`Tel: 571-272-7822
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`Paper 7
`Entered: March 9, 2018
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`CELLCO PARTNERSHIP D/B/A
`VERIZON WIRELESS
`Petitioner,
`
`v.
`
`BRIDGE AND POST, INC.,
`Patent Owner.
`____________
`
`Case IPR2017-02046
`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
`
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`I. INTRODUCTION
`
`Cellco Partnership d/b/a Verizon Wireless (“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 the ’594 patent is the subject of a civil action,
`Bridge and Post, Inc. v. Verizon Commc’ns, Inc., Case No. 3:17-cv-00094
`(E.D. Va.). Pet. 1–2. Petitioner also advises that the ’594 patent was the
`subject of an IPR petition filed by Unified Patents, Inc., IPR2017-01423.
`Pet. 2. Patent Owner identified the same matters, as well as related patent
`applications. Paper 4, 2.
`
`B. The ’594 Patent
`The ’594 patent relates to determining directed media to provide to a
`user on a network, such as the Internet, based on user preferences. Ex. 1001,
`1:20–22, 2:1–14. The directed media may include “advertisement, coupons,
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`video, music, or any other media which is tailored to the user preferences.”
`Id. at 2:41–43. The ’594 patent notes that 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 1:52–
`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 may incorporate into
`the profiles group characteristics, and include 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
`8:54–64.
`
`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 No. 6,487,538 B1, issued Nov. 26, 2002 (“Gupta I”)
`(Ex. 1004);
`(2) U.S. Patent Application Publication No. 2001/0020242 A1,
`published Sep. 6, 2001 (“Gupta II”) (Ex. 1005);
`(3) International Patent Application Publication No.
`PCT/US00/11803, published Nov. 9, 2000 (“Parekh”) (Ex. 1006);
`(4) R. Droms, RFC 2131, Dynamic Host Configuration Protocol,
`March 1997 (“DHCP Protocol”) (Ex. 1008);
`(5) U.S. Patent No. 7,366,523 B2, issued Nov. 12, 2002 (“Viikari”)
`(Ex. 1010);
`(6) U.S. Patent Application Publication No. 2005/0172154 A1,
`published Aug. 4, 2005 (“Short”) (Ex. 1011);
`Petitioner also relies on the Declaration of Stephen Gray. (“Gray
`Decl.”) (Ex. 1013).
`
`E. Asserted Grounds of Unpatentability
`Petitioner asserts the following grounds of unpatentability:
`Ground 1: Claims 1–3, 5–10, 13–17, and 19–24 are unpatentable
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`under 35 U.S.C. § 103 as obvious over the combination of Gupta I, Gupta II,
`Parekh and DHCP Protocol. Pet. 5.
`Ground 2: Claims 4 and 18 are unpatentable under 35 U.S.C. § 103 as
`obvious over the combination of Gupta I, Gupta II, Parekh, DHCP Protocol
`and Viikari. Id.
`Ground 3: Claims 11 and 12 are unpatentable under 35 U.S.C. § 103
`as obvious over the combination of Gupta I, Gupta II, Parekh, DHCP
`Protocol and Short. Id.
`Ground 4: Claims 1–24 are unpatentable under 35 U.S.C. § 103 as
`obvious over the combination of Gupta I/II, Parekh, DHCP Protocol,
`Viikari, and Short. 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
`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 “network access
`information” and “location-centric information.” Pet. 10–11. Patent Owner
`disagrees with Petitioner’s constructions and proposes that these terms be
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`given their plain meaning because a person of ordinary skill in the art
`(“POSITA”) would understand them without further construction. Prelim.
`Resp. 11–30.
`For purposes of our decision, we do not find it necessary to construe
`expressly any claim terms.
`
`B. Asserted References
`1. Gupta I (Ex. 1004)
`Gupta I 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. 1004, Abstract. Gupta I 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 I 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 profile information may be used to conduct targeted advertising to the
`user. Id. at 6:31–34. The profile information may be forwarded to an
`advertiser or advertising agency that evaluates and forwards back an
`advertisement for the proxy to transmit to the user. Id. at 6:41–44. 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.
`2. Gupta II (Ex. 1005)
`Gupta II relates to the collection of user demographic information
`(“profile information”) and advertising on the Internet, in which ISPs, or
`their proxies, insert advertisements transmitted from a web host to a client.
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`Ex. 1005, Abstract. 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. ¶ 33. The profile information may be
`used to conduct targeted advertising to the user or to customize the user’s
`display. Id. ¶ 34. Gupta II explains that the profile and demographic
`information can be utilized to individually customize information displayed
`to a customer. Id.
`
`3. Parekh (Ex. 1006)
`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. 1006, 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 Internet user’s 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 may be 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.
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`4. DHCP Protocol (Ex. 1008)
`The Dynamic Host Configuration Protocol (DHCP) provides
`configuration parameters to Internet hosts. Ex. 1008, 2. DHCP consists of
`two components: a protocol for delivering host-specific configuration
`parameters from a DHCP server to a host and a mechanism for allocation of
`network addresses to hosts. Id. DHCP is built on a client-server model,
`where designated DHCP server hosts allocate network addresses and deliver
`configuration parameters to dynamically configured hosts. Id.
`DHCP supports three mechanisms for IP address allocation. Id. at 3.
`In “automatic allocation,” DHCP assigns a permanent IP address to a client.
`Id. In “dynamic allocation,” DHCP assigns an IP address to a client for a
`limited period of time (or until the client explicitly relinquishes the address).
`Id. In “manual allocation,” a client’s IP address is assigned by the network
`administrator, and DHCP is used simply to convey the assigned address to
`the client. Id. A particular network will use one or more of these
`mechanisms, depending on the policies of the network administrator. Id.
`5. Viikari (Ex. 1010)
`Viikari relates to “techniques for providing customized content to
`wireless communications devices across a communications network,” (Ex.
`1010, 1:17–19) “based on the location of an access point that is in wireless
`communication with” a device. Id. at 2:11–12. Viikari does this, for
`example, by including a “location indicator” for the access point in a
`“resource request,” such as “a hypertext transfer protocol (HTTP) request,”
`that is forwarded to a content server. Id. at 2:11–20. In response, the
`content server sends a resource, such as an “HTML document[],”
`customized to the device location indicated by the access point. Id. at Fig. 8,
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`14:29–36.
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`6. Short (Ex. 1011)
`Short relates to a method for providing custom digital content to
`wireless network enabled devices. Ex. 1011, Abstract. In order to provide
`custom content, Short uses “an identifier uniquely associated with the client
`device” (id. ¶10), such as “an IMEI (International Mobile Equipment
`Identifier) number” or “an IMSI (International Mobile Subscriber
`Identification) number.” Id. ¶ 105.
`
`C. Ground 1 - Obviousness Over Gupta I, Gupta II, Parekh, and DHCP
`Protocol
`Petitioner contends that claims 1–3, 5–10, 13–17, and 19–24 of the
`’594 patent would have been obvious over the combined teachings of Gupta
`I, Gupta II, Parekh, and DHCP Protocol. Pet. 19–45. As noted above,
`claims 1, 15, and 24 are independent and are substantially similar. Petitioner
`combines its analysis of Gupta I, Gupta II, Parekh, and DHCP Protocol with
`respect to the three independent claims, 1, 15, and 24. 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 pertinent part:
`retrieving historic information for the user, the
`historic information including patterns of usage
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`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 the combination of Gupta I, Gupta II, and Parekh
`to teach the recited limitation, asserting that Gupta I and Gupta II teach that
`“all URL requests, text, and other information” from a client device are
`“store[d] . . . locally in a raw database,” thereby enabling the proxy or ISP
`server to track “the time that a user spends on a particular website.” Pet. 33
`(citing Ex. 1004, 9:38–41; Ex. 1005 ¶ 57). Petitioner argues that a POSA
`would have understood that by “tracking all URL requests, it would be
`trivial to determine the number of previous network accesses” because those
`requests are stored as raw data. Id. (quoting Gray Decl. ¶ 83). Further,
`Petitioner argues, a POSA would have had reason to track the number of
`previous accesses because it “would help distinguish between a user’s
`‘propensity’ for visiting a web site and a user’s passing interest in doing so,
`thereby improving the tailoring of content to a user’s interests.” Id.
`Petitioner also argues Parekh teaches that when “an IP address has
`previously hit several e-commerce sites and sport sites in the network and
`that the address is located in California,” this enables provision of
`“dynamically tailored” content such as “show[ing] sports items for sale that
`are more often purchased by Californians, such as surf boards.” Pet. 35
`(quoting Ex. 1006, 33:10-15). This teaching, Petitioner argues, “allows for
`more customized experiences for users at e-commerce and information
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`sites.” Id. Petitioner argues that a POSA would understand this discussion
`in Parekh as describing “tracking the number, times and locations of
`networks accessed by a network access device because: (1) the reference to
`‘previously hit’ implies knowledge of repeat accesses, (2) the reference to
`‘dynamically tailored’ implies the ability to track access in real time in order
`to serve customized content during a particular session, and (3) the reference
`to the IP address being located in California implies tracking of the location
`of network access.” Id. (quoting Gray Decl. ¶ 89).
`Patent Owner argues, however, that Petitioner provides no direct
`evidence of the recited limitation “wherein the historic information
`comprises network access information including . . . number of previous
`network accesses by the network access device.” Prelim. Resp. 53. Patent
`Owner argues that Petitioner’s Declarant “adds only the generic opinion that
`any raw data in a database can be counted.” Id. at 53–54.
`In connection with Figure 1, the ’594 Specification explains that:
`[u]nlike much of the prior art where users of computing devices
`are tracked through cookies on their computing devices or sites
`the users visit over the Internet, users of the present
`embodiment can be identified and their preferences determined
`and tracked through a user's act of logging onto a network 130
`or obtaining network service through a service provider 120.
`
`Ex. 1001, 3:10–16 (emphasis added). The ’594 Specification explains
`that “a user activates the network access device 110 in order to communicate
`with the network 130.” Ex. 1001, 3:24–25. “The service provider 120 is a
`device configured to provide the network access device 110 access to the
`communications network 130.” Id. at 3:46–48 (emphasis added). “The
`service provider 120 is typically controlled by a business that supplies
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`network connectivity (e.g. Internet service provider, ‘ISP’).” Id. at 3:50–52.
`The flow chart depicted in Figure 6 of the ’594 Patent shows that after
`the user accesses the network, the user then requests content provider
`page(s). Id. at Fig. 6. The ’594 Specification explains that these content
`providers may be web sites, e-mailers, or file transport (FTP) sites. Id. at
`3:59–61. The ’594 Specification explains that “[t]ypically, the user will
`request access to a particular content provider.” Id. at 8:18–19. “The
`content provider 140 then provides the requested content to the requesting
`user.” Id. at 8:54–55; see Fig. 5.
`Independent Claims 1, 15, and 24 separately recite, and therefore,
`distinguish between, “a request from the user to access a content provider
`web site” and “network access.” These claims also require that the historic
`information retrieved for the user include “times and locations of network
`access and number of previous network accesses by the network access
`device.” Ex. 1001, cols 12–14 (emphasis added).
`Petitioner, however, appears to conflate, and therefore, blur the
`distinction between, the recited “request from the user to access a content
`provider web site” and “network access.” Petitioner argues that because
`Gupta I and Gupta II indicate that “all URL requests, text, and other
`information” from a client device are “store[d] . . . locally in a raw
`database,” thereby enabling a proxy or ISP server to track “the time that a
`user spends on a particular website” (Pet. 33 (citing Ex. 1004, 9:38–41; Ex.
`1005 ¶ 57)), that a POSA would have understood that by “tracking all URL
`requests in a raw database, it would be trivial to determine the number of
`previous network accesses by simply counting them since those requests are
`stored as raw data in a database.” (Ex. 1013 ¶ 83, emphasis added).
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`Thus, Petitioner asserts, without sufficient explanation and factual
`support, that by simply counting URL requests (Uniform Resource Locator
`requests, i.e. requested web page or web site addresses), a POSA would be
`able to determine the number of previous network accesses. Petitioner,
`however, provides no factual basis or rationale for equating a user’s URL
`request for a web page with network access granted by an ISP, nor does
`Petitioner explain how “simply counting” the number of URL requests made
`by a user provides the number of previous network accesses granted by an
`ISP to the network access device.
`Moreover, Petitioner’s argument that Parekh’s discussion of
`“dynamically tailored” content somehow teaches “tracking the number,
`times and locations of networks accessed by a network access device,” is
`similarly unpersuasive. Pet. 35. Petitioner concludes, without sufficient
`explanation or factual support, that a POSA would understand this
`discussion in Parekh as describing “tracking the number, times and locations
`of networks accessed by a network access device.” Id.; see also Ex. 1013 ¶
`89.
`
`Petitioner, therefore, has not provided persuasive evidence of how a
`person of ordinary skill in the art would be able to determine the number of
`previous network accesses of a network access device by simply counting
`the number of URL requests made by the user of the device, or how
`dynamically tailoring content teaches the number of previous network
`accesses.
`Accordingly, we are not persuaded by Petitioner’s evidence and
`arguments that the combined teachings of Gupta I, Gupta II, Parekh, and
`DHCP Protocol make obvious the recited limitations of independent claims
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`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 Gupta I, Gupta II, Parekh, and
`DHCP Protocol.
`
`2. Dependent Claims 2–3, 5–10, 13–14, 16–17, and 19–23
`Petitioner also contends that dependent claims 2–3, 5–10, 13–14, 16–
`17, and 19–23 would have been obvious over the combined teachings of
`Gupta I, Gupta II, Parekh, and DHCP Protocol. Pet. 45–55. 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 dependent claims 2–3, 5–10, 13–
`14, 16–17, and 19–23 as obvious over the combined teachings of Gupta I,
`Gupta II, Parekh, and DHCP Protocol.
`
`D. Grounds 2–4
`Ground 2 challenges claims 4 and 18 as obvious over the combined
`teachings of Gupta I, Gupta II, Parekh, DHCP Protocol, and Viikari. Pet.
`55–60. Ground 3 challenges claims 11 and 12 as obvious over the combined
`teachings of Gupta I, Gupta II, Parekh, DHCP Protocol, and Short. Id. at
`60–62. Ground 4 challenges claims 1–24 as obvious over the combined
`teachings of Gupta I, Gupta II, Parekh, DHCP Protocol, Viikari, and Short.
`Id. at 62–65.
`With respect to Grounds 2 and 3, dependent claims 4, 11, 12, and 18
`incorporate all the limitations of the independent claims from which they
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`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.
`With respect to Ground 4, Petitioner’s arguments and evidence
`presented do not remedy the deficiencies in Petitioner’s analysis of
`independent claims 1, 15, and 24 discussed above with respect to Ground 1.
`Accordingly, Petitioner has not demonstrated a reasonable likelihood
`of prevailing in its challenge to claims 1–24 as obvious over the teachings of
`Gupta I, Gupta II, Parekh, DHCP Protocol, Viikari, and Short as argued in
`Grounds 2–4.
`
` 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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`PETITIONER:
`
`Jay I. Alexander
`Andrea G. Reister
`COVINGTON & BURLING LLP
`jalexander@cov.com
`areister@cov.com
`
`
`PATENT OWNER:
`
`Lauren N. Robinson
`Craig Y. Allison
`BUNSOW DE MORY LLP
`lrobinson@bdiplaw.com
`callison@bdiplaw.com
`
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