Trials@uspto.gov
`571-272-7822
`
`
`
`Paper 11
`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 IPR2017-00690
`Patent 9,118,693 B2
`____________
`
`Before JUSTIN T. ARBES, CARL M. DEFRANCO, and
`ROBERT J. WEINSCHENK, Administrative Patent Judges.
`
`ARBES, Administrative Patent Judge.
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`571-272-7822
`
`
`
`Paper 11
`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 IPR2017-00690
`Patent 9,118,693 B2
`____________
`
`Before JUSTIN T. ARBES, CARL M. DEFRANCO, and
`ROBERT J. WEINSCHENK, Administrative Patent Judges.
`
`ARBES, Administrative Patent Judge.
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`IPR2017-00690
`Patent 9,118,693 B2
`
`
`Facebook, Inc. and Instagram LLC (collectively, “Petitioner”) filed a
`Petition (Paper 2, “Pet.”) requesting inter partes review of claims 1–6 of
`U.S. Patent No. 9,118,693 B2 (Ex. 1001, “the ’693 patent”) pursuant to
`35 U.S.C. § 311(a). Patent Owner Skky, LLC filed a Preliminary Response
`(Paper 8, “Prelim. Resp.”) pursuant to 35 U.S.C. § 313. For the reasons that
`follow, we have decided not to institute an inter partes review.
`
`
`I. BACKGROUND
`A. The ’693 Patent1
`The ’693 patent discloses a “method of delivering an audio and/or
`visual media file . . . over the air wirelessly, from one or more servers to an
`electronic device,” such as a cell phone. Ex. 1001, Abstract. The electronic
`device can receive the file, in “compressed format,” and “playback said
`audio and/or visual content on demand by a user.” Id. The ’693 patent
`describes using an orthogonal frequency division multiplexing (OFDM)
`modulation scheme for transmitting the file. Id. at col. 16, l. 35–col. 17,
`l. 59, Fig. 5. The cell phone may include a digital signal processor (DSP),
`which “executes the device firmware, provides control for all other blocks
`and performs . . . computational tasks,” such as “reception of information
`from the computer through the computer digital interface, . . . reception of
`packed sound clips through the phone analogue or digital interface, [and]
`
`
`1 Case IPR2017-00089 involves the same parties and the same patent.
`Cases IPR2017-00088, IPR2017-00092, IPR2017-00097, IPR2017-00550,
`IPR2017-00602, IPR2017-00641, IPR2017-00685, IPR2017-00687,
`IPR2017-00688, IPR2017-00689, and IPR2017-00691 involve the same
`parties and related patents. See Pet. 1–2; Paper 3.
`
`
`
`2
`
`
`
`IPR2017-00690
`Patent 9,118,693 B2
`
`unpacking and then playing back sound clips through a built-in speaker.” Id.
`at col. 14, l. 53–col. 15, l. 3.
`
`
`B. Illustrative Claim
`Claim 1 of the ’693 patent recites:
`1. A method of wirelessly delivering a compressed digital
`audio or audio-visual data file to a cell phone, the method
`comprising:
`providing a website;
`wherein
`the website provides a plurality of
`compressed digital audio or audio-visual data files;
`the
`receiving a request from
`the cell phone for
`compressed digital audio or audio-visual data file associated
`with the website, said cell phone including a receiver and
`digital signal processor configured for receiving and processing
`files transmitted by orthogonal frequency-division multiplex
`modulation; and
`providing for the streaming of the requested compressed
`digital audio or audio-visual data file to the cell phone by
`orthogonal frequency-division multiplex modulation based on
`the received request.
`
`the
`
`
`C. The Prior Art
`Petitioner relies on the following prior art:
`U.S. Patent No. 7,065,342 B1, filed Nov. 22, 2000,
`issued June 20, 2006 (Ex. 1003, “Rolf”);
`U.S. Patent No. 8,996,698 B1, filed Nov. 3, 2000, issued
`Mar. 31, 2015 (Ex. 1058, “Tagg”);
`Bob O’Hara & Al Petrick, IEEE 802.11 HANDBOOK:
`A DESIGNER’S COMPANION (1999) (Ex. 1059, “O’Hara”);
`
`
`
`3
`
`
`
`IPR2017-00690
`Patent 9,118,693 B2
`
`
`Ben Forta et al., WAP DEVELOPMENT WITH WML AND
`WMLSCRIPT: THE AUTHORITATIVE SOLUTION (Matt Purcell et
`al. eds., 2000) (Ex. 1004, “Forta”); and
`Alan Gatherer et al., DSP-Based Architectures for Mobile
`Communications: Past, Present and Future, 38:1 IEEE
`COMMUNICATIONS MAGAZINE 84–90 (Jan. 2000) (Ex. 1005,
`“Gatherer”).
`
`
`D. The Asserted Ground
`Petitioner challenges claims 1–6 of the ’693 patent as unpatentable
`over Rolf, Forta, Gatherer, O’Hara, and Tagg under 35 U.S.C. § 103(a).2
`
`
`II. DISCUSSION
`On October 14, 2016, Petitioner filed a petition in Case
`IPR2017-00089 (“the -89 Case”) requesting inter partes review of claims
`1–6 of the ’693 patent as unpatentable over Rolf, Forta, Gatherer, and
`U.S. Patent No. 5,726,978 (Ex. 1006, “Frodigh”). See IPR2017-00089,
`Paper 2 (“-89 Petition” or “-89 Pet.”). Patent Owner subsequently filed a
`preliminary response on February 1, 2017, and we instituted an inter partes
`review based on the asserted ground on April 26, 2017. See
`IPR2017-00089, Paper 7 (“-89 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
`
`
`2 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
`(2011) (“AIA”), amended 35 U.S.C. § 103. Because the challenged claims
`of the ’693 patent have an effective filing date before the effective date of
`the applicable AIA amendment, we refer to the pre-AIA version of
`35 U.S.C. § 103.
`
`
`
`4
`
`
`
`IPR2017-00690
`Patent 9,118,693 B2
`
`the petition or request because, the same or substantially the same prior art
`or arguments previously were presented to the Office.” The statutory
`language gives the Director the authority not to institute review 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 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 both the present
`Petition and the -89 Petition. See Prelim. Resp. 32–33. Three of the
`asserted prior art references are the same: Rolf, Forta, and Gatherer.
`Compare -89 Pet. 3 (asserted ground based on Rolf, Forta, Gatherer, and
`Frodigh), with Pet. 3 (asserted ground based on Rolf, Forta, Gatherer,
`O’Hara, and Tagg); see also Pet. 5 (acknowledging that the petitions “do cite
`some of the same prior art references”). Petitioner also presents
`substantially the same arguments. Petitioner’s discussion of Rolf, Forta, and
`Gatherer, the vast majority of Petitioner’s analysis of independent claims 1,
`3, and 5, and Petitioner’s analysis of dependent claims 2, 4, and 6, as well as
`the corresponding declaration testimony of Tal Lavian, Ph.D. (Ex. 1002 in
`both the -89 Case and the present proceeding), appear to be identical
`between the two petitions. Compare -89 Pet. 4–10, 14–29, 38–47, with
`Pet. 8–14, 19–33, 47–56; compare IPR2017-00089, Ex. 1002 ¶¶ 41–62,
`65–94, 112–135, with Ex. 1002 ¶¶ 41–62, 70–99, 125–141. The only
`substantive difference between the -89 Petition and the Petition in the
`present proceeding is Petitioner’s analysis of the claim limitations requiring
`“orthogonal frequency-division multiplex modulation.” See Pet. 5. Whereas
`
`
`
`5
`
`
`
`IPR2017-00690
`Patent 9,118,693 B2
`
`Petitioner relied on Frodigh for these limitations in the -89 Petition,
`Petitioner now relies on the combination of O’Hara and Tagg. See -89 Pet.
`29–38; Pet. 33–47.
`Petitioner argues that it takes a “different approach” in its Petition in
`this proceeding, relying on O’Hara and Tagg, which disclose “technology
`that is different from the Frodigh reference,” for the OFDM limitations.
`Pet. 5–6. Petitioner states that its arguments regarding Frodigh in the
`-89 Case are similar to arguments made by a different petitioner in
`challenging a parent patent to the ’693 patent in Case IPR2014-01236, and
`Petitioner “anticipate[s] that [Patent Owner] will attempt to resurrect [its]
`arguments” from Case IPR2014-01236 in the -89 Case. Id. at 6–7.
`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 [Case IPR2014-01236],
`would have no applicability here.” Id. at 7. Finally, Petitioner argues that it
`“could not have” presented its newly asserted ground earlier because it “did
`not locate” Tagg until after filing the -89 Petition “[d]espite diligent search
`efforts.” Id. at 6–7.
`Petitioner’s arguments as to why we should not exercise our discretion
`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
`-89 Petition. See id. at 6 (arguing that Tagg “bridged a gap . . . left open by
`O’Hara”). Tagg is a U.S. patent issued on March 31, 2015, approximately a
`year and a half before Petitioner filed the -89 Petition. See Ex. 1058. Thus,
`contrary to Petitioner’s arguments, Petitioner should have been aware of the
`
`
`
`6
`
`
`
`IPR2017-00690
`Patent 9,118,693 B2
`
`existence of Tagg prior to the filing of the -89 Petition, and could have
`presented its arguments regarding O’Hara and Tagg in the -89 Petition, but
`did not. Petitioner does not explain in any detail what search efforts it
`undertook in the three months between filing the -89 Petition and the
`Petition in this proceeding, or why its previous search efforts did not
`uncover Tagg earlier. Nor are we persuaded by Petitioner’s justification for
`raising O’Hara and Tagg now, as Petitioner was aware of Patent Owner’s
`arguments in Case IPR2014-01236 at the time of filing the -89 Petition. See
`IPR2014-01236, Paper 45 (final written decision entered on January 29,
`2016).3
`We have considered the papers filed in this proceeding and in the
`-89 Case. Petitioner has not provided persuasive reasoning as to why we
`should institute a second inter partes review, involving the same parties and
`the same challenged claims, based on substantially the same prior art and
`arguments that were presented in the -89 Petition. Accordingly, we exercise
`our discretion to deny the Petition under 35 U.S.C. § 325(d).
`
`
`III. ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED that the Petition is denied as to all challenged claims of
`the ’693 patent.
`
`
`3 The decision in Case IPR2014-01236 subsequently was affirmed by the
`U.S. Court of Appeals for the Federal Circuit. Paper 10.
`
`
`
`7
`
`
`
`IPR2017-00690
`Patent 9,118,693 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
`
`
`
`
`
`8
`
`
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