Paper 63
`Trials@uspto.gov
`571-272-7822 Date: July 23, 2020
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SIRIUS XM RADIO INC.,
`Petitioner,
`
`v.
`
`FRAUNHOFER-GESELLSCHAFT ZUR FŐRDERUNG DER
`ANGEWANDTEN FORSCHUNG E.V.,
`Patent Owner.
`
`____________
`
`Case IPR2018-00690
`Patent 6,314,289 B1
`____________
`
`
`Before JEFFREY S. SMITH, STACEY G. WHITE, and
`MICHELLE N. WORMMEESTER, Administrative Patent Judges.
`
`SMITH, Administrative Patent Judge.
`
`
`
`Final Written Decision
`35 U.S.C. § 318(a)
`
`
`
`
`
`
`Trials@uspto.gov
`571-272-7822 Date: July 23, 2020
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`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SIRIUS XM RADIO INC.,
`Petitioner,
`
`v.
`
`FRAUNHOFER-GESELLSCHAFT ZUR FŐRDERUNG DER
`ANGEWANDTEN FORSCHUNG E.V.,
`Patent Owner.
`
`____________
`
`Case IPR2018-00690
`Patent 6,314,289 B1
`____________
`
`
`Before JEFFREY S. SMITH, STACEY G. WHITE, and
`MICHELLE N. WORMMEESTER, Administrative Patent Judges.
`
`SMITH, Administrative Patent Judge.
`
`
`
`Final Written Decision
`35 U.S.C. § 318(a)
`
`
`
`
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`
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`IPR2018-00690
`Patent 6,314,289 B1
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`I. INTRODUCTION
`Petitioner filed a Petition requesting inter partes review of claims 1–
`15, 17–33, and 35 of U.S. Patent No. 6,314,289 B1 (“the ’289 patent,”
`Ex. 1001). Paper 1 (“Pet.”). Patent Owner filed a Preliminary Response.
`Paper 12. Petitioner filed a Reply to the Preliminary Response, and Patent
`Owner filed a Sur-Reply. Papers 13, 15. We instituted an inter partes
`review as to all challenged claims and on all grounds raised in the Petition.
`Paper 29 (“Inst. Decision”). Patent Owner filed a Response. Paper 34 (“PO
`Resp.”). Petitioner filed a Reply, and Patent Owner filed a Sur-Reply.
`Papers 37 (“Pet. Reply”), 42 (“PO Sur-Reply”). A hearing was held on May
`19, 2020 and a transcript was entered into the record. Paper 62 (“Tr.”).
`A. Related Matters
`The parties state that the ’289 patent is the subject of Fraunhofer-
`Gesellschaft Zur Főrderung der angewandten Forschung e.V. v. Siruis XM
`Radio Inc., No. 1:17-cv-00184-JFB-SRF (D. Del. 2017). Pet. 2–3; Paper 4,
`1.
`
`B. Real Parties in Interest
`Petitioner identifies itself and Sirius XM Holdings Inc. as the real
`parties in interest. Pet. 2, Papers 23, 28. Patent Owner identifies itself as the
`real party in interest. Paper 4.
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`C. The ’289 Patent
`The ’289 patent relates to concepts for digital broadcasting suited for
`fading channels for wireless communication. Ex. 1001, 1:7–10. Figure 1 of
`the ’289 patent is reproduced below.
`
`
`
`Figure 1 above shows a block diagram of transmitting apparatus 100
`and receiving apparatus 200. Id. at 7:14–16. Transmitting apparatus 100
`includes bitstream source 110, redundancy adding encoder 120, and
`partitioner 130. Id. at 7:16–18. Encoder 120 is set to output at least twice as
`many output bits as the number of input bits from bitstream source 110, such
`that the output bits can be divided into a first portion and a second portion.
`Id. at 7:22–38. Each portion of output bits individually allows the retrieval
`of information represented by the input bits, such that decoder 220 located in
`receiving apparatus 200 is able to retrieve the input information when only
`one channel, such as channel 1 or channel 2, provides a useful signal. Id. at
`7:38–45.
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`Figure 3, reproduced below, shows an example of transmitting
`apparatus including encoder 120, puncturing unit 125, and partitioner 130.
`
`Figure 3 above shows encoder 120 implemented as a convolutional encoder
`with three generator polynomials, g1, g2, and g3. Id. at 8:46–54. The
`functionality of the convolutional encoder is shown in Figure 4, reproduced
`below.
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`Figure 4 above shows an input bitstream of three input bits, 401, 402,
`and 403 encoded into an output of eight bits. Id. at 9:7–8. The code rate
`shown in Figure 4 is 3/8, which means that for three input bits, eight output
`bits are produced. Id. at 7:20–35. For each input bit, convolutional
`encoder 120 produces three parallel output bits 411, 412, and 413. Id. at
`9:8–11. The output bits labeled “E” are transmitted early and the output bits
`labeled “L” are transmitted late, after a delay (such as 140c shown in
`Figure 3). Id. at 9:13–17. The X bit is not transmitted. Id. at 9:17.
`The encoded bits are processed by puncturing unit 125 and
`partitioner 130, to produce a first portion of output bits 410 and a second
`portion of output bits 420. Id. at 9:17–37. The first portion of output bits is
`encoded in a different way than the second portion of output bits. Id. at
`5
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`IPR2018-00690
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`7:46–48. For example, as shown in Figure 4, the first portion contains two
`encoded output bits 411, each corresponding to input bit 401, and the second
`portion contains two encoded output bits 413, each corresponding to input
`bit 403, providing some redundancy that can be used by decoder 220. See
`id. at 9:36–40.
`
`D. Illustrative Claim
`Of the challenged claims, 1, 2, 6, 9, 10, 13, 18, 19, 23, 26, 27, and 31
`are independent. Challenged claim 1 is reproduced below.
`1. An apparatus for transmitting information, comprising:
`a bitstream source for providing a bitstream representing
`the information;
`a redundancy adding encoder for generating an encoded
`bitstream based on the bitstream provided by the bitstream
`source wherein the encoder is arranged to output, for a first
`number of input bits, a second number of output bits, the second
`number of output bits having at least twice as many output bits
`as the first number of input bits, and wherein the second number
`of output bits includes two portions of output bits, each portion
`of output bits individually allowing the retrieval of information
`represented by the first number of input bits, and the first portion
`of output bits being coded based on the bitstream in a different
`way with respect to the second portion of output bits;
`a partitioner for partitioning the second number of output
`bits into the two portions of output bits;
`a transmitter for transmitting the output bits of the first
`portion via a first channel and the output bits of the second
`portion via a second channel, the second channel being spatially
`different from the first channel;
`the transmitter being a single transmitter;
`the first channel being defined by the single transmitter
`and a first position of a mobile receiver;
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`the second channel being defined by the single transmitter
`and a second position of the mobile receiver; and
`the transmitter further includes delay means for delaying
`the second portion of output bits transmitted via the second
`channel such that time diversity is obtained.
`Id. at 13:6–36
`
`E. Asserted Grounds of Unpatentability
`Petitioner asserts the following grounds of unpatentability:
`Reference(s)
`Basis Claims
`Chen,1 Campanella2
`§ 103
`1–15, 17–33, 35
`Smallcomb3
`§ 102
`1–6, 8–14, 17–23, 25–32, 35
`Smallcomb, Campanella
`§ 103
`1–15, 17–33, 35
`
`II. ANALYSIS
`A. Claim Construction
`For purposes of this decision, we do not find it necessary to construe
`any claim terms to resolve a controversy. See Nidec Motor Corp. v.
`Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017)
`(only terms that are in controversy need to be construed, and only to the
`extent necessary to resolve the controversy).
`B. Asserted Obviousness over Chen and Campanella
`Petitioner contends claims 1–15, 17–33, and 35 are unpatentable over
`Chen and Campanella. Pet. 24–72. The ’289 patent has a filing date of
`December 3, 1998. Ex. 1001, code (22). Campanella has a Patent
`
`
`1 US Patent No. 6,347,122 B1 filed Jan. 13, 1998 (Ex. 1004) (“Chen”).
`2 US Patent No. 6,944,139 B1 filed July 10, 1998 (Ex. 1005)
`(“Campanella”).
`3 US Patent No. 6,247,158 B1 filed Dec. 30, 1998 (Ex. 1003)
`(“Smallcomb”).
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`Cooperation Treaty (PCT) filing date of July 10, 1998, a § 371(c)(1), (2), (4)
`date of Sept. 26, 2000, and is related to provisional application No.
`60/079,591, filed March 27, 1998. Ex. 1005, codes (22), (86), (60).
`Petitioner contends that Campanella qualifies as prior art under
`§ 102(e) because Campanella’s international application was filed within the
`United States on July 10, 1998. Pet. 19; Pet. Reply 9–10. According to
`Petitioner, Campanella is a patent granted on an application for patent by
`another filed in the United States before the ’289 patent. Pet. Reply 9 (citing
`Ex. 1028). According to Petitioner, this is a correct interpretation of 35
`U.S.C. § 102(e) as read in light of the PCT because, upon ratification of the
`PCT, the United States’ reservation under PCT Article 64(4)(a) only applied
`to international applications filed outside of the U.S. Id. at 10–11 (citing
`Ex. 1030). Petitioner further contends that Campanella qualifies as prior art
`because the filing date of the earliest U.S. application to which Campanella
`is entitled is the filing date of the Campanella provisional application. Id. at
`12–13 (citing In re Giacomini, 612 F.3d 1380, 1383 (Fed. Cir. 2010)).
`Patent Owner contends that Campenella is not prior art. PO Resp. 18.
`Patent Owner contends that Campanella’s PCT filing date of July 10, 1998 is
`subject to the pre-AIPA4 version of 35 U.S.C. § 102(e), which states that a
`person shall be entitled to a patent unless
`(e) the invention was described in a patent granted on an
`application for patent by another filed in the United States
`before the invention thereof by the applicant for patent, or
`on an international application by another who has
`fulfilled the requirements of paragraphs (1), (2), and (4) of
`
`
`4 American Inventors Protection Act of 1999, Pub. L. No. 106–113,
`§§ 4001–4808, 113 Stat. 1501, 1501A–552 to –591 (“AIPA”).
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`section 371(c) of this title before the invention thereof by
`the applicant for patent.
`PO Resp. 19 (citing Ex. 2043, 1). Patent Owner contends that, from the
`plain language of the pre-AIPA Section 102(e) and from the front page of
`Campanella—which states that the “§ 371(c)(1), (2), and (4) Date” is “Sep.
`26, 2000”—the earliest date on which Campanella might qualify as prior art
`is September 26, 2000. Id. at 19–21 (citing Ex. 1005; Ex. 2044; Ex. 2048).
`Patent Owner contends the MPEP confirms that
`[w]here a U.S. application filed under 35 U.S.C. 111(a)
`claims the benefit of the filing date of a copending PCT
`international application under 35 U.S.C. 120, its effective
`date as a reference under 35 U.S.C. 102(e) is the **>U.S.
`filing date of the 35 U.S.C. 111(a) application and not the
`international filing date. When< a U.S. national stage
`application filed under 35 U.S.C. 371 becomes a U.S.
`patent, the 35 U.S.C. 102(e) date of the U.S. Patent as a
`prior art reference is the date applicant fulfilled the
`requirement of 35 U.S.C. 371 (c)(1), (c)(2), and (c)(4).
`Id. at 22–23 (citing Ex. 2046 (MPEP 2136.03.II); Ex. 2047).
`Patent Owner also contends that the filing date of Campanella’s
`provisional application does not establish the critical reference date of
`Campanella. Id. at 23–24 (citing Ex. 2045, 2046). Patent Owner contends
`that the applicable version of the MPEP states that “[b]y the terms of 35
`U.S.C. 102(e), the critical reference date of a U.S. patent granted on such a
`35 U.S.C. 371 application is the date on which paragraphs (c)(1), (c)(2), and
`(c)(4) have been fulfilled, not the filing date of the provisional application.”
`PO Resp. 24 (citing Ex. 2046, 6; Ex. 2045, 11; Ex. 2047, 13). Patent Owner
`also contends that Giacomini was not subject to the pre-AIPA version of
`102(e), because Giacomini claimed direct priority to a provisional
`
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`application with no intermediate international application, and in addition,
`was filed after November 28, 2000. PO Sur-Reply 7.
`Petitioner contends that the USPTO’s interpretation of both the statute
`and the PCT, as expressed in the MPEP, would cause the pre-AIPA 102(e)
`statute to violate Article 64(4)(a) of the PCT, and therefore is incorrect. Pet.
`Reply 11–12. Patent Owner contends that Petitioner should not be permitted
`to belatedly advance a new and unconventional interpretation of 102(e) that
`contradicts the long-established interpretation of the USPTO’s policy as set
`forth in the MPEP for the first time in Reply. PO Sur-Reply 1–2, 7.
`We agree with Patent Owner. At the time of filing the Petition,
`Petitioner knew its interpretation of 102(e) was inconsistent with that of the
`USPTO as expressed in the MPEP, but did not address its inconsistent
`interpretation in the Petition. See Tr. 27:21–28:2 (“[W]hen you filed the
`petition, were you aware that the Patent Office said that the date for these
`PCT applications is the 371 date? . . . Mr. Baghdassarian: We were aware of
`what the MPEP stated on this.”); see id. at 25:19–29:8. Petitioner’s new
`argument in the Reply is untimely. See Office Trial Practice Guide, 73
`(“Petitioner may not submit new evidence or argument in reply that it could
`have submitted earlier, e.g. to make out a prima facie case.”).
`Patent Owner contends that, even were we to consider Petitioner’s late
`argument, the legislative history confirms that Congress contemplated that
`compliance with paragraphs (1), (2), and (4) of section 371(c) would be
`required for international applications filed in the USPTO. PO Sur-Reply 4–
`5 (citing H.R. Rep 94-592 § 5 (1975)). Patent Owner contends that the PCT
`Declaration of the U.S. under Article 64(4)(a) further supports the
`established interpretation of 102(e). Id. at 5–6 (citing Ex. 1030). Patent
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`Owner also contends that, in the event of ambiguity, the USPTO’s
`interpretation of the statute is entitled to deference. Id. at 4 (citing Chevron,
`U.S.A., Inc. v. Natural Resources Defense Council, Inc., 467 U.S. 837, 844
`(1984); Cooper Techs. Co. v. Dudas, 536 F.3d 1330, 1337 (Fed. Cir. 2008)).
`Even were we to consider Petitioner’s late arguments, we agree with Patent
`Owner that the unambiguous plain meaning of the statute is that the prior art
`date of an international application is the 371(c) date, and that this meaning
`is confirmed by the legislative history, the PCT Declaration of the U.S, and
`the relevant sections of the MPEP.
`The Petition has not shown that Campanella is prior art to the
`’289 patent. Therefore, the Petition has not shown by a preponderance of
`the evidence that the combination of Chen and Campanella renders the
`challenged claims obvious.
`Petitioner contends that the challenged claims are unpatentable over
`Chen alone. Pet. Reply 6–8. Patent Owner contends that the ground of
`Chen alone was not raised in the Petition and is therefore untimely. PO Sur-
`Reply 23. We agree with Patent Owner. The “statute envisions that a
`petitioner will seek an inter partes review of a particular kind—one guided
`by a petition describing ‘each claim challenged’ and ‘the grounds on which
`the challenge to each claim is based.’” SAS Institute Inc. v. Iancu, 138 S. Ct.
`1348, 1355 (quoting 35 U.S.C. § 312(a)(3))). “[I]t is the Petition, not the
`Board’s ‘discretion,’ that defines the metes and bounds of an inter partes
`review.” Koninklijke Philips v. Google, 948 F3d 1330, 1336 (Fed. Cir.
`2020) (citing SAS, 138 S.Ct. at 1355–56). “Unlike district court litigation—
`where parties have greater freedom to revise and develop their arguments
`over time and in response to newly discovered material—the expedited
`
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`nature of IPRs bring with it an obligation for petitioners to make their case
`in their petition to institute.” Intelligent Bio-Systems v. Illumina Cambridge,
`821 F.3d 1359, 1369 (Fed. Cir. 2016).
`Here, the “petition did not advance an argument that the challenged
`claims would have been obvious over” Chen alone. See Koninklijke Philips,
`948 F.3d at 1336. Petitioner “chose which grounds of invalidity to assert in
`its petition, and it chose not to assert this new one.” Intelligent Bio-Systems,
`821 F.3d at 1369. Petitioner’s contention that the challenged claims are
`unpatentable over Chen alone is untimely because it improperly raises a new
`ground and relies on a new rationale to explain why Chen alone renders the
`challenged claims obvious. We do not consider the new ground raised in the
`Reply, that the challenged claims are unpatentable over Chen alone.
`C. Asserted Anticipation over Smallcomb and
`Obviousness over Smallcomb and Campanella
`Petitioner contends that Smallcomb anticipates claims 1–6, 8–14, 17–
`23, 25–32, and 35. Pet. 72–83. Petitioner also contends that claims 1–15,
`17–33, and 35 are unpatentable as obvious over Smallcomb and Campanella.
`Pet. 83–85.
`The ’289 patent has a filing date of December 3, 1998. Ex. 1001,
`code (22). Smallcomb has a filing date of December 30, 1998. Ex. 1003,
`code (22). Petitioner contends that Smallcomb is prior art to the ’289 patent
`because Smallcomb is entitled to the benefit of the filing date of
`Smallcomb’s provisional application, November 30, 1998. Pet. 15 (citing
`Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1379
`(Fed. Cir. 2015)). In our Decision to Institute, we determined that Petitioner
`did not submit the provisional application as an exhibit, and did not show
`that the provisional application provides support for the claims in the
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`Smallcomb patent in compliance with § 112, ¶ 1. Inst. Decision 26. We
`concluded that the Petition did not show that the Smallcomb patent is prior
`art to the ’289 patent. Id.
`In its Reply, Petitioner submits the Smallcomb provisional application
`into evidence, and presents additional arguments based on the new evidence.
`Pet. Reply 20–22. Petitioner contends that the additional arguments and the
`new evidence were not presented in the Petition because the burden of
`showing that Smallcomb is prior art was met by arguing that the filing date
`of the Smallcomb provisional application was earlier than the filing date of
`the ’289 patent. Id. We disagree with Petitioner. As the Federal Circuit has
`held, Petitioner’s “proffered approach would create a presumption that a
`patent is entitled to the benefit of the filing date of its provisional precursor,
`but that would be unsound because the PTO does not examine provisional
`applications as a matter of course; such a presumption is therefore not
`justified.” Dynamic Drinkware, 800 F.3d at 1380.
`Petitioner had the burden of production “to prove that, under
`§ 119(e)(1), [Smallcomb] was entitled to the benefit of the filing date of its
`provisional application.” Id.; see id. at 1378 (“We agree with [Patent
`Owner] that the Board did not err in placing the burden on . . . the petitioner
`in the inter partes review, to prove that the prior art . . . patent was entitled
`to the filing date of its provisional application.”). To meet this burden, the
`Petitioner needed to show that “the disclosure of the provisional application
`provides support for the claims in the reference patent in compliance with
`§ 112, ¶ 1.” Id. at 1381. The Petition did not make this showing. Inst.
`Decision 26.
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`Petitioner was required to present and identify such evidence in the
`Petition with particularity. See 35 U.S.C. § 312(a). As the PTAB has
`recently held:
`A petitioner is required to present evidence and arguments
`sufficient to show that it is reasonably likely that it will
`prevail in showing the unpatentability of the challenged
`claims. See 35 U.S.C. §§ 312(a)(3), 314(a). Additionally,
`the statute requires that the petition identify with
`particularity the grounds for institution and evidence
`supporting such grounds. 35 U.S.C. § 312(a). This
`includes the prior art relied upon and evidence that it
`qualifies as such. This standard is far more than is required
`in typical notice pleading, which only requires that a party
`make plausible claims. See F.R.Civ.P. 8(a)(2) (general
`rules of pleading in federal courts); ABB Turbo Sys. AG v.
`Turbousa, Inc., 774 F.3d 979, 984 (Fed. Cir. 2014).
`Hulu v. Sound View, IPR2018–01039, Paper 29 at 13 (PTAB Dec. 20, 2019)
`(precedential). Here, the Petition did not “identify, with particularity, . . .
`evidence that [Smallcomb] qualifies as [prior art],” as required by statute.
`We disagree with Petitioner’s contention that Petitioner can introduce
`such evidence in Reply, as a response to Patent Owner’s argument that
`Petitioner did not meet the burden of production. See Pet. Reply 21–22.
`The Federal Circuit has held that “[r]ebuttal evidence is supposed to be
`limited to that which is responsive to the adversary’s evidence: the
`traditional principle [is] that evidence offered to rebut must accomplish the
`function of rebuttal; to explain, repel, counteract, or disprove the evidence of
`the adverse party.” Belden Inc. v. Berk-Tek LLC, 805 F3d 1064, 1081–82
`(Fed. Cir. 2015). Here, Patent Owner’s Response simply pointed out the
`defect in the Petition, that the Petition did not show the provisional
`
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`application provides written description support for the claims of the issued
`patent.
`Petitioner may not now remedy its defective Petition by submitting
`new evidence and argument that it could have presented earlier. See Office
`Trial Practice Guide 73 (“Petitioner may not submit new evidence or
`argument in reply that it could have presented earlier, e.g. to make out a
`prima facie case of unpatentability.”); see id. at 74–75. To allow Petitioner
`to present its case in chief in a Reply would force Patent Owner to present its
`case in response for the first time in a Sur-Reply, and would “fail to provide
`Patent Owner ‘notice of and a fair opportunity to meet the grounds of
`rejection.’” See Comcast Cable Communications, LLC v. Promptu Systems
`Corporation, IPR2018-00343, Paper 56 at 76 (PTAB July 18, 2019)
`(quoting Belden, Inc., 805 F.3d at 1080); Ariosa Diagnostics v. Verinata
`Health, Inc., 805 F.3d 1359, 1368 (Fed. Cir. 2015).
`“[A] reply . . . that raises a new issue or belatedly presents evidence
`may not be considered.” Patent Trial and Appeal Board Consolidated Trial
`Practice Guide 74 (Nov. 2019), available at https://www.uspto.gov/sites/
`default/files/documents/tpgnov.pdf?MURL=. “Once the Board identifies
`new issues presented for the first time in reply,” the Board “will not attempt
`to sort proper from improper portions of the reply.” Intelligent Bio-Systems,
`821 F.3d at 1369. We do not attempt to sort proper from improper portions
`of the Reply. We do not consider the Reply.
`The Petition has not shown that Smallcomb is prior art to the
`’289 patent. Therefore, the Petition has not shown by a preponderance of
`the evidence that Smallcomb anticipates the challenged claims. The Petition
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`also has not shown by a preponderance of the evidence that the combination
`of Smallcomb and Campanella renders the challenged claims obvious.
`
`
`III. OTHER ISSUES
`A. Motions to Exclude
`Both Petitioner and Patent Owner have filed motions to exclude
`various exhibits and portions of the Reply and Sur-Reply. Papers 31, 32, 40,
`43, 46, 47, 52, 53, 56, 59, 61. Because our Final Written Decision does not
`rely on any of the challenged exhibits or challenged portions of the briefs,
`we dismiss the motions to exclude as moot.
`B. Challenges to the Institution Decision
`Under 35 U.S.C. § 312(a), a petition “may be considered only if” it
`includes: (1) payment of fees; (2) identification of all real parties in interest;
`(3) identification “with particularity” of each claim challenged, the grounds
`of each challenge, and the supporting evidence; (4) other information the
`Director requires by regulation; and (5) copies of these documents for the
`patent owner. Patent Owner contends that the Petition is improper because
`Petitioner failed to name all real parties in interest, and also failed to timely
`pay the filing fee, as required by § 312(a). PO Resp. 49–62. Patent Owner’s
`contention that the Petition fails under § 312(a) is “a contention that the
`agency should have refused ‘to institute an inter partes review,’” which
`“raises ‘an ordinary dispute about the application of’ an institution-related
`statute.” ESIP Series 2, LLC v. Puzhen Life USA, LLC, 958 F.3d 1378, 1386
`(Fed. Cir. 2020) (citing Thryv, Inc v. Click-To-Call Techs., LP, 140 S. Ct.
`1367, 1373–74 (2020)).
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`We do not reach Patent Owner’s arguments that the Petition was
`deficient under § 312(a), because we find above that Petitioner has failed to
`demonstrate unpatentability of any of the Challenged Claims.
`
`
`IV. CONCLUSION
`For the foregoing reasons, we determine that the Petition fails to show
`by a preponderance of the evidence that the challenged claims are
`unpatentable.
`In summary:
`
`35
`U.S.C. § Reference(s)/Basis
`103
`Chen, Campanella
`
`Claims
`Shown
`Unpatentable
`
`
`102
`
`Smallcomb
`
`103
`
`
`
`Smallcomb,
`Campanella
`
`
`
`
`
`
`
`
`Claims
`Not shown
`Unpatentable
`1–15, 17–33,
`35
`1–6, 8–14,
`17–23, 25–32,
`35
`1–15, 17–33,
`35
`1–15, 17–33,
`35
`
`Claims
`
`1–15, 17–33,
`35
`1–6, 8–14,
`17–23, 25–
`32, 35
`1–15, 17–33,
`35
`Overall
`Outcome
`
`
`
`V. ORDER
`
`Accordingly, it is
`ORDERED that claims 1–15, 17–33, and 35 are not unpatentable; and
`FURTHER ORDERED that because this is a Final Written Decision,
`parties to the proceeding seeking judicial review of the decision must
`comply with the notice and service requirements of 37 C.F.R. § 90.2.
`
`
`
`
`17
`
`
`
`IPR2018-00690
`Patent 6,314,289 B1
`
`PETITIONER:
`
`Jonathan Caplan
`Shannon Hedvat
`Jeffrey Price
`KRAMER LEVIN NAFTALIS & FRANKEL LLP
`jcaplan@kramerlevin.com
`shedvat@kramerlevin.com
`jprice@kramerlevin.com
`
`PATENT OWNER:
`
`Ben Yorks
`Babak Redjaian
`David McPhie
`Kamran Vakili
`IRELL & MANELLA LLP
`byorks@irell.com
`bredjaian@irell.com
`dmcphie@irell.com
`kvakili@irell.com
`
`
`
`
`
`
`
`
`
`18
`
`
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