Trials@uspto.gov
`571-272-7822
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`
`
`
`Paper 10
`Date: May 4, 2023
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`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SAMSUNG ELECTRONICS CO., LTD.,
`Petitioner,
`
`v.
`
`CALIFORNIA INSTITUTE OF TECHNOLOGY,
`Patent Owner.
`____________
`
`IPR2023-00137
`Patent 8,284,833 B2
`____________
`
`
`
`Before KEN B. BARRETT, JOHN A. HUDALLA, and
`AMBER L. HAGY, Administrative Patent Judges.
`
`BARRETT, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`571-272-7822
`
`
`
`
`Paper 10
`Date: May 4, 2023
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SAMSUNG ELECTRONICS CO., LTD.,
`Petitioner,
`
`v.
`
`CALIFORNIA INSTITUTE OF TECHNOLOGY,
`Patent Owner.
`____________
`
`IPR2023-00137
`Patent 8,284,833 B2
`____________
`
`
`
`Before KEN B. BARRETT, JOHN A. HUDALLA, and
`AMBER L. HAGY, Administrative Patent Judges.
`
`BARRETT, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`IPR2023-00137
`Patent 8,284,833 B2
`
`
`I.
`INTRODUCTION
`A. Background and Summary
`Samsung Electronics Company, Ltd. (“Petitioner”)1 filed a Petition
`
`requesting inter partes review of U.S. Patent No. 8,284,833 B2 (“the ’833
`patent,” Ex. 1001). Paper 1 (“Pet.”). The Petition challenges the
`patentability of claims 1–4, 6–11, and 13–14 of the ’833 patent. California
`Institute of Technology (“Patent Owner”)2 filed a Preliminary Response to
`the Petition. Paper 7 (“Prelim. Resp.”). With our authorization, Petitioner
`filed a Reply (Paper 8, “Pet. Reply”) and Patent Owner filed a Sur-reply
`(Paper 9, “PO Sur-reply”).
`
`We have the authority to determine whether to institute an inter partes
`review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2021). Under
`35 U.S.C. § 314(a), an inter partes review may 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.” Having considered the parties’
`submissions, and for the reasons explained below, we exercise our discretion
`under 35 U.S.C. § 314(a) to deny institution of inter partes review.
`
`
`1 Petitioner identifies Samsung Electronics Co., Ltd. and Samsung
`Electronics America, Inc. as the real parties-in-interest. Pet. 1.
`2 Patent Owner identifies California Institute of Technology as the real
`party-in-interest. Paper 5, 1.
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`B. Related Proceedings
`Both parties identify, as matters involving or related to the ’833
`
`patent, the following:
` California Institute of Technology v. Samsung Electronics Co., Ltd.,
`No. 2-21-cv-00446 (E.D. Tex.) (“the underlying litigation”)
` California Institute of Technology v. Microsoft Corp., No. 6-21-cv-
`00276 (W.D. Tex.);
` California Institute of Technology v. HP Inc. f/k/a/ Hewlett-Packard
`Co., No. 6-20-cv-01041 (W.D. Tex.);
` California Institute of Technology v. Dell Technologies Inc., No. 6-
`20-cv-01042 (W.D. Tex.);
` California Institute of Technology v. Broadcom Ltd., No. 2-16-cv-
`03714 (C.D. Cal.), aff’d, vacated, and remanded, 25 F.4th 976 (Fed.
`Cir. 2022);
` California Institute of Technology v. Hughes Communications, Inc.,
`No. 2-15-cv-01108 (C.D. Cal.); and
` California Institute of Technology v. Hughes Communications, Inc.,
`No. 2-13-cv-07245 (C.D. Cal.).
`Pet. 1–2; Paper 5.
`
`The ’833 patent was previously the subject of the following four inter
`partes reviews identified by the parties (Pet. 2; Paper 5, 2–3): IPR2015-
`00061 (“061 IPR”), IPR2015-00081 (“081 IPR”), IPR2017-00702 (“702
`IPR”), and IPR2017-00703 (“703 IPR”). In the 061 IPR, institution was
`denied on the merits concerning challenges to claims 1, 2, 4, 6, 8, 9, 10, 11,
`and 13 of the ’833 patent as allegedly being obvious over various
`combinations of references known as “Ping,” “Hennessy,” “Luby ʼ09,” and
`
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`“Divsalar.” In the 081 IPR, institution was denied on the merits concerning
`challenges to claims 1, 2, 4, 6, 8, 9, 10, 11, and 13 of the ’833 patent as
`allegedly anticipated by “MacKay Software” or as allegedly being obvious
`over various combinations of “MacKay Software,” “Kernighan,” U.S. Patent
`No. 7,116,710 B1, and “Hennessy.” In the 702 IPR, institution was denied
`on the merits concerning challenges to claims 1–14 of the ’833 patent as
`allegedly being obvious over “Pfister Slides” and “MacKinnon.” In the 703
`IPR, institution was both discretionarily denied under 35 U.S.C. § 325(d)
`and denied on the merits concerning challenges to claims 1–14 of the ’833
`patent as allegedly being obvious over U.S. Patent No. 7,116,710 B1 and
`“MacKinnon.” None of those references are at issue in this proceeding.
`
`Patent Owner additionally identifies the following co-pending inter
`partes review proceedings: Samsung Electronics Co., Ltd. v. California
`Institute of Technology, IPR2023-00130; Samsung Electronics Co., Ltd. v.
`California Institute of Technology, IPR2023-00131; Samsung Electronics
`Co., Ltd. v. California Institute of Technology, IPR2023-00133. Paper 5, 2–
`3. Patent Owner also identifies several other Patent Trial and Appeal Board
`cases as related matters. Id.
`
`C. The ’833 Patent
`The ’833 patent is titled “Serial Concatenation of Interleaved
`
`Convolutional Codes Forming Turbo-Like Codes.” The ’833 patent
`explains some of the prior art with reference to its Figure 1, reproduced
`below.
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`Figure 1 is a schematic diagram of a prior “turbo code” system. Ex. 1001,
`2:21–22. The ’833 patent specification describes Figure 1 as follows:
`A block of k information bits is input directly to a first coder
`102. A k bit interleaver 106 also receives the k bits and
`interleaves them prior to applying them to a second coder 104.
`The second coder produces an output that has more bits than its
`input, that is, it is a coder with rate that is less than 1. The
`coders 102, 104 are typically recursive convolutional coders.
`
`Three different items are sent over the channel 150: the
`original k bits, first encoded bits 110, and second encoded bits
`112. At the decoding end, two decoders are used: a first
`constituent decoder 160 and a second constituent decoder 162.
`Each receives both the original k bits, and one of the encoded
`portions 110, 112. Each decoder sends likelihood estimates of
`the decoded bits to the other decoders. The estimates are used to
`decode the uncoded information bits as corrupted by the noisy
`channel.
`Id. at 1:46–61.
`
`A coder 200, according to a first embodiment of the invention, is
`described with respect to Figure 2, reproduced below.
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`Figure 2 of the ’833 patent is a schematic diagram of coder 200.
`The coder 200 may include an outer coder 202, an interleaver
`204, and inner coder 206. . . . The outer coder 202 receives the
`uncoded data. The data may be partitioned into blocks of fixed
`size, say k bits. The outer coder may be an (n,k) binary linear
`block coder, where n>k. The coder accepts as input a block u
`of k data bits and produces an output block v of n data bits.
`The mathematical relationship between u and v is v=T0u, where
`T0 is an n×k matrix, and the rate[3] of the coder is k/n.
`
`The rate of the coder may be irregular, that is, the value
`of T0 is not constant, and may differ for sub-blocks of bits in the
`data block. In an embodiment, the outer coder 202 is a repeater
`that repeats the k bits in a block a number of times q to produce
`a block with n bits, where n=qk. Since the repeater has an
`irregular output, different bits in the block may be repeated a
`different number of times. For example, a fraction of the bits in
`the block may be repeated two times, a fraction of bits may be
`repeated three times, and the remainder of bits may be repeated
`four times. These fractions define a degree sequence, or degree
`profile, of the code.
`
`The inner coder 206 may be a linear rate-1 coder, which
`means that the n-bit output block x can be written as x=TIw,
`where TI is a nonsingular n×n matrix. The inner coder 210 can
`have a rate that is close to 1, e.g., within 50%, more preferably
`10% and perhaps even more preferably within 1% of I.
`
`
`3 We understand that the “rate” of an encoder refers to the ratio of the
`number of input bits to the number of resulting encoded output bits related to
`those input bits.
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`6
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`Id. at 2:40–3:3. In an embodiment, the second (“inner”) encoder 206 is an
`accumulator. Id. at 3:4–6. “The serial concatenation of the interleaved
`irregular repeat code and the accumulate code produces an irregular repeat
`and accumulate (IRA) code.” Id. at 3:30–32.
`
`Figure 4 of the ’833 patent is reproduced below.
`
`
`Figure 4 shows an alternative embodiment in which the outer encoder is a
`low-density generator matrix (LDGM). Id. at 3:56–59. LDGM codes have a
`“sparse” generator matrix. Id. at 3:59–60. The IRA code produced is a
`serial concatenation of the LDGM code and the accumulator code. Id.
`at 3:60–62. No interleaver (as in the Figure 2 embodiment) is required in the
`Figure 4 arrangement because the LDGM provides scrambling otherwise
`provided by the interleaver in the Figure 2 embodiment. Id. at 3:62–64.
`
`D. Illustrative Claim
`Of the challenged claims of the ’833 patent, claims 1 and 8 are
`
`independent claims. Claim 1, reproduced below, is illustrative:
`1. An apparatus for performing encoding operations, the
`apparatus comprising:
`
`a first set of memory locations to store information bits;
`
`a second set of memory locations to store parity bits;
`
`a permutation module to read a bit from the first set of
`memory locations and combine the read bit to a bit in the
`second set of memory locations based on a corresponding index
`of the first set of memory locations and a corresponding index
`of the second set of memory locations; and
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`an accumulator to perform accumulation operations on
`
`the bits stored in the second set of memory locations,
`
`wherein two or more memory locations of the first set of
`memory locations are read by the permutation module different
`times from one another.
`Ex. 1001, 7:21–35.
`
`
`
`Rorabaugh
`
`E. Evidence
`Petitioner relies on the following references:
`Name
`Reference
`Kobayashi
`US 6,029,264; filed Apr. 28, 1997; issued
`Feb. 22, 2000
`C. BRITTON RORABAUGH, ERROR CODING
`COOKBOOK: PRACTICAL C/C++ ROUTINES
`AND RECIPES FOR ERROR DETECTION AND
`CORRECTION (1996)
`Petitioner also relies on the declaration of Dr. Matthew C. Valenti
`
`(Ex. 1002) in support of its arguments. The parties also rely on other
`exhibits as discussed below.
`
`Exhibit(s)
`1005
`
`1009
`
`F. Asserted Grounds of Unpatentability
`Petitioner asserts that the challenged claims are unpatentable on the
`
`following grounds:
`Claim(s) Challenged
`1–4, 6–11, 13–14
`1–4, 6–11, 13–14
`
`Reference(s)/Basis
`Kobayashi
`Kobayashi, Rorabaugh
`
`35 U.S.C. §4
`103(a)
`103(a)
`
`
`4 The ’833 patent was filed before the effective date of the Leahy Smith
`America Invents Act, Pub. L. No. 112-29, 125 Stat. 284 (2011) (“AIA”), and
`we apply the pre-AIA version of 35 U.S.C. § 103.
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`II. DISCRETIONARY DENIAL UNDER 35 U.S.C. § 314
`Our disposition of this case turns on the issue of discretionary denial.
`
`Patent Owner contends we should exercise our discretion to deny institution
`under 35 U.S.C. § 314(a). Prelim. Resp. 33–47; PO Sur-reply 1–3.
`Petitioner contends that we should not deny institution based on
`discretionary factors. Pet. 61–66; Pet. Reply 1–3.
`
`Institution of inter partes review is discretionary. SAS Inst. Inc. v.
`Iancu, 138 S. Ct. 1348, 1356 (2018) (“[Section] 314(a) invests the Director
`with discretion on the question whether to institute review . . . .” (emphasis
`omitted)); Cuozzo Speed Techs., LLC v. Lee, 579 U.S. 261, 273 (2016)
`(“[T]he agency’s decision to deny a petition is a matter committed to the
`Patent Office’s discretion.”); Harmonic Inc. v. Avid Tech., Inc., 815 F.3d
`1356, 1367 (Fed. Cir. 2016) (“[T]he [Office] is permitted, but never
`compelled, to institute an [inter partes review] proceeding.”).
`
`In Apple Inc. v. Fintiv Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20,
`2020) (precedential) (“Fintiv”), the Board discussed potential applications of
`NHK Spring Co., Ltd. v. Intri-Plex Techs., Inc., IPR2018-00752, Paper 8
`(PTAB Sept. 12, 2018) (precedential) (“NHK”), as well as a number of other
`cases dealing with discretionary denial under § 314(a). Fintiv identifies a
`non-exclusive list of factors parties may consider addressing, particularly
`where there is a related, parallel district court action and whether such action
`provides any basis for discretionary denial. Fintiv, Paper 11 at 5–16. Those
`factors include:
`1. whether the court granted a stay or evidence exists that one
`may be granted if a proceeding is instituted;
`2. proximity of the court’s trial date to the Board’s projected
`statutory deadline for a final written decision;
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`3. investment in the parallel proceeding by the court and the
`parties;
`4. overlap between issues raised in the petition and in the
`parallel proceeding;
`5. whether the petitioner and the defendant in the parallel
`proceeding are the same party; and
`6. other circumstances that impact the Board’s exercise of
`discretion, including the merits.
`Id. at 5–6.
`
`Our analysis of the Fintiv factors is guided by the USPTO Director’s
`Memorandum issued on June 21, 2022, titled “Interim Procedure for
`Discretionary Denials in AIA Post Grant Proceedings with Parallel District
`Court Litigation” (“Interim Procedure”)5, which provides several
`clarifications to the application of the Fintiv factors when there is parallel
`litigation. Interim Procedure 2; see also CommScope Techs. LLC v. Dali
`Wireless, Inc., IPR2022-01242, Paper 23 (PTAB Feb. 27, 2023)
`(precedential) (“CommScope”) (holding that the Board should engage in the
`compelling merits question only if Fintiv factors 1–5 favor discretionary
`denial).
`
`We now consider these factors to determine whether we should use
`our discretion to deny institution under 35 U.S.C. § 314(a). In evaluating the
`factors, we take a holistic view of whether efficiency and integrity of the
`system are best served by denying or instituting review. Fintiv, Paper 11
`at 6.
`
`
`5 Available at https://www.uspto.gov/sites/default/files/documents/
`interim_proc_discretionary_denials_aia_parallel_district_court_litigation_
`memo_20220621_.pdf
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`
`A. Stay in the Underlying Litigation
`Under the first Fintiv factor, we consider “whether the court granted a
`
`stay or evidence exists that one may be granted if a proceeding is instituted.”
`Id. at 6. Patent Owner notes that Petitioner has already filed a motion for a
`stay in the underlying litigation, and the district court denied the motion.
`Prelim. Resp. 36–37 (citing Ex. 2002, 4–5). Petitioner argues that it is not
`precluded from filing another motion for a stay if we were to institute inter
`partes review. Pet. Reply 2.
`
`The district court has already denied a motion for a stay, and the
`reasoning in its decision on the motion indicates that the court is unlikely to
`grant a renewed motion. See Ex. 2002, 5–6 (finding that the advanced stage
`of the underlying litigation disfavors a stay and that a stay is unlikely to
`simplify the issues in the underlying litigation). Thus, we find that this
`factor weighs in favor of exercising authority to deny institution. See Fintiv,
`Paper 11 at 6–7.
`
`B. The Trial Date in the Underlying Litigation
`Under the second Fintiv factor, we consider the “proximity of the
`
`court’s trial date to the Board’s projected statutory deadline for a final
`written decision.” Fintiv, Paper 11 at 6. Trial in the underlying litigation is
`set to start on September 11, 2023. Pet. 62 (citing Ex. 1015, 1); Prelim.
`Resp. 37–38. Petitioner also notes that, under the time-to-trial statistics for
`the district in which the underlying litigation is pending, the trial would be
`expected to start on December 17, 2023. Pet. 62 (citing Ex. 1016, 35). Our
`anticipated one-year statutory deadline for issuing a final written decision in
`this case would be in May 2024.
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`Regardless of whether we consider the scheduled trial date or the trial
`
`date expected based on time-to-trial statistics, the trial in the underlying
`litigation would commence several months before the expected date of our
`final written decision. Thus, we find that the second Fintiv factor favors
`exercising authority to deny institution.
`
`C. Investment by the Court and the Parties in the Underlying Litigation
`Under the third Fintiv factor, we consider the “investment in the
`
`parallel proceeding by the court and the parties” as of the time of the
`institution decision. Fintiv, Paper 11 at 6, 9–10. Both parties acknowledge
`that the court in the underlying litigation has already issued a claim
`construction order. Pet. Reply 1; PO Sur-reply 2; see also Ex. 1020 (order).
`In addition, Patent Owner contends that “[b]y the expected May institution
`decision date, substantial pretrial work related to validity will be complete:
`fact discovery will be closed, expert reports will be served, and all
`dispositive motions will be due within a month.” PO Sur-reply 1 (citing
`Ex. 1015, 3).
`
`Although Petitioner disputes the significance of claim construction to
`our consideration of this factor (see Pet. Reply 1), we find that the advanced
`stage of expert discovery is the most significant fact for our analysis.6 In
`
`
`6 The Petition, for the term “combine,” relies on the construction of a district
`court made in an earlier proceeding. Pet. 8–9 (citing California Institute of
`Technology v. Hughes Communications, Inc., No. 2:13-cv-07245, Dkt.
`No. 105, at 18-20 (C.D. Cal. Aug. 6, 2014)). This indicates that there has
`been investment by a court that is pertinent to patentability issues before us.
`Additionally, the court in the underlying litigation invested efforts in
`reaching the determination that “Claim 8 of the ’833 Patent is indefinite” for
`lack of antecedent basis. Ex. 1020, 18 (claim construction order) (emphasis
`omitted).
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`particular, the scheduling order in the underlying litigation indicates that
`Petitioner should have already served its opening expert report on validity.
`Ex. 1015, 3. Given that the deadline for rebuttal expert reports is only days
`away (see id.), we also can safely assume that work pertaining to a rebuttal
`expert report on validity is well underway. We consider this work
`significant because it relates directly to the merits of the parties’ invalidity
`positions. See Sand Revolution II, LLC v. Continental Intermodal Group –
`Trucking LLC, IPR2019-01393, Paper 24 at 10–11 (PTAB June 16, 2020)
`(informative) (“Sand Revolution”).
`
`As part of this factor, we additionally consider whether Petitioner
`unreasonably delayed in filing the Petition in this case. See Fintiv,
`Paper 11 at 11–12. Patent Owner argues that Petitioner waited
`approximately 10 months after Patent Owner filed the underlying litigation
`before Petitioner filed the instant Petition.7 Prelim. Resp. 41. Petitioner
`argues that it filed the Petition “just seven months after being served with
`preliminary infringement contentions . . . , which identified the asserted
`claims.” Pet. 64. Petitioner asserts this timing was reasonable given that
`Patent Owner “asserted four patents containing over 90 issued claims.” Id.
`Although Petitioner did file its Petition somewhat late in the statutory period
`and some months after receiving infringement contentions, we do not view
`
`
`7 We acknowledge that the timeliness of a petition is measured from the date
`on which a complaint alleging patent infringement is served. See 35 U.S.C.
`§ 315(b). In the underlying litigation, Petitioner waived the service
`requirement 17 days after the complaint was filed. See Underlying
`Litigation, ECF No. 9. The 17-day difference between filing and waiver of
`service does not impact our analysis.
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`this timing to be as significant as the advanced stage of case development in
`the underlying litigation regarding invalidity.
`
`Accordingly, on the whole, this factor weighs in favor of exercising
`our authority to deny institution.
`
`D. Overlap of the Issues
`Under the fourth Fintiv factor, we consider the “overlap between
`
`issues raised in the petition and in the parallel proceeding.” Fintiv, Paper 11
`at 6. Petitioner stipulates that, if we were to institute inter partes review, it
`would not “pursue invalidity challenges to the ’833 Patent in the parallel
`district court lawsuit that rely on any reference used in the grounds of the
`Petition (Kobayashi and Rorabaugh).” Pet. Reply 1. Patent Owner argues
`that Petitioner, “by emphasizing that its grounds were to be interpreted
`narrowly,” can still put forth district court invalidity arguments based on
`“variations [of references] not materially different from the IPR challenge.”
`PO Sur-reply 1; see also Prelim. Resp. 42–43 (similar argument).
`
`Petitioner’s stipulation is not as expansive as the stipulation discussed
`in Sotera Wireless Inc. v. Masimo Corp., IPR2020-01019, Paper 12 at 13
`(PTAB Dec. 1, 2020) (precedential) (“Sotera”), because Petitioner does not
`relinquish all grounds that it reasonably could have raised in this inter partes
`review.8 Nevertheless, it is broader to some degree than the stipulation
`discussed in Sand Revolution because it precludes Petitioner from relying in
`the district court on any of the same references listed in the statement of the
`grounds in the Petition, and is not limited to only the same grounds. See
`Sand Revolution, Paper 24 at 11–12. We find that Petitioner’s stipulation
`
`8 As such, Petitioner does not qualify for the treatment described in the
`Interim Procedure for Sotera stipulations. See Interim Procedure at 7–8.
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`mitigates some concerns of duplicative efforts between the district court and
`the Board.
`
`Accordingly, we find that this factor weighs somewhat against
`exercising our discretion to deny institution.
`
`E. Whether Petitioner is Unrelated to the Defendant in the Underlying
`Litigation
`Under the fifth Fintiv factor, we consider “whether the petitioner and
`
`the defendant in the parallel proceeding are the same party.” Fintiv,
`Paper 11 at 6. We determine that the fifth Fintiv factor favors exercising our
`discretion to deny institution because Petitioner, Samsung Electronics Co.,
`Ltd., is a defendant in the underlying litigation. See Prelim. Resp. 42;
`Sotera, Paper 12 at 19.
`
`F. Summary Regarding Fintiv Factors 1–5
`In summary, factors 1–3 and 5 weigh in favor of exercising our
`
`discretion to deny institution and factor 4 weighs somewhat against
`exercising our discretion to deny institution. Considering these factors as a
`whole, we determine that these factors weigh in favor of exercising our
`discretion to deny institution.
`
`G. Other Circumstances Including the Merits
`Under the sixth Fintiv factor, we consider “other circumstances that
`
`impact the Board’s exercise of discretion, including the merits.” Fintiv,
`Paper 11 at 6.
`
`First, we turn to the merits of the Petition. Because we conclude that
`Fintiv factors 1–5 in this proceeding favor discretionary denial, we consider
`whether the Petition presents a challenge with compelling merits. Interim
`Procedure 4–5. That is, we consider whether the challenges’ “evidence, if
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`unrebutted in trial, would plainly lead to a conclusion that one or more
`claims are unpatentable by a preponderance of the evidence.” Id. at 4.
`“A challenge can only ‘plainly lead to a conclusion that one or more claims
`are unpatentable’ if it is highly likely that the petitioner would prevail with
`respect to at least one challenged claim.” OpenSky Indus., LLC v. VLSI
`Tech. LLC, IPR2021-01064, Paper 102 at 49 (PTAB Oct. 4, 2022)
`(precedential) (quoting Interim Procedure at 4). The “compelling merits”
`standard is a standard higher than that required for institution. CommScope,
`Paper 23 at 3.
`
`For the reasons discussed below, see infra Section III, Petitioner has
`not presented a compelling, meritorious challenge to the claims of the ’833
`patent. Accordingly, for purposes of our analysis under Fintiv, we weigh the
`merits as being neutral.
`
`As another consideration for the sixth Fintiv factor, Patent Owner asks
`us to consider the history of inter partes reviews against the ’833 patent and
`its related patents. See supra Section I.B. (related proceedings). In
`particular, Patent Owner argues that “this is the fifth IPR against the ’833
`patent, and none of the prior four invalidated even a single claim.” Prelim.
`Resp. 44–45. Patent Owner further argues that “the Board has already
`invested substantial resources reviewing repeated IPR challenges and
`repeatedly upholding the claims of the ’833 patent and its family members.”
`Id. at 46. Petitioner downplays the relevance of the prior inter partes
`reviews because they were mostly based on “obviousness combinations,
`some up to four references,” whereas the first ground in this case relies on a
`single reference and “no ground combines more than two references.” Pet.
`Reply 3. Petitioner also characterizes the multiple prior inter partes reviews
`
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`Patent 8,284,833 B2
`
`as a consequence of Patent Owner’s “own choice to litigate its claims
`serially.” Id. In consideration of the Board’s prior expenditure of resources
`reviewing the claims of the ’833 patent, and in light of the outcomes of those
`prior reviews, we view the prior challenges against the same claims as
`slightly favoring discretionary denial.
`
`Thus, on the whole, we find the sixth Fintiv factor to weigh slightly in
`favor of exercising our discretion to deny institution.
`
`H. Conclusion Regarding the Fintiv Factors
`Petitioner’s stipulation is the only circumstance that weighs against
`
`discretionary denial. We find that the advanced posture of the underlying
`litigation outweighs the impact of Petitioner’s stipulation. In particular, trial
`is set to start approximately eight months before the expected date of our
`final written decision. The parties also have engaged in relevant case
`development in the underlying litigation insofar as expert discovery on
`validity is well underway. Moreover, the court in the underlying litigation
`has already denied Petitioner’s bid for a stay in that case. Thus, based on
`our holistic view of the Fintiv factors, we exercise our discretion under
`35 U.S.C. § 314(a) to deny the Petition.
`
`III. ANALYSIS OF THE MERITS
`A. Principles of Law
`Petitioner bears the burden of persuasion to prove unpatentability of
`
`the claims challenged in the Petition, and that burden never shifts to Patent
`Owner. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375,
`1378 (Fed. Cir. 2015).
`
`A patent claim is unpatentable under 35 U.S.C. § 103(a) if the
`differences between the claimed subject matter and the prior art are such that
`
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`IPR2023-00137
`Patent 8,284,833 B2
`
`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 said
`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 skill in the art; and (4) any objective evidence of obviousness
`or non-obviousness. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
`
`B. The Level of Ordinary 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.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995)
`(internal quotation marks and citation omitted).
`
`Petitioner contends that:
`
`A person of ordinary skill in the art at the time of the
`alleged invention (“POSITA”) would have had a Ph.D. in
`mathematics, electrical or computer engineering, or computer
`science with an emphasis in signal processing, communications,
`or coding, or a master’s degree in the above areas with at least
`three years of work experience in the field at the time of the
`alleged invention. . . . Additional education would compensate
`for less experience, and vice versa.
`Pet. 4–5 (citing Ex. 1002 ¶¶ 21–22). Patent Owner, at this stage, does not
`disagree or propose a different definition of the person of ordinary skill in
`the art.
`
`We determine that the definition offered by Petitioner comports with
`the qualifications a person would have needed to understand and implement
`
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`Patent 8,284,833 B2
`
`the teachings of the ’833 patent and the prior art of record. Cf. Okajima v.
`Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art itself may
`reflect an appropriate level of skill in the art). For purposes of this decision,
`we adopt Petitioner’s description of the person of ordinary skill in the art.
`
`C. Claim Construction
`We apply the same claim construction standard used in district court
`
`actions under 35 U.S.C. § 282(b), namely that articulated in Phillips v. AWH
`Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). See 37 C.F.R. § 42.100(b)
`(2021). In applying that standard, claim terms generally are given their
`ordinary and customary meaning as would have been understood by a person
`of ordinary skill in the art at the time of the invention and in the context of
`the entire patent disclosure. Phillips, 415 F.3d at 1312–13. “In determining
`the meaning of the disputed claim limitation, we look principally to the
`intrinsic evidence of record, examining the claim language itself, the written
`description, and the prosecution history, if in evidence.” DePuy Spine, Inc.
`v. Medtronic Sofamor Danek, Inc., 469 F.3d 1005, 1014 (Fed. Cir. 2006)
`(citing Phillips, 415 F.3d at 1312–17).
`1. “combine”
`Petitioner contends that “combine” means “perform logical operations
`
`on.” Pet. 8. Petitioner asserts that “[t]his construction is consistent with that
`proposed by [Patent Owner] and construed in previous district court
`litigation.” Id. (citing Cal. Inst. of Tech. v. Hughes Commc’ns, Inc.,
`No. 2:13-cv-07245, Dkt. No. 105, at 18–20 (C.D. Cal. Aug. 6, 2014); see id.
`(Petitioner further asserting that “[t]he Court clarified that the construction
`includes logical operators, such as AND, OR, XOR, and NOT, but not
`relational operators.”). Patent Owner agrees that Petitioner’s proposed
`
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`Patent 8,284,833 B2
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`construction is correct. See Prelim. Resp. 4 (“Petitioner concedes, as it must,
`that these are the correct constructions; indeed, Petitioner has agreed to the
`constructions in the related district court proceedings.); see also Ex. 1020, 7
`(the claim construction order in the current parallel litigation in the Eastern
`District of Texas indicating that the parties agree that “combine” means
`“perform logical operations on”).
`
`For purposes of this decision, we adopt the parties’ agreed upon
`construction of “combine” as meaning “perform logical operations on.”
`2. “read . . . different times from one another”
`Independent claims 1 and 8 recite “wherein two or more memory
`
`locations of the first set of memory locations are read by the permutation
`module different times from one another.” Ex. 1001, 7:33–35, 8:25–27.
`Petitioner contends that this phrase means “wherein two or more memory
`locations of the first set of memory locations are read by the permutation
`module a different number of times from one another.” Pet. 9 (emphasis
`added). Petitioner asserts that Patent Owner “agreed to this construction in
`California Institute of Technology v. Broadcom Ltd., No. 2-16-cv-03714
`D
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