Trials@uspto.gov
`571-272-7822
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` Paper 9
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`Date: August 14, 2015
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`UNDER ARMOUR, INC.,
`Petitioner,
`
`v.
`
`ADIDAS AG,
`Patent Owner.
`
`
`
`Case IPR2015-00698
`Patent 8,092,345 B2
`
`
`
`
`Before JENNIFER S. BISK, MICHAEL J. FITZPATRICK, and
`JUSTIN BUSCH, Administrative Patent Judges.
`
`
`BUSCH, Administrative Patent Judge.
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`571-272-7822
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` Paper 9
`
`Date: August 14, 2015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`UNDER ARMOUR, INC.,
`Petitioner,
`
`v.
`
`ADIDAS AG,
`Patent Owner.
`
`
`
`Case IPR2015-00698
`Patent 8,092,345 B2
`
`
`
`
`Before JENNIFER S. BISK, MICHAEL J. FITZPATRICK, and
`JUSTIN BUSCH, Administrative Patent Judges.
`
`
`BUSCH, Administrative Patent Judge.
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`IPR2015-00698
`Patent 8,092,345 B2
`
`
`I.
`
`INTRODUCTION
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`Petitioner, Under Armour, Inc., filed a Petition to institute an inter
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`partes review of claims 1–11, 15–18, and 20 (“the challenged claims”) of
`
`U.S. Patent No. 8,092,345 B2 (“the ’345 patent”). Paper 1 (“Pet.”). Patent
`
`Owner, adidas AG, filed a Preliminary Response pursuant to
`
`35 U.S.C. § 313. Paper 6 (“Prelim. Resp.”).
`
`Upon consideration of the Petition and the Preliminary Response, and
`
`for the reasons explained below, we determine that the information
`
`presented shows a reasonable likelihood that Petitioner would prevail with
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`respect to at least one claim. See 35 U.S.C. § 314(a). Accordingly, we
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`institute an inter partes review.
`
`A. Related Matters
`
`Patent Owner has asserted the ’345 patent, along with additional
`
`patents, including related U.S. Patent No. 7,905,815 and related U.S. Patent
`
`No. 8,579,767, against Petitioner in adidas AG v. Under Armour, Inc., Case
`
`No. 14-130-GMS (D. Del.). Pet. 1; Paper 5, 1. Petitioner has filed petitions
`
`to institute inter partes reviews of those related patents. See Paper 5, 1
`
`(citing IPR2015-00697; IPR2015-00700).
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`IPR2015-00698
`Patent 8,092,345 B2
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`B. The Asserted Grounds
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`Petitioner identifies the following as asserted grounds of
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`unpatentability:
`
`References
`Mault (Ex. 1004)1 and
`DeLorme (Ex. 1005)2
`Adler (Ex. 1006)3 and
`DeLorme
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`Pet. 4.
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`Basis
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`Claims Challenged
`
`§ 103(a)
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`1–4, 6–11, 15–18, and 20
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`§ 103(a)
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`1–11, 15–18, and 20
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`C. The ’345 Patent
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`Among other aspects, the ’345 patent describes “a mobile journal
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`system that can be customized for different types of uses.” Ex. 1001, 2:53–
`
`55. Electronic journal entries may be created through receipt of various
`
`types of input and the journal entries may be linked with data, including time
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`and location. Id. at 4:42–44. Figure 42 of the ’345 patent provides a
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`flowchart of the basic limitations recited in the challenged claims. In
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`particular, a user may create journal entries in various ways, including using
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`voice, text, or an electronic sketchpad. Id. at 39:61–65. A user may also
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`capture an image or video and associate that image with the journal entry.
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`Id. at 39:65–40:4. The system may automatically tag the journal entry with
`
`a current date and time and location using a clock and GPS monitor,
`
`
`
`1 U.S. Patent No. 6,513,532 B2, issued Feb. 4, 2003.
`2 U.S. Patent No. 6,321,158 B1, issued Nov. 20, 2001.
`3 Ari T. Adler, A Cost-Effective Portable Telemedicine Kit for Use in
`Developing Countries (May 2000) (M.S.E. M.E. thesis, Massachusetts
`Institute of Technology).
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`respectively, associated with the system. Id. at 40:4–9. A user may link the
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`entries to a database element and upload journal entries to a personal
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`computer. Id. at 40:12–21. The uploaded journal may then be converted to
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`a standard file format, such as HTML or PDF. Id. at 40:26–29.
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`D. The Challenged Claims
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`Petitioner challenges claims 1-11, 15–18, and 20. Pet. 2. Claims 1
`
`and 20 are independent. Claim 1 is illustrative and reproduced below with
`
`indentations added:
`
`A portable electronic journal configured to be worn or
`carried by a user comprising
`
`a memory to store journal entries,
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`journal software with which a user interacts and creates a
`new journal and is capable of creating individual text or audio
`journal entries for the journal and optionally linking one or
`more images to the journal,
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`a user input device that is used in creating journal entries,
`wherein the user input device is selected from the group
`consisting of a voice input device and a text input device to
`create journal entries,
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`a digital camera that creates images to store with the
`created journal entries,
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`a clock to tag the journal entries with date and time a
`communication device to upload the journal entries to a
`personal computer, and
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`software to format the journal entries to a common file
`format.
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`IPR2015-00698
`Patent 8,092,345 B2
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`II. ANALYSIS
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`A. Claim Construction
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`“A claim in an unexpired patent shall be given its broadest reasonable
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`construction in light of the specification of the patent in which it appears.”
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`37 C.F.R. § 42.100(b). Pursuant to that standard, the claim language should
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`be read in light of the specification, as it would be interpreted by one of
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`ordinary skill in the art. In re Suitco Surface, Inc., 603 F.3d 1255, 1260
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`(Fed. Cir. 2010). Thus, we generally give claim terms their ordinary and
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`customary meaning. See In re Translogic Tech., Inc., 504 F.3d 1249, 1257
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`(Fed. Cir. 2007) (“The ordinary and customary meaning is the meaning that
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`the term would have to a person of ordinary skill in the art in question.”)
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`(internal quotation marks omitted).
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`Petitioner proposes express constructions for two terms, “common file
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`format” and “advertisement,” which we discuss below. Pet. 5–6. Patent
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`Owner proposes an express construction only for “advertisement.” Prelim.
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`Resp. 7–8.
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`1. “common file format” (claims 1 and 20)
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`Petitioner proposes that common file format be construed as any well-
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`known or standardized format that permits easy viewing or printing with a
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`computer, such as a personal computer. Pet. 6. To support these
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`constructions, Petitioner relies on declaration testimony of Dr. Joseph
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`Paradiso and also the specification of the ’345 patent. Id. (citing Ex. 1003
`
`¶ 17; Ex. 1001, 40:26–31). We find Petitioner’s construction is overly
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`narrow. In particular, we note that the specification of the ’345 patent
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`describes that “[i]mages and audio segments may also be stored in a
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`IPR2015-00698
`Patent 8,092,345 B2
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`common file format.” Ex. 1001, 40:30–31 (emphasis added). It is not clear,
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`from the limited discussion in the Specification, how or why a common file
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`format for an audio segment would permit easy viewing or printing.
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`Therefore, we reject Petitioner’s construction. For purposes of this decision,
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`we give the term its plain and ordinary meaning, which does not require an
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`express construction.
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`2. “advertisement” (claim 18)
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`Petitioner proposes that advertisement be construed as “a calling
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`attention to or making known.” Pet. 6 (citing Ex. 1001, 65:39–42, 66:50–
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`59; Ex. 1004 ¶ 18). Patent Owner argues Petitioner provides no evidence to
`
`support its proposed construction, which Patent Owner asserts is taken from
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`a tertiary definition of “advertisement” in an online dictionary. Prelim.
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`Resp. 7. Patent Owner argues Petitioner’s proposed construction ignores the
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`primary definition of advertisement, which is “a paid announcement, as of
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`goods for sale, in newspapers or magazines, on radio or television, etc.” Id.
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`at 7–8. Petitioner’s proposed construction is inconsistent with the
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`specification of the ’345 patent, which distinguishes advertisements from
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`information about and directions to local businesses. See, e.g., Ex. 1001,
`
`65:36–40, 66:53–56. Patent Owner asserts that the broadest reasonable
`
`interpretation, consistent with the specification of the ’345 patent, is “an
`
`announcement presented to help sell a product or service.” On this record,
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`we agree with Patent Owner and preliminarily construe advertisement as an
`
`announcement presented to help sell a product or service.
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`B. Obviousness over Mault and DeLorme
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`1. Mault
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`Mault is a United States patent directed to a diet and activity
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`monitoring device and method. Ex. 1004, Abstract. Mault discloses that the
`
`monitoring device may be any of various types of portable devices,
`
`including a wristwatch, a device intended to be mounted to clothing or a
`
`belt, or a portable desktop assistant (PDA). Id. at 4:2–8, 18:7–11, Figs. 3A,
`
`3B, 9, 10. The monitoring device communicates, both wired and wirelessly,
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`with various other local and remote computing devices. Id. at 6:34–65. The
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`monitoring device may include a heart rate sensor, an accelerometer, a
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`Global Positioning System (GPS) receiver, a timer, and audio and video
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`recording devices. Id. at 3:46–48, 3:63–4:2, 8:47–51, 15:55–16:10.
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`Figure 4 of Mault is reproduced below:
`
`Figure 4 depicts a schematic of an embodiment of the monitoring device
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`disclosed by Mault. Id. at 5:63–64.
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`2. DeLorme
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`DeLorme is a United States patent directed to an integrated
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`routing/mapping information system, which links desktop map applications
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`to portable computers, including PDAs. Ex. 1005, Abstract. DeLorme
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`discloses that the portable device may include location detection systems,
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`such as a GPS. Id. “[T]he PDA device is configured to display directions,
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`text and map formats, the user’s current position, heading, speed, elevation,
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`and so forth.” Id. DeLorme’s system “enables the user to mark or record
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`specific locations and/or log actual travel routes, using GPS information.”
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`Id.
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`3. Obviousness Challenge
`
`Petitioner asserts that claims 1–4, 6–11, 15–18, and 20 would have
`
`been obvious over Mault and DeLorme under 35 U.S.C. § 103(a). Pet. 8–33.
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`Petitioner provides a limitation-by-limitation analysis of how the
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`combination of Mault and DeLorme allegedly renders claims 1–4, 6–11, 15–
`
`18, and 20 obvious.
`
`The limitations recited in claim 1 and 20 are similar, with the
`
`exception that independent claim 1 recites a device and independent claim
`
`20 recites a method. Petitioner asserts Mault discloses each limitation
`
`recited in independent claims 1 and 20. Id. at 13–19, 29–33. Petitioner
`
`additionally provides alternate bases for arguing that three limitations in
`
`independent claims 1 and 20 are taught by the prior art, either by modifying
`
`Mault or combining Mault with DeLorme. The three limitations in claim 1
`
`are “journal software with which a user interacts and creates a new journal
`
`and is capable of,” “a clock to tag the journal entries with date and time,”
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`and “software to format the journal entries to a common file format.” The
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`three limitations in claim 20 are “recording the date and time using a clock
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`worn or carried by the user,” “storing the date and time in a memory with
`
`the journal entry,” and “formatting the journal entry to a common file
`
`format.”
`
`a)
`
`Petitioner’s Challenge
`
`Petitioner also provides analysis of each of the additional limitations
`
`of claims 2–4, 6–11, and 15–18, which depend from independent claim 1.
`
`Petitioner asserts Mault discloses each of the additional limitations recited in
`
`claims 2–4, 6–11, 15, and 16. Id. at 19–28. Petitioner alternately alleges
`
`that, to the extent not disclosed by Mault, it would have been obvious to
`
`modify Mault to incorporate the database limitations recited in claims 6 and
`
`7 and the localized information limitations recited in claims 15 and 16. Id.
`
`at 21–23, 26–28. Petitioner argues the additional limitations of claims 17
`
`and 18 are disclosed by DeLorme. Id. at 28–29. Patent Owner challenges
`
`whether the Petition has established a motivation to combine Mault and
`
`DeLorme (Prelim. Resp. 8–15) and whether the prior art teaches: journal
`
`software for creating a new journal (id. at 16–19), formatting journal entries
`
`to a common file format (id. at 19–20; 25), tagging the journal entries with
`
`database entries (id. at 21–22), a journal with route guidance (id. at 23), and
`
`providing localized advertisements or discounts (id. at 23–25).
`
`We have reviewed the Petition, the Preliminary Response, and the
`
`evidence of record, and we determine Petitioner has sufficiently established
`
`that Mault discloses each of the limitations that Patent Owner did not contest
`
`in its Preliminary Response. Below, we address the limitations contested by
`
`Patent Owner in its Preliminary Response and the rationale presented by
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`Petitioner for modifying Mault and/or combining Mault with DeLorme.
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`Specifically, we address the limitations in claim 1 reciting “journal software
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`with which a user interacts and creates a new journal and is capable of” and
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`“software to format the journal entries to a common file format,” and the
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`limitation in claim 20 reciting “formatting the journal entry to a common file
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`format.” With respect to the dependent claims, we address the limitations
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`recited in claims 6 and 7 related to incorporating a database, the limitation in
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`claim 17 related to providing route guidance, and the limitation in claim 18
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`related to local advertisements or discounts. We also discuss dependent
`
`claim 4 due to its inclusion of a means plus function limitation.
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`b)
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`Claims 1 and 20
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`Turning first to independent claims 1 and 20, Petitioner argues that, to
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`the extent not disclosed by Mault, it would have been obvious to adapt
`
`Mault to include the “journal software with which a user interacts and
`
`creates a new journal” recited in claim 1 because, among other reasons, it
`
`was well known that portable devices required software installation and
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`setup for use and that “a user would simply need to install, set up, or
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`configure that journal software for use.” Pet. at 14 (citing Ex. 10034 ¶ 46).
`
`Petitioner further asserts that installing, setting up, and configuring such
`
`journal software was common and well known at the time of invention of the
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`’345 patent. Id. at 14–15 (citing Ex. 1003 ¶ 46).
`
`With respect to the limitation in claim 1 reciting “software to format
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`the journal entries to a common file format” and the limitation in claim 20
`
`reciting “formatting the journal entries to a common file format,” Petitioner
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`4 Exhibit 1003 is the declaration of Dr. Joseph A Paradiso.
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`argues that journal entries would be formatted to HTML for uploading files
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`to a web page. Pet. 18. Petitioner asserts that, to the extent not explicitly
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`disclosed by Mault, using common file formats was well known and would
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`have been obvious in view of the knowledge of an ordinarily skilled artisan.
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`Id. at 18–19. Petitioner further argues that Mault’s disclosure of uploading
`
`data to a personal computer would have provided a reason to use a common
`
`file format so that other programs would be able to easily use the uploaded
`
`data. Id. at 19 (citing Ex. 1003 ¶ 58).
`
`Patent Owner argues that “there is no explanation of why a skilled
`
`person would make this proposed modification” to include journal software
`
`for creating journal entries. Prelim. Resp. 17–18. Patent Owner further
`
`argues Petitioner has simply pointed to random elements allegedly known in
`
`the prior art and merely concluded that the combination would have been
`
`obvious. Id. at 18. With respect to modifying Mault to include formatting to
`
`a common file format, Patent Owner argues Petitioner improperly relies on
`
`Guck. Patent Owner does not address Petitioner’s and Dr. Paradiso’s
`
`rationale that a skilled artisan would have been motivated to adapt Mault
`
`because Mault discloses uploading data to a personal computer and adapting
`
`Mault would provide the benefit of having data that can be used by common
`
`programs on the personal computer. See Ex. 1003 ¶ 58.
`
`Notwithstanding Patent Owner’s arguments that there is no
`
`explanation of why Mault would be modified to include journal software to
`
`create a journal capable of creating journal entries, we find the Petition and
`
`Dr. Paradiso’s testimony regarding the modification persuasive.
`
`Specifically, the assertions by Petitioner and Dr. Paradiso that “portable
`
`electronic devices required software installation and/or setup before use”
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`demonstrates sufficient explanation as to why an ordinarily skilled artisan
`
`would have included software—i.e., to create a journal that would be
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`capable of logging the journal entries explicitly disclosed in Mault.
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`Similarly, we determine Petitioner has demonstrated a sufficient rationale
`
`for adapting Mault to format its data to a common file format. In particular,
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`we are persuaded it would have been obvious to a person of ordinary skill in
`
`the art to adapt Mault to format data to a common file format either for
`
`simple uploading via HTML or for use by common programs.
`
`c)
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`Claim 4
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`Petitioner has the burden to establish a reasonable likelihood of
`
`prevailing on its assertion that claim 4 is unpatentable over the asserted prior
`
`art. An essential part of that showing is identifying how each challenged
`
`claim is to be construed. 37 C.F.R. § 42.104(b)(3). Specifically, our rules
`
`require that, “[w]here the claim to be construed contains a means-plus-
`
`function or step-plus-function limitation[,] . . . the construction of the claim
`
`must identify the specific portions of the specification that describe the
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`structure, material, or acts corresponding to each function.” Id.
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`Petitioner does not identify what structure in the specification it
`
`believes corresponds to the means-plus-function limitation of claim 4,
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`“means to create sketch, image or video journal entries.” Indeed,
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`Petitioner’s discussion of Mault in relation to claim 4, as well as the analysis
`
`of Dr. Paradiso, does not address any corresponding structure in the
`
`specification of the ’345 patent. See Pet. 20 (citing Ex. 1003
`
`¶ 62). Petitioner’s analysis, therefore, is insufficient to show that the prior
`
`art teaches “means to create sketch, image or video journal entries.” Thus,
`
`we decline to institute inter partes review on claim 4.
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`d)
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`Claim 6
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`Dependent claim 6 recites “a database comprising a plurality of
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`database entries wherein a journal entry may be tagged with one of the
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`plurality of database entries.” Petitioner argues Mault’s various descriptions
`
`of flags, modes, bar codes, and prior entries that may be tagged to other
`
`entries disclose the further limitation of claim 6. Pet. 20–21. Petitioner
`
`further argues that, to the extent not explicitly disclosed, it would have been
`
`obvious to store that information in a well-known database format. Id. at
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`21–22. Patent Owner asserts there are no explicit disclosures of a database
`
`in Mault and that Petitioner has not provided a sufficient motivation to
`
`combine Mault and DeLorme. Prelim. Resp. 21–22. We find, however, that
`
`Petitioner has sufficiently demonstrated that using a database at least for
`
`storing the flags, modes, and prior meals would have provided the disclosed
`
`ability to store, index, and apply the data to future entries and at least would
`
`have been obvious to an ordinarily skilled artisan. See, e.g., Ex. 1003 ¶¶ 66–
`
`67.
`
`e)
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`Claim 7
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`Patent Owner argues Petitioner’s challenge to claim 7 is deficient for
`
`the same reason as asserted with respect to claim 6. As discussed above, we
`
`do not agree, and we further find Petitioner has shown sufficiently that the
`
`combination of Mault and DeLorme discloses the required databases related
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`to the exercise activity or consumption of food.
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`f)
`
`Claim 17
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`Petitioner argues DeLorme discloses the additional limitation of
`
`dependent claim 17, which recites that the journal is “configured to provide
`
`route guidance.” Pet. 28. Specifically, Petitioner argues “DeLorme
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`discloses a portable journal suited for travelling . . . and specifically
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`discloses ‘display[ing] directions,’ which is route guidance.” Id. Petitioner
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`argues it would have been obvious to combine Mault with DeLorme for
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`various reasons, including providing Mault with the additional feature of a
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`graphical map downloaded to the monitoring device “to assist the user in
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`tracking his or her location and activity.” Id. at 27. Petitioner further asserts
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`that Mault itself explicitly discloses the use of a GPS device and that the
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`choice of a specific type of device is merely design choice. Id. at 11.
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`Petitioner also argues the features disclosed by DeLorme are complementary
`
`to those in Mault, specifically with respect to incorporating DeLorme’s route
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`guidance with the activity monitor of Mault. Id. For purposes of this
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`decision, we determine Petitioner has provided a rationale sufficient to
`
`demonstrate that the combination of Mault and DeLorme would have been
`
`obvious and that the combination teaches the elements of claim 17.
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`g)
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`Claim 18
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`Finally, with respect to dependent claim 18, Petitioner points to the
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`feature of DeLorme relating to displaying points-of-interest on a map. Id. at
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`28. Petitioner asserts these points-of-interest “are advertisements for
`
`particular geographic locations.” As discussed above in our discussion of
`
`the construction of “advertisements,” we have determined that points-of-
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`interest are not the same thing as advertisements. Thus, we are not persuaded
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`that Petitioner has shown a reasonable likelihood of prevailing in showing
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`obviousness of claim 18.
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`h)
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`Conclusion
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`For the reasons explained above, we find Petitioner has established a
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`reasonable likelihood of prevailing in demonstrating that claims 1–3, 6–11,
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`15–17, and 20 would have been obvious in view of the combination of
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`Mault and DeLorme. For the reasons discussed above, we find Petitioner has
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`not established a reasonable likelihood of prevailing in demonstrating that
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`claim 18 would have been obvious in view of the combination of Mault and
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`DeLorme.
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`C. Obviousness over Adler and DeLorme
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`Petitioner asserts that the challenged claims would have been obvious
`
`over Adler and DeLorme. Pet. 37–56. As an initial matter, we turn to
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`Petitioner’s argument and evidence submitted in support of its assertion that
`
`Adler5 is prior art. The portion of the Petition regarding the availability of
`
`Adler as prior is:
`
`Telemedicine Kit is a publically available thesis submitted by
`Ari T. Adler in partial fulfillment of his requirements for a
`Master of Science Degree in Mechanical Engineering at the
`Massachusetts Institute of Technology. As disclosed on the
`cover page, the thesis was signed on May 19, 2000 and has a
`copyright date of 2000. Because Telemedicine Kit’s
`publication date predates the earliest possible priority date for
`the 345 Patent, Feb. 2001, Telemedicine Kit is prior art under at
`least 102(a).
`
`Pet. 33–34 (emphases added). Dr. Paradiso’s declaration does not add
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`much, stating “Telemedicine Kit is a publically-posted thesis submitted by
`
`Ari Adler in partial fulfillment of his requirements for a Master of Science
`
`Degree in Mechanical Engineering at the Massachusetts Institute of
`
`Technology.” Ex. 1003 ¶ 65 (bold emphases added; footnote omitted).
`
`
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`5 Petitioner refers to the Adler reference as Telemedicine Kit.
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`To qualify as a printed publication within the meaning of § 102, a
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`reference “must have been sufficiently accessible to the public interested in
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`the art” before the critical date. In re Cronyn, 890 F.2d 1158, 1160 (Fed.
`
`Cir. 1989). Whether a reference is publicly accessible is determined on a
`
`case-by-case basis, based on the “facts and circumstances surrounding the
`
`reference’s disclosure to members of the public.” In re Lister, 583 F.3d
`
`1307, 1311 (Fed. Cir. 2009). A reference is considered publicly accessible if
`
`it was disseminated or otherwise made available to the extent that persons
`
`interested and ordinarily skilled in the subject matter or art, exercising
`
`reasonable diligence, can locate it. Id. Even registration of a copyright,
`
`without more, does not demonstrate sufficient accessibility to establish that
`
`the reference is a printed publication. In re Lister, 583 F.3d 1307, 1311
`
`(Fed. Cir. 2009). Having reviewed Petitioner’s arguments and proffered
`
`evidence, we find Petitioner has not satisfied its burden to prove that Adler
`
`qualifies as prior art.
`
`As seen by the quoted sections above, Petitioner merely asserts that
`
`Adler is a publicly available or publicly posted document, without asserting
`
`that Adler was publicly available or posted at the relevant time. Even if
`
`Petitioner had asserted that Adler was publicly available or posted in 2000,
`
`that bare assertion, without supporting evidence, would not have persuaded
`
`us that Adler is a printed publication that was available in 2000.
`
`
`
`Petitioner further asserts that Adler has a copyright date of 2000 and
`
`was signed on May 19, 2000. As explained above, even registration of a
`
`copyright, which Petitioner has not alleged or established, does not
`
`demonstrate sufficient accessibility. Lister, 583 F.3d at 1311. Additionally,
`
`Petitioner has not explained how the date that a document is signed supports
`
`16
`
`
`
`IPR2015-00698
`Patent 8,092,345 B2
`
`
`the public accessibility of the document. Moreover, although the document
`
`recites “May 19, 2000” under the “Signature of Author” line, it lacks a
`
`signature, electronic or otherwise, indicating that the document was actually
`
`signed on May 19, 2000.
`
`Based on the argument and evidence presented, we are not persuaded
`
`that Adler is a printed publication under 35 U.S.C. § 102 and, thus,
`
`Petitioner has not established a reasonable likelihood of prevailing in
`
`demonstrating that claims 1–11, 15–18, and 20 would have been obvious in
`
`view of the combination of Adler and DeLorme.
`
`III. CONCLUSION
`
`For the foregoing reasons, based on the information presented in the
`
`Petition and the Preliminary Response, we are persuaded that there is a
`
`reasonable likelihood that Petitioner would prevail in showing
`
`unpatentability of claims 1–3, 6–11, 15–17, and 20 of the ʼ345 patent.
`
`At this stage of the proceeding, we have not made a final
`
`determination on the patentability of the challenged claims.
`
`IV. ORDER
`
`Accordingly, it is
`
`ORDERED that, pursuant to 35 U.S.C. § 314, an inter partes review
`
`of U.S. Patent No. 8,092,345 B2 is hereby instituted on the ground that
`
`claims 1–3, 6–11, 15–17, and 20 are asserted to be obvious over Mault and
`
`DeLorme;
`
`FURTHER ORDERED that no other ground of unpatentability
`
`alleged in the Petition for any claim is authorized for this inter partes
`
`17
`
`
`
`IPR2015-00698
`Patent 8,092,345 B2
`
`
`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
`
`commences on the entry date of this decision.
`
`18
`
`
`
`IPR2015-00698
`Patent 8,092,345 B2
`
`
`Petitioner:
`
`Brian E. Ferguson
`Anish R. Desai
`Weil, Gotshal & Manges LLP
`brian.ferguson@weil.com
`anish.desai@weil.com
`
`Patent Owner:
`
`Mitchell G. Stockwell
`Wab P. Kadaba
`Kilpatrick Townsend & Stockton LLP
`mstockwell@kilpatricktownsend.com
`wkadaba@kilpatricktownsend.com
`
`
`
`19
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