All challenged claims found unpatentable.

Takeaway: Evidence establishing a specific date of cataloging and shelving before the critical date is desirable, but not required, in a public accessibility determination.

In its Final Written Decision, the Board found all challenged claims of the ‘142 patent unpatentable as obvious under 35 U.S.C. § 103(a). The ‘142 patent relates to methods and apparatus for generating high-density plasma. Specifically, the Board found claims 13 and 14 unpatentable in view of Wang and Lantsman; claims 2 and 11 unpatentable in view of Wang, Lantsman, and Kudryavtsev; and claim 16 unpatentable in view of Wang, Lantsman, and the Mozgrin Thesis.

Most notably, the Board found that the Mozgrin Thesis qualified as prior art under 35 U.S.C. § 102(b). Specifically,

GlobalFoundries asserts that the Mozgrin Thesis is a doctoral thesis at Moscow Engineering Physics Institute, published in 1994, and, thus, it is prior art under § 102(b). Pet. 4. To support its assertion, GlobalFoundries proffers a copy of the catalog entry for the Mozgrin Thesis at the Russian State Library, and a certified English-language translation thereof. Ex. 1120. GlobalFoundries also alleges that the Mozgrin Thesis was cataloged by the Russian State Library either by the imprint date of 1994, or at least by 1995, as shown on the catalog entry (“Catalog of Dissertations in Russian (since 1995)”). Reply 6–7. GlobalFoundries further asserts that the Russian State Library is an institution “by definition established to share the information that it houses with any interested person.” Id.

Patent Owner, Zond, countered that “GlobalFoundries fails to demonstrate that the Mozgrin Thesis is prior art under § 102” and that “GlobalFoundries provides no evidence that the phrase ‘Imprint Moscow 1994’ appearing on the catalog entry means that the Mozgrin Thesis was catalogued on that particular date.”

The Board, however, was persuaded by GlobalFoundries that the Mozgrin Thesis qualifies as prior art, stating: “Although evidence establishing a specific date of cataloging and shelving before the critical date would have been desirable, it is not required in a public accessibility determination” and that “the catalog entry clearly shows a publication date of 1994 (‘Imprint Moscow 1994’), well before the critical date of November 4, 2002.” Moreover:

Zond had the opportunity, during this trial, to object to evidence and file a motion to exclude the evidence submitted by GlobalFoundries. Zond, however, did not object under 37 C.F.R. § 42.64(b) to the admissibility of the catalog entry or the Mozgrin Thesis. Notably, Zond does not challenge the authenticity of these documents, nor allege that they constitute inadmissible hearsay. Therefore, the information set forth in the catalog entry can be relied upon by GlobalFoundries as evidence supporting its contention that Mozgrin Thesis was sufficiently accessible to the public before the critical date and it is [a] printed publication within the meaning of § 102. Furthermore, Zond does not provide sufficient explanation or credible evidence to rebut the information disclosed in the Russian State Library’s catalog entry, including the 1994 publication date. For instance, Zond does not explain why a library, such as the Russian State Library here, would take more than seven years to catalog and index a thesis.

Thus, based on the evidence before it, the Board observed:

[T]he Mozgrin Thesis was cataloged and indexed in a meaningful way, by the author’s name, the title of the thesis (“High-Current Low-Pressure Quasi-Stationary Discharge in a Magnetic Field”), and the subject matter of the thesis (“Plasma Physics and Chemistry”). Ex. 1120. As such, the catalog entry demonstrates that the Mozgrin Thesis was made available to interested persons by virtue of its title and “Subject” characterization. Upon consideration of the facts before us, we determine that the Russian State Library’s catalog entry is credible evidence to establish that the Mozgrin Thesis was made sufficiently accessible to the public interested in the art before the critical date of November 4, 2002.

Judge Stephens dissented on this point, however. Specifically, Judge Stephens was “not persuaded GlobalFoundries has shown the Mozgrin Thesis was publicly accessible more than one year prior to the date of the application for patent.” Judge Stephens concluded:

[A]bsent any evidence pertaining to when the Russian State Library received the Mozgrin Thesis, when the publicly accessible catalog was available, and what the general practices of the Russian State Library between receipt of a thesis and subsequent incorporation into a publicly accessible catalog are, the presumption the Mozgrin Thesis was publicly accessible more than one year prior to the date of the application for patent is pure speculation.

Moreover, Judge Stephens disagreed that Zond was required to object under 37 C.F.R. § 42.64(b). In Judge Stephens’ view, because Zond argued that the Mozgrin Thesis is not prior art under § 102(b)—as opposed to merely inadmissible under the Federal Rules of Evidence—“such argument is not proper in a motion to exclude, which is a challenge to the admissibility of evidence, not a challenge to sufficiency.” Thus, because Judge Stephens was not persuaded that the Mozgrin Thesis is a printed publication under § 102(b), she was not persuaded that claim 16 is unpatentable as obvious over the combination of Wang, Lantsman, and the Mozgrin Thesis.

Fujitsu Semiconductor Ltd., et al. v. Zond, LLC, IPR2014-00821

Paper 47: Final Written Decision

Dated: September 25, 2015

Patent: 6,853,142 B2

Before: Kevin F. Turner, Debra K. Stephens, Joni Y. Chang, Susan L.C. Mitchell, and Jennifer Meyer Chagnon

Written by: Turner

Dissent by: Stephens

Related proceedings: IPR2014-00863; IPR2014-01013; IPR2014-01057; 1:13-cv-11570-RGS (Zond v. Intel); 1:13-cv-11577-DPW (Zond v. AMD, Inc.); 1:13-cv-11581-DJC (Zond v. Toshiba Am. Elec. Comp. Inc.); 1:13-cv-11591-RGS (Zond v. SK Hynix, Inc.); 1:13-cv-11625-NMG (Zond v. Renesas Elec. Corp.); 1:13-cv-11634-WGY (Zond v. Fujitsu); and 1:13-cv-11567-DJC (Zond v. The Gillette Co.).