Trials@uspto.gov
`571–272–7822
`
`
`
`
`Paper 11
`Entered: July 13, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`FACEBOOK, INC. and INSTAGRAM LLC,
`Petitioner,
`
`v.
`
`SKKY, LLC,
`Patent Owner.
`_______________
`
`Case IPR2017-00550
`Patent 9,037,502 B2
`_______________
`
`
`Before KARL D. EASTHOM, WILLIAM V. SAINDON, and
`CHRISTOPHER PAULRAJ, Administrative Patent Judges.
`
`PAULRAJ, Administrative Patent Judge.
`
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`571–272–7822
`
`
`
`
`Paper 11
`Entered: July 13, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`FACEBOOK, INC. and INSTAGRAM LLC,
`Petitioner,
`
`v.
`
`SKKY, LLC,
`Patent Owner.
`_______________
`
`Case IPR2017-00550
`Patent 9,037,502 B2
`_______________
`
`
`Before KARL D. EASTHOM, WILLIAM V. SAINDON, and
`CHRISTOPHER PAULRAJ, Administrative Patent Judges.
`
`PAULRAJ, Administrative Patent Judge.
`
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`
`IPR2017-00550
`Patent 9,037,502 B2
`
`I. INTRODUCTION
`
`Facebook, Inc. and Instagram LLC (collectively, “Petitioner”) filed a
`
`Petition (Paper 2, “Pet.”) requesting an inter partes review of claims 1–3, 5,
`
`and 7 of U.S. Patent No. 9,037,502 B2 (Ex. 1001, “the ’502 patent”). Skky,
`
`LLC (“Patent Owner”) filed a Preliminary Response (Paper 8, “Prelim.
`
`Resp.”) to the Petition.
`
`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). For the
`
`reasons set forth below, Petitioner demonstrates a reasonable likelihood of
`
`prevailing in showing the unpatentability of claims 1–3, 5, and 7 of the ’502
`
`patent. Accordingly, we institute an inter partes review for those claims
`
`based on the unpatentability grounds set forth in the Petition and discussed
`
`below.
`
`A. Related Proceedings
`
`The parties indicate that the ’502 patent is at issue in the following
`
`district court case: Skky, LLC v. Facebook, Inc., No. 16-cv-00094 (D.
`
`Minn.) (filed Jan. 15, 2016). Pet. 1; Paper 4, 2. The parties also identify
`
`several Board proceedings, including inter partes reviews and covered
`
`business method reviews, which relate to this case. See Pet. 1–2; Paper 4, 2–
`
`3. Additionally, in Skky, Inc. v. MindGeek, s.a.r.l., 859 F.3d 1014 (Fed. Cir.
`
`2017) (“MindGeek”), the Federal Circuit affirmed the Board’s final written
`
`decision in IPR2014-01236 determining that certain claims of U.S. Patent
`
`7,548,875, to which the ’502 patent claims priority as a continuation, were
`
`unpatentable as obvious.
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`2
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`IPR2017-00550
`Patent 9,037,502 B2
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`B. The ’502 Patent
`
`The ’502 patent describes delivering audio and/or visual files to an
`
`electronic device. Ex. 1001, Abstract, 1:19–21. Specifically, the ’502 patent
`
`discloses delivering audio/visual files, such as songs or films, from one or
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`more servers to the electronic device. Id. at Abstract. The system transmits
`
`the files in a compressed format, and the electronic device receives and plays
`
`the files on demand by a user. Id. The system employs an orthogonal
`
`frequency-division multiplex (“OFDM”) modulation technique. Id. at
`
`16:63–17:22.
`
`C. Illustrative Claim
`
`
`
`Independent claim 1, from which claims 2, 3, 5, and 7 depend, recites
`
`as follows (with bracketed letters added for reference):
`
`1. A method for wirelessly delivering one or more digital
`audio and/or visual files from one or more servers to one or
`more cell phones comprising:
`[a] storing a library of compressed digital audio and/or
`visual files on one or more servers;
`[b] providing to a cell phone a representation of at least a
`portion of the library of compressed digital audio and/or visual
`files;
`
`[c] receiving a request from the cell phone for at least one
`of the compressed digital audio and/or visual files stored on the
`one or more servers,
`[d] providing the one or more requested compressed
`digital audio and/or visual files to the cell phone and wherein
`the cell phone comprises a receiver and one or more processors
`including a digital signal processor and is configured for
`receiving and processing files transmitted by orthogonal
`frequency-division multiplex modulation;
`[e] tracking the selection of the requested compressed
`digital audio and/or visual files.
`
`3
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`IPR2017-00550
`Patent 9,037,502 B2
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`D. Asserted Grounds of Unpatentability
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`Petitioner challenges the patentability of the claims of the ’502 patent
`
`on the following grounds:
`
`References
`
`Basis
`
`Claim(s) challenged
`
`Rolf1, Gatherer2, Fritsch3, and
`Frodigh4
`Rolf, Gatherer, Fritsch,
`Frodigh, and Yukie5
`Rolf, Gatherer, Fritsch,
`O’Hara6, and Tagg7
`Rolf, Gatherer, Fritsch,
`O’Hara, Tagg, and Yukie
`
`§ 103(a)
`
`1–3 and 7
`
`§ 103(a)
`
`5
`
`§ 103(a)
`
`1–3 and 7
`
`§ 103(a)
`
`5
`
`In addition to the teachings of the references, Petitioner relies upon
`
`the Declaration of Tal Lavian, Ph.D. (“Lavian Decl.”) (Ex. 1002) to support
`
`its challenges.
`
`
`1 Rolf, U.S. Patent No. 7,065,342 B1 (filed Nov. 22, 2000, issued Jun. 20,
`2006) (“Rolf”) (Ex. 1003).
`
`2 Alan Gatherer et al., DSP-Based Architectures for Mobile
`Communications: Past, Present and Future, 38:1 IEEE COMMUNICATIONS
`MAGAZINE 84–90 (2000) (“Gatherer”) (Ex. 1005).
`
`3 Fritsch, U.S. Patent 6,233,682 B1 (filed Jan. 18, 2000, issued May 15,
`2001) (“Fritsch”) (Ex. 1062).
`
`4 Frodigh et al., U.S. Patent No. 5,726,978 (issued Mar. 10, 1998)
`(“Frodigh”) (Ex. 1006).
`
`5 Yukie, U.S. Patent No. 6,956,833 B1 (filed April 4, 2000, issued Oct. 18,
`2005) (“Yukie”) (Ex. 1004).
`
`6 Bob O’Hara and Al Petrick, IEEE 802.11 HANDBOOK, A DESIGNER’S
`COMPANION (1999) (“O’Hara”) (Ex. 1061).
`
`7 Tagg, U.S. Patent No. 8,996,698 B1 (filed Nov. 3, 2000, issued Mar. 31,
`2015) (“Tagg”) (Ex. 1060).
`
`4
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`IPR2017-00550
`Patent 9,037,502 B2
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`II. ANALYSIS
`
`A. Claim Construction
`
`The claims of an unexpired patent are interpreted using the broadest
`
`reasonable interpretation in light of the specification of the patent in which
`
`they appear. See 37 C.F.R. § 42.100(b); Cuozzo Speed Techs., LLC v. Lee,
`
`136 S. Ct. 2131, 2144–45 (2016). Petitioner does not contend that any term
`
`from the ’502 patent requires an explicit construction in order to understand
`
`how the claims apply to the prior art cited in the Petition. Pet. 6. Patent
`
`Owner agrees. Prelim. Resp. 5. On this record and for purposes of this
`
`decision, we determine that no claim terms require express construction to
`
`resolve the parties’ disputes regarding the asserted grounds of
`
`unpatentability. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d
`
`795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in
`
`controversy, and only to the extent necessary to resolve the controversy.”).
`
`B. Asserted Grounds of Unpatentability
`
`1. Obviousness of Claims 1–3 and 7 over Rolf, Gatherer,
`Fritsch, and Frodigh
`
`Petitioner argues that claims 1–3 and 7 would have been obvious over
`
`the combination of Rolf, Gatherer, Fritsch, and Frodigh. Pet. 19–38.
`
`Petitioner relies primarily upon the teachings of Rolf as disclosing the
`
`majority of the limitations of the challenged claims. At a general level, Rolf
`
`describes a technique for allowing a cellular phone to wirelessly download
`
`selected songs from a remote server. Ex. 1003; Pet. 7–9; Prelim. Resp. 9–
`
`10. Petitioner acknowledges, however, that Rolf does not does not expressly
`
`disclose that the cell phone includes a “digital signal processor” (DSP). Pet.
`
`26. Petitioner also acknowledges that Rolf does not disclose the use of
`
`OFDM to transmit the data file. Id. at 29.
`
`5
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`Patent 9,037,502 B2
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`With respect to the claim requirement of a DSP, Petitioner relies upon
`
`Dr. Lavian’s statement that DSPs were well-known to persons of ordinary
`
`skill in the art, and it was also known that cell phones of the sort disclosed in
`
`Rolf could include a DSP. Id. at 26 (citing Lavian Decl. ¶ 87). Petitioner
`
`further relies upon the teachings of Gatherer, which explains that
`
`“[p]rogrammable digital signal processors (DSPs) are pervasive in the
`
`wireless handset market for digital cellular telephony.” Id. (citing Gatherer,
`
`84, left column). Petitioner asserts that the skilled artisan would have had
`
`many reasons to combine the teachings of Rolf and Gatherer, including the
`
`programmability and flexibility of DSPs, their ability to perform tasks going
`
`beyond traditional voice communications functionality, and their widespread
`
`commercial availability. Id. at 27–29.
`
`With respect to the claim requirement of OFDM, Petitioner relies
`
`upon Frodigh’s teaching that OFDM is “particularly suited for cellular
`
`systems,” and its description of the use of OFDM modulation to transmit
`
`voice and data to a “mobile station” in a cellular system, and the use of a
`
`receiver implemented in the mobile station to receive and process data
`
`transmitted by OFDM modulation. Id. at 29–30 (citing Frodigh, 1:59–2:18,
`
`7:51–63, 8:1–14, 8:33–63, Figs. 2 and 3C). Petitioner asserts that the skilled
`
`artisan would have found it obvious to combine the teachings of Rolf and
`
`Frodigh, “with no change in their respective functions, predictably resulting
`
`in the cell phone of Rolf configured to receive and process music files, with
`
`the music files having been transmitted to the cell phone by OFDM
`
`modulation.” Id. at 30–31 (citing Lavian Decl. ¶ 97). Petitioner contends
`
`that Frodigh provides express motivations to combine the teachings in the
`
`foregoing manner based on several described advantages of OFDM in a
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`6
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`IPR2017-00550
`Patent 9,037,502 B2
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`cellular system, including the efficient use of bandwidth and reduction in
`
`interference. Id. at 31–32 (citing Frodigh, 2:38–60; Lavian Decl. ¶ 98).
`
`Petitioner further contends that “OFDM was one of a finite number of
`
`known techniques for allowing a cellular base station to communicate with
`
`multiple mobile stations at a given time (‘multiple access’), which is an
`
`essential feature of cellular networks,” and there were already industry
`
`efforts to commercialize cellular systems employing OFDM. Id. at 32
`
`(citing Lavian Decl. ¶¶ 37, 39, 99).
`
`With respect to the requirement of “tracking the selection of the
`
`requested compressed digital audio and or visual files” (claim element 1[e]),
`
`Petitioner contends Rolf satisfies this limitation based on its disclosure that
`
`the system can determine whether additional fees should be incurred based
`
`on the number of recordings retrieved. Id. at 33 (citing Rolf, 8:38–46).
`
`Petitioner acknowledges, however, that Rolf does not describe the tracking
`
`mechanism in detail and, to the extent that Rolf alone does not sufficiently
`
`disclose this limitation, it would have been obvious in view of Fritsch’s
`
`disclosure of a system that keeps track of music files previously purchased
`
`by the user. Id. at 34 (citing Fritsch, 2:58–3:3, 6:32–48, 7:8–22, Fig. 2A–
`
`2B). Petitioner contends that the skilled artisan would have been motivated
`
`to combine the teachings of Rolf and Fritsch because a historical list of the
`
`user’s prior musical selections could improve the user experience as well as
`
`be used to ensure that royalties are paid to copyright holders. Id. at 35–36
`
`(citing Lavian Decl. ¶¶ 107–108).
`
`In response, Patent Owner argues that the Petition does not adequately
`
`provide “evidence or technical explanation” regarding the changes a person
`
`of ordinary skill would need to make in order to combine the disparate
`
`7
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`IPR2017-00550
`Patent 9,037,502 B2
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`teachings of Gatherer and Frodigh with Rolf. Prelim. Resp. 15–16. In
`
`particular, with respect to the DSP requirement, Patent Owner argues that
`
`Petitioner’s suggestion that Rolf’s processor could be a DSP is conclusory,
`
`and “Gatherer does not explain the relationship between a digital signal
`
`processor and the remaining parts of the cell phone, or how a digital signal
`
`processor would be integrated into the device disclosed by Rolf.” Id. at 18–
`
`19.
`
`These arguments by Patent Owner are not persuasive on this limited
`
`record. Petitioner proposes Gatherer’s explicit DSP as a substitute for Rolf’s
`
`generic “processor,” each of which control similar functions of a cell phone.
`
`See Pet. 26–29. Gatherer explains that programmable DPSs were
`
`“pervasive” in the wireless handset market for digital cellular telephony.
`
`See Lavian Decl. ¶ 88; Gatherer, 84, left column. Gatherer discloses a
`
`functional block diagram of a cellular phone (Fig. 1), with a DSP at least
`
`controlling baseband functions, and states “[a]s DSPs became more
`
`powerful, they started to take on other physical layer 1 tasks,” and “mission
`
`creep” occurred as designers began using DSPs for a variety of functions.
`
`Gatherer, 84, Figs. 1 and 2. Petitioner identifies several programmable
`
`“basic phone functions,” including voice coding, as pervasive for being
`
`performed by a DSP. See Pet. 26 (citing Gatherer, 84–85, Figs. 1 & 2). In
`
`other words, the evidence at this stage shows that that artisans of ordinary
`
`skill at the time of the invention used processors and/or DSPs in cellular
`
`phones for performing a wide variety of basic tasks well-known in the
`
`industry, with DSPs providing flexibility.
`
`Patent Owner also argues that that Frodigh does not teach a system for
`
`requesting and transmitting audio or audio-visual data files, and instead
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`IPR2017-00550
`Patent 9,037,502 B2
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`teaches a method and system for allocating channels in an OFDM system to
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`reduce the amount of interference between channel with a goal of providing
`
`fewer dropped calls and better call quality. Prelim. Resp. 20. Patent Owner
`
`further argues that Rolf relies on a 3G mobile network, which uses Code
`
`Division Multiple Access (CDMA), whereas Frodigh teaches an allocation
`
`method specifically directed to OFDM that is not applicable to 3G. Id.
`
`Patent Owner contends that the industry leaders in the European
`
`Telecommunications Standards Institute’s (ETSI’s) Special Mobile Group
`
`(SMG) decided that CDMA would serve as the basis for the 3G cellular
`
`standard because the use of OFDM raised concerns about increased power
`
`consumption in mobile devices, degraded performance, and interference
`
`between adjacent channels. Id. at 21 (citing Ex. 2003; Ex. 2004). As a
`
`result, Patent Owner asserts that the skilled artisan would have been
`
`discouraged from applying OFDM to cellular systems. Id. at 22.
`
`We are also unpersuaded by these arguments based on the current
`
`record. Contrary to Patent Owner’s arguments, we find no basis to suggest
`
`that the skilled artisan would understand that Rolf’s system could only be
`
`implemented on a 3G/CDMA cellular network. Further, the evidence cited
`
`by Patent Owner regarding the SMG’s decision to use CDMA in the 3G
`
`standard indicates that there were advantages and drawbacks to both OFDM
`
`(Ex. 2004, 1–2) and CDMA (id. at 3–4). As such, the preliminary record
`
`does not show that a person of ordinary skill in the art reading the cited
`
`SMG documents would have been discouraged from using OFDM with a
`
`cellular system like that of Rolf, where Frodigh lists several advantages of
`
`using OFDM as noted above. As such, on this preliminary record, Petitioner
`
`has shown sufficiently that a person of ordinary skill in the art would have
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`IPR2017-00550
`Patent 9,037,502 B2
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`had persuasive reasons to combine the cited teachings of Rolf and Frodigh.
`
`Moreover, we note that in MindGeek, the Board and the Federal Circuit
`
`similarly concluded that it would have been obvious to utilize OFDM for
`
`Rolf’s system of delivering music files to a cellular telephone. See
`
`MindGeek, Case IPR2014-01236, slip op. at 18–22 (PTAB Jan. 29, 2016)
`
`(Paper 45) (final written decision), aff’d 859 F.3d at 1022.
`
`Additionally, Patent Owner argues that Rolf, alone or in combination
`
`with the other prior art relied upon, does not disclose that the receiver and
`
`processor are configured to receive and process files transmitted by OFDM.
`
`Prelim. Resp. 23. Patent Owner contends that, in support of this claim
`
`requirement, Petitioner relies only on Rolf’s ability to “play” the music files
`
`it receives, but does not cite any support that playing a file is processing it.
`
`Id. Patent Owner further contends that “[b]y relying only on playback as
`
`processing, Petitioners fail to meet their burden.” Id. We also find this
`
`argument unpersuasive on the current record. Contrary to Patent Owner’s
`
`arguments, we do not find that Rolf must provide a detailed disclosure of the
`
`processing steps in order to render this claim requirement obvious. Rather,
`
`we understand Petitioner’s position to be that Rolf’s disclosure of “playing”
`
`the music files necessarily requires that the cell phone is configured for
`
`receiving and processing files. Pet. 29. Patent Owner does not explain how
`
`music files could be played using Rolf’s system without the cellular
`
`telephone device first having received and processed those files.
`
`For the foregoing reasons, Petitioner demonstrates a reasonable
`
`likelihood of prevailing in showing that claim 1 would have been obvious
`
`over Rolf, Gatherer, Fritsch, and Frodigh. Based on the evidence and
`
`arguments set forth in the Petition, we determine that Petitioner has also
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`IPR2017-00550
`Patent 9,037,502 B2
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`demonstrated a reasonable likelihood of prevailing in showing the
`
`obviousness of dependent claims 2, 3, and 7 over the same combination of
`
`prior art. Patent Owner has not presented any separate arguments for
`
`dependent claims 2, 3, and 7.
`
`2. Obviousness of Claim 5 over Rolf, Gatherer, Fritsch,
`Frodigh, and Yukie
`
`Claim 5 depends from claim 1 and recites “wherein said compressed
`
`digital audio and/or visual file is a personal recording or video recorded by a
`
`user of the cell phone.” Petitioner acknowledges that “Rolf does not appear
`
`to expressly disclose that the music recordings and other files that can be
`
`downloaded from the remote storage facility [] include a personal recording
`
`or video recorded by a user of the cell phone.” Pet. 39. Accordingly, for this
`
`dependent claim, Petitioner relies upon the teaching in Yukie of a system
`
`similar to Rolf, in which a server stores data that can be retrieved using a
`
`consumer device such as a cell phone, wherein the data stored on the server
`
`can be audio recorded by the user. Id. at 39–41 (citing Yukie, 6:44–53). As
`
`a rationale and motivation to combine the references, Petitioner contends
`
`that allowing a user to make personal audio recordings was a long-standing
`
`practice, and storing such personal recordings on a server for retrieval and
`
`playback would save storage space on the mobile device. Id. at 41–43.
`
`With regard to this challenge, Patent Owner argues that Yukie’s
`
`system “is not sophisticated enough to articulate transmitting compressed
`
`audio or audio-visual data files, let alone a plurality of such files, as claim 1
`
`contemplates.” Prelim. Resp. 27. We are unpersuaded by this argument, as
`
`Patent Owner focuses on what Yukie teaches individually rather than
`
`whether the skilled artisan would have found it obvious to combine the
`
`feature of Yukie’s system in which personal recordings may be stored on a
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`server with Rolf’s system that transmits compressed audio files to a mobile
`
`device. See In re Keller, 642 F.2d 413, 426 (CCPA 1981) (“[O]ne cannot
`
`show non-obviousness by attacking references individually where, as here,
`
`the rejections are based on combinations of references.”). In this regard,
`
`Rolf teaches that the wireless communication device already includes a
`
`microphone for voice communications. Rolf, 7:49–52, 15:35–37.
`
`On the current record, Petitioner has demonstrated a reasonable
`
`likelihood of prevailing in showing that claim 5 would have been obvious
`
`over Rolf, Gatherer, Fritsch, Frodigh, and Yukie.
`
`3. Obviousness of Claims 1–3 and 7 over Rolf, Gatherer,
`Fritsch, O’Hara, and Tagg; and Obviousness of Claim 5
`over Rolf, Gatherer, Fritsch, O’Hara, Tagg, and Yukie
`
`Petitioner also argues that claims 1–3 and 7 would have been obvious
`
`over the combination of Rolf, Gatherer, Fritsch, O’Hara, and Tagg, and that
`
`claim 5 would have been obviousness based on the further combination with
`
`Yukie. Pet. 46–53. Petitioner relies upon the teachings of Rolf, Gatherer,
`
`Fritsch, and Yukie in the same manner it relies upon those references for the
`
`unpatentability grounds discussed above.
`
`With respect to the OFDM requirement, Petitioner relies upon the
`
`teachings of O’Hara and Tagg for two propositions: “that (1) prior art IEEE
`
`802.11a wireless networking transmits digital information to mobile devices
`
`using OFDM (O’Hara), and that (2) IEEE 802.11 wireless networking
`
`functionality can be incorporated into a cell phone (Tagg).” Id. at 46. In
`
`particular, Petitioner cites O’Hara’s teachings that “[i]n July of 1998, the
`
`IEEE 802.11 Working Group adopted OFDM modulation as the basis for
`
`IEEE 802.11a,” and that the OFDM physical layer provides the capability to
`
`transmit data “at multiple data rates up to 54 Mbps for WLAN networks
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`where transmission of multimedia content is a consideration.” Id. at 46–47
`
`(citing O’Hara, 139, 143). Petitioner cites Tagg for its teaching that a
`
`mobile device can switch between any of a number of available wireless
`
`technologies, including an IEEE 802.11 wireless network, and can use that
`
`capability to receive data such as digital audio and/or visual files. Id. at 48–
`
`49 (citing Tagg, 5:22, 5:27–29, 7:67–8:2, 11:60–12:6, Fig. 9; Lavian Decl.
`
`¶ 134). Petitioner contends that “[i]t would have been obvious to a person of
`
`ordinary skill in the art to combine Rolf with O’Hara and Tagg, predictably
`
`resulting in a cell phone . . . of Rolf configured to receive and process music
`
`files in which the files are transmitted to the cell phone by use of IEEE
`
`802.11a networking, thus using OFDM modulation,” and cites speed and
`
`cost as two compelling reasons why such a combination would have been
`
`desirable. Id. at 50–53.
`
`With respect to these grounds, Patent Owner argues that the skilled
`
`artisan would not have been motivated to combine O’Hara, Tagg, and Rolf
`
`because “O’Hara, and Tagg use entirely different systems of network
`
`communication,” i.e., a short-range wireless networking technology (wi-fi),
`
`whereas “[t]he invention in Rolf relies on a 3G mobile network [i.e., a
`
`cellular standard], which uses Code Division Multiple Access (CDMA), not
`
`OFDM.” Prelim. Resp. 29 (citing Ex. 2003, 23; Ex. 2061, 23). Because
`
`O’Hara and Tagg teach that a mobile device should use “the best available
`
`standards” for transmission, Patent Owner reiterates its contention that
`
`industry leaders in ETSI’s SMG chose CDMA, and rejected OFDM, as the
`
`best standard for cellular device and incorporated it into the 3G standard. Id.
`
`at 29–32.
`
`We are unpersuaded by Patent Owner’s arguments on the current
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`record. As discussed above, we find no basis to suggest that the skilled
`
`artisan would understand that Rolf’s system could only be implemented on a
`
`3G/CDMA cellular network. Moreover, we do not interpret the claim
`
`language in a manner that would preclude the use of a wi-fi network for the
`
`wireless transmission of the digital audio and/or visual files. In this regard,
`
`we find that Petitioner has shown sufficiently at this stage that a skilled
`
`artisan would have been motivated with a reasonable expectation of success
`
`to incorporate IEEE 802.11a networking functionality, which utilizes OFDM
`
`modulation, into the cellular telephone device of Rolf’s system and use that
`
`functionality to receive music files transmitted wirelessly.
`
`Accordingly, for foregoing reasons, Petitioner has demonstrated a
`
`reasonable likelihood of prevailing in showing that claims 1–3 and 7 would
`
`have been obvious over the combination of Rolf, Gatherer, Fritsch, O’Hara,
`
`and Tagg, and that claim 5 would have been obvious based on the further
`
`combination with Yukie.
`
`C. Section 325(d)
`
`Patent Owner argues that the Board should exercise its discretion
`
`under § 325(d) and deny institution in this case because the Examiner
`
`considered the combination of Rolf with another reference (Chen) teaching
`
`OFDM modulation during the prosecution of the ’502 patent and
`
`nonetheless allowed the patent to issue. Prelim. Resp. 33–36.
`
`We are unpersuaded by this argument. Denial of institution under
`
`§ 325 is a matter of discretion. Moreover, as noted by the Federal Circuit in
`
`rejecting a similar argument presented by Patent Owner in the MindGeek
`
`case:
`
`Skky has not cited any authority for the proposition that once an
`
`14
`
`
`
`IPR2017-00550
`Patent 9,037,502 B2
`
`
`examiner concludes that claims are patentable over a reference,
`that reference may no longer be considered further in
`determining a claim’s validity; indeed, the Supreme Court has
`characterized the “congressional objective” of the IPR process
`as “giving the Patent Office significant power to revisit and
`revise earlier patent grants.”
`
`MindGeek, 859 F.3d 1014, Case 2016–2018, slip op. at 11 (citing Cuozzo
`
`Speed Techs. 136 S. Ct. at 2140).
`
`Here, in view of the additional references and declaration evidence
`
`presented with the Petition that were not before the Examiner, we decline to
`
`exercise our discretion under § 325(d) to deny institution.
`
`III. CONCLUSION
`
`Petitioner demonstrates a reasonable likelihood of prevailing in
`
`showing the unpatentability of claims 1–3, 5 and 7 of the ’502 patent. At
`
`this stage in the proceeding, we have not made a final determination with
`
`respect to the patentability of any of the challenged claims.
`
`IV. ORDER
`
`In consideration of the foregoing, it is hereby
`
`
`
`ORDERED, pursuant to 35 U.S.C. § 314(a), that an inter partes
`
`review of claims 1–3, 5, and 7 of the ’502 patent is hereby instituted on the
`
`following grounds under 35 U.S.C. § 103(a):
`
`A. Claims 1–3, and 7 as unpatentable for obviousness over Rolf,
`
`Gatherer, Fritsch, and Frodigh;
`
`B. Claim 5 as unpatentable for obviousness over Rolf, Gatherer,
`
`Fritsch, Frodigh, and Yukie;
`
`C. Claims 1–3 and 7 as unpatentable for obviousness over Rolf,
`
`Gatherer, Fritsch, O’Hara, and Tagg; and
`
`15
`
`
`
`IPR2017-00550
`Patent 9,037,502 B2
`
`
`D. Claim 5 as unpatentable for obviousness over Rolf, Gatherer,
`
`Fritsch, O’Hara, Tagg, and Yukie;
`
`FURTHER ORDERED, pursuant to 35 U.S.C. § 314(c) and 37 C.F.R.
`
`§ 42.4, that notice is hereby given of the institution of a trial commencing on
`
`the entry date of this decision; and
`
`FURTHER ORDERED that the trial is limited to the grounds
`
`identified, and no other grounds are authorized.
`
`
`
`16
`
`
`
`IPR2017-00550
`Patent 9,037,502 B2
`
`PETITIONER:
`
`Heidi L. Keefe
`Andrew C. Mace
`COOLEY LLP
`hkeefe@cooley.com
`amace@cooley.com
`
`
`PATENT OWNER:
`
`Ryan M. Schultz
`Andrew J. Kabat
`ROBINS KAPLAN LLP
`rschultz@robinskaplan.com
`akabat@robinskaplan.com
`
`17
`
`
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