Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`
`Paper No. 16
`Entered: April 27, 2020
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`FREE STREAM MEDIA CORP.
`D/B/A SAMBA TV,
`Petitioner,
`
`v.
`
`GRACENOTE, INC.,
`Patent Owner.
`____________
`
`IPR2020-00216 (Patent 9,066,114 B2)
`IPR2020-00217 (Patent 9,407,962 B2)
`IPR2020-00218 (Patent 9,479,831 B2)1
`___________
`
`
`Before MICHELLE N. ANKENBRAND, GARTH D. BAER, and
`AARON W. MOORE, Administrative Patent Judges.
`
`ANKENBRAND, Administrative Patent Judge.
`
`
`ORDER
`Conduct of the Proceeding
`Supplemental Briefing on 35 U.S.C. § 325(d)
`37 C.F.R. § 42.5(a)
`
`
`
`
`1 We issue a single order for entry in all three proceedings. The parties are
`not authorized to use this style heading for subsequent papers without Board
`preapproval.
`
`
`571-272-7822
`
`
`
`
`
`
`Paper No. 16
`Entered: April 27, 2020
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`FREE STREAM MEDIA CORP.
`D/B/A SAMBA TV,
`Petitioner,
`
`v.
`
`GRACENOTE, INC.,
`Patent Owner.
`____________
`
`IPR2020-00216 (Patent 9,066,114 B2)
`IPR2020-00217 (Patent 9,407,962 B2)
`IPR2020-00218 (Patent 9,479,831 B2)1
`___________
`
`
`Before MICHELLE N. ANKENBRAND, GARTH D. BAER, and
`AARON W. MOORE, Administrative Patent Judges.
`
`ANKENBRAND, Administrative Patent Judge.
`
`
`ORDER
`Conduct of the Proceeding
`Supplemental Briefing on 35 U.S.C. § 325(d)
`37 C.F.R. § 42.5(a)
`
`
`
`
`1 We issue a single order for entry in all three proceedings. The parties are
`not authorized to use this style heading for subsequent papers without Board
`preapproval.
`
`
`
`IPR2020-00216 (Patent 9,066,114 B2)
`IPR2020-00217 (Patent 9,407,962 B2)
`IPR2020-00218 (Patent 9,479,831 B2)
`
`
`I.
`INTRODUCTION
`Petitioner, Free Stream Media Corp. d/b/a Samba TV (“Petitioner”),
`filed Petitions on December 6, 2019, challenging claims of U.S. Patent Nos.
`9,066,114, 9,479,831, and 8,806,957 B2 (collectively, the “challenged
`patents”). IPR2020-00216, Paper 1; IPR2020-0217, Paper 1; IPR2010-
`00218, Paper 1. Patent Owner filed a Preliminary Response in each
`proceeding on March 10, 2020. IPR2020-00216, Paper 12; IPR2020-00217,
`Paper 12; IPR2020-00218, Paper 12. In its Preliminary Responses, Patent
`Owner argues that the Board should apply its discretion under 35 U.S.C.
`§ 325(d) to deny institution of the requested proceeding because the
`Examiner considered three of Petitioner’s primary references during
`prosecution of the ’957 patent. See, e.g., IPR2020-00216, Paper 12, 41–47
`(arguing that certain asserted references are cumulative to references
`previously presented to the Office during prosecution and pointing to
`Becton, Dickinson & Co. v. B. Braun Melsungen AG, IPR2017-01586, Paper
`8 (PTAB Dec. 15, 2017) (precedential as to § III.C.5, first paragraph)).
`On review of the parties’ submissions, we determine that it would be
`helpful for the parties to provide additional briefing on the applicability of
`§ 325(d) to this case. In particular, we request that the parties address the
`recent Board decision in Advanced Bionics, LLC v. Med-El
`Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 (PTAB Feb.
`13, 2020) (precedential). The decision explains that the Board uses a two-
`part framework under § 325(d), specifically,
`(1) whether the same or substantially the same art previously was
`presented to the Office or whether the same or substantially the
`same arguments previously were presented to the Office; and
`
`2
`
`
`
`IPR2020-00216 (Patent 9,066,114 B2)
`IPR2020-00217 (Patent 9,407,962 B2)
`IPR2020-00218 (Patent 9,479,831 B2)
`
`
`(2) if either condition of the first part of the framework is
`satisfied, whether the petitioner has demonstrated that the Office
`erred in a manner material to the patentability of challenged
`claims.
`Advanced Bionics, Paper 6 at 8. Under the first part of the framework,
`previously presented art includes “art made of record by the Examiner, and
`art provided to the Office by an applicant, such as on an Information
`Disclosure Statement (IDS), in the prosecution history of the challenged
`patent.” Id. at 7–8. Under the second part of the framework, a
`demonstration of Examiner material error “may include misapprehending or
`overlooking specific teachings of the relevant prior art where those teachings
`impact patentability of the challenged claims.” Id. at 8–9 n.9. And “[i]f
`reasonable minds can disagree regarding the purported treatment of the art or
`arguments, it cannot be said that the Office erred in a manner material to
`patentability.” Id. at 9.
`
`Advanced Bionics also acknowledges that the Becton, Dickinson
`factors “provide useful insight into how to apply the framework under . . .
`§ 325(d).” Id. at 9 & n.10 (detailing the Becton, Dickinson factors). So we
`also encourage the parties to discuss any Becton, Dickinson factors relevant
`to the facts of this case. The parties may submit additional evidence from
`the prosecution history of the challenged patents to support any facts
`asserted in the supplemental briefing.
`
`
`3
`
`
`
`IPR2020-00216 (Patent 9,066,114 B2)
`IPR2020-00217 (Patent 9,407,962 B2)
`IPR2020-00218 (Patent 9,479,831 B2)
`
`
`II. ORDER
`
`Accordingly, it is
`ORDERED that Petitioner is authorized to file a reply to the
`Preliminary Response, no more than five (5) pages and limited to addressing
`the issue of discretionary denial under 35 U.S.C. § 325(d), by May 4, 2020;
`and it is
`FURTHER ORDERED that Patent Owner is authorized to file a
`sur-reply to Petitioner’s reply, no more than five (5) pages and limited to the
`issue of discretionary denial under 35 U.S.C. § 325(d), by May 11, 2020.
`
`
`
`4
`
`
`
`IPR2020-00216 (Patent 9,066,114 B2)
`IPR2020-00217 (Patent 9,407,962 B2)
`IPR2020-00218 (Patent 9,479,831 B2)
`
`For PETITIONER:
`
`Donald Daybell
`Alyssa Caridis
`ORRICK, HERRINGTON & SUTCLIFFE, LLP
`D2dtabdocket@orrick.com
`A8cptabdocket@orrick.com
`
`
`For PATENT OWNER:
`
`Jennifer Bailey
`Robin Snader
`Jason Mudd
`ERISE IP, P.A.
`Jennifer.bailey@eriseip.com
`Robin.snader@eriseip.com
`Jason.mudd@eriseip.com
`
`
`
`5
`
`
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