Trials@uspto.gov
`571.272.7822
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` Paper No. 12
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` Entered: August 22, 2016
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ASUSTEK COMPUTER, INC. and
`ASUS COMPUTER INTERNATIONAL,
`Petitioners,
`
`v.
`
`AVAGO TECHNOLOGIES GENERAL IP (SINGAPORE) PTE. LTD.,
`Patent Owner.
`____________
`
`Case IPR2016-00648
`Patent 6,188,835 B1
`____________
`
`
`
`Before GLENN J. PERRY, PATRICK R. SCANLON, and J. JOHN LEE,
`Administrative Patent Judges.
`
`LEE, Administrative Patent Judge.
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
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`IPR2016-00648
`Patent 6,188,835 B1
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`INTRODUCTION
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`On February 22, 2016, ASUSTeK Computer, Inc. and ASUS
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`Computer International (collectively, “ASUS”) filed a Petition (Paper 4,
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`“Pet.”) requesting inter partes review of claims 1–5, 7–11, and 13–19 (“the
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`challenged claims”) of U.S. Patent No. 6,188,835 B1 (Ex. 1001, “the ’835
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`Patent”). Patent Owner Avago Technologies General IP Pte. Ltd. (“Avago”)
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`timely filed a Preliminary Response (Paper 7, “Prelim. Resp.”) on May 24,
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`2016. We have jurisdiction under 35 U.S.C. § 314, which provides that an
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`inter partes review may not be instituted unless the information presented in
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`the Petition shows “there is a reasonable likelihood that the petitioner would
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`prevail with respect to at least 1 of the claims challenged in the petition.”
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`Upon consideration of the Petition and Preliminary Response, we determine
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`that the information presented shows there is a reasonable likelihood that
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`ASUS would prevail in establishing the unpatentability of each of the
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`challenged claims. Accordingly, pursuant to § 314, we institute an inter
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`partes review of the challenged claims of the ’835 Patent.
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`A.
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`Related Proceedings
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`The parties identify the following district court proceedings as related
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`to this case: (1) Avago Technologies General IP (Singapore) Pte. Ltd. v.
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`ASUSTeK Computer, Inc., Case No. 3:15-cv-04525 (N.D. Cal.); and (2)
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`Avago Technologies General IP (Singapore) Pte. Ltd. v. ASUSTeK
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`Computer, Inc., Case No. 3:16-cv-00451 (N.D. Cal.). Pet. 1; Paper 6, 1.
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`
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`B.
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`The ’835 Patent
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`The ’835 Patent relates to “[a]n optical disk system” that “stores index
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`information allowing playback of selected portions of a presentation
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`recorded upon an optical disk.” Ex. 1001, at [57]. Figure 1 of the ’835
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`Patent is reproduced below:
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`Figure 1 depicts an embodiment of the claimed optical disk system. The
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`depicted system includes disk drive unit 12 for retrieving “identification
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`data, encoded video and audio data, and navigation data” stored on an
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`optical disk, such as a DVD. Id. at 4:45–49. The identification data is used
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`to identify the optical disk. Id. at 4:53–54. The encoded video data may be
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`a recorded video presentation, such as a movie. Id. at 5:3–4. The navigation
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`data may provide playback time information, i.e., the time index in relation
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`to the beginning of the presentation. Id. at 5:27–34.
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`The system further includes input device 14 (e.g., a remote control
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`unit), which provides an output signal to microprocessor 16. Id. at 5:5–6.
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`The output signal may be used to indicate the beginning of a selected portion
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`of the video, such as a favorite movie scene. Id. at 5:10–12. Microprocessor
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`16 stores the navigation data indicating the beginning of the selected portion
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`in microprocessor memory unit 18, along with the identification data from
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`the disk. Id. at 5:40–48. When a disk is inserted, microprocessor 16 uses
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`the identification data to determine if user selections for that disk have been
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`stored previously in memory. Id. at 5:49–51. If index information for such
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`selections is found in memory, the user may be given the option of viewing
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`the entire presentation, or selecting one of the previously selected portions.
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`Id. at 5:51–55.
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`C.
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`Challenged Claims
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`
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`ASUS challenges claims 1–5, 7–11, and 13–19 of the ’835 Patent.
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`Pet. 2. Claims 1, 8, 11, and 15 are independent claims, and all other
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`challenged claims depend, directly or indirectly, from those claims.
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`Independent claim 1 is illustrative of the challenged claims:
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`1.
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`An optical disk system, comprising:
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`a disk drive unit for retrieving identification data, encoded
`video data, and navigation data from an optical disk positioned
`therein, wherein the identification data of the optical disk
`identifies the optical disk, and wherein the encoded video data
`comprises a presentation;
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`an input device configured to produce an output signal in
`response to user input, wherein the output signal indicates user
`selection of a portion of the presentation and occurs when a
`beginning of the user selected portion is currently being played;
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`a memory unit comprising a non-volatile portion; and
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`a control unit coupled to receive the identification data and the
`navigation data from the disk drive unit and the output signal
`produced by the input device, wherein the control unit is
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`coupled to the memory unit, and wherein the control unit is
`configured to respond to the output signal by:
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`producing the current navigation data, wherein the
`current navigation data identifies the beginning of the
`user selected portion of the presentation currently being
`played; and
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`storing the identification data and the current navigation
`data within the non-volatile portion of the memory unit
`such that: (i) the identification data and the current
`navigation data exist in the non-volatile portion of the
`memory unit concurrently, and (ii) the current navigation
`data is associated with the identification data within the
`non-volatile portion of the memory unit.
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`D.
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`Alleged Grounds of Unpatentability
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`ASUS asserts the following grounds of unpatentability in its Petition:
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`Claims
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`Basis
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`Prior Art
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`1–5, 7–11, and 13–19
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`§ 102(e)
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`Sturgeon1
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`1, 3–5, 7–11, and 13–19
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`§ 102(b) Katsuyama2
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`2
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`§ 103(a) Katsuyama and Sturgeon
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`1–5, 7–11, and 13–19
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`§ 103(a)
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`Schoner3 and Sturgeon
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`1–5, 7–11, and 13–19
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`§ 103(a)
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`Schoner and Katsuyama
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`1 U.S. Patent No. 6,429,879 B1, filed Sept. 30, 1997, issued Aug. 6, 2002
`(Ex. 1003, “Sturgeon”).
`2 European Patent Application No. EP 0 691 651 A1, published Jan. 10,
`1996 (Ex. 1004, “Katsuyama”).
`3 U.S. Patent No. 6,493,506 B1, filed July 1, 1998, issued Dec. 10, 2002
`(Ex. 1005, “Schoner”).
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`ANALYSIS
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`A.
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`Claim Construction
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`In an inter partes review, claim terms in an unexpired patent are given
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`their broadest reasonable construction in light of the specification of the
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`patent in which they appear. 37 C.F.R. § 42.100(b); see Cuozzo Speed
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`Techs., LLC v. Lee, 136 S. Ct. 2131, 2142–46 (2016). ASUS addresses only
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`the term “navigation data” in the Petition, proposing it be construed as “data
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`indicating the physical location of presentation data on an optical disk.”
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`Pet. 15. At this stage of the proceeding, Avago does not dispute ASUS’s
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`proposed construction. Prelim. Resp. 6. Based on the intrinsic evidence
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`cited by ASUS, which we find persuasive on this record, we adopt ASUS’s
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`proposed construction of “navigation data” for purposes of this Decision.
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`See Pet. 15.
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`In addition, Avago proposes the term “current navigation data” be
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`construed as “data indicating the physical location of a beginning of a
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`selected portion of a presentation stored upon the optical disk.” Prelim.
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`Resp. 6–7 (emphasis added). Avago’s proposed construction is unnecessary,
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`however. Claim 1, for example, already recites that “the current navigation
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`data identifies the beginning of the user selected portion of the presentation
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`currently being played.” Additionally, no other claim terms require
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`construction for purposes of this Decision. See Vivid Techs., Inc. v. Am. Sci.
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`& Eng'g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).
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`B.
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`Alleged Anticipation by Sturgeon
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`ASUS contends each of the challenged claims is anticipated by
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`Sturgeon. Pet. 16–32. As explained below, based on the present record,
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`ASUS has not shown a reasonable likelihood of prevailing on this asserted
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`ground of unpatentability.
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`Sturgeon is a U.S. patent directed to customization of content
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`presentation from a DVD (Digital Versatile/Video Disc). Ex. 1003, at [57].
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`Figure 4 of Sturgeon, reproduced below, depicts a flow diagram showing
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`how an embodiment of Sturgeon creates and stores customizations to the
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`presentation of video content:
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`Id. at Fig. 3. As illustrated in Figure 4, video content (such as from a DVD)
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`first is identified with an “identity (ID) tag.” Id. at 6:53–55, Fig. 4. Then, a
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`record is created in a “persistent storage unit,” and the record is associated
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`with the ID tag. Id. at 6:57–59, Fig. 4. The record may include “positional
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`entries” (also referred to as “bookmarks”) set by the user, which contain “the
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`information needed to resume viewing at a previously marked position on a
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`particular disc or volume.” Id. at 7:18–27.
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`In particular, ASUS contends the ID tag of Sturgeon discloses the
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`recited “identification data” of the challenged claims. Pet. 17. As Avago
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`argues, however, each of the challenged claims require the identification
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`data to be retrieved from the optical disk. Prelim. Resp. 15–16. For
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`example, claims 1 and 8 recite a disk drive unit “for retrieving identification
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`data . . . from an optical disk positioned therein,” and claims 11 and 15 recite
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`“obtaining identification data from the optical disk.” Although ASUS
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`asserts that the ID tag of Sturgeon is retrieved by a disk drive unit, the cited
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`portions of Sturgeon do not specify the source of the ID tag. See Pet. 17
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`(citing Ex. 1003, 6:53–57, Fig. 4).
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`To anticipate a claim, a single prior art reference must disclose each
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`and every limitation of the claim, either expressly or inherently. Verdegaal
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`Bros. v. Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987). A
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`feature is disclosed inherently if it is necessarily present in the single
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`anticipating reference. Continental Can Co. v. Monsanto Co., 948 F.2d
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`1264, 1268 (Fed. Cir. 1991). Although Avago is incorrect that Sturgeon
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`requires the ID tag to be “computationally generated” by the system (Prelim.
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`Resp. 16)—Sturgeon merely indicates that “may” be the case—ASUS has
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`not identified any disclosure that the ID tag originates from the DVD/optical
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`disk itself. Nor has ASUS provided evidence showing that the ID tag
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`necessarily came from the DVD; to the contrary, Sturgeon itself indicates
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`the ID tag may be generated by the system.4
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`Additionally, as Avago notes (Prelim. Resp. 13), independent claim 1
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`recites that the identification data, as well as navigation data, are received by
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`a “control unit.” Independent claim 8 similarly recites that a
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`“microprocessor” receives that data. Although ASUS asserts that the
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`4 ASUS references a disclosure in Sturgeon that a “record” is created based
`on the ID tag. Pet. 17 (citing Ex. 1003, Fig. 4). To the extent ASUS is
`contending the record may be the “identification data” recited in the
`challenged claims, ASUS also does not identify any disclosure that the
`record originates from the DVD/optical disk. Indeed, Sturgeon indicates the
`record is created by the system. See Ex. 1003, 6:57–61.
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`“processor unit” of Sturgeon discloses these elements, the cited portions of
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`Sturgeon are silent as to whether the processor unit receives the ID tag or
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`“positional entry” (which ASUS equates to navigation data). See Pet. 19
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`(citing Ex. 1003, 6:53–67, 7:33–38, Fig. 3). Nor does ASUS provide
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`sufficient evidence showing that is necessarily the case. Inherency may not
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`be established by mere possibilities or probabilities. Continental Can Co.,
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`948 F.2d at 1269 (quoting In re Oelrich, 666 F.2d 578, 581 (CCPA 1981)).
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`Therefore, based on the arguments and evidence presented in the
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`Petition, ASUS has not shown a reasonable likelihood of prevailing on its
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`asserted ground of unpatentability that the challenged claims are anticipated
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`by Sturgeon.
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`C.
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`Alleged Anticipation by Katsuyama
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`ASUS contends claims 1, 3–5, 7–11, and 13–19 are anticipated by
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`Katsuyama. Pet. 32–45. As explained below, based on the present record,
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`ASUS has shown a reasonable likelihood of prevailing on this asserted
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`ground of unpatentability with respect to all of the above claims except for
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`claim 3.
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`
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`Katsuyama is a published European patent application directed to an
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`apparatus for “replaying” a recording medium, such as a video CD,
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`including “from a predetermined portion thereof.” Ex. 1004, 1:3–7, 26–27.
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`In describing the prior art, Katsuyama purports to provide a solution to the
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`problem of a user having to navigate a hierarchical selection list to view a
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`desired scene and remember the selection. Id. at 1:28–56. In its
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`specification, Katsuyama provides the following summary of some of the
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`functions of its apparatus:
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`The controller, when the input section is operated while the
`replay section is executing the operation of replaying the disc-
`shaped recording medium, allows replay start position data to
`be produced on the basis of at least address data of the
`recording medium at the time of operating the input section and
`also allows the produced replay start position data to be stored
`in the memory together with the discrimination data of the
`recording medium.
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`Id. at Abstract. Katsuyama further includes a detailed description of the
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`manner in which data is stored on a video CD, including the physical layout
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`of the tracks on the video CD. Id. at 10:12–21:42.
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`ASUS provides detailed contentions with supporting evidence for
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`each of the limitations of the claims challenged on this ground, which we
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`find persuasive at this stage of the proceeding. Pet. 32–45. For example,
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`ASUS identifies the “replay section” of Katsuyama as the disk drive unit
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`recited in claim 1. Id. at 32–33. As ASUS notes (id.), Katsuyama discloses
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`that the video CD provides “disc information” identifying the video CD. See
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`Ex. 1004, 15:4–18. Further, Katsuyama discloses that the video CD includes
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`encoded video data in a standardized MPEG format. Id. at 5:57–6:16.
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`For the recited “input device” of claim 1, ASUS relies on the “input
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`section,” which is described in Katsuyama as “operated while the replay
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`section is . . . replaying the [disc]” and, as a result, “allows replay start
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`position data to be produced on the basis of at least address data of the
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`recording medium at the time of operating the input section.” Id. at
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`Abstract; see Pet. 33–34. More specifically, a user may press a “book mark
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`registration key” that ultimately indicates “the present replay point” such
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`that the “absolute time addresses” of that point are recorded. See Ex. 1004,
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`32:30–31, 33:17–25.
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`Memory 54 in Katsuyama is identified by ASUS as the “memory
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`unit” recited in claim 1. Pet. 34. Katsuyama describes that an “EEP-ROM”
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`may be used for memory 54, which stores “data which must not va[n]ish
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`when power is off, such as the register data of the foregoing book mark
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`point.” Ex. 1004, 29:7–12, Fig. 23.
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`ASUS identifies the controller/control means of Katsuyama as
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`disclosing the “control unit” of claim 1. Pet. 35–37. For example,
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`Katsuyama explains that the control means, when an input means is operated
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`during replaying of a disc, “allows replay start position data to be produced
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`on the basis of at least address data of the recording medium at the time of
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`operating said input means.” Ex. 1004, 2:40–45. Katsuyama further
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`discloses that the control means “allows collation data for specifying the
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`recording medium which is replaying to be produced on the basis of at least
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`management data of the recording medium,” and also “allows the produced
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`replay start position data as well as the produced collation data to be stored
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`in said memory means.” Id. at 2:45–50; see also id. at 36:26–29, 37:9–17.
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`Avago argues that Katsuyama does not anticipate the challenged
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`claims because it does not disclose “navigation data.” Prelim. Resp. 23–28.
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`More particularly, Avago asserts that the disclosures identified by ASUS as
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`allegedly disclosing this limitation are insufficient because “navigation data”
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`must comprise a physical location on an optical disk, whereas the
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`disclosures of Katsuyama may refer to a “virtual address.” See id. This
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`argument, however, is based on a misunderstanding of the construction of
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`“navigation data.” As noted above, both parties agree at this stage of the
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`proceeding that “navigation data” is properly construed as “data indicating
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`the physical location of presentation data on an optical disk.” Thus,
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`navigation data need not itself be a physical address or location; rather, it
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`need only indicate a physical location. As discussed above, Katsuyama
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`discloses that “replay start position data” is produced based on “address
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`data,” and further specifies that “absolute time addresses” may be used.
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`Ex. 1004, Abstract, 2:40–45, 33:17–25. This is similar to the ’835 Patent,
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`which discusses the use of a “time index” that “may indicate the physical
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`location of the presentation data upon the optical disk.” Ex. 1001, 5:27–38.
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`On the basis of the above arguments and evidence, ASUS has shown
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`sufficiently on the present record that Katsuyama discloses each limitation
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`of claim 1. Thus, ASUS has shown a reasonable likelihood of prevailing on
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`the ground of anticipation of claim 1 by Katsuyama. ASUS also relies on
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`the same disclosures of Katsuyama for each of the limitations of the
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`remaining challenged independent claims (claims 8, 11, and 15), which are
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`substantively similar to claim 1. See Pet. 32–37, 39–43. For the same
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`reasons discussed above, ASUS also has shown a reasonable likelihood of
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`prevailing as to those claims on this ground.
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`ASUS further provides detailed contentions with supporting evidence,
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`which we find persuasive on this record, to show that Katsuyama discloses
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`each limitation of dependent claims 4, 5, 7, 9, 10, 13, 14, and 16–19. See
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`Pet. 38–39, 43–45. For these claims, Avago relies on its counterarguments
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`with respect to claim 1, which are unpersuasive as discussed above. With
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`respect to dependent claim 3, however, Avago additionally argues
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`Katsuyama does not disclose “identification data compris[ing] a portion of a
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`textual title of the optical disk,” as recited in claim 3. Prelim. Resp. 25.
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`ASUS relies on Katsuyama’s disclosure that a video CD includes a recorded
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`“disc title.” Pet. 38 (citing Ex. 1004, 14:30–32, Figs. 27–28). As discussed
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`earlier, however, independent claim 1 (from which claim 3 depends)
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`requires that the recited identification data be retrieved from the optical disk
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`by the disk drive unit, received by the control unit, and stored on the
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`memory unit with the navigation data. ASUS does not identify sufficient
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`evidence showing that the Katsuyama system performs these actions on the
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`“disc title.” Indeed, ASUS identifies the “disc information” or “disc ID” in
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`Katsuyama as the recited identification data, but Katsuyama makes clear the
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`“disc title” is recorded on the video CD as part of the “Basic Volume
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`Descriptor,” which is distinct from the “disc information” and located on a
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`different portion of the video CD. See Ex. 1004, 14:14–32, 15:4–11.
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`Thus, on the basis of the arguments and evidence set forth in the
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`Petition, ASUS also has shown a reasonable likelihood of prevailing on this
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`ground with respect to dependent claims 4, 5, 7, 9, 10, 13, 14, and 16–19,
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`but not claim 3.
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`D.
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`Alleged Obviousness in View of Katsuyama and Sturgeon
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`According to ASUS, the combination of Katsuyama and Sturgeon
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`teaches each limitation of claim 2. Pet. 45–46. ASUS does not, however,
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`articulate any specific reasoning to support a conclusion that a person of
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`ordinary skill would have had reason to combine Katsuyama and Sturgeon in
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`the manner it contends. In the obviousness inquiry, “to determine whether
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`there was an apparent reason to combine the known elements in the fashion
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`claimed by the patent at issue . . . ‘there must be some articulated reasoning
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`with some rational underpinning to support the legal conclusion of
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`obviousness.’” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)
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`(quoting In re Kahn, 441 F. 3d 977, 988 (Fed. Cir. 2006)). As a result,
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`ASUS has not shown a reasonable likelihood of prevailing on this ground.
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`Alleged Obviousness in View of Schoner and Katsuyama
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`E.
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`ASUS contends that claims 1–5, 7–11, and 13–19 are unpatentable as
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`obvious in light of the combination of Schoner and Katsuyama. Pet. 52–59.
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`As explained below, based on the present record, ASUS has shown a
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`reasonable likelihood of prevailing on this ground of unpatentability.
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`Schoner is a U.S. patent directed to an “optical disk system . . . which
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`stores disk- and user-specific settings,” and its specification is similar to that
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`of the ’835 Patent.5 Ex. 1005, at [57]. For example, Figure 1 of Schoner,
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`which depicts a preferred embodiment of the disclosed system, is nearly
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`identical to Figure 1 of the ’835 Patent. Compare Ex. 1005, Fig. 1, with Ex.
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`1001, Fig. 1.
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`ASUS provides detailed contentions with supporting evidence for
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`each of the limitations of the claims challenged on this ground, which we
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`find persuasive at this stage of the proceeding. Pet. 52–59. For example,
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`with respect to claim 1, ASUS identifies Schoner’s teachings of a “disk drive
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`unit,” “identification data,” “encoded video,” and “navigation data,” with
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`these disclosures using the same terms as the ’835 Patent. Id. at 49 (citing
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`Ex. 1005, 6:1–3, 6:33–36; Ex. 1009 ¶¶ 161–99). In addition, ASUS relies
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`on Schoner’s teachings of an “input device,” a “microprocessor” as the
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`recited control unit, and a “microprocessor memory unit” as the recited
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`memory unit. Pet. 49–51, 53. ASUS further cites Katsuyama’s teachings
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`with respect to storing “replay start position data” in a bookmark registration
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`5 The inventor of the ’835 Patent, Brett J. Grandbois, is listed as one of the
`inventors in Schoner, but the three other named inventors in Schoner are not
`listed as inventors of the ’835 Patent. Ex. 1005, at [75]. Further, although
`Schoner and the ’835 Patent list the same assignee, the version of 35 U.S.C.
`§ 103(c) applicable to the ’835 Patent did not encompass prior art under
`35 U.S.C. § 102(e) like Schoner, as ASUS notes in the Petition. Pet. 4–5.
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`process as a result of user selection through a “book mark register key” on
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`an input device, where the data indicates the address of the video CD
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`corresponding to the time of the user’s input. See id. at 50–53.
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`Avago argues that the alleged combination of Schoner and Katsuyama
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`fails to teach several of the recited elements of the challenged claims,
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`including “navigation data.” Prelim. Resp. 34–43. At this stage of the case,
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`and based on the current record, ASUS has made a sufficient showing that
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`the combination of Schoner and Katsuyama teaches each of the limitations
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`of the challenged claims, as discussed above. See Pet. 52–59. In particular,
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`we note that Avago’s argument that Katsuyama fails to teach the “producing
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`the current navigation data” limitation of claims 1 and 8 (Prelim. Resp. 37)
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`is unpersuasive for the same reasons as discussed above with respect to the
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`asserted ground of anticipation by Katsuyama.
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`Based on the testimony of its declarant, Dr. Omid E. Kia, ASUS also
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`contends a person of ordinary skill6 would have been motivated to combine
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`Schoner and Katsuyama. Pet. 48 (citing Ex. 1009 ¶¶ 158, 160).7
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`Specifically, ASUS notes that both Schoner and Katsuyama disclose optical
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`disk systems that produce and store “a specific playback location identifier
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`that can guide a user to a specific point in the presentation at a later time.”
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`Id. ASUS further asserts that Katsuyama’s teachings of storing user-selected
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`scenes would have been known to be an improvement on the Schoner
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`6 For purposes of this Decision, the level of ordinary skill in the art is
`reflected sufficiently in the asserted prior art references. See Okajima v.
`Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).
`7 Avago argues ASUS improperly incorporates by reference from the Omid
`Declaration. Prelim. Resp. 32-33. Upon review, we conclude that ASUS
`adequately set forth its arguments in the Petition and properly cited to
`supporting testimony from the Omid Declaration. See Pet. 48.
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`system that provides additional, desirable functionality using the same data
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`structures already used in Schoner. Id. (citing Ex. 1009 ¶ 158). Avago
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`argues that the reasoning advanced in the Petition is insufficient, and argues
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`it fails to give enough weight to the “user-selected scene aspect” that is
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`“central to the ’835 Patent.” Prelim. Resp. 31–34. On this record, however,
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`ASUS has articulated sufficiently a reason to combine the teachings of
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`Schoner and Katsuyama, with rational underpinning, to support this asserted
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`ground of unpatentability.
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`Therefore, on the basis of the arguments and evidence set forth in the
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`Petition, ASUS has shown a reasonable likelihood of prevailing on this
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`ground with respect to claims 1–5, 7–11, and 13–19.
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`F.
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`Alleged Obviousness in View of Schoner and Sturgeon
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`ASUS contends that claims 1–5, 7–11, and 13–19 are unpatentable as
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`obvious in light of the combination of Schoner and Sturgeon. Pet. 52–59.
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`Based on the circumstances of this case, we exercise our discretion not to
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`institute trial on this ground. See 35 U.S.C. § 314; 37 C.F.R. § 42.108; see
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`also Synopsys, Inc. v. Mentor Graphics Corp., 814 F.3d 1309, 1315–16
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`(Fed. Cir. 2016) (explaining that “nothing in § 314 requires institution of
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`inter partes review under any circumstance”).
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`CONCLUSION
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`For the foregoing reasons and on the present record, we determine that
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`the information presented in the Petition shows there is a reasonable
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`likelihood that ASUS would prevail in establishing the unpatentability of
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`claims 1, 4, 5, 7–11, and 13–19 as anticipated by Katsuyama; and claims 1–
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`5, 7–11, and 13–19 as obvious in light of the combination of Schoner and
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`Katsuyama. At this stage of the proceeding, however, we have not yet made
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`a final determination of the patentability of the challenged claims. Any
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`discussion of facts in this Decision is made only for the purposes of
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`institution and are not dispositive of any issue related to any ground on
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`which we institute review. Our final determinations will be based on the
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`record as fully developed during trial.
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`It is
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`ORDER
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`ORDERED that pursuant to 35 U.S.C. § 314, an inter partes review is
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`hereby instituted on the following asserted grounds of unpatentability:
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`(1) Claims 1, 4, 5, 7–11, and 13–19 as unpatentable under
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`35 U.S.C. § 102(b) over Katsuyama; and
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`(2) Claims 1–5, 7–11, and 13–19 as unpatentable under
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`35 U.S.C. § 103(a) over Schoner and Katsuyama;
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`FURTHER ORDERED that an inter partes review is not instituted for
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`any other ground of unpatentability; and
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`FURTHER ORDERED that pursuant to 35 U.S.C. § 314(c) and
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`37 C.F.R. § 42.4, notice is hereby given of the institution of a trial; the trial
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`commences on the entry date of this decision.
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`PETITIONER:
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`Derek S. Neilson
`Scott Stevens
`ALSTON & BIRD LLP
`derek.neilson@alston.com
`scott.stevens@alston.com
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`PATENT OWNER:
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`Kristopher L. Reed
`Matthew Holohan
`Kilpatrick Townsend & Stockton LLP
`kreed@kilpatricktownsend.com
`mholohan@kilpatricktownsend.com
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