Paper 12
`Trials@uspto.gov
`571-272-7822
`
` Entered: November 7, 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 IPR2014-01494
`Patent 6,896,775 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 7, 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 IPR2014-01494
`Patent 6,896,775 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
`
`
`
`
`
`
`
`
`
`IPR2014-01494
`Patent 6,896,775 B2
`
`
`
`
`
`
`I. INTRODUCTION
`Taiwan Semiconductor Manufacturing Company, Ltd., TSMC North
`America Corp., Fujitsu Semiconductor Limited, and Fujitsu Semiconductor
`America (“Petitioner”) filed a Petition requesting inter partes review of
`claims 1–29 of U.S. Patent No. 6,896,775 B2 (“the ’775 Patent”). Paper 1
`(“Pet.”). Zond, LLC (“Zond”) timely filed a Preliminary Response.
`Paper 10 (“Prelim. Resp.”). We have jurisdiction under 35 U.S.C. § 314,
`which provides that an inter partes review may not be instituted
`“unless . . . there is a reasonable likelihood that the petitioner would prevail
`with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C.
`§ 314(a).
`Upon consideration of the information presented in the Petition and
`the Preliminary Response, we determine that there is a reasonable likelihood
`that Petitioner would prevail in challenging claims 1–29. Accordingly,
`pursuant to 35 U.S.C. § 314, we authorize an inter partes review to be
`instituted as to the challenged claims.
`
`A. Related District Court Proceedings
`
`Petitioner indicates that the ’775 Patent was asserted in TSMC Tech.,
`Inc. v. Zond LLC, No.1:14-cv-00721 (D. Del.) and Zond, LLC v. Fujitsu
`Semiconductor Limited, No. 1-14-cv-12438 (D. Mass.). Pet. 1. Petitioner
`also identifies other proceedings in which Zond asserted the ’775 Patent. Id.
`
`
`
`2
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`IPR2014-01494
`Patent 6,896,775 B2
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`
`
`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 IPR2014-00578.
`In IPR2014-00578, we instituted inter partes review of claims 1–29 of
`the ’775 Patent, based on the following grounds of unpatentability:
`
`Claim(s)
`1–7, 9–16, 18–26, 28,
`and 29
`8
`
`17
`
`27
`
`Basis
`
`References
`
`§ 103(a) Wang, Mozgrin, and Kudryavtsev
`§ 103(a) Wang, Mozgrin, Kudryavtsev, and
`Kouznetsov
`§ 103(a) Wang, Mozgrin, Kudryavtsev, and
`Lantsman
`§ 103(a) Wang, Mozgrin, Kudryavtsev, and Li
`
`
`
`Petitioner filed a Motion for Joinder with IPR2014-00578. Paper 4.
`In a separate Decision, we grant Petitioner’s revised Motion, joining the
`instant proceeding with IPR2014-00578, and terminating the instant
`proceeding.
`
`C. Prior Art Relied Upon
`
`Petitioner relies upon the following prior art references:
`Lantsman
`
`US 6,190,512
`Feb. 20, 2001
`Wang
`
`
`US 6,413,382
`July 2, 2002
`Kouznetsov
`
`US 2005/0092596 May 5, 2005
`Fu
`
`
`US 6,306,265
`Oct. 23, 2001
`
`
`(Ex. 1025)
`(Ex. 1008)
`(Ex. 1004)
`(Ex. 1014)
`
`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”).
`3
`
`
`
`
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`IPR2014-01494
`Patent 6,896,775 B2
`
`
`
`
`
`
`
`
`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. 1003) (hereinafter “Kudryavtsev”).
`
`D.V. Mozgrin, High-Current Low-Pressure Quasi-Stationary
`Discharge in a Magnetic Field: Experimental Research, Thesis at
`Moscow Engineering Physics Institute (1994) (Ex. 1006) (hereinafter
`“Mozgrin Thesis”).1
`
`N. Li et al., Enhancement of Aluminum Oxide Physical Vapor
`Deposition with a Secondary Plasma, 149 Surface and Coatings Tech.
`161–170 (2002) (Ex. 1010) (hereinafter “Li”).
`
`
`D. Asserted Grounds of Unpatentability
`Petitioner asserts the following grounds of unpatentability:
`
`References
`Basis
`Claim(s)
`1–7, 9–26, 28, and 29 § 103(a) Mozgrin, Kudryavtsev, and
`Mozgrin Thesis
`§ 103(a) Mozgrin, Kudryavtsev, Mozgrin
`Thesis, and Kouznetsov
`§ 103(a) Mozgrin, Kudryavtsev, Mozgrin
`Thesis, and Li
`§ 103(a) Wang, Mozgrin, and Kudryavtsev
`§ 103(a) Wang, Mozgrin, Kudryavtsev, and
`Kouznetsov
`§ 103(a) Wang, Mozgrin, Kudryavtsev, and
`Lantsman
`§ 103(a) Wang, Mozgrin, Kudryavtsev, and Li
`
`8
`
`27
`1–7, 9–16, 18–26, 28,
`and 29
`8
`
`17
`
`27
`
`
`
`1 The Mozgrin Thesis is a Russian-language reference. The citations to the
`Mozgrin Thesis are to the certified English-language translation submitted
`by Petitioner (Ex. 1005).
`
`
`
`4
`
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`IPR2014-01494
`Patent 6,896,775 B2
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`II. ANALYSIS
`
`A. Claim Construction
`
`The parties make the same claim construction arguments The Gillette
`Company (“Gillette”) and Zond made in IPR2014-00578. Compare Pet. 4–
`6, with ’578 Pet. 4–5; compare Prelim. Resp. 13–15, with ’578 Prelim. Resp.
`13–15.
`We construed several claim terms identified by Gillette and Zond in
`IPR2014-00578. See ’578 Dec. 7–10. For the purposes of the instant
`decision, we incorporate our previous analysis and apply those claim
`constructions here.
`
`B. Obviousness over Wang, Mozgrin, and Kudryavtsev
`In its Petition, Petitioner asserts the same ground of unpatentability
`based on the combination of Wang, Mozgrin, and Kudryavtsev, as that on
`which a trial was instituted in IPR2014-00578. See Pet. 36–57; ’578 Dec.
`26. Petitioner’s arguments are substantively identical to the arguments made
`by Gillette in IPR2014-00578. Compare Pet. 36–57, with ’578 Pet. 36–57.
`Petitioner also proffers the same Declaration of Mr. DeVito that Gillette
`submitted in support of its Petition. Compare Ex. 1011, with IPR2014-
`00578, Ex. 1011. Zond’s arguments in the Preliminary Response are
`essentially identical to those arguments that it made in IPR2014-00578.
`Compare Prelim. Resp. 43–52, with ’578 Prelim. Resp. 43–52.
`We incorporate our previous analysis regarding the asserted ground of
`unpatentability based on the combination of Wang, Mozgrin, and
`Kudryavtsev (’578 Dec. 11–22), and determine that Petitioner has
`
`
`
`5
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`IPR2014-01494
`Patent 6,896,775 B2
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`demonstrated a reasonable likelihood of prevailing on this ground of
`unpatentability.
`
`C. Obviousness over Wang, Mozgrin, and Kudryavtsev, in Combination
`with Kouznetsov, Lantsman, or Li
`In its Petition, Petitioner asserts the same ground of unpatentability
`based on Wang, Mozgrin, and Kudryavtsev, in Combination with
`Kouznetsov, Lantsman, or Li, as that on which a trial was instituted in
`IPR2014-00578. See Pet. 57–59; ’578 Dec. 26. Petitioner’s arguments are
`substantively identical to the arguments made by Gillette in IPR2014-00578.
`Compare Pet. 57–59, with ’578 Pet. 57–59. Zond’s arguments in the
`Preliminary Response are essentially identical to those arguments that it
`made in IPR2014-00578. Compare Prelim. Resp. 43–52, with ’578 Prelim.
`Resp. 43–52.
`We incorporate our previous analysis regarding the asserted ground of
`unpatentability based on Wang, Mozgrin, and Kudryavtsev, in Combination
`with Kouznetsov, Lantsman, or Li (’578 Dec. 22–24), and determine that
`Petitioner has demonstrated a reasonable likelihood of prevailing on this
`ground of unpatentability.
`
`D. Other Asserted Ground of Unpatentability
`
`Petitioner also asserts that claims 1-29 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
`
`
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`6
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`IPR2014-01494
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`
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`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 1–29 of the ’775 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.
`
`IV. ORDER
`
`Accordingly, 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)
`1–7, 9–16, 18–26, 28,
`and 29
`8
`
`17
`
`27
`
`
`
`
`
`
`Basis
`
`References
`
`§ 103(a) Wang, Mozgrin, and Kudryavtsev
`§ 103(a) Wang, Mozgrin, Kudryavtsev, and
`Kouznetsov
`§ 103(a) Wang, Mozgrin, Kudryavtsev, and
`Lantsman
`§ 103(a) Wang, Mozgrin, Kudryavtsev, and Li
`
`7
`
`
`
`IPR2014-01494
`Patent 6,896,775 B2
`
`
`
`
`
`
`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
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`IPR2014-01494
`Patent 6,896,775 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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