Trials@uspto.gov
`571-272-7822
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`Paper 10
`Date: September 1, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE, INC.,
`Petitioner,
`
`v.
`
`SEVEN NETWORKS, LLC,
`Patent Owner.
`____________
`
`IPR2020-00425
`Patent 9,438,550 B2
`____________
`
`
`
`Before THU A. DANG, KARL D. EASTHOM, and JONI Y. CHANG,
`Administrative Patent Judges.
`
`DANG, Administrative Patent Judge.
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`
`571-272-7822
`
`
`
`
`
`
`
`Paper 10
`Date: September 1, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE, INC.,
`Petitioner,
`
`v.
`
`SEVEN NETWORKS, LLC,
`Patent Owner.
`____________
`
`IPR2020-00425
`Patent 9,438,550 B2
`____________
`
`
`
`Before THU A. DANG, KARL D. EASTHOM, and JONI Y. CHANG,
`Administrative Patent Judges.
`
`DANG, Administrative Patent Judge.
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`
`
`IPR2020-00425
`Patent 9,438,550 B2
`
`I. INTRODUCTION
`
`A. Background
`Apple Inc. (“Petitioner”) filed a Petition requesting an inter partes
`review of claims 1–40 (the “challenged claims”) of U.S. Patent No.
`9,438,550 B2 (Ex. 1001, “the ’550 patent”). Paper 2 (“Pet.”). Seven
`Networks, LLC (“Patent Owner”) filed a Preliminary Response. Paper 7
`(“Prelim. Resp.”).
`Under 37 C.F.R. § 42.4(a), the Board has authority to determine
`whether to institute an inter partes review. 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
`exercise our discretion under § 325(d) to deny institution because
`substantially the same arguments previously were presented to the Office.
`Accordingly, no trial of the ’550 patent is instituted.
`
`
`
`B. Related Matters
`Petitioner identifies the ’550 patent as the subject of SEVEN
`Networks, LLC v. Apple Inc., 2:19-cv-00115 (E.D. Tex.). Pet. 65.
`C. The ’550 Patent
`The ’550 patent, titled “Mobile Device Power Management in Data
`Synchronization over a Mobile Network with or without a Trigger
`Notification,” issued on September 6, 2016, from an application filed on
`October 1, 2015, which is a continuation of application Ser. No. 14/623,514
`filed on February 17, 2015, now U.S. Patent No 9,608,968 (“the ’514
`application” or “the parent application” or “the ’968 patent”), which in turn
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`IPR2020-00425
`Patent 9,438,550 B2
`is a continuation of application Ser. No. 11/470,802 filed on September 7,
`2006, now U.S. Patent No. 8,989,728 (“the ’802 application” or “the
`grandparent application” or “the ’728 patent”), which then in turn is a
`continuation of application Ser. No. 10/339,368 filed on January 8, 2003,
`now U.S. Patent No. 7,139,565 (“the ’368 application” or “the
`great-grandparent application” or “the ’565 patent”). Ex. 1001, codes (54),
`(45), (22), (63). The ’968 patent, the ’728 patent, and the ’565 patent are
`“incorporated by reference in their entirety” in the ’550 patent. Id. at
`1:9–22.
`The ’550 patent describes a method for transferring data between a
`mobile device and a client, which includes sending transactions from the
`mobile device to the client over a connection and determining how often to
`receive new data. See Ex. 1001, code (57). An illustration of one
`embodiment of the ’550 patent’s connection architecture is depicted in
`Figure 6, reproduced below:
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`Patent 9,438,550 B2
`Figure 6 shows a connection architecture depicting how a mobile device is
`synchronized. Id. at 2:22–23.
`The ’550 patent recognizes that it may be necessary from time to time
`to synchronize a version of a user’s local data on a mobile device with the
`local version on the email server. Id. at 7:50–53. In one embodiment,
`mobile device 21 periodically sends out synchronization requests 134 to
`personal client 40, and personal client 40 generates response 133 pursuant to
`synchronization request 134 that contains the latest emails, or other local
`user data, wherein response 133 is sent back to mobile device 21 and is used
`for updating data 122. Id. at 7:53–59.
`Mobile device 21 can periodically initiate synchronization according
`to an amount of charge remaining in battery 123, such that, for example,
`when battery 123 has a relatively large amount of charge remaining, mobile
`device 21 may synchronize more frequently than when battery 123 has a
`relatively small amount of charge remaining. Id. at 9:2–9. Different charge
`gradient levels can be used for varying how often mobile device 21
`synchronizes with personal client 40, such that, for example, mobile device
`21 may synchronize every 5 minutes when battery 123 has 75% or more
`charge remaining, synchronize every 10 minutes when battery 123 is
`between 75% and 50% charged, and only synchronize with personal client
`40 every 30 minutes when battery 123 is between 50% and 25% charged.
`Id. at 9:10–20. To further conserve power, synchronization can be varied
`according to the day of the week, for example, mobile device 21 may
`synchronize less often on weekends than on weekdays. Id. at 9:21–24.
`
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`IPR2020-00425
`Patent 9,438,550 B2
`D. The ’368 Application (“the Great-Grandparent Application”)1
`The ’368 application describes a real-time communication
`architecture that establishes a continuous connection between an enterprise
`network and a communication management system, wherein the connection
`is continuously held open allowing mobile devices real-time access to
`enterprise data sources such as email systems. Ex. 2007, 2:6–9.
`In the ’368 application, the mobile device may store a second version
`of the user's local data, wherein, like the ’550 patent, the ’368 application
`recognizes that it may be necessary from time to time to synchronize a
`version of a user’s local data on the mobile device with the local version on
`the email server. Compare Ex. 2007, 12:22–24 with Ex. 1001, 7:50–53. In
`an embodiment similar to one in the ’550 patent, the ’368 application’s
`mobile device periodically sends out synchronization requests to the
`personal client, the personal client generates a response pursuant to the
`synchronization request that contains the latest emails, or other local user
`data, and the response is sent back to the mobile device and is used for
`updating data. Compare Ex. 2007, 12:24–13:1 with Ex. 1001, 7:53–59.
`Similar to the ’550 patent, in the ’368 application, the mobile device
`can periodically initiate synchronization according to an amount of charge
`remaining in battery such that when the battery has a relatively large amount
`of charge remaining, the mobile device may synchronize more frequently
`than when the battery has a relatively small amount of charge remaining.
`Compare Ex. 2007, 15:8–13 with Ex. 1001, 9:2–9. In a similar example, the
`
`
`1 The ’368 application (Ex. 2007) published as US Patent Publication No.
`2003/0157947 A1 (Ex. 1004, “Fiatal”). Petitioner relies upon Fiatal to
`challenge all claims of the ’550 patent under the sole asserted ground set
`forth in the Petition. Pet. 1.
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`Patent 9,438,550 B2
`mobile device may synchronize every 5 minutes when the battery has 75%
`or more charge remaining, synchronize every 10 minutes when the battery is
`between 75% and 50% charged, and only synchronize every 30 minutes
`when the battery is between 50% and 25% charged. Compare Ex. 2007,
`15:14–20 with Ex. 1001, 9:10–20. Synchronization in the ’368 application
`can similarly be varied according to the day of the week, synchronizing less
`often on weekends than on weekdays, for example. Compare Ex. 2007,
`15:21–23 with Ex. 1001, 9:21–24.
`E. The ’802 Application (“the Grandparent Application”)
`The ’368 application is “incorporated by reference in its entirety” in
`the ’802 application. Ex. 1021 ¶ 1.
`F. The ’514 Application (“the Parent Application”)
`The ’802 application is “incorporated by reference in [its] entirety” in
`the ’514 application. Ex. 1022, 1:7–17.
`G. The Challenged Claims
`Of the challenged claims, claims 1, 15, and 32 are the independent
`claims. Claims 2–14, 16–31, and 33–40 depend respectively from claims 1,
`15, and 32. Claim 1 is illustrative, and is reproduced below:
`1.
`A method for transferring data between a mobile device
`and a host, comprising:
`
`sending, in response to instructions from a processor,
`application data requests from a mobile device to a host over a
`first connection at a first frequency;
`
`receiving data from the host responsive to the sent application
`data requests;
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`Patent 9,438,550 B2
`selecting a power management mode, from a plurality of power
`management modes, based on an amount of battery power
`remaining on the mobile device, wherein selecting a power
`management mode is further based on the amount of battery
`power remaining being below a predetermined amount;
`
`changing the frequency that the application data requests are
`sent from the first frequency to a second frequency associated
`with the selected power management mode;
`
`wherein at least two of the power management modes are a low
`power mode configured to conserve the amount of battery
`power remaining on the mobile device and a normal operation
`mode,
`
`wherein the normal operation mode is configured to allow the
`mobile device to send application data requests more frequently
`than when the mobile device is in low power mode,
`
`wherein the frequency at which some application data requests
`are sent is not changed to the second frequency while the
`mobile device is in the low power mode; and
`
`exiting the low power mode when an amount of battery power
`remaining is above a predetermined amount.
`
`Ex. 1001, 9:52–10:14.
`I. Asserted Grounds of Unpatentability
`Petitioner challenges the patentability of claims 1–40 of the
`’550 patent on the following grounds (Pet. 1–2):
`Claim(s) Challenged
`35 U.S.C. §
`Reference(s)/Basis
`1–40
` 1032
`Fiatal,3 Prabu,4 Bernard,5
`Petitioner relies on the Declaration of Mr. Edward R. Tittel (Ex. 1003) in
`support of its unpatentability contentions.
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`
`II. ANALYSIS.
`Claim Construction
`A.
`We construe claims using the same claim construction standard that
`would be used to construe the claim in a civil action under 35 U.S.C.
`§ 282(b), including construing the claim in accordance with the ordinary and
`customary meaning of such claim as understood by one of ordinary skill in
`the art and the prosecution history pertaining to the patent. 37 C.F.R.
`§ 42.100(b) (2019). Thus, we apply the claim construction standard as set
`forth in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc).
`Petitioner proposes construction of the terms “a processor configured
`to allow the mobile device to:” (claims 15, 32). Pet. 16–21. Patent Owner
`does not address Petitioner’s proposed claim construction. See generally
`Preliminary Response.
`Only terms that are in controversy need to be construed, and only to
`the extent necessary to resolve the controversy. See Nidec Motor Corp. v.
`Zhongshan Broad Ocean Motor Co. Matal, 868 F.3d 1013, 1017 (Fed. Cir.
`2017) (“[W]e need only construe terms ‘that are in controversy, and only to
`the extent necessary to resolve the controversy’ . . . .” (quoting Vivid Techs.,
`
`
`2 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
`(2011) (“AIA”), amended 35 U.S.C. § 103. Because the ’968 patent is a
`continuation of an application with a filing date of September 7, 2006, which
`is prior to the effective date of the applicable AIA amendments, we refer to
`the pre-AIA version of § 103. See Ex. 1001, code (63).
`3 U.S. Patent Publication No. 2003/0157947 A1, published August 21, 2003,
`filed January 8, 2003 (Ex. 1004, “Fiatal”).
`4 U.S. Patent Publication No. 2012/0221877 A1, published August 30, 2012,
`filed February 25, 2011 (Ex. 1005, “Prabu”).
`5 U.S. Patent No. 8,019,325 B2, issued September 13, 2011, filed December
`6, 2007 (Ex. 1006, “Bernard”).
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`Patent 9,438,550 B2
`Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). We
`determine that it is unnecessary to construe any claim term expressly to
`determine whether to institute a trial.
`B. Discretion to Deny Institution under § 325(d)
`
`Under § 325(d), in “determining whether to institute [an inter partes
`review], the Director may take into account whether, and reject the petition
`or request because, the same or substantially the same prior art or arguments
`previous were presented to the Office.” In Advanced Bionics, LLC v. Med-
`El Elektromedizinische Geräte GMBH, IPR2019-01469, Paper 6 (PTAB
`Feb. 13, 2020) (precedential), the Board applied a two-part framework in
`considering whether to exercise discretion to deny institution under
`§ 325(d): “(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) 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.
`Within this two-part framework, the Board considers a number of
`non-exclusive factors in evaluating whether to exercise its discretion under
`§ 325(d). See Becton, Dickinson & Co. v. B. Braun Melsungen AG,
`IPR2017-01586, Paper 8 (PTAB Dec. 15, 2017) (precedential as to § III.C.5,
`first para.); see also Advanced Bionics, Paper 6 at 9–11. The factors set
`forth in Becton, Dickinson follow:
`(a) the similarities and material differences between the asserted art
`and the prior art involved during examination;
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`IPR2020-00425
`Patent 9,438,550 B2
`(b) the cumulative nature of the asserted art and the prior art evaluated
`during examination;
`(c) the extent to which the asserted art was evaluated during
`examination, including whether the prior art was the basis for rejection;
`(d) the extent of the overlap between the arguments made during
`examination and the manner in which petitioner relies on the prior art or
`patent owner distinguishes the prior art;
`(e) whether petitioner has pointed out sufficiently how the examiner
`erred in its evaluation of the asserted prior art; and
`(f) the extent to which additional evidence and facts presented in the
`petition warrant reconsideration of the prior art or arguments.
`Becton, Dickinson at 17–18.
`Factors (a), (b), and (d) of Becton, Dickinson relate to part 1 of the
`Advanced Bionics framework––whether the art or arguments presented in
`the Petition are the same or substantially the same as those previously
`presented to the Office. Advanced Bionics, Paper 6 at 10. Factors (c), (e),
`and (f) relate to part 2 of the Advanced Bionics framework––whether the
`Office committed a material error in its prior consideration of that art or
`arguments. Id. If the same or substantially the same art or arguments were
`previously presented to the Office, the Board then considers whether there
`the Office committed a material error. Id. “At bottom, this framework
`reflects a commitment to defer to previous Office evaluations of the
`evidence of record unless material error is shown.” Id. at 9.
`1. Part 1: Whether the art or arguments presented in the
`Petition are the same or substantially the same as those
`previously presented to the Office
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`Patent 9,438,550 B2
`Petitioner contends that the application that issued as the ’550 patent
`was filed on October 1, 2015, claiming priority through a chain of
`applications to much earlier dates, yet, “the Challenged Claims all require at
`least one feature never described in a valid priority document.”6 Pet. 3‒4.
`Thus, Petitioner contends that “the earliest effective filing date of the ’550
`patent can be no earlier than its actual filing date, i.e., October 1, 2015.”
`Pet. 4. Based on this contention, Petitioner further contends that Fiatal,
`Prabu, and Bernard qualify as prior art. Pet. 1‒2.
`Patent Owner contends that the Petition should be dismissed under
`§ 325(d) because “the Petition presents the same arguments that the Office
`considered during the original prosecution.” Prelim. Resp. 23. According to
`Patent Owner, as “[t]he file history confirms[,] the Office considered the
`issue of written description support . . . when the Office entered the
`Examiner’s amendment adding to the challenged claims the very limitations
`that [the] Petitioner now argues lack the written description support.” Id.
`Patent Owner then contends that “Petitioner has not demonstrated that the
`Office materially erred in its previous determination that these limitations
`have such support.” Id.
`Patent Owner points out that Petitioner’s challenge to the ’550
`patent’s benefit claims “turns on the answer to the question whether the ’550
`patent’s great-grandparent provides written description support for the
`claims under 35 U.S.C. § 112(a).” Prelim. Resp. 25–26. Thus, Patent
`
`
`6 Because each of the non-provisional applications in the chain of priority of
`the ’550 patent are continuation applications under 35 U.S.C. § 120,
`Petitioner’s assertion of lack of written description in the non-provisional
`applications in the priority chain embraces an assertion that the specification
`of the ’550 patent itself lacks adequate written description of the feature
`added by amendment. Pet. 4.
`
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`IPR2020-00425
`Patent 9,438,550 B2
`Owner contends that the Petition “is not a conventional prior-art driven IPR
`challenge” and “is nothing more than a collateral attack on written
`description support under 35 U.S.C. § 112(a) under the guise of a benefit
`claim challenge under §120.” Id. According to Patent Owner, “the Office,
`during the original prosecution, already considered and answered the precise
`question of written description support under 35 U.S.C. § 112(a) raised
`here.” Id. Patent Owner asserts that the claim elements being challenged in
`the Petition “were not ones that slipped by without the Examiner noticing
`them,” but rather “they were entered by Examiner’s amendment.” Id. at
`26–27 (citing Ex. 1002, 23–24, 26, 30). Patent Owner points out that, as set
`forth in an interview summary accompanying the Examiner’s amendment,
`the Examiner “had reviewed this specification at least three separate times,
`including the exact same Fiatal reference that Petitioner now asserts is prior
`art,” and “explained on the record that he ‘[d]iscussed claim contents in view
`of the specification’ with the applicant’s representative during an interview.”
`Id. at 27 (citing Ex. 1002, 37); see also id. at n.6 (“The same Examiner who
`examined the ’550 patent also examined U.S. Patent Nos. 7,139,565 (which
`issued from the great-grandparent application in the ’550 patent’s benefit
`claim), 8,989,728 (which issued from the ’550 patent’s grandparent), and
`9,608,968 (which issued from the ’550 patent’s parent),” “Fiatal is the pre-
`grant publication of the great-grandparent application”).
`According to Advanced Bionics, “[t]he factors set forth in Becton,
`Dickinson should be read broadly . . . to apply to any situation in which a
`petition relies on the same or substantially the same art or arguments
`previously presented to the Office during a proceeding pertaining to the
`challenged patent.” Advanced Bionics, Paper 6 at 10 (emphasis added).
`Here, as Patent Owner noted above, Petitioner’s challenge to the ’550
`
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`Patent 9,438,550 B2
`patent’s benefit claims “turns on the answer to the question whether the ’550
`patent’s great-grandparent provides written description support for the
`claims under 35 U.S.C. § 112(a),” wherein “the Office, during the original
`prosecution, already considered and answered the precise question of written
`description support under 35 U.S.C. § 112(a) raised [in the Petition].”
`Prelim. Resp. 25–26. Further, as Patent Owner points out, the Examiner
`who examined the ’550 patent also examined the great-grandparent
`application. Id. at 27, n.6 (citing Ex. 1002, 37).
`We agree with Patent Owner that arguments presented in the Petition
`are the same or substantially the same as those previously presented to the
`Office. Advanced Bionics, Paper 6 at 10. Accordingly, we proceed to the
`part two of Advanced Bionics framework to determine whether the Office
`committed a material error.
`2. Part 2: Whether the Office erred in a manner material to the
`patentability of challenged claims
`
`Advanced Bionics requires consideration of whether the Office “erred
`in a manner material to the patentability of challenged claims.” Advanced
`Bionics, Paper 6 at 8. If “reasonable minds can disagree,” the Office did not
`materially err. Id. Factors (c), (e), and (f) of Becton, Dickinson guide the
`inquiry. Accordingly, we look at the extent to which additional evidence
`and facts presented in the Petition warrant reconsideration of the prior art or
`arguments. Id.
`Petitioner contends that the ’550 patent “is not entitled to the benefit
`of any earlier filing data in its priority chain.” Pet. 4. According to
`Petitioner, the non-provisional applications in the priority chain “fail to
`demonstrate that the inventors were in possession of [contested claim
`features] before it was introduced during prosecution of the ’550 patent.” Id.
`
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`IPR2020-00425
`Patent 9,438,550 B2
`at 11. In particular, Petitioner contends that neither the specification of the
`’550 patent itself, nor any of the disclosures of applications in the priority
`chain, including the great-grandparent application, describes that “the
`frequency at which some application data requests are sent is not changed to
`the second frequency while the mobile device is in the low power mode.”
`Id. at 5–6 (citing Ex. 1001, 10:9–11, 11:16–19, 12:45–48; Ex. 1003
`¶¶ 54–62).
`In the Preliminary Response, as Patent Owner points out, Petitioner’s
`challenge to whether the ’550 patent is entitled to the priority date of its
`great-grandparent’s filing date “turns on the answer to the question whether
`the ’550 patent’s great-grandparent provides written description support for
`the claims.” Prelim. Resp. 25–26. However, as noted above, the Office
`already addressed the issue of written description support, because, as Patent
`Owner points out, the claim elements being challenged in the Petition “were
`entered by Examiner’s amendment” in view of the specifications of ’550
`patent as well as the non-provisional priority applications, including the
`great-grandparent application. Prelim. Resp. 26–27 (citing Ex. 1002,
`23–24, 26, 30) (emphasis omitted). As Patent Owner also points out, in the
`interview summary accompanying the Examiner’s amendment, the
`Examiner “explained on the record that he ‘[d]iscussed claim contents in
`view of the specification’ with the applicant’s representative during an
`interview.” Id. at 27 (citing Ex. 1002, 37) (emphasis omitted). In particular,
`the Examiner summarized as follows:
`
`Proposed and discussed claim amendments with applicant’s
`representative in order [to] place claims in condition for
`allowance and expedite prosecution. Discussed claim contents
`in view of the specification. Applicant’s representative
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`Patent 9,438,550 B2
`accepted the final amendment proposals and authorized an[]
`exa[m]iner amendment.
`
`Ex. 1002, 37 (emphasis added).
`Based on the record, and in particular, the Examiner’s interview
`summary, the Examiner reviewed the great-grandparent’s specification for
`support prior to entering the Examiner’s amendment.
`Moreover, although Petitioner contends the disclosures of the ’550
`patent and the great-grandparent do not support the claims, namely, do not
`describe that “the frequency at which some application data requests are sent
`is not changed to the second frequency while the mobile device is in the low
`power mode” (Pet. 5 (citing Ex. 1001, 10:9–11, 11:16–19, 12:45–48; Ex.
`1003 ¶¶54–62)), Patent Owner explains how at least the great-grandparent
`specification supports the claims. See Prelim. Resp. 39–55. For clarity,
`Patent Owner provides a claim chart showing how the great-grandparent
`application provides written description support for each element of claim 1,
`including the contested element. See id. at 43–48. In particular, Patent
`Owner contends:
`The architecture of Fig. 6 supports that the frequency at which
`some application data requests (namely, synchronization
`requests 134 triggered by events at PC 38/40, hereinafter
`“triggered requests”) are sent (following a triggering event) are
`not changed to the second frequency (dictated by the low power
`mode schedule of synchronization every 10 minutes) while the
`mobile device is in the low power mode because these triggered
`synchronization requests have a frequency dictated by the
`triggering events occurring at PC 38/40 and not the mobile
`device’s battery charge.
`
`Prelim. Resp. 48 (citing Ex. 2007, 15:3-10).
`Although Petitioner disagrees, Patent Owner sets forth a reasonable
`showing supported by the record, and Petitioner fails to overcome
`
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`Patent 9,438,550 B2
`persuasively the Examiner’s finding of sufficient support for the claim
`amendments in the record. See Pet. 4–12, 23; Advanced Bionics, Paper 6 at
`11. Even if “reasonable minds can disagree” as to whether there is adequate
`support in the great-grandparent application for the Examiner’s amendment,
`the Office did not materially err. Advanced Bionics, Paper 6 at 9.
`In view of this record, applying Advanced Bionics’s two-part
`framework, we determine that the same or substantially the same or
`substantially the same arguments were previously presented to the Office,
`and Petitioner has not demonstrated that the Office erred in a manner
`material to the patentability of challenged claims. Advanced Bionics, Paper
`6 at 8.
`For the foregoing reasons, we determine instituting an inter partes
`review would be an inefficient use of the Board’s resources, and we exercise
`discretion to deny institution under 35 U.S.C. § 325(d).
`
`III. CONCLUSION
`
`Based on a balanced assessment of the circumstances of this case, we
`exercise our discretion under § 325(d) and deny the instant Petition
`requesting institution of inter partes review of the ’550 patent.
`
`IV. ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED that the Petition (Paper 2) is denied as to the challenged
`claims 1–40 of the ’550 patent; and
`FURTHER ORDERED that no inter partes review is instituted.
`
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`IPR2020-00425
`Patent 9,438,550 B2
`FOR PETITIONER:
`W. Karl Renner
`Roberto J. Devoto
`Nicholas Stephens
`FISH & RICHARDSON P.C.
`axf-ptab@fr.com
`devoto@fr.com
`nstephens@fr.com
`
`
`FOR PATENT OWNER:
`Kenneth J. Weatherwax
`Bridget Smith
`Flavio Rose
`Edward Hsieh
`Parham Hendifar
`Patrick Maloney
`Jason C. Linger
`LOWENSTEIN & WEATHERWAX LLP
`weatherwax@lowensteinweatherwax.com
`smith@lowensteinweatherwax.com
`rose@lowensteinweatherwax.com
`hsieh@lowensteinweatherwax.com
`hendifar@lowensteinweatherwax.com
`maloney@lowensteinweatherwax.com
`linger@lowensteinweatherwax.com
`
`
`
`
`17
`
`
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