Trials@uspto.gov
`571-272-7822
`
`
`Paper 17
`Date: October 3, 2023
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`NETFLIX, INC.,
`Petitioner,
`
`v.
`
`VIDEOLABS, INC.,
`Patent Owner.
`
`IPR2023-00628
`Patent 7,233,790 B2
`
`
`
`
`
`
`
`
`
`Before JEFFREY S. SMITH, STACEY G. WHITE, and
`STEPHEN E. BELISLE, Administrative Patent Judges.
`
`SMITH, Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`
`571-272-7822
`
`
`Paper 17
`Date: October 3, 2023
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`NETFLIX, INC.,
`Petitioner,
`
`v.
`
`VIDEOLABS, INC.,
`Patent Owner.
`
`IPR2023-00628
`Patent 7,233,790 B2
`
`
`
`
`
`
`
`
`
`Before JEFFREY S. SMITH, STACEY G. WHITE, and
`STEPHEN E. BELISLE, Administrative Patent Judges.
`
`SMITH, Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`
`
`IPR2023-00628
`Patent 7,233,790 B2
`
`I.
`
`INTRODUCTION
`
`A. Background and Summary
`
`Petitioner, Netflix, Inc., filed a Petition (Paper 1, “Pet.”) requesting
`
`inter partes review of claims 1–14 of U.S. Patent No. 7,233,790 B2
`
`(Ex. 1001, “the ’790 patent”) pursuant to 35 U.S.C. § 311(a). Patent Owner,
`
`VideoLabs, Inc., filed a Preliminary Response (Paper 6, “Prelim. Resp.”)
`
`pursuant to 35 U.S.C. § 313. On August 11, 2023, a reexamination
`
`certificate was issued which amended claims 1 and 8. Ex. 2018. With our
`
`authorization (Paper 12), Petitioner filed a Reply (Paper 15) and Patent
`
`Owner filed a Sur-Reply (Paper 16) directed to whether the Board should
`
`institute in light of the amendments to claims 1 and 8.
`
`Pursuant to 35 U.S.C. § 314(a), the Director may not authorize an
`
`inter partes review unless the information in the petition and preliminary
`
`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.” For the reasons that follow, we institute an inter partes review as
`
`to claims 1–14 of the ’790 patent on the grounds of unpatentability asserted
`
`in the Petition.
`
`B. Real-Parties-In-Interest
`
`Petitioner identifies itself (Netflix, Inc.) and Netflix Streaming
`
`Services, Inc. as its real parties-in-interest. Pet. 71. Patent Owner identifies
`
`itself (VideoLabs, Inc.) as well as VL IP Holdings LLC and VL Collective
`
`IP LLC as real parties-in-interest. Paper 4, 2.
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`
`
`
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`
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`2
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`Patent 7,233,790 B2
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`C. Related Matters
`
`The Petition states that the ’790 patent is the subject of the following
`
`proceedings:
`
`VideoLabs, Inc. v. Netflix Inc., No. 1-22-cv-00229, D. Del., filed
`Feb. 23, 2022;
`
`Starz Entertainment, LLC v. VL Collective IP, LLC, No. 1-21-cv-
`01448, D. Del., filed Oct. 13, 2021;
`
`Unwired Planet, LLC v. Apple, Inc., No. 3-13-cv-04134, N.D. Cal.,
`filed Sept. 19, 2012;
`
`Unwired Planet, LLC v. Apple, Inc., No. 3-12-cv-00505, D. Nev.,
`filed Sept. 19, 2012.
`
`Pet. 71. Patent Owner identifies the following additional proceeding as one
`
`in which the ’790 patent was involved (Prelim. Resp. 1):
`
`Ex Parte Reexamination, Control No. 90/015,063, filed
`June 23, 2022.1
`
`
`II. THE ’790 PATENT
`
`The ’790 patent relates to “facilitating management and delivery of
`
`digital content from multiple content suppliers to multiple wireless services
`
`subscribers in multiple domains.” Ex. 1001, 1:14–18. The ’790 patent
`
`explains that a download manager acts as an intermediary between content
`
`suppliers and wireless services subscribers. Id. at 4:11–15, Fig. 2.
`
`
`1 Although the Petition was filed February 23, 2023 (Paper 1), and Patent
`Owner filed its initial Mandatory Notices on April 11, 2023 (Paper 4), Patent
`Owner did not inform the Board of the then-pending reexamination of the
`‘790 patent until the filing of its Preliminary Response on July 5, 2023, at
`which point the Office already had issued a Notice of Intent to Issue
`Ex-Parte Reexamination Certificate (Paper 6, 1; Ex. 2011).
`
`3
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`Patent 7,233,790 B2
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`Figure 3 of the ’790 patent is shown below.
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`
`
`Figure 3 above schematically illustrates the components of the
`
`download manager along with a provisioning manager. Ex. 1001, 3:15–16.
`
`In the embodiment of Figure 3, download manager 1 includes delivery
`
`manager 31, product manager 32, business & operations manager 33, and
`
`multiple protocol handlers 34. Id. at 6:36–38. “[P]roduct manager 32 is the
`
`download manager's interface to the various content suppliers and provides
`
`centralized product cataloging (including enabling qualified content
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`4
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`IPR2023-00628
`Patent 7,233,790 B2
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`suppliers to register content for analysis and publication) and complete
`
`product life cycle support.” Id. at 6:46–50. Product manager 32 includes
`
`product catalog 54 that contains descriptions of all published items of
`
`content (products), and specifically includes, for each product entry, a
`
`reference to at least one implementation of that product, wherein an
`
`implementation can be a binary file representing the product. Id. at 9:37–42,
`
`Fig. 3. Delivery manager 31 includes device capability manager 37 that is
`
`responsible for device recognition, capability determination, and
`
`management. Id. at 7:31–39, Fig. 3. The ’790 patent explains that “[w]hen
`
`a request to view available products is received from the client device,” the
`
`product manager determines from the product catalog which products are
`
`supported by the client based on the capabilities of that client device. Id. at
`
`12:9–13. The download manager then sends a response to the client
`
`“to cause the client device to display product information relating to only
`
`those products supported by the client device.” Id. at 12:13–17.
`
`5
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`Patent 7,233,790 B2
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`III. ILLUSTRATIVE CLAIM
`
`
`
`Independent claim 1 of the ’790 patent as amended2 recites:
`
`1. A method of providing access to digital content for use
`on wireless communication devices, the method comprising:
`
`receiving and storing in a server system a plurality of
`items of digital content to be made available for use in wireless
`communication devices used by a plurality of wireless services
`subscribers, including receiving and storing a plurality of
`different implementations of at least one of the items of digital
`content, where each implementation of any given item of digital
`content corresponds to a different set of device capabilities;
`
`operating the server system to maintain a product catalog
`containing a description of the items of digital content, wherein
`the product catalog includes, in association with each item of
`digital content, a reference to each implementation of said item
`of digital content;
`
`receiving a request from one of the wireless
`communication devices;
`
`in response to the request, selecting a portion of the
`product catalog to be presented on the one wireless
`communication device, based in part on device capabilities of
`the one wireless communication device; and
`
`presenting the selected portion of the product catalog to
`the one wireless communication device, such that the selected
`portion, as presented, provides a single description of each item
`of digital content in said portion, regardless of a number of
`implementations that are available for each said item.
`
`Ex. 2018, 1:20–2:8.
`
`Independent claim 2 recites:
`
`2. A method of providing access to digital content for
`use on wireless communication devices, the method
`comprising:
`
`
`2 On August 11, 2023, a reexamination certificate was issued which
`amended claims 1 and 8. Ex. 2018.
`
`6
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`IPR2023-00628
`Patent 7,233,790 B2
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`receiving and storing in a server system a plurality of
`items of digital content to be made available for use in wireless
`communication devices used by a plurality of wireless services
`subscribers,
`
`including receiving and storing a plurality of different
`implementations of at least one of the items of digital content,
`where each implementation of any given item of digital content
`corresponds to a different set of device capabilities;
`
`operating the server system to maintain a product catalog
`containing a description of the items of digital content, wherein
`the product catalog includes, in association with each item of
`digital content, a reference to each implementation of said item
`of digital content;
`
`receiving a request from a wireless device used by one of
`the subscribers;
`
`in response to the request, selecting a portion of the
`product catalog to be presented to the subscriber, based on
`device capabilities of the wireless device used by the
`subscriber; and
`
`presenting the selected portion of the product catalog to
`the subscriber via a wireless network, such that the selected
`portion, as presented to the subscriber, provides only a single
`description of each item of digital content in said portion,
`regardless of the number of implementations of each said item.
`
`Ex. 1001, 15:34–61.
`
`
`
`
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`7
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`Patent 7,233,790 B2
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`IV. ASSERTED GROUNDS
`
`Petitioner asserts that claims 1–14 of the ’790 patent are unpatentable
`
`on the following grounds (Pet. 22).
`
`Claim(s) Challenged 35 U.S.C. §3
`
`Reference(s)/Basis
`
`1–4, 8–11
`
`1–14
`
`102(a), (e)
`
`Mehta4
`
`103(a)
`
`Mehta, Schläpfer5
`
`V. LEVEL OF ORDINARY SKILL
`
`Petitioner identifies a person of ordinary skill as someone with
`
`“a bachelor’s degree in electrical or computer engineering, or a closely
`
`related scientific field such as computer science, and two years of work
`
`experience with digital multi-media content distribution and management,
`
`and associated system infrastructures.” Pet. 16. “Alternatively, any lack of
`
`experience could be remedied with additional education (e.g., a master’s
`
`degree), and likewise, a lack of education can be remedied with additional
`
`work experience (e.g., 4–5 years).” Id. Patent Owner does not address the
`
`level of ordinary skill. See generally, Prelim. Resp.
`
`The level of ordinary skill in the art usually is evidenced by the
`
`references themselves. See Okajima v. Bourdeau, 261 F.3d 1350, 1355
`
`(Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995);
`
`In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). As Petitioner’s description of
`
`a person of ordinary skill appears commensurate with the subject matter
`
`before us, we apply Petitioner’s definition for purposes of this Decision.
`
`
`3 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
`(2011) (“AIA”), amended 35 U.S.C. §§ 102, 103. Because the ’790 patent
`has an effective filing date prior to the effective date of the applicable AIA
`amendment, we refer to the pre-AIA version of §§ 102, 103.
`4 U.S. Publication No. 2022/0131404 A1; pub. Sept. 19, 2002 (Ex. 1003).
`5 Schläpfer et al., Mobile Applications with J2ME, July 7, 2001 (Ex. 1009).
`
`8
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`VI. CLAIM CONSTRUCTION
`
`We interpret claim terms 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).” 37 C.F.R. § 42.100(b) (2019). In this context, claim terms “are
`
`generally given their ordinary and customary meaning” as understood by a
`
`person of ordinary skill in the art in question at the time of the invention.
`
`Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (citations
`
`omitted) (en banc). “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). Extrinsic evidence is “less significant than the intrinsic record in
`
`determining ‘the legally operative meaning of claim language.’” Phillips,
`
`415 F.3d at 1317 (citations omitted).
`
`We construe only those claim terms that require analysis to determine
`
`whether to institute inter partes review. 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”). Any special definition for a claim
`
`term must be set forth in the specification with reasonable clarity,
`
`deliberateness, and precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir.
`
`1994). Petitioner contends that “no claim terms require specific construction
`
`to resolve the unpatentability issues presented” in the Petition. Pet. 23.
`
`We agree and do not construe any terms at this stage.
`
`
`
`9
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`VII. ANALYSIS
`
`A. Legal Standards
`
`“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 upon).
`
`To establish anticipation, each and every element in a claim, arranged
`
`as recited in the claim, must be found in a single prior art reference. Net
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`MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008).
`
`Although the elements must be arranged or combined in the same way as in
`
`the claim, “the reference need not satisfy an ipsissimis verbis test,” i.e.,
`
`identity of terminology is not required. In re Gleave, 560 F.3d 1331, 1334
`
`(Fed. Cir. 2009) (citing In re Bond, 910 F.2d 831, 832–33 (Fed. Cir. 1990)).
`
`A claim is unpatentable under 35 U.S.C. § 103(a) if “the differences
`
`between the subject matter sought to be patented 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 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) when in evidence, objective evidence
`
`10
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`of obviousness or nonobviousness, i.e., secondary considerations.6 See
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`Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). An obviousness
`
`analysis “need not seek out precise teachings directed to the specific subject
`
`matter of the challenged claim, for a court can take account of the inferences
`
`and creative steps that a person of ordinary skill in the art would employ.”
`
`KSR, 550 U.S. at 418.
`
`Additionally, the obviousness inquiry typically requires an analysis of
`
`“whether there was an apparent reason to combine the known elements in
`
`the fashion claimed by the patent at issue.” KSR, 550 U.S. at 418 (citing
`
`In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2016) (requiring “articulated
`
`reasoning with some rational underpinning to support the legal conclusion of
`
`obviousness”)). Furthermore, Petitioner does not satisfy its burden of
`
`proving obviousness by employing “mere conclusory statements,” but “must
`
`instead articulate specific reasoning, based on evidence of record, to support
`
`the legal conclusion of obviousness.” In re Magnum Oil Tools Int’l, Ltd.,
`
`829 F.3d 1364, 1380 (Fed. Cir. 2016).
`
`B. Claims 1–4 and 8–11 As Anticipated By Mehta
`
`1. Mehta – Exhibit 1003
`
`Mehta relates to “maintaining and distributing wireless applications to
`
`wireless devices over a wireless network.” Ex. 1003 ¶ 2. Mehta discloses a
`
`Mobile Application System (“MAS”) that “is a collection of interoperating
`
`server components that work individually and together in a secure fashion to
`
`provide applications, resources, and other content to mobile subscriber
`
`devices.” Id. ¶ 59.
`
`
`6 The parties do not direct us to any objective evidence of non -obviousness
`at this stage of the proceeding.
`
`11
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`Figure 1 of Mehta is shown below.
`
`
`
`Figure 1 above is a block diagram that illustrates how subscribers
`
`request and download software from an MAS. Id. ¶ 18. The MAS includes
`
`a provisioning manager which includes verifiers “used to determine
`
`compatibility of an application.” Id. ¶ 82, Fig. 5. When the MAS receives a
`
`request, the “Device Verifier” of the provisioning manager “determines the
`
`type and capabilities of the subscriber device” and “whether the device
`
`capabilities are sufficient to support a specific application.” Id. ¶¶ 82–85.
`
`Mehta’s MAS may analyze “a subscriber profile, a device profile, and an
`
`application profile to determine whether the subscriber is authorized to use
`
`the application and whether the application’s needs . . . are met by the
`
`device.” Id. ¶ 67. The MAS then “compiles and returns a list of
`
`applications that are available and appropriate based on the subscriber,
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`application profiles, and device profiles.” Id. ¶ 70.
`
`12
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`IPR2023-00628
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`2.
`
`Independent Claim 2
`
`The preamble of claim 2 recites a “method of providing access to
`
`digital content for use on wireless communication devices, the method
`
`comprising.” Petitioner contends that Mehta discloses the preamble in
`
`describing a Mobile Application System (“MAS”) and methods for
`
`providing applications, resources, and other content to mobile subscriber
`
`devices. Pet. 26–27, 31 (citing Ex. 1003 ¶¶ 2, 5, 5960, 62, 103, 127). Patent
`
`Owner does not contend otherwise at this stage of the proceeding.7
`
`Nonetheless, the burden remains on Petitioner to demonstrate
`
`unpatentability. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc.,
`
`800 F.3d 1375, 1378 (Fed. Cir. 2015). Based on the evidence and arguments
`
`currently of record, for purposes of institution, Petitioner has sufficiently
`
`demonstrated that Mehta discloses the features recited in the preamble of
`
`claim 2.8
`
`Claim 2 recites “receiving and storing in a server system a plurality of
`
`items of digital content to be made available for use in wireless
`
`communication devices used by a plurality of wireless services subscribers.”
`
`Petitioner contends that Mehta discloses this limitation in describing an
`
`MAS that receives applications from content providers and carrier services
`
`to provision them for deliver to the subscriber device. Pet. 27–28, 31 (citing
`
`Ex. 1003 ¶¶ 59, 62, 64, 68). Based on the evidence and arguments currently
`
`
`7 Patent Owner does not challenge any of the proposed grounds at this stage
`of the proceeding, with the exception of contending that the Petition does not
`address amended claims 1 and 8 as discussed below.
`8 Because Petitioner has shown that the features in the preamble are satisfied
`by the prior art, we need not determine whether the preamble is limiting at
`this time. See Vivid Techs., 200 F.3d at 803.
`
`13
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`of record, for purposes of institution, Petitioner has sufficiently
`
`demonstrated that Mehta discloses this limitation of claim 2.
`
`Claim 2 recites “including receiving and storing a plurality of
`
`different implementations of at least one of the items of digital content,
`
`where each implementation of any given item of digital content corresponds
`
`to a different set of device capabilities.” Petitioner contends that Mehta
`
`discloses this limitation in describing an MAS that stores and supports
`
`functionally equivalent programs that are capable of running multiple kinds
`
`of devices. Pet. 28–29, 31 (citing Ex. 1003 ¶¶ 64, 68, 98). Based on the
`
`evidence and arguments currently of record, for purposes of institution,
`
`Petitioner has sufficiently demonstrated that Mehta discloses this limitation
`
`of claim 2.
`
`Claim 2 recites “operating the server system to maintain a product
`
`catalog containing a description of the items of digital content, wherein the
`
`product catalog includes, in association with each item of digital content, a
`
`reference to each implementation of said item of digital content.” Petitioner
`
`contends that Mehta discloses this limitation in describing an MAS that
`
`includes a data repository that stores applications along with descriptions of
`
`the applications. Pet. 29–32 (citing Ex. 1003 ¶¶ 64, 67, 97–99). Based on
`
`the evidence and arguments currently of record, for purposes of institution,
`
`Petitioner has sufficiently demonstrated that Mehta discloses this limitation
`
`of claim 2.
`
`Claim 2 recites “receiving a request from a wireless device used by
`
`one of the subscribers.” Petitioner contends that Mehta discloses this
`
`limitation in describing an MAS receives a wireless services request from a
`
`wireless subscriber. Pet. 32–33 (citing Ex. 1003 ¶¶ 6061, 64, Fig. 1). Based
`
`on the evidence and arguments currently of record, for purposes of
`
`14
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`institution, Petitioner has sufficiently demonstrated that Mehta discloses this
`
`limitation of claim 2.
`
`Claim 2 recites “in response to the request, selecting a portion of the
`
`product catalog to be presented to the subscriber, based on device
`
`capabilities of the wireless device used by the subscriber.” Petitioner
`
`contends that Mehta discloses this limitation in describing an MAS that
`
`analyzes various profiles to determine whether an application version meets
`
`the devices requirements of a subscriber. Pet. 33–35 (citing Ex. 1003 ¶¶ 67,
`
`139, Fig. 4). Based on the evidence and arguments currently of record, for
`
`purposes of institution, Petitioner has sufficiently demonstrated that Mehta
`
`discloses this limitation of claim 2.
`
`Claim 2 recites “presenting the selected portion of the product catalog
`
`to the subscriber via a wireless network, such that the selected portion, as
`
`presented to the subscriber, provides only a single description of each item
`
`of digital content in said portion, regardless of the number of
`
`implementations of each said item.” Petitioner contends that Mehta
`
`discloses this limitation in describing an MAS that that filters the list of
`
`content to only identify those applications that are supported by the
`
`subscriber’s device.” Pet. 35–37 (citing Ex. 1003 ¶¶ 67, 9, 16, 117). Based
`
`on the evidence and arguments currently of record, for purposes of
`
`institution, Petitioner has sufficiently demonstrated that Mehta discloses this
`
`limitation of claim 2.
`
`Based on the evidence and arguments currently of record, for
`
`purposes of institution, we are persuaded that Petitioner has demonstrated a
`
`reasonable likelihood of prevailing in showing that Mehta anticipates
`
`claim 2.
`
`15
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`3.
`
`Dependent Claims 3 and 4
`
`Claim 3 depends from claim 2 and recites “wherein said selecting a
`
`portion of the product catalog comprises: in response to the request,
`
`determining the identity of the wireless device used by the subscriber.”
`
`Petitioner contends that Mehta discloses this limitation in describing that the
`
`subscriber verifier determines the type and capabilities of the subscriber
`
`device. Pet. 37–38 (citing Ex. 1003 ¶¶ 83–84).
`
`Claim 3 recites “wherein each implementation of the plurality of items
`
`of digital content has been previously associated in the server system with at
`
`least one device identity, according to corresponding device capabilities
`
`supported by the implementation.” Petitioner contends that Mehta discloses
`
`this limitation in describing that the deployment manager provisions each
`
`application for specific device or subscriber profiles. Pet. 38 (citing Ex.
`
`1003 ¶ 79).
`
`Claim 3 recites “selecting the portion of the product catalog to be
`
`presented to the subscriber based on the identity of the wireless device used
`
`by the subscriber.” Petitioner contends that Mehta discloses this limitation
`
`in describing that the initial list is based upon subscriber and device
`
`capabilities, and the final list to be presented to the subscriber is based on the
`
`type and capabilities of the subscriber’s device. Pet. 38–39 (citing Ex. 1003
`
`¶¶ 67, 85, 139).
`
`Claim 4 depends from claim 2 and recites “receiving from the
`
`subscriber a request for one of the items of digital content in said portion of
`
`the product catalog.” Petitioner contends that Mehta discloses this limitation
`
`in describing a data repository that stores applications, where subscribers of
`
`wireless services request and download the applications. Pet. 39–40 (citing
`
`Ex. 1003 ¶¶ 61, 64, 81–82, Fig. 1).
`
`16
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`IPR2023-00628
`Patent 7,233,790 B2
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`Claim 4 recites “selecting an implementation of the requested item of
`
`digital content, based on device capabilities of the wireless device used by
`
`the subscriber.” Petitioner contends that Mehta discloses this limitation in
`
`describing receiving a request to download an application, verifying that the
`
`request is appropriate and permitted for download to the device and user,
`
`and sending the application to the requesting device. Pet. 41 (citing Ex.
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`1002 ¶ 83).
`
`Claim 4 recites “downloading the selected implementation of the item
`
`of digital content to the wireless device used by the subscriber.” Petitioner
`
`contends that Mehta discloses this limitation in describing downloading the
`
`selected application to the subscriber device. Pet. 42–43 (citing Ex. 1002
`
`¶ 84, Fig. 3.
`
`Based on the evidence and arguments currently of record, for
`
`purposes of institution, we are persuaded that Petitioner has demonstrated a
`
`reasonable likelihood of prevailing in showing that Mehta anticipates claims
`
`3 and 4.
`
`4.
`
`Independent Claim 9
`
`Petitioner contends that claim 9 recites limitations similar to those
`
`recited in claim 2, and that Mehta anticipates claim 9 for the reasons given in
`
`the Petition’s analysis of claim 2. Pet. 46–47. Based on the evidence and
`
`arguments currently of record, for purposes of institution, we are persuaded
`
`that Petitioner has demonstrated a reasonable likelihood of prevailing in
`
`showing that Mehta anticipates claim 9.
`
`5.
`
`Dependent Claims 10 and 11
`
`Petitioner contends that claim 10 contains limitations similar to those
`
`recited in claim 3, that claim 11 recites limitations similar to those recited in
`
`claim 4, and that Mehta anticipates claims 10 and 11 for the reasons given in
`
`17
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`IPR2023-00628
`Patent 7,233,790 B2
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`the Petition’s analysis of claims 3 and 4. Pet. 48. Based on the evidence and
`
`arguments currently of record, for purposes of institution, we are persuaded
`
`that Petitioner has demonstrated a reasonable likelihood of prevailing in
`
`showing that Mehta anticipates claim 9.
`
`6.
`
`Claims 1 and 8
`
`Patent Owner contends that the Petition addresses only the original
`
`pre-amendment versions of claims 1 and 8, which no longer exist. Prelim.
`
`Resp. 1. Patent Owner contends that the Petition does not present any
`
`arguments with respect to amended claims 1 and 8, and therefore, cannot
`
`satisfy the “reasonable likelihood” institution standard for amended claims 1
`
`and 8. Id. at 9–11.
`
`We agree that original claims 1 and 8 no longer exist because original
`
`claims 1 and 8 have been replaced by amended claims 1 and 8. However,
`
`the issue of whether the Petition and supporting evidence satisfies the
`
`“reasonable likelihood” standard for amended claims 1 and 8 does not
`
`determine whether we can institute, because, as discussed above in our
`
`analysis of claim 2, Petitioner has demonstrated a reasonable likelihood of
`
`prevailing with respect to at least one claim of the ’790 patent challenged in
`
`the Petition. Therefore, we institute on all grounds and all claims challenged
`
`in the Petition which, in this case, are claims 1–14, where claims 1 and 8 are
`
`the currently existing claims as amended by the reexamination certificate.
`
`See PGS Geophysical AS v. Iancu, 891 F.3d 1354, 1360 (Fed. Cir. 2018).
`
`We describe below why we do not believe that our decision runs afoul of the
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`Supreme Court’s cautionary words that “nothing suggests the Director
`
`enjoys a license to depart from the petition and institute a different inter
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`partes review of h[er] own design.” Id. (quoting SAS Institute, Inc. v. Iancu,
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`134 S.Ct. 1348, 1356 (2018)).
`
`18
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`IPR2023-00628
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`Petitioner contends that the Petition as originally filed puts Patent
`
`Owner on notice of how the prior art asserted in the grounds anticipates or
`
`teaches the limitations added to amended claims 1 and 8. Paper 15, 1–2.
`
`Petitioner contends that, when analyzing amended claims 1 and 8, the Board
`
`can consider arguments already presented in the Petition with respect to
`
`limitations from other claims, which were added by amendment to claims 1
`
`and 8. Id. at 2–4 (citing Eizo Corp. v. Barco N.V., IPR2014-00358 (PTAB
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`July 23, 2014) (Paper 11)). Petitioner contends that considering arguments
`
`already presented in the Petition when analyzing amended claims 1 and 8
`
`does not amount to an amendment to the Petition, because neither Petitioner
`
`nor the Board is proposing a new ground, rather, the grounds remain the
`
`same. Id. at 45. Petitioner contends that it can file a motion to submit
`
`supplemental information to confirm that the analysis of the original claims
`
`found in the Petition as originally filed fully address claims 1 and 8 as
`
`amended. Id. at 5–6. Petitioner contends that such supplemental
`
`information would clarify the record that the Petition as originally filed, not
`
`a conclusion reached by the Board, shows that the challenged claims are
`
`unpatentable. Id.
`
`Patent Owner contends that the Petition does not address the amended
`
`claims. Paper 16, 1, 3. Patent Owner contends that in Eizo, the Board
`
`properly considered claim 64 as amended by a reexamination certificate,
`
`because it was a combination of two original claims, 64 and 94, that were
`
`addressed in the Petition. Id. at 4. Patent Owner contends that Petitioner
`
`cannot amend the Petition and cannot submit supplemental information to
`
`allow an entirely new analysis of the claims. Id. at 6–7.
`
`Both parties seem to agree that the Board can analyze a challenged
`
`claim that was amended to include limitations from another challenged
`
`19
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`IPR2023-00628
`Patent 7,233,790 B2
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`claim. Paper 15, 2–4; Paper 16, 4. Both parties seem to agree that the
`
`Petition cannot be amended, and that a new ground cannot be added to the
`
`Petition. Paper 15, 45; Paper 16, 6–7. Both parties seem to disagree on the
`
`factual question of whether the grounds and supporting evidence in the
`
`Petition sufficiently address the limitations of amended claims 1 and 8.
`
`Paper 15, 2; Paper 16, 1.
`
`The contentions of the parties appear consistent with the Supreme
`
`Court’s statements about inter partes review. The Supreme Court has held
`
`that “the petition must identify each claim challenged, the grounds for the
`
`challenge, and the evidence supporting the challenge.” SAS Institute, Inc. v.
`
`Iancu, 138 S.Ct. 1348, 1353 (2018). Here, the Petition identifies claims 1–
`
`14 as the challenged claims, grounds 1 and 2 as the grounds for the
`
`challenge, and Mehta, Schläpfer, and the testimony of Mr. Wechselberger,
`
`along with other exhibits, as the evidence supporting the challenge. Pet. 26–
`
`70. Thus, the Petition, on this record, appears to satisfy SAS. The issue at
`
`this stage appears to be whether the grounds and supporting evidence in the
`
`Petition show that amended claims 1 and 8 are unpatentable. See Axonics,
`
`Inc. v. Medtronic, Inc., 75 F.4th 1374, 1384 (Fed. Cir. 2023) (The Federal
`
`Circuit held that “where a patent owner in an IPR first proposes a claim
`
`construction in a patent owner response, a petitioner must be given the
`
`opportunity in its reply to argue and present evidence of anticipation or
`
`obviousness under the new construction, at least where it relies on the same
`
`embodiments for each invalidity ground as were relied on in the petition.”).
`
`We encourage the parties, during the course of the trial, to explain
`
`whether the grounds and supporting evidence show that claims 1 and 8 as
`
`amended are unpatentable. In particular, we encourage the parties to address
`
`(1) whether the Petition puts Patent Owner on notice of how the prior art
`
`20
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`IPR2023-00628
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`asserted in the grounds anticipates or teaches the limitations of amended
`
`claims 1 and 8, (2) whether considering arguments already presented in the
`
`Petition when analyzin
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