.,
`Petitioner,
`
`v.
`
`ZOND, LLC,
`Patent Owner.
`____________
`
`Case IPR2014-01479
`Patent 6,896,773 B2
`____________
`
`
`
`
`Before KEVIN F. TURNER, 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 12, 2014
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`TAIWAN SEMICONDUCTOR MANUFACTURING COMPANY, LTD.
`TSMC NORTH AMERICA CORP., FUJITSU SEMICONDUCTOR
`LIMITED, and FUJITSU SEMICONDUCTOR AMERICA, INC.,
`Petitioner,
`
`v.
`
`ZOND, LLC,
`Patent Owner.
`____________
`
`Case IPR2014-01479
`Patent 6,896,773 B2
`____________
`
`
`
`
`Before KEVIN F. TURNER, 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
`
`
`
`
`
`
`
`
`
`
`
`IPR2014-01479
`Patent 6,896,773 B2
`
`
`
`
`
`
`I. INTRODUCTION
`
`Taiwan Semiconductor Manufacturing Company, Ltd., TSMC North
`
`America Corp., Fujitsu Semiconductor Limited, and Fujitsu Semiconductor
`
`America (collectively, “Petitioner”) filed a Petition requesting an inter
`
`partes review of claims 1–20 and 34–39 of U.S. Patent No. 6,896,773 B2
`
`(Ex. 1001, “the ’773 Patent”). Paper 3 (“Pet.”). Zond, LLC (“Zond”), filed
`
`a Preliminary Response. Paper 10 (“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 Petitioner would prevail in challenging
`
`claims 1–20 and 34–39 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 1–20 and 34–39 of the ’773 Patent.
`
`
`
`A. Related District Court Proceedings
`
`
`
`Petitioner indicates that the ’773 Patent was asserted in TSMC Tech.,
`
`Inc. v. Zond LLC, No. 1:14-cv-00721 (D. Del.) and Zond, LLC v. Fujitsu
`
`
`
`2
`
`
`
`IPR2014-01479
`Patent 6,896,773 B2
`
`
`
`
`
`
`Semiconductor Ltd., No. 1-14-cv-12438 (D. Mass.). Pet. 1. Petitioner also
`
`identifies other proceedings in which Zond asserted the ’773 Patent. Id.
`
`
`
`B. Related Inter Partes Reviews
`
`The following Petition for inter partes review also challenges the
`
`same claims, based on the same grounds of unpatentability as those in the
`
`instant proceeding: The Gillette Co. v Zond, LLC, Case IPR2014-00580.
`
`In IPR2014-00580, we instituted inter partes review of claims 1–20
`
`and 34–39 of the ’773 Patent, based on the following grounds of
`
`unpatentability:
`
`Claim(s)
`
`Basis
`
`References
`
`1, 6, and 8–201
`
`§ 103(a) Mozgrin and Fortov
`
`5
`
`§ 103(a) Mozgrin, Fortov, and Kawamata
`
`3, 4, and 34–39
`
`§ 103(a) Mozgrin, Fortov, and Lantsman
`
`7
`
`2
`
`§ 103(a) Mozgrin, Kudryavtsev, and Fortov
`
`§ 103(a)
`
`Mozgrin, Mozgrin Thesis, Fortov,
`and Raizer
`
`See IPR2014-00580, Paper 11, “’580 Dec.”
`
`Petitioner filed a Motion for Joinder, seeking to join with IPR2014-
`
`00580. Paper 5. In a separate decision, we grant Petitioner’s Motion for
`
`
`1 We note that the Decision on Institution for IPR2014-00580 includes
`claims 36–39 under this instituted ground (’580 Dec. 46), but we previously
`had acknowledged that Gillette had made no showing against those claims in
`its Petition. Id. at 8, n.3. We clarify that claims 36–39 are not included in
`this instituted ground.
`
`
`
`3
`
`
`
`IPR2014-01479
`Patent 6,896,773 B2
`
`
`
`
`
`
`Joinder, joining the instant proceeding with IPR2014-00580, and terminating
`
`the instant proceeding.
`
`C. Prior Art Relied Upon
`
`Petitioner relies upon the following prior art references:
`
`
`Wang
`
`Fu
`Lantsman
`Kawamata
`Chiang
`
`
`
`
`
`
`
`
`
`US 6,413,382 B1 July 2, 2002
`US 6,306,265 B1 Oct. 23, 2001
`US 6,190,512 B1 Feb. 20, 2001
`US 5,958,155
`Sept. 28, 1999
`US 6,398,929 B1 June 4, 2002
`
`(Ex. 1003)
`(Ex. 1007)
`(Ex. 1008)
`(Ex. 1009)
`(Ex. 1011)
`
`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. 1002) (hereinafter “Mozgrin”).
`
`D.V. Mozgrin, High-Current Low-Pressure Quasi-Stationary
`Discharge in a Magnetic Field: Experimental Research, Thesis at
`Moscow Engineering Physics Institute (1994) (Ex. 1015) (hereinafter
`“Mozgrin Thesis”).2
`
`Interaction of Low-Temperature Plasma With Condensed Matter,
`Gas, and Electromagnetic Field in (III) ENCYCLOPEDIA OF LOW-
`TEMPERATURE PLASMA, (V.E. Fortov ed., 2000) (Ex. 1004)
`(hereinafter “Fortov”).3
`
`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 (Jan. 1983) (Ex. 1006) (hereinafter “Kudryavtsev”).
`
`
`
`2 The Mozgrin Thesis is a Russian-language reference (Ex. 1016). The
`citations to the Mozgrin Thesis are to the certified English-language
`translation submitted by Petitioner (Ex. 1015).
`3 Fortov is a Russian-language reference (Ex. 1010). The citations to Fortov
`are to the certified English-language translation submitted by Petitioner
`(Ex. 1004).
`
`
`
`4
`
`
`
`IPR2014-01479
`Patent 6,896,773 B2
`
`
`
`
`
`
`D. Asserted Grounds of Unpatentability
`
`Petitioner asserts the following grounds of unpatentability:
`
`Claim(s)
`
`Basis
`
`References
`
`1, 6, and 8–204
`
`§ 103(a) Mozgrin and Fortov
`
`5
`
`§ 103(a) Mozgrin, Fortov, and Kawamata
`
`1, 6, and 8–20
`
`§ 103(a) Wang and Fortov
`
`5
`
`§ 103(a) Wang, Fortov, and Kawamata
`
`3, 4, and 34–39
`
`§ 103(a) Mozgrin, Fortov, and Lantsman
`
`3, 4, and 34–39
`
`§ 103(a) Wang, Fortov, and Lantsman
`
`7
`
`7
`
`2
`
`2
`
`
`
`§ 103(a) Mozgrin, Kudryavtsev, and Fortov
`
`§ 103(a)
`
`§ 103(a)
`
`Wang, Mozgrin, Kudryavtsev, and
`Fortov
`Mozgrin, Mozgrin Thesis, Fortov,
`and Raizer
`
`§ 103(a) Wang, Fortov, Fu, and Raizer
`
`II. ANALYSIS
`
`A. Claim Construction
`
`The parties make the same claim construction arguments The Gillette
`
`Company (“Gillette”) and Zond made in IPR2014-00580. Compare Pet. 4–
`
`
`4 We note under this Ground, Petitioner includes claims 36–39 which
`depend from independent claim 34, in the headings. Pet. 13. As in
`IPR2014-00580, these claims are not argued in the ground, nor is
`independent claim 34 addressed under this ground. Accordingly, we
`determine this was an inadvertent typographical error and do not address
`these claims in the discussion of this ground.
`
`
`
`5
`
`
`
`IPR2014-01479
`Patent 6,896,773 B2
`
`
`
`
`
`
`5, with ’580 Pet. 4–5; compare Prelim. Resp. 19–20, with ’580 Prelim. Resp.
`
`19–20.
`
`We construed several claim terms identified by Gillette and Zond in
`
`IPR2014-00580. See ’580 Dec. 11–12. For the purposes of the instant
`
`decision, we incorporate our previous analysis and apply those claim
`
`constructions here.
`
`B. Obviousness over Mozgrin and Fortov, Together or in Combination
`with Kawamata, Lantsman, Kudryavtsev, Mozgrin Thesis, or Raizer
`
`In its Petition, Petitioner asserts the same grounds of unpatentability
`
`based on the combinations of Mozgrin and Fortov with Kawamata,
`
`Lantsman, Kudryavtsev, Mozgrin Thesis, and Raizer, as the grounds on
`
`which a trial was instituted in IPR2014-00580. See Pet. 13–27, 41–45, 51–
`
`55, 56–58; ’580 Dec. 46. Petitioner’s arguments are substantively identical
`
`to the arguments made by Gillette in IPR2014-00580. Compare Pet. 13–27,
`
`41–45, 51–55, 56–58, with ’580 Pet. 13–27, 41–45, 51–55, 56–58.
`
`Petitioner also proffers the same Declaration of Mr. DeVito that Gillette
`
`submitted in support of its Petition. Compare Ex. 1005, with IPR2014-
`
`00580, Ex. 1005. Zond’s arguments in the Preliminary Response are
`
`essentially identical to those arguments that it made in IPR2014-00580.
`
`Compare Prelim. Resp. 20–57, with IPR2014-00580, Paper 10 (“’580
`
`Prelim. Resp.”), 20–57.
`
`We incorporate our previous analysis regarding the asserted grounds
`
`of unpatentability over the combinations of Mozgrin and Fortov with
`
`Kawamata, Lantsman, Kudryavtsev, Mozgrin Thesis, and Raizer (’580 Dec.
`
`
`
`6
`
`
`
`IPR2014-01479
`Patent 6,896,773 B2
`
`
`
`
`
`
`8–44), and determine that Petitioner has demonstrated a reasonable
`
`likelihood of prevailing on those grounds of unpatentability.
`
`
`
`C. Other Asserted Grounds of Unpatentability
`
`Gillette also asserts that claims 1–20 and 34–39 are unpatentable on
`
`other grounds. 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
`
`Petitioner would prevail in challenging claims 1–20 and 34–39 of the ’773
`
`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
`
`
`
`IPR2014-01479
`Patent 6,896,773 B2
`
`
`
`
`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 for the following grounds of unpatentability:
`
`Claim(s)
`
`Basis
`
`References
`
`1, 6, and 8–20
`
`§ 103(a) Mozgrin and Fortov
`
`5
`
`§ 103(a) Mozgrin, Fortov, and Kawamata
`
`3, 4, and 34–39
`
`§ 103(a) Mozgrin, Fortov, and Lantsman
`
`7
`
`2
`
`
`
`§ 103(a) Mozgrin, Kudryavtsev, and Fortov
`
`§ 103(a)
`
`Mozgrin, Mozgrin Thesis, Fortov,
`and Raizer
`
`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
`
`
`
`IPR2014-01479
`Patent 6,896,773 B2
`
`
`For PETITIONER:
`
`
`
`
`
`David M. O’Dell
`David L. McCombs
`Haynes and Boone, LLP
`David.odell.ipr@haynesboone.com
`david.mccombs.ipr@haynesboone.com
`
`
`
`PATENT OWNER:
`
`Gregory Gonsalves
`The Gonsalves Law firm
`gonsalves@gonsalveslawfirm.com
`
`Bruce Barker
`Chao Hadidi Stark & Barker LLP
`bbarker@chsblaw.com
`
`
`
`9
`
`
`
`
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