Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 10
`Entered: July 26, 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 IPR2017-00685
`Patent 9,203,870 B2
`_______________
`
`
`Before KARL D. EASTHOM, WILLIAM V. SAINDON, and
`CHRISTOPHER PAULRAJ, Administrative Patent Judges.
`
`
`SAINDON, Administrative Patent Judge.
`
`
`
`DECISION
`Granting Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`Tel: 571-272-7822
`
`Paper 10
`Entered: July 26, 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 IPR2017-00685
`Patent 9,203,870 B2
`_______________
`
`
`Before KARL D. EASTHOM, WILLIAM V. SAINDON, and
`CHRISTOPHER PAULRAJ, Administrative Patent Judges.
`
`
`SAINDON, Administrative Patent Judge.
`
`
`
`DECISION
`Granting Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`
`IPR2017-00685
`Patent 9,203,870 B2
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`
`I. INTRODUCTION
`Petitioner requests an inter partes review of claims 8 and 10–14 of
`U.S. Patent No. 9,203,870 B2 (Ex. 1001, “the ’870 patent”). Paper 2
`(“Petition” or “Pet.”). Patent Owner filed a Preliminary Response to the
`Petition. Paper 8 (“Prelim. Resp.”).
`This Decision is made under 35 U.S.C. § 314, which provides that
`an inter partes review may not be instituted “unless . . . there is a reasonable
`likelihood that the petitioner would prevail with respect to at least 1 of the
`claims challenged in the petition.” Upon consideration of the Petition and
`Patent Owner’s Preliminary Response, we institute an inter partes review on
`all challenged claims of the ’870 patent.
`Our factual findings and conclusions at this stage of the proceeding,
`including claim constructions, are preliminary and are based on the
`evidentiary record developed thus far. This is not a final decision as to the
`patentability of claims for which inter partes review is instituted. Our final
`decision will be based on the record as fully developed during trial.
`
`A. Related Matters
`The parties indicate that the ’870 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 indicate that
`the several PTAB proceedings, including inter partes reviews and covered
`business method reviews, relate to this case. See Pet. 1; Paper 4, 2–3.
`Additionally, in Skky, Inc. v. MindGeek, s.a.r.l., 859 F.3d 1014 (Fed. Cir.
`2017), the Federal Circuit affirmed the Board’s final written decision in
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`Patent 9,203,870 B2
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`IPR2014-01236 determining that certain claims of U.S. Patent 7,548,875, to
`which the ’870 patent claims priority, were unpatentable as obvious.
`
`B. The ’870 Patent
`The ’870 patent describes delivering audio and/or visual files to an
`
`electronic device. Ex. 1001, Abstract, 1:19–21. Specifically, the ’870 patent
`discloses delivering the audio or visual files, such as songs or films, from
`one or more servers to the electronic device. Id. at 1:63–2:2. The system
`employs an orthogonal frequency-division multiplex (“OFDM”) modulation
`technique for data transmission. Id. at 16:57–17:39.
`
`C. Challenged Claims
`
`Petitioner challenges claims 8 and 10–14, of which claim 8 is
`independent. Claim 8 is reproduced below.
`8. A method for distributing electronic content over a cellular
`network to a user operating a cellular phone, the method being
`executable by a computer system that includes server
`hardware and a database, the method comprising:
`providing for the transmission to the cellular phone by
`orthogonal
`frequency-division multiplex
`(OFDM)
`modulation of a database of electronically accessible data
`files, each data file being subject to a copyright owner;
`receiving, by the computer system, a selection from the cellular
`phone corresponding to at least one of the data files;
`providing for the transmission of, by the computer system and in
`response to the received selection, a portion of the selected
`data file to the cellular phone electronic device;
`receiving, by the computer system, a request for the data file for
`which the portion was provided to the cellular phone
`electronic device; and
`providing for the transmitting, by the computer system, of the
`requested data file to the cellular phone, said cellular phone
`including a digital signal processor configured to receive the
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`data file over a cellular network by orthogonal frequency-
`division multiplex (OFDM) modulation.
`
`
`D. Prior Art and Asserted Grounds
`Petitioner asserts that claims 8 and 10–14 of the ’870 patent are
`unpatentable under 35 U.S.C. § 103 on the following grounds:
`References
`Claims Challenged
`Rolf,1 Fritsch,2 and Gatherer,3
`8 and 12–14
`Frodigh,4 and Hacker5
`Rolf, Fritsch, Gatherer, Frodigh,
`Hacker, and Bell6
`Rolf, Fritsch, Gatherer, Hacker,
`O’Hara,7 Tagg,8 and Pinard9
`Rolf, Fritsch, Gatherer, Hacker,
`Bell, O’Hara, Tagg, and Pinard
`
`10 and 11
`
`8 and 12–14
`
`10 and 11
`
`
`1 U.S. Patent No. 7,065,342, issued June 20, 2006 (Ex. 1003).
`2 U.S. Patent No. 6,233,682, issued May 15, 2001 (Ex. 1004).
`3 Alan Gatherer et al., DSP-Based Architectures for Mobile
`Communications: Past, Present and Future, 38:1 IEEE Communications
`Magazine 84–90 (2000) (Ex. 1005).
`4 U.S. Patent No. 5,726,978, issued Mar. 10, 1998 (Ex. 1006).
`5 Scot Hacker, MP3 The Definitive Guide (O’Reilly & Assoc., pub., 2000)
`(Ex. 1062).
`6 U.S. Pat. App. Pub. No. 2002/0065826, published May 30, 2002 (Ex.
`1068).
`7 Bob O’Hara and Al Petrick, IEEE 802.11 Handbook, A Designer’s
`Companion (1999) (Ex. 1061).
`8 U.S. Patent No. 8,996,698 B1, filed Nov. 3, 2000, issued Mar. 31, 2015
`(Ex. 1060).
`9 U.S. Patent No. 5,815,811, issued Sept. 29, 1998 (Ex. 1025).
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`Petitioner also relies on the declaration of Tal Lavian, who holds a
`Ph.D. in computer science, specializing in networking and communications
`(Ex. 1002 ¶ 1).
`
`II. ANALYSIS
`A. Claim Construction
`We interpret the claims of an unexpired patent using the broadest
`reasonable interpretation in light of the specification of the patent. 37 C.F.R.
`§ 42.100(b). Under that standard, a claim term generally is given its
`ordinary and customary meaning, as would be understood by one of ordinary
`skill in the art in the context of the entire disclosure. See In re Translogic
`Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Although our claim
`interpretation cannot be divorced from the specification, see Microsoft Corp.
`v. Proxyconn, Inc., 789 F.3d 1292, 1298 (Fed. Cir. 2015) (quoting In re
`NTP, Inc., 654 F.3d 1279, 1288 (Fed. Cir. 2011)), we must be careful not to
`import limitations from the specification that are not part of the claim
`language, see SuperGuide Corp. v. DirecTV Enterprises, Inc., 358 F.3d 870,
`875 (Fed. Cir. 2004). Any special definition for a claim term must be set
`forth in the specification with reasonable clarity, deliberateness, and
`precision. See In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994).
`Petitioner proposes a construction for “cellular network” in claim 8.
`Pet. 6–7. Patent Owner opposes Petitioner’s construction for “cellular
`network” and proposes its own construction for “processing,” a term that
`does not appear in the challenged claims. Prelim. Resp. 5–7. Based on our
`analysis of the disputed issues for this proceeding, as set forth below, we
`conclude that only the term “cellular network” requires construction at this
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`time. See Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed.
`Cir. 2011) (“[C]laim terms need only be construed ‘to the extent necessary
`to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. &
`Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).
`Petitioner asserts that a “cellular network” is a “network in which
`wireless communications are provided through a series of ‘cells,’ each cell
`providing network access for a particular geographic area.” Pet. 7.
`Effectively, Petitioner’s proposed construction seeks “cellular network” to
`include its “colloquial[]” meaning (the networks provided by “large scale
`commercial cellular telephone providers”) as well as its “technical
`definition” (which would include other radio wavelengths, such as IEEE
`802.11, more commonly known as “WiFi”). Id. Petitioner bases its
`construction on extrinsic evidence, including the testimony of its expert, Dr.
`Lavian (Ex. 1002 ¶¶ 22, 75–76), and one of Patent Owner’s related patents
`(Ex. 1074, U.S. Patent No. 8,892,465, claims 9–11). Dr. Lavian, in turn,
`cites to Pinard (Ex. 1025), which explicitly calls a WiFi network a “cellular
`network.” Ex. 1002 ¶ 75. Dr. Lavian also cites to a host of dictionaries
`supporting his position. Id.
`Patent Owner argues that Petitioner’s construction is too broad.
`Prelim. Resp. 5. Patent Owner asserts that we should adopt the “colloquial[]
`underst[anding] by the lay public” of “cellular network” to reference the
`large scale commercial cellular telephone providers. Id. Patent Owner,
`however, does not offer any cogent analysis or evidence in support of its
`narrower construction.
`On this record, Petitioner offers persuasive extrinsic evidence of how
`a person of ordinary skill in the art would construe the term “cellular
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`network.” We recognize, however, that Petitioner has not addressed the
`level to which its proposed construction is consistent with the specification.
`We have reviewed the specification and, on this preliminary record,
`Petitioner’s proposed construction does not appear inconsistent with how a
`person of ordinary skill in the art would interpret “cellular network” in light
`of the specification. Accordingly, we adopt Petitioner’s proposed
`construction for purposes of our analysis in this Decision. We invite the
`parties to further develop their arguments and evidence regarding the proper
`claim construction of “cellular network” under the broadest reasonable
`interpretation standard during trial.
`
`B. Person of ordinary skill in the art
`The Petition states that a person of ordinary skill in the art “would
`have possessed at least a bachelor’s degree in computer science, computer
`engineering, or electrical engineering . . . with at least four years of
`experience with wireless communications systems and at least two years of
`experience with the communication of digital media.” Pet. 7 n.2 (citing Ex.
`1002 ¶¶ 15, 16). Patent Owner does not explicitly argue for a particular
`level of ordinary skill. On this record, Petitioner’s proffered level of skill
`appears reasonable in view of the level of skill implied by the disclosures of
`the prior art references. See Okajima v. Bourdeau, 261 F.3d. 1350, 1355
`(Fed. Cir. 2001) (the prior art itself can reflect the appropriate level of skill
`in the art). We, therefore, adopt it for purposes of this Decision.
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`C. Asserted Grounds of Unpatentability
`1. Obviousness Over Rolf, Gatherer, Fritsch, Hacker, and Frodigh
`(Claims 8 and 12–14)
`
`Petitioner asserts that claims 8 and 12–14 would have been obvious
`over the combination of Rolf, Gatherer, Fritsch, Hacker, and Frodigh. Pet.
`19–46. Independent claim 8 recites a method for distributing copyrighted
`electronic content over a cellular network using orthogonal frequency-
`division multiplex modulation (“OFDM”), wherein a computer system
`receives a selection of a data file, transmits a portion of that data file,
`receives a request for the complete data file, and then transmits the complete
`data file to a cell phone that uses a digital signal processor (“DSP”). In
`general, and as explained in further detail below, Petitioner relies on Rolf for
`the majority of the limitations of the challenged claim, Gatherer for the
`requirement that the cell phone has a DSP, Fritsch for the portion-of-a-file
`aspect, Frodigh for the particular OFDM scheme, and Hacker for the concept
`that audio recording holders have a copyright over their work. See generally
`Pet. 19–46.
`As to claim 8, step (a), Petitioner asserts that Rolf discloses a facility
`that includes a data base that stores electronically accessible music files and
`transmits them to a device such as a cellular telephone. Pet. 22 (citing, e.g.,
`Ex. 1003, 5:32–39). Petitioner acknowledges, however, that Rolf does not
`disclose the files transmitted by the particular OFDM protocol, but that
`Frodigh describes OFDM as “particularly suited for cellular systems.” Id. at
`22–23 (quoting Ex. 1006, 1:59–2:18). Petitioner asserts that the proposed
`modification to use OFDM as taught in Frodigh would result in no effective
`modification to Rolf because Frodigh is explicitly described as applicable to
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`cellular systems, and provides particular advantages when used, such as
`efficient use of bandwidth and reduced interference. Id. at 23–24 (quoting
`Ex. 1006, 2:38–60). Step (a) also specifies that each data file is subject to a
`copyright owner. Petitioner asserts that Rolf does not explicitly disclose
`this, but the claim limitation imports no meaningful distinction because
`copyright protection automatically attaches to the musical works relevant to
`the claims. Pet. 25 (citing 17 U.S.C. §§ 101(a)(2) & (a)(7)). Petitioner also
`cites to Hacker, which notes that MP3 files contain metadata indicating a
`copyright owner. Pet. 26–27 (citing, e.g., Ex. 1062, 117, 262, 263).
`Petitioner asserts that this is evidence that a person of ordinary skill in the art
`would have understood that copyright information is standard information
`for an MP3 file, and that each is subject to a copyright owner. Id. at 27.
`As to claim 8, step (b), Petitioner asserts that Rolf discloses a remote
`facility that stores a database of music files and allows for the selection of
`one or more of those files by a cellular phone for download, and that the
`selection in accordance with this claimed step occurs when the user of the
`cell phone requests download of a music recording. Pet. 27–28 (citing, e.g.,
`Ex. 1003, 5:49–53, 9:12–15).
`As to claim 8, step (c), Petitioner asserts that Rolf does not disclose
`the transmission of just a portion of the file, but that this feature would been
`obvious in view of the “pre-listen” functionality in Fritsch. Pet. 28.
`Specifically, Petitioner directs our attention to Fritsch’s description of a
`music download system similar to Rolfe, in which a user can pre-listen to
`desired music prior to purchase. Id. at 28–29 (citing, e.g., Ex. 1004, 4:54–
`58, 5:52–56). Petitioner asserts that a person of ordinary skill in the art
`would have reason to add this “pre-listen” feature into the similar system of
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`Rolf in order to provide, inter alia, “[t]he benefits of the age-old sales
`technique of ‘try before you buy.’” Id. at 30 (citing Ex. 1002 ¶¶ 111–115).
`As to claim 8, step (d), Petitioner asserts that Rolf discloses the
`transmission of a selected music file in its entirety rather than just a portion.
`Id. at 31–32. Petitioner asserts this would have been obvious in view of
`Fritsch, which discloses the “try before you buy” feature, and this step is
`merely the “buy.” Id. at 32–33.
`As to claim 8, step (e), Petitioner asserts that it has explained why
`would have been obvious to use OFDM to transmit the data file in step (a).
`Id. at 34–35. As to the limitation that the cell phone includes a DSP to
`receive the file, Petitioner points out that Rolf includes a processor, but does
`not expressly disclose what type of processor it is. Id. at 35. However,
`Petitioner asserts that DSPs were well known to persons of ordinary skill in
`the art, as confirmed by Gatherer, which explains the functions that could be
`performed by a DSP on a cell phone. Id. (citing, e.g., Ex. 1005, 84, 85).
`Petitioner reasons that would been obvious to a person of ordinary skill in
`the art to use a DSP in the cell phone for the reasons expressed in Gatherer,
`for example, being a “cost-effective, flexible upgrade path for the variety of
`evolving standards.” Id. at 35–36 (citing, e.g., Ex. 1005, 86; Ex. 1002
`¶ 129); id. at 37–41 (providing further discussion).
`Reviewing the arguments and evidence provided by Petitioner, we are
`persuaded that it establishes a reasonable likelihood of success in showing
`claim 8 is unpatentable on this ground. We have considered Patent Owner’s
`Preliminary Response but are not persuaded that Petitioner has failed to
`establish a reasonable likelihood of success. Patent Owner first argues that
`Rolf and Frodigh do not disclose the transmission of the data file by OFDM.
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`Prelim. Resp. 20–22. Patent Owner asserts that Frodigh discloses using
`OFDM for phone calls, but not data. Id. at 21. Patent Owner, however, does
`not address the portion in Frodigh that states that “[v]oice and data to be
`transmitted on each link are modulated,” which is cited by Petitioner in its
`Petition. Ex. 1006, 7:58–59 (cited at Pet. 22). Patent Owner also argues that
`Frodigh and Hacker fail to describe transmitting a data file such as an MP3
`file using OFDM (Prelim. Resp. 21), but this argument only considers the
`references’ teachings in isolation rather than in combination with each other.
`As explained above, Petitioner cites to Rolfe for the general music data file
`transfer system, Frodigh for the particular transmission mechanics, and
`Hacker for the simple background fact that MP3s are subject to copyright.
`Patent Owner then argues that Petitioners have provided no evidence
`or explanation to support the conclusion that Rolf’s processor can be a DSP.
`Prelim. Resp. 23–24. This argument again only considers the references in
`isolation because, as explained above, it is the combination of Rolf and
`Gatherer that Petitioner uses to assert that this requirement would have been
`obvious. Gatherer itself explains that DSPs are known to be used in cellular
`telephones for various reasons. Ex. 1005, 84. It is this teaching that is
`applied to the proposed combination of references.
`Next, Patent Owner argues that “Rolf and Frodigh are premised on
`two entirely different systems of network communication,” and that this
`teaches away from their combination. Prelim. Resp. 25–28. 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
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`that there were advantages and drawbacks to both OFDM (Ex. 2005, 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.
`Patent Owner then argues that claim 8 “requires that the receiver and
`processor be configured to receive and process files transmitted by OFDM.”
`Prelim. Resp. 28–30. Claim 8 does not recite a receiver or processor,
`however. The only structure set forth with respect to the method is that it is
`“executable by a computer system that includes server hardware and a
`database.” Patent Owner appears to be referencing, in part, the cellular
`phone to which the method of claim 8 “provides . . . the requested data file.”
`The cellular phone is said to “receive the data file . . . by . . . OFDM.” But
`the claim stops at the action of “providing for the transmitting” by the
`computer system, and does not include the steps for receipt or processing at
`the cell phone. At most, it requires that the computer system cause a
`transmission using OFDM, because the cell phone that receives the
`transmitted files uses OFDM.
`Turning now to dependent claims 12–14, Petitioner asserts that Rolf
`discloses the interface for file selection of claims 12 and 13, and that Fritsch
`provides additional evidence that such interfaces were known. Pet. 42–44
`(citing, e.g., Ex. 1003, 5:30–38, 9:12–15; Ex. 1004, 4:49–50). Petitioner
`asserts that Hacker explains how MP3 files were known to have metadata
`indicating the copyright owner, as required by claim 14. Id. at 44–46 (citing,
`e.g., Ex. 1062, 124). These assertions are persuasive on the present record.
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`Patent Owner does not set forth separate arguments for claims 12–14.
`Prelim. Resp. 30.
`Reviewing the evidence and arguments before us, we are persuaded
`that Petitioner has shown a reasonable likelihood that claims 8 and 12–14
`are unpatentable over Rolf, Gatherer, Fritsch, Hacker, and Frodigh.
`
`2. Obviousness Over Rolf, Gatherer, Fritsch, Frodigh, Hacker, and Bell
`(Claims 10 and 11)
`
`Petitioner asserts that claims 10 and 11 are unpatentable over Rolf,
`Gatherer, Fritsch, Hacker, Frodigh, and Bell. Pet. 46–56. Claim 10 depends
`from claim 8 and requires further steps of tracking the user and reporting
`data about the user. Claim 11 similarly depends from claim 8 and requires
`tracking of the user to determine data about the user. Petitioner asserts that
`Bell teaches user tracking to gather data on the user. See, e.g., Pet. 47 (citing
`Ex. 1068 ¶ 100); Ex. 1068 ¶ 100 (“activities [by a user] may be assigned a
`code and tracked”; this data may be used by “others who may desire to know
`concretely what users 102 are responding to when and why”). Patent Owner
`argues that Bell does not teach tracking of a cellphone. Prelim. Resp. 30–31.
`This argument only considers the references in isolation, whereas the
`proposed ground is to apply the teachings of Bell to the analogous situation
`in Rolf, as modified. See Pet. 46–56. Reviewing the arguments and
`evidence before us, we are persuaded that Petitioner has shown a reasonable
`likelihood that claims 10 and 11 are unpatentable over Rolf, Gatherer,
`Fritsch, Frodigh, and Bell.
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`3. Obviousness Over Rolf, Gatherer, Fritsch, Hacker, O’Hara, Tagg, and
`Pinard
`(Claims 8 and 12–14)
`and
`Obviousness Over Rolf, Gatherer, Fritsch, Hacker, Bell, O’Hara, Tagg,
`and Pinard
`(Claims 10 and 11)
`
`Petitioner asserts that claims 8 and 12–14 are unpatentable over Rolf,
`Gatherer, Fritsch, Hacker, O’Hara, Tagg, and Pinard and that claims 10 and
`11 are unpatentable over Rolf, Gatherer, Fritsch, Hacker, Bell, O’Hara,
`Tagg, and Pinard. Pet. 56–66. Petitioner characterizes these grounds as
`alternative grounds using O’Hara, Tagg, and Pinard to teach OFDM, rather
`than Frodigh. Id. at 56. Petitioner explains that it used Frodigh for the first
`grounds because “mapping of Frodigh has some similarities to the mapping
`provided in the Playboy IPR proceeding on the parent ’875 patent (IPR2014-
`001236). . . .” Id. at 57. Petitioner sets out the alternative O’Hara, Tagg,
`and Pinard references to teach OFDM in the event Patent Owner has new
`evidence against Frodigh. See id. In addition, Petitioner asserts that the
`OFDM discussed in O’Hara, Tagg, and Pinard is industry standard for
`communications using IEEE 802.11a, also known as “WiFi.” Id. at 58.
`Petitioner asserts that O’Hara teaches that IEEE 802.11a uses OFDM.
`Id. at 59–60 (citing Ex. 1061, 143). Petitioner asserts that Tagg teaches that
`IEEE 802.11 can be used to transmit voice and data for cell phones. Id. at
`60–62 (citing, e.g., Ex. 1060, 11:67–12:2). Lastly, Petitioner asserts that
`Pinard teaches that IEEE 802.11 is considered part of a cellular
`communications network. Id. at 62–63 (citing, e.g., Ex. 1025, 2:50–53).
`Petitioner reasons that it would have been obvious to utilize IEEE 802.11 for
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`transmission in Rolf to take advantage of the speed and cost benefits of
`IEEE 802.11. Id. at 64–66 (citing, e.g., Ex. 1002 ¶¶ 187–193).
`Patent Owner acknowledges that IEEE 802.11 is used for cellular
`communications, but argues that the evidence does not support “the IEEE
`802.11 standard as applied to 2G, 3G, LTE, or any other cellular
`transmission.” Prelim. Resp. 32. This argument misunderstands the ground,
`which is to use IEEE 802.11 in Rolf, not to replace 2G, 3G, LTE, or any
`such transmission scheme with IEEE 802.11. See Pet. 64 (“[i]t would have
`been obvious . . . to combine . . . resulting in cell phone 12 of Rolf
`configured to receive digital files transmitted over an IEEE 802.11a-based
`cellular network. . . .”). Thus, the device in Rolf as modified would use
`IEEE 802.11 when connected to a wifi network, and 2G, 3G etc., when not.
`See, e.g., Pet. 65 (“Tagg explains that . . . cellular charges could be
`dramatically reduced by allowing the cell phone to switch a short-range
`wireless network such as IEEE 802.11”). Under Petitioner’s claim
`construction, which we have adopted for purposes of this Decision for the
`reasons set forth above, IEEE 802.11 provides for a cellular network. Patent
`Owner’s remaining arguments have been addressed above. See Prelim.
`Resp. 33–36.
`Reviewing the evidence and arguments before us, we are persuaded
`that Petitioner has shown a reasonable likelihood that claims 8 and 12–14
`are unpatentable over Rolf, Gatherer, Fritsch, Bell, O’Hara, Tagg, and
`Pinard.
`
`
`15
`
`
`
`
`
`IPR2017-00685
`Patent 9,203,870 B2
`
`
`4. Patent Owner’s Section 325(d) Argument
`
`Patent Owner argues that we should deny institution under 35 U.S.C.
`§ 325(d) because, during prosecution, “the examiner has considered
`Malkamaki—a substantially similar reference of Rolf . . . during the
`prosecution of the ’870 patent and allowed the patent to issue.” Prelim.
`Resp. 37 (citing Ex. 2004, 7). We have reviewed the quoted passage of
`Exhibit 2004 but do not find the quoted language in the exhibit provided. In
`addition, Patent Owner does not explain why the references are
`“substantially similar” with any degree of particularity. See id. at 36–38.
`We are not persuaded that that we should exercise our discretion to deny
`institution in this case.
`
`III. ORDER
`
`
`
`In view of the foregoing, it is hereby
`ORDERED that inter partes review of the ’870 patent is instituted on
`the following grounds set forth in the Petition:
`Whether claims 8 and 12–14 would have been obvious in view
`of Rolf, Gatherer, Fritsch, Hacker, and Frodigh;
`Whether claims 10 and 11 would have been obvious in view of
`Rolf, Gatherer, Fritsch, Hacker, Frodigh, and Bell;
`Whether claims 8 and 12–14 would have been obvious in view
`of Rolf, Gatherer, Fritsch, Hacker, O’Hara, Tagg, and Pinard;
`Whether claims 10 and 11 would have been obvious in view of
`Rolf, Gatherer, Fritsch, Hacker, Bell, O’Hara, Tagg, and Pinard; and
`
`
`16
`
`
`
`
`
`IPR2017-00685
`Patent 9,203,870 B2
`
`
`FURTHER ORDERED that, pursuant to 35 U.S.C. § 314(c) and
`37 C.F.R. § 42.4, inter partes review shall commence on the entry date of
`this Order, and notice is hereby given of the institution of a trial.
`
`
`PETITIONER:
`
`Heidi L. Keefe
`Andrew C. Mace
`COOLEY LLP
`hkeefe@cooley.com
`amace@cooley.com
`zpatdcdocketing@cooley.com
`
`PATENT OWNER:
`
`Ryan M. Schultz
`Andrew J. Kabat
`ROBINS KAPLAN LLP
`rschultz@robinskaplan.com
`akabat@robinskaplan.com
`
`
`
`17
`
`
`
`
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