Trials@uspto.gov
`571-272-7822
`
`
`
`
` Paper No. 11
`Entered: August 2, 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 IPR2017-00688
`Patent 9,124,717 B2
`____________
`
`Before JUSTIN T. ARBES, CARL M. DEFRANCO, and
`ROBERT J. WEINSCHENK, Administrative Patent Judges.
`
`DEFRANCO, Administrative Patent Judge.
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`I. INTRODUCTION
`This is a preliminary proceeding to decide whether to institute inter
`
`partes review of U.S. Patent No. 9,124,717 B2 (“the ’717 patent”) under 35
`U.S.C. § 314(a). Skky, LLC is the owner of the ’717 patent. Facebook, Inc.
`and Instagram LLC (collectively “Facebook”) filed a Petition (Paper 2,
`“Pet.”) challenging claims 1–6 of the ’717 patent. Skky, in turn, filed a
`
`
`571-272-7822
`
`
`
`
` Paper No. 11
`Entered: August 2, 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 IPR2017-00688
`Patent 9,124,717 B2
`____________
`
`Before JUSTIN T. ARBES, CARL M. DEFRANCO, and
`ROBERT J. WEINSCHENK, Administrative Patent Judges.
`
`DEFRANCO, Administrative Patent Judge.
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`I. INTRODUCTION
`This is a preliminary proceeding to decide whether to institute inter
`
`partes review of U.S. Patent No. 9,124,717 B2 (“the ’717 patent”) under 35
`U.S.C. § 314(a). Skky, LLC is the owner of the ’717 patent. Facebook, Inc.
`and Instagram LLC (collectively “Facebook”) filed a Petition (Paper 2,
`“Pet.”) challenging claims 1–6 of the ’717 patent. Skky, in turn, filed a
`
`
`
`IPR2017-00688
`Patent 9,124,717 B2
`
`Preliminary Response (Paper 8, “Prelim. Resp.”). For the reasons that
`follow, we exercise our discretion under 35 U.S.C. § 325(d) and decline to
`institute inter partes review.
`II. BACKGROUND
`
`A.
`
`Related Cases
`The ’717 patent (Ex. 1001) is the subject of a co-pending district court
`action, Skky, LLC v. Facebook, Inc., No. 16-cv-00094 (D. Minn.), filed
`January 15, 2016. Facebook previously filed a petition challenging claim 1–
`6 of the ’717 patent in IPR2017-00092, and we instituted inter partes review
`of those claims on May 1, 2017. Paper 9. Facebook has also filed petitions
`challenging claims in a number of related patents.1
`B.
`The Asserted Grounds
`
`Facebook challenges claims 1–6 of the ’717 patent as unpatentable on
`two grounds of obviousness under 35 U.S.C. § 103. Pet. 3. In its first
`ground, Facebook asserts that claims 1, 2, 4, and 5 would have been obvious
`over the combination of Rolf,2 Forta,3 Gatherer,4 Tagg,5 O’Hara,6 Gould,7
`
`
`1 They include IPR2017-00088, IPR2017-00089, IPR2017-00097, IPR2017-
`00550, IPR2017-00602, IPR2017-00641, IPR2017-00685, IPR2017-00687,
`IPR2017-00689, IPR2017-00690, and IPR2017-00691. Paper 3.
`2 U.S. Patent No. 7,065,342 B1, iss. Jun. 20, 2006 (Ex. 1003, “Rolf”).
`3 Ben Forta et al., WAP DEVELOPMENT WITH WML AND WMLSCRIPT: THE
`AUTHORITATIVE SOLUTION (Matt Purcell et al. eds., 2000) (Ex. 1004,
`“Forta”).
`4 Alan Gatherer et al., DSP-Based Architectures for Mobile
`Communications: Past, Present and Future, 38:1 IEEE COMMUNICATIONS
`MAGAZINE 84–90 (2000) (Ex. 1005, “Gatherer”).
`5 U.S. Patent No. 8,996,698 B1, iss. Mar. 31, 2015 (Ex. 1060, “Tagg”).
`6 Bob O’Hara & Al Petrick, IEEE 802.11 HANDBOOK: A DESIGNER’S
`COMPANION (1999) (Ex. 1061, “O’Hara”).
`7 U.S. Patent No. 6,693,236 B1, iss. Feb. 17, 2004 (Ex. 1073, “Gould”).
`
`2
`
`
`
`IPR2017-00688
`Patent 9,124,717 B2
`
`and Pinard,8 and in its second ground, Facebook asserts that claims 3 and 6
`would have been obvious over the same combination of references as the
`first ground, plus Hacker.9 Id. In further support of these grounds,
`Facebook proffers the Declaration of Tal Lavian, Ph.D. Ex. 1002.
`III. ANALYSIS
`The instant Petition was filed January 15, 2017, and represents
`Facebook’s second challenge to claims 1–6 of the ’717 patent.
`Approximately three-months earlier, on October 14, 2016, Facebook filed a
`petition in IPR2017-00092 requesting inter partes review of claims 1–6 of
`the ’717 patent. IPR2017-00092, Paper 1 (“the -92 Petition” or “-92 Pet.”).
`Skky filed a preliminary response to that earlier petition on February 2,
`2017, and, as mentioned earlier, we instituted an inter partes review of
`claims 1–6 of the ’717 patent on May 1, 2017. IPR2017-00092, Papers 6, 7,
`respectively.
`Pursuant to 35 U.S.C. § 325(d), in determining whether to institute an
`inter partes review, “the Director may take into account whether, and reject
`the petition or request because, the same or substantially the same prior art
`or arguments previously were presented to the Office.” In other words,
`section 325(d) provides the Director with authority to deny a petition on the
`basis that the same or substantially the same prior art or arguments were
`presented previously to the Office, but does not require that result. After
`considering the parties’ arguments and the particular facts of this proceeding
`
`
`8 U.S. Patent No. 5,815,811, iss. Sept. 29, 1998 (Ex. 1070, “Pinard”).
`9 Scot Hacker, MP3: THE DEFINITIVE GUIDE (Simon Hayes ed., 2000) (Ex.
`1069, “Hacker”).
`
`3
`
`
`
`IPR2017-00688
`Patent 9,124,717 B2
`
`(see Pet. 6–10, Prelim. Resp. 36–38), we conclude that it is appropriate to
`exercise our discretion to deny the Petition under section 325(d).
`Facebook relies on substantially the same prior art in both the instant
`Petition and the -92 Petition. Specifically, five of the prior art references
`asserted by Facebook in the -92 Petition, namely Rolf, Forta, Gatherer,
`Gould, and Hacker, are also asserted in the instant Petition. Compare -92
`Pet. 3 with Pet. 3. Facebook also presents substantially the same arguments
`in the present Petition and the -92 Petition. For instance, Facebook’s
`discussion of Rolf, Forta, Gatherer, Gould, and Hacker, and the vast
`majority of Facebook’s analysis of claims 1–6, not to mention the
`corresponding declaration testimony of Dr. Lavian, appear to be identical in
`both the instant Petition and the -92 Petition. Compare -92 Pet. 4–10, 14–
`39, 47–50, 51–65 with Pet. 10–14, 17–39, 49–53, 56–69. The only
`substantive difference between the present Petition and the -92 Petition is
`Facebook’s analysis of the claim limitations requiring orthogonal
`frequency-division multiplex (“OFDM”) modulation. Pet. 6–9. Whereas
`Facebook relied on Frodigh10 for the OFDM limitations in the -92 Petition, it
`now relies on the combination of O’Hara, Tagg, and Pinard in the instant
`Petition. Compare -92 Pet. 10–14, 39–47, 50–51 with Pet. 14–17, 39–49,
`53–56.
`We are not persuaded that Facebook’s reliance on these new
`references for the OFDM limitations warrants an additional inter partes
`review of the ’717 patent. Facebook argues that it takes a “different
`approach” in the instant Petition by relying on O’Hara, Tagg, and Pinard,
`
`
`10 U.S. Patent No. 5,726,978, iss. Mar. 10, 1998 (Ex. 1006, “Frodigh”).
`
`4
`
`
`
`IPR2017-00688
`Patent 9,124,717 B2
`
`which disclose “technology that is different from the Frodigh reference in
`IPR2017-00092.” Pet. 7. Facebook states that its arguments regarding
`Frodigh in the -92 Petition are similar to arguments made by a different
`petitioner in challenging a parent patent to the ’717 patent in IPR2014-
`01236. Id. at 8–9. Thus, Facebook “anticipate[s] that [Skky] will attempt to
`resurrect [its] arguments” from IPR2014-01236 in IPR2017-00092. Id. at 8.
`According to Facebook, the Petition in this proceeding “avoids these issues
`by presenting a combination that does not involve incorporation of OFDM
`modulation into any existing cellular network,” such that Skky’s earlier
`“arguments, although properly rejected in IPR2014-01236, would have no
`applicability here.” Id. at 9. Finally, Facebook argues that it “could not
`have” presented its newly asserted grounds earlier because it “did not locate”
`Tagg and Pinard until after filing the -92 Petition, “[d]espite diligent search
`efforts.” Id. at 7, 9.
`Facebook’s arguments as to why we should not deny the Petition
`under 35 U.S.C. § 325(d) are not persuasive. Facebook appears to
`acknowledge that it was aware of O’Hara at the time of filing
`the -92 Petition. See id. at 7 (arguing that Tagg and Pinard “bridged the gap
`left open by O’Hara”). As for the other two references, Tagg is a U.S. patent
`that issued on March 31, 2015 (Ex. 1060), approximately a year and a half
`before Facebook filed the -92 Petition, and Pinard is a U.S. patent that issued
`even earlier, on September 29, 1998 (Ex. 1070). Given the clear public
`availability of Tagg and Pinard, Facebook should have been aware of their
`existence prior to filing the -92 Petition, and thus could have asserted them
`in the -92 Petition, but did not. Facebook does not explain in any detail what
`search efforts it undertook in the three months between filing the -92
`
`5
`
`
`
`IPR2017-00688
`Patent 9,124,717 B2
`
`Petition and the instant Petition, or why it did not uncover Tagg and Pinard
`earlier. Nor are we persuaded by Facebook’s justification for raising
`O’Hara, Tagg, and Pinard now, as Facebook was certainly aware of Skky’s
`arguments in IPR2014-01236 at the time of filing the -92 Petition.
`IPR2014-01236, Paper 45 (final written decision entered on January 29,
`2016).11
`We have considered the parties’ arguments in this preliminary
`proceeding. Facebook does not provide persuasive reasoning as to why we
`should institute a second inter partes review involving the same parties, the
`same challenged claims, and substantially the same prior art and arguments
`as were presented previously in the -92 Petition. Accordingly, we exercise
`our discretion to reject the Petition under 35 U.S.C. § 325(d).
`IV. CONCLUSION
`For the foregoing reasons, we exercise our discretion to decline inter
`partes review of the Petition under 35 U.S.C. § 325(d).
`V. ORDER
`Accordingly, it is hereby ordered that the Petition is denied.
`
`
`
`
`
`
`
`
`
`
`
`11 The final written decision in IPR2014-01236 subsequently was affirmed
`by the U.S. Court of Appeals for the Federal Circuit. Paper 10.
`
`6
`
`
`
`IPR2017-00688
`Patent 9,124,717 B2
`
`
`FOR PETITIONER:
`Heidi L. Keefe
`Andrew C. Mace
`COOLEY LLP
`hkeefe@cooley.com
`amace@cooley.com
`
`
`FOR PATENT OWNER:
`Ryan M. Schultz
`Andrew J. Kabat
`ROBINS KAPLAN LLP
`rschultz@robinskaplan.com
`akabat@robinskaplan.com
`
`
`
`7
`
`
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