Trials@uspto.gov
`571-272-7822
`
`
`Paper 11
`Entered: March 5, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC., and
`ZTE(USA) INC.,
`Petitioner,
`
`v.
`
`INVT SPE LLC,
`Patent Owner.
`____________
`
`Case IPR2018-01474
`Patent 7,206,587 B2
`____________
`
`
`Before THU A. DANG, KEVIN F. TURNER, and BARBARA A. BENOIT,
`Administrative Patent Judges.
`
`DANG, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 314(a)
`
`
`
`
`
`
`
`
`571-272-7822
`
`
`Paper 11
`Entered: March 5, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC., and
`ZTE(USA) INC.,
`Petitioner,
`
`v.
`
`INVT SPE LLC,
`Patent Owner.
`____________
`
`Case IPR2018-01474
`Patent 7,206,587 B2
`____________
`
`
`Before THU A. DANG, KEVIN F. TURNER, and BARBARA A. BENOIT,
`Administrative Patent Judges.
`
`DANG, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 314(a)
`
`
`
`
`
`
`
`
`
`IPR2018-01474
`Patent 7,206,587 B2
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`
`I. INTRODUCTION
`
`A. Background
`Apple Inc. and ZTE (USA) Inc. (collectively “Petitioner”) filed a
`Petition for inter partes review of claims 3 and 4 of U.S. Patent No.
`7,206,587 B2 (Ex. 1001, “the ’587 patent”). Paper 3 (“Pet.”). INVT SPE
`LLC (“Patent Owner”) filed a Preliminary Response. Paper 7 (“Prelim.
`Resp.”). After receiving authorization (Paper 8), Petitioner filed a Reply
`(Paper 9) to address Patent Owner’s argument that institution should be
`denied for efficiency reasons, and Patent Owner filed a Sur-Reply (Paper
`10).
`
`Although Petitioner initially sought to include claim 3 in its challenge,
`Patent Owner statutorily disclaimed that claim after the Petition was filed.
`See Ex. 2001. For the reasons discussed below, in this Decision, we do not
`regard disclaimed claim 3 as a claim challenged in the Petition, and instead
`regard claim 4 as the only challenged claim.
`By statute, institution of an inter partes review may not be authorized
`“unless . . . the information presented in the petition . . . and any
`response . . . 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 consideration of the Petition and the Preliminary Response, we
`are not persuaded Petitioner demonstrated a reasonable likelihood of
`prevailing in establishing unpatentability of claim 4 of the ’587 patent.
`Accordingly, no trial is instituted.
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`B. Related Proceedings
`According to Petitioner, the ’587 patent is at issue in: INVT SPE LLC
`v. Apple, Inc., Case No. 2:17-cv-03738 (D.N.J.); INVT SPE LLC v. HTC
`Corporation and HTC America, Inc., Case No. 2:17-cv-03740 (D.N.J.); and
`INVT SPE LLC v. ZTE Corporation and ZTE (USA) Inc., Case No. 2:17-cv-
`06522 (D.N.J.). Pet. 32. Further, Petitioner asserts that the ’587 patent was
`previously at issue in Inventergy, Inc. v. Apple, Inc., Case No. 1:17-cv-
`00196 (D. Del.). Id.
`C. The ’587 Patent
`The ’587 patent issued on April 17, 2007, from an application filed
`December 18, 2002, and is a continuation of application No. 10/089,605,
`filed on April 1, 2002, now U.S. Patent No. 6,760,590. Ex. 1001, [45], [22],
`and [63].
`The ’587 patent relates to “[allocating] communication resources . . .
`to communication terminals based on downlink channel quality.” Id. at
`2:37–43. According to the ’587 patent, “among information indicative of
`downlink channel quality, which has a possibility of decreasing the
`downlink throughput when the information is received erroneously in a base
`station, a communication terminal provides such information with less
`susceptibility to errors in the propagation path to transmit.” Id. at 2:44–52.
`In an embodiment, “[the] communication terminal . . . transmits with
`less susceptibility to errors in the propagation path in proportion to
`information for which the amount of change is large within CIR[, i.e.,
`‘desired carrier to interference ratio’] information.” Id. at 19:30–34
`(brackets in original). For example, “[i]f a CIR value is indicated by a value
`with a decimal fraction (such as 8.7 dB),” then “information for which the
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`amount of change is large” and “that indicates a broad value” refers to “the
`integer part (here, ‘8’).” Id. at 19:40–45. In such case, “since the amount of
`change per unit of the integer part is 1dB, while the amount of change per
`unit of the fractional part is 0.1 dB, the integer part is ‘information for which
`the amount of change is large[.]’” Id. at 19:45–54. Therefore, “if an integer
`part is received erroneously by a base station, the degree of error is large
`compared with the case where a fractional part is received erroneously[.]”
`Id.
`
`Figure 15, reproduced below, illustrates a configuration of the CIR
`signal creation section of a communication terminal. Id. at 3:32–34.
`
`
`
`Figure 15 depicts a configuration of CIR signal creation section 1101,
`wherein, for a CIR value output from CIR measurement section is “8.7 dB,”
`“upper digit information generation section 1201 outputs the value of the
`integer part, ‘8’, to the 6-bit coding section 1203,” and “lower digit
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`information generation section 1202 outputs the value of the fractional part,
`‘7’, to the 4-bit coding section 1204.” Id. 20:29–41.
`D. The Challenged Claim
`Independent claim 4 is the remaining challenged claim at issue, and is
`
`reproduced below:
`4.
`A communication terminal apparatus comprising:
`a measuring device that measures reception quality of a
`pilot signal to output information having a plurality of bits that
`indicate the measured reception quality;
`a coding device that encodes the information to obtain a
`code word; and
`a transmitter that transmits the code word, wherein:
`the coding device encodes the information such that the
`most significant bit of the plurality of bits is less susceptible to
`errors in a propagation path than other bits of the plurality of bits.
`Ex. 1001, 26:20–30.
`
`E. Asserted Grounds of Unpatentability
`Petitioner contends that claims 3 and 4 are unpatentable based on the
`following specific grounds (Pet. 7):
`Reference(s)
`Basis
`
`Claim(s) Challenged
`
`Bender1 and Jarvinen2
`
`§ 1033
`
`3
`
`
`1 Paul Bender, et al., “CDMA/HDR: A Bandwidth-Efficient High-Speed
`Wireless Data Service for Nomadic Users,” IEEE COMMUNICATIONS
`MAGAZINE (July 2000) (“Bender”; Ex. 1004).
`2 U.S. Patent No. 6,470,470 B2 (October 2, 2002) (“Jarvinen”; Ex. 1006).
`3 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125
`Stat. 284, 287–88 (2011), revised 35 U.S.C. § 103 effective March 16, 2013.
`Because the challenged patent was filed before March 16, 2013, we refer to
`the pre-AIA version of § 103.
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`Reference(s)
`
`Basis
`
`Claim(s) Challenged
`
`4
`
`§ 103
`
`Bender and Piret4
`
`As discussed above, and for the reasons discussed below, we regard
`claim 4 as the only challenged claim. See Section I.A.
`Petitioner also relies on the declaration of Andrew C. Singer, Ph.D.
`(Ex. 1003) for support.
`
`II. ANALYSIS
`
`A. Claim Construction
`The Board accorded the Petition a filing date of August 21, 2018
`(Paper 6, 1), prior to the effective date of the rule change that replaces the
`broadest reasonable interpretation (“BRI”) standard. See Changes to the
`Claim Construction Standard for Interpreting Claims in Trial Proceedings
`Before the Patent Trial and Appeal Board, 83 Fed. Reg. 51340 (Oct. 11,
`2018) (“This rule is effective on November 13, 2018 and applies to all IPR,
`PGR and CBM petitions filed on or after the effective date.”).5 Under that
`standard, and absent any special definitions, we generally give 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 re Translogic Tech.,
`Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Any special definitions for
`claim terms must be set forth in the specification with reasonable clarity,
`
`
`4 U.S. Patent No. 4,747,104 (May 24, 1988) (“Piret”; Ex. 1005).
`5 We are not apprised of any evidence of record in this proceeding that
`would lead to a different outcome under the claim construction standard in
`Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc).
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`deliberateness, and precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir.
`1994).
`Petitioner and Patent Owner contend that no terms require express
`construction for this Decision. Pet. 8; Prelim. Resp. 14. To the extent it is
`necessary to determine whether to institute an inter partes review, we
`discuss claims terms in the context of analyzing the asserted ground. See
`Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir.
`1999) (holding that “only those terms need be construed that are in
`controversy, and only to the extent necessary to resolve the controversy”);
`see also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d
`1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs. in the context of an inter
`partes review).
`B. Principles of Law
`“In an [inter partes review], the petitioner has the burden from the
`onset to show with particularity why the patent it challenges is
`unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed.
`Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review
`petitions to identify “with particularity . . . the evidence that supports the
`grounds for the challenge to each claim”)); see also 37 C.F.R. § 42.104(b)
`(requiring a petition for inter partes review to identify how the challenged
`claim is to be construed and where each element of the claim is found in the
`prior art patents or printed publications relied on). Petitioner cannot satisfy
`its burden of proving obviousness by employing “mere conclusory
`statements.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed.
`Cir. 2016).
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`A claim is unpatentable under 35 U.S.C. § 103 if the differences
`between the claimed subject matter and the prior art are such that the subject
`matter, as a whole, would have been obvious at the time the invention was
`made to a person having ordinary skill in the art to which the subject matter
`pertains. KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 406 (2007). The
`question of obviousness is resolved on the basis of underlying factual
`determinations including (1) the scope and content of the prior art; (2) any
`differences between the claimed subject matter and the prior art; (3) the level
`of ordinary skill in the art; and (4) objective evidence of nonobviousness.
`Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). In determining the
`level of ordinary skill, various factors may be considered, including the
`“type[s] of problems encountered in the art; prior art solutions to those
`problems; rapidity with which innovations are made; sophistication of the
`technology; and educational level of active workers in the field.” In re
`GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citation omitted).
`C. Level of Skill in the Art
`In determining the level of ordinary skill in the art, various factors
`may be considered, including the “type of problems encountered in the art;
`prior art solutions to those problems; rapidity with which innovations are
`made; sophistication of the technology; and educational level of active
`workers in the field.” Id. In that regard, Petitioner’s Declarant, Dr. Singer,
`testifies that a person of ordinary skill in the art at the time of the ʼ587
`Patent’s invention would have been
`a person having a Bachelor’s degree in electrical engineering or
`the equivalent plus three years of experience working with
`wireless communication systems or a Master’s degree in
`electrical engineering with an emphasis on communication
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`systems or the equivalent plus one year of experience working
`with digital communication systems or in network engineering.
`Pet. 6; Ex. 1003 ¶ 39.
`At this juncture, Patent Owner does not dispute Dr. Singer’s
`assessment on the level of ordinary skill in the art. See generally Prelim.
`Resp. Based on the current record, we apply Dr. Singer’s assessment for
`purposes of this Decision. We also note that the prior art of record currently
`in the instant proceeding is consistent with this level of ordinary skill in the
`art. See Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001)
`(holding that absent evidence to the contrary, “the prior art itself reflects an
`appropriate level” of ordinary skill in the art).
`D. Asserted Obviousness over Bender, in view of Jarvinen
`Petitioner alleges that claim 3 would have been obvious over Bender
`and Jarvinen. Pet. 8–22. As noted above, Patent Owner “disclaimed claim 3
`of the ’587 patent[.]” Prelim. Resp. 1 (citing Ex. 2001). Thus, according to
`Patent Owner, this asserted ground of obviousness of claim 3 “is therefore
`moot.” Id.; see also 35 U.S.C. § 253 (indicating a patentee may disclaim
`claims).
`We agree with Patent Owner. “A statutory disclaimer under
`35 U.S.C. § 253 has the effect of canceling the claims from the patent and
`the patent is viewed as though the disclaimed claims had never existed in the
`patent.” Guinn v. Kopf, 96 F.3d 1419, 1422 (Fed. Cir. 1996) (citing Altoona
`Publix Theatres, Inc. v. Am. Tri–Ergon Corp., 294 U.S. 477 (1935)). An
`inter partes review cannot be instituted on claims that have been disclaimed
`and no longer exist. See 37 C.F.R. § 42.107(e) (“No inter partes review will
`be instituted based on disclaimed claims.”). This conclusion is consistent
`with other panel decisions addressing this issue. See, e.g., Intuitive Surgical,
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`Inc. v. Ethicon LLC, Case IPR2018-00935, Paper 9, 9–10 (PTAB Dec. 7,
`2018); Vestas-Am. Wind Tech. Inc. v. Gen. Elec. Co., Case IPR2018-01015,
`Paper 9, 12–14 (PTAB Nov. 14, 2018).
`Accordingly, we treat claim 3 as having never been part of the ’587
`patent, and do not institute inter partes review on this claim. As discussed
`above, we regard claim 4 as the only challenged claim. See Sections I.A and
`I.E.
`
`E. Asserted Obviousness over Bender, in view of Piret
`Petitioner alleges that claim 4 would have been obvious over Bender
`and Piret. Pet. 23–31. Patent Owner raises several arguments in response.
`Prelim. Resp. 1–3, 20–51. Below are brief overviews of Bender and Piret,
`followed by an analysis of the parties’ contentions regarding the challenged
`claim.
`
`Bender
`1.
`Bender, titled “CDMA/HDR: A Bandwidth-Efficient High-Speed
`Wireless Data Service for Nomadic Users,” is an IEEE article published in
`July 2000. Ex. 1004, 1. Bender provides a technical approach to high-speed
`data, which includes “measur[ing] the received signal-to-noise-plus-
`interference ratio (SNR).” Id. at 2. “The data rate which can be supported
`to each user is proportional to its received SNR,” wherein “over each user’s
`reverse (uplink) channel, the SNR or equivalently the supportable data rate
`value is transmitted to the base station.” Id. Because “data can tolerate
`considerably more delay than voice, . . . turbo codes . . . can be employed
`which will operate well at lower [signal energy per bit to noise ratio] Eb/N0,
`and hence lower SNR and higher interference levels.” Id.
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`In an embodiment, “the access terminal . . . forms a prediction of the
`effective received SNR,” and “the SNR is then mapped to a value
`representing the maximum data rate such a SNR can support for a given
`level of error performance.” Id. at 4 (footnote omitted). This “channel state
`information,” in the form of “a data rate request,” is then “fed back to the AP
`via the reverse link data rate request channel (DRC) and updated.” Id. The
`“reverse link data request” is “a 4-bit value that maps the predicted SNR into
`one of the data rate modes.” Id.
`Table 2, illustrating the SNR for a 1 percent error rate, is reproduced
`below (id. at 5):
`
`
`Table 2 shows a summary of “the SNR required to achieve a 1 percent
`packet error rate (PER).” Id. at 4. As shown in Table 2, “the required
`SNR . . . at the lower rates . . . corresponds to Eb/N0 ≈ 2.5 dB, a result of
`using iterative decoding techniques on serial concatenated codes,” while “for
`the two highest rates, Eb/N0 increases considerably because 8-phase shift
`keying (PSK) modulation and 16-quadrature amplitude modulation (QAM)
`are employed.” Id.
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`Piret
`2.
`Piret, titled “Data Transmission System Employing a Combination of
`Block Encoding and Convolution Encoding for Error Protection,” issued as a
`U.S. Patent on May 24, 1988, from an application filed on June 5, 1986. Ex.
`1005, [54], [45], [22]. Piret relates to a “data transmission system for
`providing error protection of transmitted data words.” Id., Abstract.
`In particular, Piret relates to “transmitting data words from a
`transmitting station to a receiving station, wherein redundancy bits are added
`for protection against bit errors arising in the transmission.” Id. at 1:8–11.
`In such a system, “communication between stations is subject to burst error
`phenomena,” wherein “a higher effective level of reliability can be attained
`if the more significant bits are better protected than the less significant bits.”
`Id. at 1:20–28. Thus, Piret recognizes that, in audio transmission such as
`speech transmission, “errors in the less significant bits make the speech less
`agreeable or somewhat difficult to understand but an error in a more
`significant bit can easily make the speech completely uncomprehensible.”
`Id. at 1:28–33.
`In Piret, an encoder system comprises “a first encoder” which “by
`matrix multiplication block encodes a set of less significant bits of each data
`word into a first proto-codeword” and “a second encoder” which “by further
`matrix multiplication block encodes the remaining, more significant, bits of
`each data word into a set of a further proto-code words.” Id. at 1:65–2:5.
`3. Analysis
`
`a. Claim 4 over Bender and Piret
`
`Petitioner argues that claim 4 would have been obvious over Bender
`and Piret. Pet. 24–31. We have reviewed the parties’ assertions and
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`supporting evidence. For the reasons discussed below, Petitioner does not
`demonstrate a reasonable likelihood of prevailing in showing that claim 4
`would have been obvious over Bender and Piret.
`We recognize that Piret teaches and suggests a method of encoding
`less significant bits differently from the more significant bits of each data
`word, wherein the most significant bit of the plurality of bits is encoded to
`be less susceptible to errors. See Ex. 1005, 1:20–33. We also recognize that
`Bender teaches information about channel quality including an upper digit
`and a lower digit. See Ex. 1004, 2–4. However, neither Piret nor Bender
`teaches or suggests a “coding device” that encodes “information having a
`plurality of bits that indicate the measured reception quality,” as required by
`claim 4. See claim 4 (reciting “a measuring device that measures reception
`quality of a pilot signal to output information having a plurality of bits that
`indicate the measured reception quality; a coding device that encodes the
`information”) (emphasis added).
`Petitioner contends “[a] POSITA would have understood that a
`measurement of the SNR is a measurement of reception quality” (Pet. 24),
`wherein “the SNR value would have necessarily been digitized (i.e.,
`encoded) into binary code words” (id. at 25), and that “[i]t would have been
`obvious to those of ordinary skill in the art to encode the SNR values of
`Bender in accordance with the teachings of Piret” (id. at 26). That is,
`according to Petitioner, in view of Piret’s teaching of encoding information,
`it would have been obvious to encode information such as Bender’s SNR
`value that indicates measured reception quality. Id.
`However, for support, Petitioner merely cites to passages of the
`testimony of Petitioner’s Declarant, Dr. Singer, who contends that to
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`determine “how the SNR values in Bender should be encoded/digitized prior
`to transmission,” one of ordinary skill in the art “would have looked to
`related disclosures describing data coding systems,” such as Piret. Pet. 25
`(citing Ex. 1003 ¶¶ 50–58). According to Dr. Singer, based on Bender’s
`discussion of forward error coding, one of ordinary skill in the art “would
`have been motivated to seek additional guidance on how to implement . . .
`error correcting coding” and “would have looked specifically to Piret.” Ex.
`1003 ¶ 57.
`Although Dr. Singer testifies that one of ordinary skill in the art would
`seek guidance from Piret (Ex. 1003 ¶ 56), Dr. Singer’s testimony does not
`provide sufficient support for Petitioner’s contentions that one of ordinary
`skill in the art would have encoded Bender’s SNR value using Piret’s
`method of encoding more important information with less susceptibility to
`error. In particular, although Petitioner contends that “the SNR value would
`have necessarily been digitized (i.e., encoded) into binary code words” (Pet.
`25), Dr. Singer’s testimony does not provide sufficient support for
`Petitioner’s contentions that it would have been obvious to then perform
`such necessitated digitizing of Bender’s SNR value using Piret’s encoding
`method.
`Instead, according to Patent Owner, although Petitioner contends that
`“Bender’s signal to noise ratio (‘SNR’) corresponds to the claimed
`‘information’ that is encoded according to the Challenged Claim[,] Bender’s
`SNR value, however, is never transmitted, let alone encoded.” Prelim. Resp.
`2. As Patent Owner contends, “Bender discloses deriving a 4-bit ‘reverse
`link data request’ based on the SNR value and transmitting this value back to
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`the base station,” wherein the SNR value itself is neither transmitted nor
`encoded. Id.
`We acknowledge that Bender also describes a “forward error
`correcting (FEC) scheme [that] employs serial concatenated coding and
`iterative decoding, with puncturing for some of the higher code rates.” Ex.
`1004, 4. Bender’s FEC discussion, however, does not relate to transmitting
`SNR values, let alone encoding the SNR values. Bender’s discussion of the
`FEC scheme immediately follows Bender’s statement that “[t]he main
`coding and modulation parameters are summarized in Table 1,” which in
`turn follows Bender’s discussion of determining and transmitting “a 4-bit
`value that maps the predicted SNR into one of the data rate modes of Table
`1,” not the SNR value itself. Ex. 1004, 4; see Ex. 1004, 2 (indicating “the
`SNR or equivalently the supportable data rate value is transmitted to the
`base station”). In addition, the FEC scheme in Table 1 is a parameter of a
`variable data rate (not the SNR value shown in Table 2). This further
`supports our finding that the FEC scheme relates to determining and
`transmitting a data rate value to the base station, not transmitting an SNR
`value to the base station.
`Accordingly, a plain reading of the reference does not support a
`finding that Bender teaches or suggests that the FEC scheme is used to
`encode the SNR itself. Therefore, we are not persuaded that Bender’s FEC
`description would have provided reason to look to Piret’s encoding
`techniques for encoding Bender’s “quality” information. That is, although
`we agree with the Petitioner that Piret teaches and suggests a method of
`encoding less significant bits differently from the more significant bits of
`each data word, wherein the most significant bit of the plurality of bits is
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`encoded to be less susceptible to errors (Ex. 1005, 1:20–33), that alone is
`insufficient to support a conclusion of obviousness of providing an encoder
`that encodes Bender’s SNR “quality” information, as required by claim 4.
`That Piret discloses encoding transmitted information does not
`address the requirements set forth in KSR to provide articulated reasoning
`with rational underpinning to support the legal conclusion of obviousness.
`That is, the Petitioner’s obviousness position does not explain why a person
`of ordinary skill in the art would have encoded the SNR value in Bender,
`which may not even be transmitted, using Piret’s encoding method. Indeed,
`Petitioner does not direct us to persuasive evidence that encoding the SNR
`value would have been expected to provide any advantage, outside the
`teachings of the ’587 patent.
`Here, for these reasons discussed above, we conclude that Petitioner
`has not provided sufficient evidence from prior art references or Dr. Singer’s
`declaration testimony to support its contention that one of ordinary skill in
`the art would have used Piret’s techniques to encode Bender’s SNR values
`in the manner required by the claims—such that the most significant bit of
`the plurality of bits is encoded to be less susceptible to errors. Therefore,
`Petitioner has not demonstrated articulated reasoning with rational
`underpinning to support the legal conclusion of obviousness. See PAR
`Pharm., Inc. v. TWI Pharm., Inc., 773 F.3d 1186, 1193 (Fed. Cir. 2014).
`Instead, we conclude that Petitioner used improper hindsight to reconstruct
`the claimed subject matter by using the claims as a guide to combine the
`prior art references. Grain Processing Corp. v. Am. Maize-Prods. Co., 840
`F.2d 902, 907 (Fed. Cir. 1988) (“Care must be taken to avoid hindsight
`reconstruction by using ‘the patent in suit as a guide through the maze of
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`prior art references, combining the right references in the right way so as to
`achieve the result of the claims in suit.’” (citation omitted)).
`For the foregoing reasons, Petitioner does not demonstrate a
`reasonable likelihood of prevailing in showing that claim 4 would have been
`obvious over Bender and Piret. See 35 U.S.C. § 316(e) (To prevail in an
`inter partes review that has been instituted, “the petitioner shall have the
`burden of proving a proposition of unpatentability by a preponderance of the
`evidence.”).
`
`
`III. CONCLUSION
`We conclude that Petitioner has not demonstrated a reasonable
`likelihood of prevailing with respect to at least one claim of the ’587 patent
`challenged in the Petition.
`
`
`IV. ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED that the Petition is denied as to all challenged claims of
`the ’587 patent, and no trial is instituted.
`
`PETITIONER:
`Adam Seitz
`Paul Hart
`Bing Ai
`Vinay Sathe
`Babak Tehranchi
`Kevin Patariu
`John Schnurer
`adam.seitz@eriseip.com
`paul.hart@eriseip.com
`
`17
`
`
`
`IPR2018-01474
`Patent 7,206,587 B2
`
`ai-ptab@perkinscoie.com
`vsathe@perkinscoie.com
`tehranchi-ptab@perkinscoie.com
`patariu-ptab@perkinscoie.com
`jschnurer@perkinscoie.com
`
`PATENT OWNER:
`Cyrus Morton
`Bryan Vogel
`Derrick Carman
`Li Zhu
`Shui Li
`Stephanie Diehl
`cmorton@robinskaplan.com
`bvogel@robinskaplan.com
`dcarman@robinskaplan.com
`lzhu@robinskaplan.com
`sli@robinskaplan.com
`sdiehl@robinskaplan.com
`
`18
`
`
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