Trials@uspto.gov
`571–272–7822
`
`
`
`
`Paper 9
`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 IPR2017-00689
`Patent 9,124,718 B2
`_______________
`
`
`Before JUSTIN T. ARBES, CARL M. DEFRANCO, and
`ROBERT J. WEINSCHENK, Administrative Patent Judges.
`
`WEINSCHENK, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`571–272–7822
`
`
`
`
`Paper 9
`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 IPR2017-00689
`Patent 9,124,718 B2
`_______________
`
`
`Before JUSTIN T. ARBES, CARL M. DEFRANCO, and
`ROBERT J. WEINSCHENK, Administrative Patent Judges.
`
`WEINSCHENK, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`
`IPR2017-00689
`Patent 9,124,718 B2
`
`
`INTRODUCTION
`I.
`Facebook, Inc. and Instagram LLC (“Petitioner”) filed a Petition
`(Paper 2, “Pet.”) requesting an inter partes review of claims 1–11 of U.S.
`Patent No. 9,124,718 B2 (Ex. 1001, “the ’718 patent”). Skky, LLC (“Patent
`Owner”) filed a Preliminary Response (Paper 6, “Prelim. Resp.”) to the
`Petition. For the reasons set forth below, the Petition is denied, and no trial
`is instituted.
`Related Proceedings
`A.
`The parties indicate that the ’718 patent is at issue in the following
`district court case: Skky, LLC v. Facebook, Inc., No. 16-cv-00094 (D.
`Minn.). Pet. 1; Paper 3, 2. The parties also indicate that the following
`petitions for inter partes review or covered business method review are
`related to this case:
`Case No.
`IPR2014-01236
`IPR2017-00088
`IPR2017-00089
`IPR2017-00092
`IPR2017-00097
`IPR2017-00550
`IPR2017-00602
`IPR2017-00641
`IPR2017-00685
`IPR2017-00687
`IPR2017-00688
`IPR2017-00690
`IPR2017-00691
`CBM2016-00091
`CBM2017-00002
`CBM2017-00003
`CBM2017-00006
`CBM2017-00007
`
`Involved U.S. Patent No.
`U.S. Patent No. 7,548,875
`U.S. Patent No. 9,124,718
`U.S. Patent No. 9,118,693
`U.S. Patent No. 9,124,717
`U.S. Patent No. 8,892,465
`U.S. Patent No. 9,037,502
`U.S. Patent No. 9,219,810
`U.S. Patent No. 9,203,956
`U.S. Patent No. 9,203,870
`U.S. Patent No. 9,215,310
`U.S. Patent No. 9,124,717
`U.S. Patent No. 9,118,693
`U.S. Patent No. 8,892,465
`U.S. Patent No. 9,037,502
`U.S. Patent No. 9,203,870
`U.S. Patent No. 9,219,810
`U.S. Patent No. 9,215,310
`U.S. Patent No. 9,203,956
`
`2
`
`
`
`
`
`IPR2017-00689
`Patent 9,124,718 B2
`
`Pet. 1–2; Paper 3, 2–3.
`The ’718 Patent
`B.
`The ’718 patent relates to delivering audio and/or visual files to an
`electronic device. Ex. 1001, Abstract, col. 1, ll. 19–21. Specifically, the
`’718 patent explains that the audio or visual files, such as songs or films, are
`delivered wirelessly from one or more servers to the electronic device. Id. at
`Abstract. The files are transmitted in a compressed format, and the
`electronic device is able to receive and playback the files on demand by a
`user. Id.
`Illustrative Claim
`C.
`Claims 1, 6, and 10 are independent. Claim 1 is reproduced below.
`1. A method of wirelessly delivering compressed digital
`audio or audio-visual data file to a cell phone, the method
`comprising:
`providing a compressed digital audio or audio-visual data
`file for access over the Internet;
`receiving a request from the cell phone, said cell phone
`including a receiver and digital signal processor configured for
`receiving and processing files transmitted by orthogonal
`frequency-division multiplex modulation (OFDM); and
`providing for the transmission of the compressed digital
`audio or audio-visual data file to the cell phone by orthogonal
`frequency-division multiplex modulation based on the received
`request, wherein the transmission of the compressed digital
`audio or audio-visual data file is by a cellular data channel.
`Ex. 1001, col. 33, ll. 2–17.
`Evidence of Record
`D.
`Petitioner submits the following references and declaration (Pet. 3–4):
`Reference or Declaration
`Exhibit No.
`Declaration of Tal Lavian, Ph.D. (“Lavian Declaration”)
`Ex. 1002
`
`3
`
`
`
`IPR2017-00689
`Patent 9,124,718 B2
`
`
`Ex. 1003
`
`Ex. 1004
`
`Ex. 1005
`
`Ex. 1060
`
`Ex. 1061
`
`Ex. 1070
`
`Ex. 1073
`
`Rolf, U.S. Patent No. 7,065,342 B1 (filed Nov. 22, 2000,
`issued June 20, 2006) (“Rolf”)
`Ben Forta et al., WAP DEVELOPMENT WITH WML AND
`WMLSCRIPT: THE AUTHORITATIVE SOLUTION (Matt Purcell
`et al. eds., 2000) (“Forta”)
`Alan Gatherer et al., DSP-Based Architectures for Mobile
`Communications: Past, Present and Future, 38:1 IEEE
`COMMUNICATIONS MAGAZINE 84–90 (2000) (“Gatherer”)
`Tagg, U.S. Patent No. 8,996,698 B1 (filed Nov. 3, 2000,
`issued Mar. 31, 2015) (“Tagg”)
`Bob O’Hara & Al Petrick, IEEE 802.11 HANDBOOK: A
`DESIGNER’S COMPANION (1999) (“O’Hara”)
`Pinard et al., U.S. Patent No. 5,815,811 (filed Oct. 27, 1995,
`issued Sept. 29, 1998) (“Pinard”)
`Scot Hacker, MP3: THE DEFINITIVE GUIDE (Simon Hayes et
`al. eds., 2000) (“Hacker”)
`Asserted Grounds of Unpatentability
`E.
`Petitioner asserts that the challenged claims are unpatentable on the
`following grounds (Pet. 3–4):
`Claim(s) Challenged Basis
`1, 3, and 5
`35 U.S.C. § 103(a)
`
`References
`Rolf, Gatherer, O’Hara,
`Tagg, and Pinard
`Rolf, Gatherer, O’Hara,
`Tagg, Pinard, and Forta
`Rolf, Gatherer, O’Hara,
`Tagg, Pinard, and
`Hacker
`Rolf, Gatherer, O’Hara,
`and Tagg
`Rolf, Gatherer, O’Hara,
`Tagg, and Forta
`Rolf, Gatherer, O’Hara,
`Tagg, and Hacker
`
`2
`
`4
`
`35 U.S.C. § 103(a)
`
`35 U.S.C. § 103(a)
`
`6 and 8
`
`35 U.S.C. § 103(a)
`
`7, 10, and 11
`
`35 U.S.C. § 103(a)
`
`9
`
`35 U.S.C. § 103(a)
`
`4
`
`
`
`IPR2017-00689
`Patent 9,124,718 B2
`
`
`II. ANALYSIS
`On October 14, 2016, Petitioner filed a petition in IPR2017-00088
`(“-88 Case”) requesting an inter partes review of claims 1–11 of the
`’718 patent. IPR2017-00088, Paper 2 (“-88 Pet.” or “-88 Petition”). Patent
`Owner subsequently filed a preliminary response on February 1, 2017.
`IPR2017-00088, Paper 6. We instituted an inter partes review of claims 1–
`11 of the ’718 patent in the -88 Case on April 26, 2017. IPR2017-00088,
`Paper 9 (“-88 Dec. on Inst.”). Petitioner filed its Petition in the instant
`proceeding on January 15, 2017.
`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,
`35 U.S.C. § 325(d) provides 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. Based on the
`parties’ arguments and the particular facts of this proceeding, we conclude
`that it is appropriate to exercise our discretion to deny the Petition under
`35 U.S.C. § 325(d).
`Petitioner relies on substantially the same prior art in the present
`Petition and the -88 Petition. Prelim. Resp. 35–36. Four of the asserted
`prior art references, namely Rolf, Gatherer, Forta, and Hacker, are the same
`in both proceedings. Compare -88 Pet. 3, with Pet. 3–4. Petitioner also
`presents substantially the same arguments in the present Petition and the -88
`Petition. Prelim. Resp. 35–36. Petitioner’s discussion of Rolf, Gatherer,
`Forta, and Hacker, the vast majority of Petitioner’s analysis of claims 1–11,
`
`5
`
`
`
`IPR2017-00689
`Patent 9,124,718 B2
`
`and the corresponding declaration testimony of Dr. Tal Lavian (Ex. 1002 in
`this case and the -88 Case) appear to be identical in both proceedings.
`Compare -88 Pet. 4–10, 14–24, 32–63, with Pet. 11–15, 18–26, 38–39, 42–
`68; compare IPR2017-00088, Ex. 1002 ¶¶ 54–66, 69–91, 108, 111–199,
`with Ex. 1002 ¶¶ 54–66, 78–100, 127, 135–224. The only substantive
`difference between the present Petition and the -88 Petition is Petitioner’s
`analysis of the claim limitations requiring orthogonal frequency-division
`multiplex (“OFDM”) modulation. Pet. 7–8. Whereas Petitioner relied on
`Frodigh for these limitations in the -88 Petition, Petitioner now relies on the
`combination of O’Hara, Tagg, and Pinard. Compare -88 Pet. 23–32, with
`Pet. 26–38.
`Petitioner argues that it takes a “different approach” in its Petition in
`this proceeding by relying on O’Hara, Tagg, and Pinard, which disclose
`“technology that is different from the Frodigh reference.” Pet. 7–8.
`Petitioner states that its arguments regarding Frodigh in the -88 Case are
`similar to arguments made by a different petitioner in challenging a parent
`patent to the ’718 patent in IPR2014-01236. Id. at 8–9. Thus, Petitioner
`“anticipate[s] that [Patent Owner] will attempt to resurrect [its] arguments”
`from IPR2014-01236 in the -88 Case. Id. at 9. According to Petitioner, 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 Patent Owner’s earlier “arguments, although
`properly rejected in IPR2014-01236, would have no applicability here.” Id.
`Finally, Petitioner argues that it “could not have” presented its newly
`asserted grounds earlier because it “did not locate” Tagg and Pinard until
`after filing the -88 Petition, “[d]espite diligent search efforts.” Id. at 8–10.
`
`6
`
`
`
`IPR2017-00689
`Patent 9,124,718 B2
`
`
`Petitioner’s arguments as to why we should not deny the Petition
`under 35 U.S.C. § 325(d) are not persuasive. Petitioner appears to
`acknowledge that it was aware of O’Hara at the time of filing
`the -88 Petition. Id. at 8 (arguing that Tagg and Pinard “bridged the gap left
`open by O’Hara”). Tagg is a U.S. patent that issued on March 31, 2015 (Ex.
`1060), approximately a year and a half before Petitioner filed the -88
`Petition, and Pinard is a U.S. Patent that issued even earlier on September
`29, 1998 (Ex. 1070). Thus, contrary to Petitioner’s arguments, Petitioner
`should have been aware of the existence of Tagg and Pinard prior to filing
`the -88 Petition, and could have presented its arguments regarding O’Hara,
`Tagg, and Pinard in the -88 Petition, but did not. Petitioner does not explain
`in any detail what search efforts it undertook in the three months between
`filing the -88 Petition and the Petition in this proceeding, or why its previous
`search efforts did not uncover Tagg and Pinard earlier. Nor are we
`persuaded by Petitioner’s justification for raising O’Hara, Tagg, and Pinard
`now, as Petitioner was aware of Patent Owner’s arguments in IPR2014-
`01236 at the time of filing the -88 Petition. IPR2014-01236, Paper 45 (final
`written decision entered on January 29, 2016).1
`We have considered the papers filed in this proceeding and in
`the -88 Case. Petitioner has not provided 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 the -88 Petition. Accordingly, we exercise our discretion to deny the
`Petition under 35 U.S.C. § 325(d).
`
`1 The final written decision in IPR2014-01236 subsequently was affirmed by
`the U.S. Court of Appeals for the Federal Circuit. Paper 8, 1.
`
`7
`
`
`
`IPR2017-00689
`Patent 9,124,718 B2
`
`
`III. CONCLUSION
`For the foregoing reasons, we exercise our discretion to deny the
`Petition under 35 U.S.C. § 325(d).
`IV. ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED that the Petition is denied, and no trial is instituted.
`
`
`
`8
`
`
`
`IPR2017-00689
`Patent 9,124,718 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
`
`9
`
`
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