Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`
`Paper 7
`Entered: November 21, 2017
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`UNIFIED PATENTS, INC.
`Petitioner,
`
`v.
`
`BRIDGE AND POST, INC.,
`Patent Owner.
`____________
`
`Case IPR2017-01423
`Patent 7,657,594 B2
`____________
`
`
`Before MIRIAM L. QUINN, BARBARA A. PARVIS, and
`KEVIN C. TROCK, Administrative Patent Judges.
`
`TROCK, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`
`Tel: 571-272-7822
`
`
`
`
`Paper 7
`Entered: November 21, 2017
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`UNIFIED PATENTS, INC.
`Petitioner,
`
`v.
`
`BRIDGE AND POST, INC.,
`Patent Owner.
`____________
`
`Case IPR2017-01423
`Patent 7,657,594 B2
`____________
`
`
`Before MIRIAM L. QUINN, BARBARA A. PARVIS, and
`KEVIN C. TROCK, Administrative Patent Judges.
`
`TROCK, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`
`
`IPR2017-01423
`Patent 7,657,594 B2
`
`
`I. INTRODUCTION
`
`Unified Patents, Inc. (“Petitioner”) filed a request for inter partes
`review of claims 1–24 (the “challenged claims”) of U.S. Patent No.
`7,657,594 B2 (Ex. 1001, “the ’594 patent”). Paper 1 (“Pet.”). Bridge and
`Post, Inc. (“Patent Owner”) filed a Preliminary Response. Paper 6 (“Prelim.
`Resp.”).
`Under 35 U.S.C. § 314, an inter partes review must not be instituted
`“unless . . . the information presented in the petition . . . shows that 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). Upon
`considering the Petition and Preliminary Response, we determine that
`Petitioner has not demonstrated a reasonable likelihood that it would prevail
`in showing the unpatentability of at least one of the challenged claims.
`Accordingly, we do not institute an inter partes review as to any claim of the
`’594 patent.
`
`A. Related Proceedings
`Petitioner advises that it is aware of the following case: Bridge and
`Post, Inc. v. Verizon Commc’ns, Inc., Case No. 3:17-cv-00094 (E.D. Va.).
`Pet. 7. Patent Owner agrees that Case No. 3:17-cv-00094 would affect, or
`be affected by, a decision in this proceeding. Paper 4, 2.
`
`B. The ’594 Patent
`The ’594 patent relates to determining directed media to provide to a
`user of a web site on a network, such as the Internet, based on user
`preferences. Ex. 1001, 1:20–23, 2:1–14. The directed media may include
`“advertisement, coupons, video, music, or any other media which is tailored
`to the user preferences.” Id. at 2:41–43. The ’594 patent notes that
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`traditionally, users have been identified on a network through personal
`accounts or through downloaded programs on the user’s network access
`device (e.g., “cookies”). Id. at 1:29–32. To avoid the problems associated
`with using cookies to track a user’s computing device, such as a user
`blocking or deleting cookies (id. at 1:51–59), the ’594 patent describes the
`use of user profiles associated with a persistent device identifier to identify a
`user’s network access device (id. at 2:67–3:4, 3:33–36). “The device
`identifier may comprise a media access control address (MAC address), an
`international mobile station identity (IMSI), an international media
`equipment identity (IMEI), or any anonymous device identifier.” Id. at 36–
`39.
`
`A history module collects and maintains historic information about
`the network access device, including the number, date, and time of network
`accesses. Id. at 7:57–8:2. A profile engine generates user profiles based on
`the collected information and associates it with the persistent device
`identifier. Id. at 5:66–6:5, 6:64–7:1. The profile engine can incorporate into
`the profiles’ group characteristics, which have group identifiers indicating
`the associated group. Id. at 6:24–27. A media selection optimizer
`determines a directed media component based on the user profile. Id. at
`2:15–29. The directed media is then provided to the user’s network access
`device. Id. at 8:53–64.
`
`C. Challenged Claims
`Petitioner challenges claims 1–24 of the ’594 patent. Claims 1, 15,
`and 24 are independent and are substantially similar—the principal
`difference being that claim 1 recites a method, claim 15 recites a system, and
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`claim 24 recites a machine-readable storage medium. Id. at 11:58–12:31,
`13:7–50, 14:17–59. Claim 1 is illustrative.
`1. A method for providing directed media to a user on a network,
`comprising:
`receiving a request from the user to access a content provider
`web site over a network through a network access device
`operated by the user;
`retrieving a persistent device identifier of the network access
`device;
`determining a current network address of the network access
`device and one or more characteristics of the access device,
`wherein the current network address is assigned to the network
`access device by a network service provider for a present
`network access session;
`retrieving historic information for the user, the historic
`information including patterns of usage for the network access
`device, and wherein the historic information comprises network
`access information including times and locations of network
`access and number of previous network accesses by the network
`access device;
`retrieving location-centric information for a location from which
`the user is accessing the network;
`generating a user profile based on the historic information for the
`user, the location-centric information, and the one or more
`characteristics of the access device;
`storing the user profile as a record that identifies the user through
`the current network address and the persistent device identifier
`associated with the network access device;
`incorporating
`into the user profile one or more group
`characteristics identifying a group with which the user is
`associated;
`assigning a group identifier to the group based on the patterns of
`usage;
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`analyzing the retrieved device identifier, historic information,
`and location-centric information to determine a directed media
`component to be provided to the user or the group on the network
`access device, and
`placing directed media referenced by the directed media
`component in the web site requested by the user request from the
`content provider, wherein the directed media comprises content
`that is customized to the user based on the user profile.
`Id. at 11:58–12:31.
`
`D. Applied Evidence
`Petitioner relies upon the following references:
`(1) U.S. Patent Application Publication No. 2003/0083938 A1,
`published May 1, 2003 (“Smith”) (Ex. 1003);
`(2) International Patent Application Publication No.
`PCT/US00/11803, published Nov. 9, 2000 (“Parekh”) (Ex. 1004);
`(3) U.S. Patent Application Publication No. 2002/0173981 A1,
`published Nov. 21, 2002 (“Stewart”) (Ex. 1005);
`(4) U.S. Patent Application Publication No. 2005/0172154 A1,
`published Aug. 4, 2005 (“Short”) (Ex. 1006);
`(5) U.S. Patent Application Publication No. 2002/0059094 Al,
`published May 16, 2002 (“Hosea”) (Ex. 1007);
`(6) International Patent Application Publication No.
`PCT/US00/11840, published Nov. 9, 2000 (“Mathai”) (Ex. 1008);
`(7) U.S. Patent No. 6,487,538 B1, issued Nov. 26, 2002 (“Gupta”)
`(Ex. 1009);
`Petitioner also relies on the Declaration of Dr. Jon Weissman.
`(“Weissman Decl.”) (Ex. 1002).
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`E. Asserted Grounds of Unpatentability
`Petitioner asserts the following grounds of unpatentability:
`Ground 1: Claims 1-3, 5-10, 13, 15-17, 19-22, and 24 are
`unpatentable under 35 U.S.C. § 103 as obvious over the combination of
`Smith and Parekh. Pet. 8–9.
`Ground 2: Claims 1, 4, 15, and 18 are unpatentable under 35 U.S.C.
`§ 103 as obvious over the combination of Smith, Parekh, and Stewart. Id.
`Ground 3: Claims 1, 11, and 12 are unpatentable under 35 U.S.C.
`§ 103 as obvious over the combination of Smith, Parekh, and Short. Id.
`Ground 4: Claims 1, 14, 15, and 23 are unpatentable under 35 U.S.C.
`§ 103 as obvious over the combination of Smith, Parekh, and Hosea. Id.
`Ground 5: Claims 1-3, 5-17, and 19-24 are unpatentable under 35
`U.S.C. § 103 as obvious over the combination of Hosea, Mathai, Gupta, and
`Short. Id.
`Ground 6: Claims 1, 4, 15, and 18 are unpatentable under 35 U.S.C.
`§ 103 as obvious over the combination of Hosea, Mathai, Gupta, and
`Stewart. Id.
`
`
`II. ANALYSIS
`A. Claim Construction
`
`In an inter partes review, claim terms in an unexpired patent are given
`their broadest reasonable construction in light of the specification of the
`patent. 37 C.F.R. § 42.100(b). Consistent with that standard, we assign
`claim terms their ordinary and customary meaning, as would be understood
`by one of ordinary skill in the art at the time of the invention, in the context
`of the entire patent disclosure. See In re Translogic Tech., Inc., 504 F.3d
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`1249, 1257 (Fed. Cir. 2007). Only those terms that are in controversy need
`be construed, and only to the extent necessary to resolve the controversy.
`See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir.
`1999).
`Petitioner proposes constructions for the claim terms “group
`identifier,” “persistent device identifier,” “access point information,” and
`“media tag.” Pet. 12–13. Patent Owner proposes alternative constructions
`for the same terms. Prelim. Resp. 12–24.
`For purposes of our decision, we do not find it necessary to construe
`expressly any claim terms.
`
`
`B. Asserted References1
`1. Smith (Ex. 1003)
`Smith relates to tracking user activity at a terminal on a
`communication network and generating user profiles based on that activity.
`Ex. 1003 ¶ 1. Smith attempts to recognize different users of a single
`computer to select appropriate advertising for the recognized user. Id. ¶ 12.
`Smith analyzes user activity associated with a “cookie” (identifiers assigned
`by a server or peer and placed in reply messages to another computer)
`that differentiates between the users of a computer. Id. ¶¶ 6, 11.
`Smith extracts user activity (profile data) from a session log, e.g., a
`cookie, builds a profile history from the extracted data, and associates it with
`a terminal identifier. Id. ¶¶ 14–15. The terminal identifier may be a
`manufacturer’s identification number or the like. Id. ¶ 44. Upon subsequent
`
`
`1 We provide brief descriptions of Smith, Parekh, Hosea, Mathai, and Gupta,
`the principal references Petitioner applies to the independent claims.
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`detection of the terminal identifier, the profile data extracted from the user
`activity is compared to profile histories to determine which user is
`navigating the site. Id. ¶ 14. “Once sufficient profile data has been
`extracted to determine which profile history corresponds to the extracted
`data, advertising content that corresponds to the identified user may be
`selected and included in the content requested by the current user.” Id.
`2. Parekh (Ex. 1004)
`Parekh relates to determining the geographic location of an Internet
`user, profiling the user, and selectively delivering content information based
`on the geographic location. Ex. 1004, Abstract. For example, Parekh
`collects geographic information by taking an IP address or host name and
`determining the organization that owns the IP address. Id. at 5. Parekh
`determines the route to the host, analyzes it, and maps it against a database
`of stored geographic locations. Id. Parekh also gathers information about
`specific IP addresses based upon an Internet users’ interactions with various
`web sites. Id. at 31. This information may include the types of web sites
`visited, and the pages hit, such as sports sites, auction sites, news sites, e-
`commerce sites, geographic information, bandwidth information, and time
`spent at the web site. Id. The information is stored as a profile in a database
`by IP address. Id. The geographic location and profile information may be
`used by web sites to deliver content or advertising based on the geographic
`location and preferences of visitors. Id. at 6.
`3. Hosea (Ex. 1007)
`Hosea relates to profiling interactive television (“iTV”) “users or
`clients based on their viewing habits, interactions with the iTV, and Internet
`surfing habits, and for selectively recommending and delivering content,
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`such as advertising or recommended programs, to the users based on their
`profiles.” Ex. 1007 ¶ 31. “The client machine may be an interactive
`television set with a set top box or, in other embodiments, a computer.” Id.
`¶ 35. Hosea discusses “gathering user-requested content information from
`iTV interactions, correlating content-associated profile information from a
`rating service with the user-requested content information, and developing a
`profile of the user based on the content-associated profile information
`correlated with the user-requested content information.” Id. ¶ 6. User
`profile information may contain “demographic data (such as, e.g., the user’s
`age, gender, income, and highest attained education level), psychographic
`data, which reflects the user’s interests or content affinity (such as, e.g.,
`sports, movies, music, comedy), geographic data, and transactional data.”
`Id. ¶ 41. A profile may also be created based on the zip code corresponding
`to the physical location of the client. Id. ¶ 44.
`4. Mathai (Ex. 1008)
`Mathai relates to “providing personalized and integrated online
`services for communications and commercial transactions both in private
`and public venues.” Ex. 1008, Abstract. Mathai provides personalized
`communications, information, advertising, and commercial transactions that
`are accessible through a network of public access stations (or terminals)
`which are enabled by a personal system access card (e.g., smart card). Id. at
`Abstract, 1. In Mathai, “public spaces” refers to places other than the home
`or personal workplace area of the user, and may include shopping areas,
`schools, stores, airports, coffee shops, supermarkets, etc. Id. at 2–3, 8.
`Mathai “allows advertisers to directly engage potential consumers, and to
`specifically target system users based upon data indicating that the user is a
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`suitable target for advertising/marketing content.” Id. at 6. In Mathai,
`“[w]henever the user inserts the system access card into a system terminal,
`the system automatically updates and enriches the user profile by tracking
`the user’s usage of the system in a usage history record.” Id. at 7. “[T]he
`user’s physical location and the time of day are identified by the system each
`time the user logs on.” Id. at 9. “The combined information from the user
`profile and user history, along with the user’s physical location and time of
`using the system, provides pinpoint advertising capability. . . .” Id.
`5. Gupta (Ex. 1009)
`Gupta relates to advertising on the Internet in which Internet Service
`Providers (ISPs), or proxies owned by an ISP, insert advertisements
`transmitted from a web host to a client. Ex. 1009, Abstract. Gupta states
`that by providing the ISP with the ability to insert the advertisement,
`advertisements may appear on small web sites that do not normally attract
`advertisers. Id. at 6:17–19. Gupta explains that an ISP may collect and store
`demographic information regarding a user in a profile, as the user utilizes an
`ISP typically to conduct Internet access. Id. at 6:24–26, 9:14–16. The
`demographic information may include the user’s age, residence, credit
`history, etc., and may also include the web sites that the user has accessed,
`the time spent on each web site, and any internet searches performed by the
`user. Id. at 6:26–30. The profile information may be used to conduct
`targeted advertising to the user. Id. at 6:31–34. Gupta explains, however,
`that if the user is at a public terminal, such as a library, the profile may be
`limited to the user’s recent history and information about the terminal and
`the terminal’s location. Id. at 10:2–5.
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`
`C. Ground 1 – Obviousness Over Smith and Parekh
`Petitioner contends that claims 1–3, 5–10, 13, 15–17, 19–22, and 24
`of the ’594 patent would have been obvious over the combined teachings of
`Smith and Parekh. Pet. 18–44. As noted above, claims 1, 15, and 24 are
`independent and are substantially similar. In the Petition, Petitioner
`combines its analysis of Smith and Parekh with respect to the three
`independent claims. In the Preliminary Response, Patent Owner focuses on
`several alleged deficiencies in Petitioner’s arguments and evidentiary proof.
`After reviewing the Petition, and the arguments and evidence presented
`therein, we determine that Petitioner has not met its burden in demonstrating
`a reasonable likelihood that it would prevail in showing the unpatentability
`of at least one of the challenged claims. We discuss some of the deficiencies
`in the Petition below.
`
`1. Independent Claims 1, 15, and 24
`Representative claim 1 recites in part:
`retrieving historic information for the user, the
`historic information including patterns of usage
`for the network access device, and wherein the
`historic information comprises network access
`information including times and locations of
`network access and number of previous network
`accesses by the network access device;
`Ex. 1001, 12:3–8. Claims 15 and 24 recite similar limitations. Id. at 13:19–
`25, 14:31–36.
`Petitioner relies on Smith to teach the recited “retrieving historic
`information,” asserting that Smith teaches “analyz[ing] a browse period
`log,” which is “a database of user activity beginning with the initial access
`of the ISP hub and the user’s logout from the ISP hub,” including “the user
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`activity data that has occurred between a user and the various content
`communication sites visited by the user during the browse period.” Pet. 23–
`24 (citing Ex. 1003 ¶ 15).
`Petitioner asserts that Smith teaches “the historic information
`including patterns of usage for the network access device,” because Smith
`describes that “extracted profile data may then be compared to a profile
`history previously generated and associated with the terminal identifier.” Id.
`at 24 (citing Ex. 1003 ¶ 14). Petitioner argues that Smith’s teaching is
`substantially similar to the “historical information” described in the ’594
`patent. Id. (citing Ex. 1001, 7:59-65; Ex. 1002 ¶ 88).
`Petitioner also asserts that Smith teaches recording the times and
`number of network accesses because Smith describes that “[known] systems
`for generating user profiles” collected “the user activity data such as length
`and time of a session. . . .” Pet. 25 (citing Ex. 1003 ¶ 35). Petitioner argues
`that a POSITA would have recognized that Smith’s teaching of “analyz[ing]
`a browse period log,” would indicate the “number of previous network
`accesses by the network access device.” Id. at 25–26 (citing Ex. 1003 ¶ 15;
`Ex. 1002 ¶ 93).
`Patent Owner asserts, however, that Smith’s “browse period log” is
`only “a database of user activity beginning with the initial access of the ISP
`hub and the user’s logout from the ISP hub” that contains “user activity data
`that has occurred between a user and the various content communication
`sites visited by the user during the browse period.” Prelim. Resp. 48
`(quoting Ex. 1003 ¶ 15 (emphasis added)). Patent Owner argues that the
`“browse period log” taught by Smith only provides user information from
`the user’s initial ISP access until the user’s ISP logout and does not teach the
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`recited “previous network accesses by the network access device.” Id.
`Patent Owner argues that Dr. Weissman’s declaration provides no
`explanation or support for Petitioner’s statement that “a POSITA would
`have recognized that [Smith’s] logs would indicate the ‘number of previous
`network accesses by the network access device.’” Id. Patent Owner points
`out that Dr. Weissman never states that Smith’s disclosure of a “browse
`period log”—the portion of Smith cited by Petitioner—would indicate the
`“number of previous network accesses by the network access device,” as
`recited by the independent claims. Id. at 49. Patent Owner argues that Dr.
`Weissman never explains how or why “the network accesses required to
`complete the transaction” would refer to anything but network accesses from
`the user’s current browser session—not the previous network accesses by
`the network access device. Id.
`We agree with Patent Owner. Petitioner’s declarant, Dr. Weissman,
`refers to Smith’s “browse period log” as a “session log,” stating that such a
`“session log[] would contain the ‘number of previous network accesses by
`the network access device.’” Ex. 1002 ¶ 93. Dr. Weismann states that
`[a] session log contains a record of each client, i.e.
`user, server
`interaction during an
`Internet
`transaction, e.g. a web page request and web page
`delivery. Such a log naturally contains information
`about the client, i.e. user, such as the network
`accesses required to complete the transaction and
`the client, i.e. user, network identity, e.g. IP
`address.”
`Id. (emphasis added). Dr. Weissman does not explain convincingly how the
`historic information for the user in such a session log would contain the
`“number of previous network accesses by the network access device,” as
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`recited by the independent claims. A record of “user/server interaction
`during an Internet transaction, e.g.[,] a web page request and web page
`delivery,” or “the network accesses required to complete” such an Internet
`transaction is not the recited “number of previous network accesses by the
`network access device.” Smith does not disclose the “number of previous
`network accesses by the network access device,” as Petitioner argues. In
`light of Smith’s description of logging activity occurring “during the browse
`period,” Petitioner has not shown persuasive evidence of how a person of
`ordinary skill in the art would understand Smith to teach or suggest how
`such browsing period logging activity would create a record of the “number
`of previous network accesses by the network access device.”
`Accordingly, we are not persuaded by Petitioner’s evidence and
`arguments that the combined teachings of Smith and Parekh make obvious
`the recited limitations of independent claims 1, 15, and 24. Therefore,
`Petitioner has not demonstrated a reasonable likelihood of prevailing in its
`challenge to independent claims 1, 15, and 24 as obvious over the combined
`teachings of Smith and Parekh.
`
`2. Dependent Claims 2–3, 5–10, 13, 16–17, and 19–22
`Petitioner also contends that dependent claims 2–3, 5–10, 13, 16–17,
`and 19–22 would have been obvious over the combined teachings of Smith
`and Parekh. Pet. 53–76. These dependent claims, however, incorporate all
`the limitations of the independent claims from which they depend.
`Petitioner’s arguments and evidence presented with respect to these
`dependent claims do not remedy the deficiencies in Petitioner’s analysis of
`independent claims 1, 15, and 24 discussed above. Accordingly, Petitioner
`has not demonstrated a reasonable likelihood of prevailing in its challenge to
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`dependent claims 2–3, 5–10, 13, 16–17, and 19–22 as obvious over the
`combined teachings of Smith and Parekh.
`
`D. Grounds 2–4 – Obviousness Over Smith, Parekh and
`Stewart, Short, or Hosea
`Ground 2 challenges claims 1, 4, 15, and 18 as obvious over the
`combined teachings of Smith, Parekh, and Stewart. Pet. 44–46. Ground 3
`challenges claims 1, 11, and 12 as obvious over the combined teachings of
`Smith, Parekh, and Short. Id. at 46–47. Ground 4 challenges claims 1, 14,
`15, and 23 as obvious over the combined teachings of Smith, Parekh, and
`Hosea. Id. at 47.
`In Grounds 2–4, Petitioner relies on the combined teachings of Smith
`and Parekh for independent claims 1 and 15. Petitioner relies on the
`teachings of Stewart, Short, and Hosea only to teach the additional
`limitations of the challenged dependent claims. See id. at 44–47.
`Petitioner’s arguments and evidence presented with respect to Grounds 2–4,
`therefore, do not remedy the deficiencies in Petitioner’s analysis of
`independent claims 1 and 15 discussed above.
`Accordingly, Petitioner has not demonstrated a reasonable likelihood
`of prevailing in its challenge to claims 1, 4, 11, 12, 14, 15, 18, and 23 as
`obvious over the teachings of Smith, Parekh, Stewart, Short, and Hosea as
`argued in Grounds 2–4.
`
`E. Ground 5 – Obviousness Over Hosea, Mathai, Gupta, and Short
`In Ground 5, Petitioner contends that claims 1–3, 5–17, and 19–24 of
`the ’594 patent would have been obvious over the combined teachings of
`Hosea, Mathai, Gupta, and Short. Pet. 48–74.
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`1. Independent Claims 1, 15, and 24
`Independent claims 1, 15, and 24, recite similarly in part:
` wherein the historic information comprises
`network access information including times and
`locations of network access and number of
`previous network accesses by the network access
`device;
`Ex. 1001, 12:3–8, 13:21–25, 14:33–36.
`Petitioner asserts that “Mathai discloses these elements by disclosing
`‘the user’s physical location and the time of day are identified [i.e.,
`retrieved] by the system each time the user logs on’ and ‘the user’s physical
`location and time of using the system, provides pinpoint advertising
`capability in real time.’” Pet. 53 (citing Ex. 1008, 9:6–9). Petitioner argues
`that a POSITA would have been motivated to modify Hosea with these
`aspects of Mathai to “provide pinpoint advertising capability in real time.”
`Id. at 54 (citing Ex. 1002 ¶ 209).
`Patent Owner asserts, however, that “Petitioner never identifies, for
`example, where to find [the recited] ‘number of previous network accesses
`by the network access device’ in the quoted language from Mathai.” Prelim.
`Resp. 53. Patent Owner also asserts, “Petitioner does not even identify ‘the
`network access device’ in Mathai. . . .” Id.
`We agree with Patent Owner. Petitioner fails to explain how Mathai
`or Hosea teaches or suggests the recited “wherein the historic information
`comprises network access information[,] including . . . number of previous
`network accesses by the network access device,” of independent claims 1,
`15, and 24. The reference to Mathai at page 53 of the Petition is vague and
`is not sufficient to explain where the limitation of the claim is found in the
`asserted reference. See 37 C.F.R. § 42.104(b)(4). Nor does Petitioner
`
`16
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`IPR2017-01423
`Patent 7,657,594 B2
`
`provide any mapping of this claim limitation to any teaching in Mathai or
`Hosea. Petitioner’s declarant, Dr. Weissman, similarly fails to identify any
`teaching in Mathai or Hosea of this limitation or provide any mapping of this
`limitation to teachings in Mathai or Hosea.
`Accordingly, we are not persuaded by Petitioner’s evidence and
`arguments that the combined teachings of Hosea, Mathai, Gupta, and Short
`make obvious the recited limitations of independent claims 1, 15, and 24.
`Therefore, Petitioner has not demonstrated a reasonable likelihood of
`prevailing in its challenge to independent claims 1, 15, and 24 as obvious
`over the combined teachings of these references.
`2. Dependent Claims 2–3, 5–14, 16, 17, and 19–23
`Petitioner contends that dependent claims 2–3, 5–14, 16, 17, and 19–
`23 would have been obvious over the combined teachings of Hosea, Mathai,
`Gupta and Short. Pet. 65–74. These dependent claims, however,
`incorporate all the limitations of the independent claims from which they
`depend. Petitioner’s arguments and evidence presented with respect to these
`dependent claims do not remedy the deficiencies in Petitioner’s analysis of
`independent claims 1, 15, and 24 discussed above. Accordingly, Petitioner
`has not demonstrate a reasonable likelihood of prevailing in its challenge to
`dependent claims 2–3, 5–14, 16, 17, and 19–23 as obvious over the
`combined teachings of Hosea, Mathai, Gupta and Short.
`
`F. Ground 6 – Obviousness Over Hosea, Mathai, Gupta, and Stewart
`In Ground 6, Petitioner contends that claims 1, 4, 15, and 18 would
`have been obvious over the combined teachings of Hosea, Mathai, Gupta,
`and Stewart. Pet. 74–75. Petitioner relies on the teachings of Hosea,
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`17
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`IPR2017-01423
`Patent 7,657,594 B2
`
`Mathai, and Gupta for independent claims 1 and 15. Id. at 74. Petitioner
`relies on the teachings of Hosea and Stewart to teach the additional
`limitations of dependent claims 4 and 18. Id. at 74–75. Petitioner’s
`arguments and evidence do not remedy the deficiencies in Petitioner’s
`analysis of independent claims 1 and 15 as discussed above.
`Accordingly, Petitioner has not demonstrated a reasonable likelihood
`of prevailing in its challenge to claims 1, 4, 15, and 18 as obvious over the
`teachings of Hosea, Mathai, Gupta, and Stewart.
`
`
`III. CONCLUSION
`
`For the foregoing reasons, we determine that Petitioner has not
`demonstrated a reasonable likelihood that it would prevail in showing at
`least one of the challenged claims is unpatentable on any of the asserted
`grounds. Therefore, we do not institute an inter partes review with respect
`to any of the challenged claims of the ’594 patent.
`
` IV. ORDER
`
`Accordingly, it is
`ORDERED that the Petition is denied as to all challenged claims of
`the ’594 patent and no trial is instituted.
`
`
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`18
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`IPR2017-01423
`Patent 7,657,594 B2
`
`
`PETITIONER:
`
`Lionel M. Lavenue
`Cory Bell
`Robert High
`Sterling Waite
`FINNEGAN, HENDERSON, FARABOW,
` GARRETT & DUNNER, LLP
`lionel.lavenue@finnegan.com
`cory.bell@finnegan.com
`robert.high@finnegan.com
`sterling.waite@finnegan.com
`
`Roshan Mansinghani
`UNITED PATENTS
`roshan@unifiedpatents.com
`
`
`
`PATENT OWNER:
`
`Lauren N. Robinson
`Craig Y. Allison
`BUNSOW DE MORY SMITH & ALLISON LLP
`lrobinson@ diplaw.com
`callison@bdiplaw.com
`
`19
`
`
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