IPR2024-00200
`Patent No. 11,117,056
`UNITED STATES PATENT AND TRADEMARK OFFICE
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`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`PLR WORLDWIDE SALES LIMITED,
`Petitioner
`
`v.
`
`FLIP PHONE GAMES, INC.,
`Patent Owner
`
`__________________
`
`IPR No. IPR2024-00200
`
`Patent No. 11,117,056
`
`_________________
`PATENT OWNER’S PRELIMINARY RESPONSE
`
`
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`TABLE OF CONTENTS
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`IPR2024-00200
`Patent No. 11,117,056
`
`I. 
`II. 
`
`B. 
`
`C. 
`
`2) 
`
`INTRODUCTION ........................................................................................... 1 
`BACKGROUND ............................................................................................. 3 
`A.  Mobile Gaming Technology was Entirely Different as of the June 26,
`2007, Priority Date of the ’056 Patent. ................................................. 3 
`Petitioner’s Faulty Summary of the State of the Art Relies on
`Materials that Are Not Prior Art, Not Raised in Any Ground, and that
`Confirm the Patentability of the ’056 Patent’s Claims. ........................ 6 
`The ’056 Patent and Its Parent Underwent Thorough Prosecution
`Addressing Similar Prior Art as the Petition. ........................................ 8 
`1) 
`Prosecution of the Application that Led to the ’056 Patent. ....... 8 
`2) 
`The Prosecution History of the ’056 Patent’s Parent, the ’202
`Patent, Included the PTAB’s Confirmation of Patentability. ... 11 
`III.  THE BOARD SHOULD DENY INSTITUTION OF THE PETITION. ...... 15 
`Extensive Prosecution History, Including Very Similar Art, Weighs in
`A. 
`Favor of Denial Under § 325(d). ......................................................... 15 
`Part 1 of Advanced Bionics: The Thorough Prosecution History
`1) 
`of the ’056 Patent Considered Substantially the Same Prior Art
`and Arguments Petitioner Presents. .......................................... 16 
`Part 2 of Advanced Bionics: Petitioner Failed to Demonstrate
`that the Office Erred in a Manner Material to the Patentability
`of the Challenged Claims. ......................................................... 21 
`Petitioner’s Inconsistent Claim Construction Positions Before the
`Board and District Court Amount to Abuse of Process ...................... 22 
`Petitioner’s Expert’s Declaration Parrots the Petition and Thus the
`Testimony Provided Therein Should Be Given No Weight. .............. 26 
`Petitioner Failed to Shoulder Its Burden with Respect to Multiple
`Elements of the Independent Claims. .................................................. 33 
`1) 
`Grounds 1-3 Do Not Carry Petitioner’s Burden. ...................... 35 
`2) 
`Grounds 4-6 Do Not Carry Petitioner’s Burden. ...................... 38 
`Petitioner’s References Are Not All “Printed Publication” Prior Art
`Within the Meaning of 35 U.S.C. § 311(b). ........................................ 42 
`IV.  CONCLUSION .............................................................................................. 45 
`
`B. 
`
`C. 
`
`D. 
`
`E. 
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`IPR2024-00200
`Patent No. 11,117,056
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`EXHIBIT LIST
`
`Exhibit
`2001
`
`2002
`
`Description
`Playrix’s Exchange of Proposed Terms and Claim Elements
`for Construction, served January 30, 2024
`Prosecution History of U.S. Patent No. 9,731,202
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`INTRODUCTION
`Patent Owner Flip Phone Games, Inc. (“FPG” or “Patent Owner”) submits
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`IPR2024-00200
`Patent No. 11,117,056
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`I.
`
`this Preliminary Response to Petitioner PLR Worldwide Sales Limited’s (“Playrix”
`
`or “Petitioner”) petition for inter partes review of U.S. Patent No. 11,117,056 (“the
`
`’056 Patent”).
`
`The Petition ignores that the ’056 Patent claims priority to mid-2007—before
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`the release of any modern smartphone—and describes and claims what was at the
`
`time a novel and unconventional way of updating in-game content for mobile
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`devices. In particular, the ’056 Patent updates that in-game content without updating
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`the entire game and does so based on a request to a server, which must identify what
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`content to send, along with a message based on specific criteria and related to the
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`content. Updates of this type were revolutionary and changed the face of mobile
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`gaming because developers could provide new features or levels to drive user
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`engagement, without forcing users to fully update a game or to purchase a new game.
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`The PTAB has already recognized the novelty of the invention claimed by the
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`parent of the ’056 Patent, which proceeded through the full appeal process after
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`which the PTAB confirmed that claims that ultimately issued were novel over the
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`art relied upon by the Examiner. The Petition ignores this fact as well as the
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`fundamental differences between the prior art and the claims of the ’056 Patent, and
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`instead attempts to broaden the claims in this forum to cover any form of content
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`IPR2024-00200
`Patent No. 11,117,056
`that may be transmitted to a mobile device solely to manufacture an artificial
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`invalidity challenge to the claims.
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`The Petition includes other abuses and errors as well. Petitioner adopts
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`inconsistent claim construction positions between the Petition and a parallel district
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`court proceeding involving the ’056 Patent. At the district court and relying on a
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`different expert than the one it relies on here, Petitioner contends that multiple claim
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`terms are indefinite and thus not amenable to construction. Yet both the Petition and
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`the supporting declaration of Dr. José Zagal (Ex. 1003) appear able to apply prior
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`art to these claim terms in this forum. More critically, the “expert” declaration
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`Petitioner submits purporting to be from Dr. Zagal is largely just a word-for-word
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`copy of the Petition itself, confirming that no reliable expert testimony supports the
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`Petition’s faulty conclusions as to issues such as limitations missing from the
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`purported prior art being known or obvious, among other things.
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`These deficiencies are compounded by Playrix presenting similar prior art to
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`that already presented during prosecution, which is similarly lacking as to the claim
`
`element the PTAB found missing during an earlier appeal of the parent of the ’056
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`Patent. Finally, the Petition relies extensively on “secret prior art” under 35 U.S.C.
`
`§ 102(e), which references should not be available in this proceeding under 35
`
`U.S.C. § 311(b). For these reasons and others discussed herein the Board should
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`deny institution.
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`IPR2024-00200
`Patent No. 11,117,056
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`II. BACKGROUND
`A. Mobile Gaming Technology was Entirely Different as of the June
`26, 2007, Priority Date of the ’056 Patent.
`The relevant time for the PTAB to consider is the priority date of the ’056
`
`Patent, June 26, 2007, and at that time the claimed invention was both novel and
`
`non-obvious. The Petition ignores the broader context and history of mobile gaming
`
`in 2007, and instead adopts a hindsight-driven viewpoint to suggest that technology
`
`that was novel in 2007 was somehow well-known and basic simply because it is
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`used widely today.
`
`The ’056 Patent describes and claims a novel and unconventional way of using
`
`mobile gaming and mobile gaming devices, involving “updating in-game content on
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`a mobile communication device” based on specified criteria, which “may prolong
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`user interest in a game for a mobile communication device.” ’056 Patent, 2:14-17.
`
`The innovative mobile gaming technology claimed in the ’056 Patent originates
`
`from mobile game developer Mobile Deluxe (“MDX”), which was founded in 2003
`
`and is the precursor of FPG. At that time, smartphones and modern online stores for
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`smartphone app purchases (“App Stores”) had not been launched, and the mobile
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`gaming landscape was very different than it is today.
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`IPR2024-00200
`Patent No. 11,117,056
`It was not until mid-2008, a full year after the priority date of the ’056 Patent,
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`that App Stores even became available.1 Before that time, mobile games had a very
`
`short life cycle. Wireless carriers each managed their own individual app store or
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`“deck,” with a limited catalog of games (typically several hundred titles). Once that
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`capacity was reached, the carrier would be forced to remove or “sunset” older game
`
`titles to make room for new games.
`
`As the ’056 Patent describes “all video games tend to have a popularity life
`
`span” and after the end of that span, “the user may stop playing that particular game
`
`in favor of others.” Id. at 1:35-39. Because of this short life cycle, carriers,
`
`developers, and publishers did not update a game during its lifetime, and there was
`
`no expectation a game would evolve. Rather, mobile games were a one-time
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`purchase, typically $4.99 to $9.99 each. Instead of updating pre-existing mobile
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`games, developers would, for example, launch a sequel to a game, which would be
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`treated by carriers as a new title, triggering a new lifecycle for that new title. The
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`specification explains that “[a]s game elements become increasingly familiar to
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`players, the game may hold less surprises and/or no longer present a challenge to the
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`user, at which point the user may stop playing that particular game in favor of
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`1 See, e.g., https://www.apple.com/newsroom/2018/07/app-store-turns-10/ (“Apple introduced the
`App Store on July 10, 2008….”); https://pickaso.com/en/2020/google-play-store-evolution
`(“Android’s store that ... launched in 2008 under the name of Android Market, and then renamed
`Google Play Store.”).
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`Patent No. 11,117,056
`others.” Id. at 1:36-39. Thus, at the time the ’056 Patent was filed, mobile games had
`
`a limited life cycle, and game developers addressed loss of user interest by releasing
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`new mobile games rather than updating existing mobile games.
`
`Rather than utilize the then standard model for mobile gaming, MDX decided
`
`to pursue a different approach and invented systems and methods to dramatically
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`change the game a consumer had already downloaded (and paid for). The technology
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`MDX invented allowed carriers to update content and promotions presented to
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`customers through tailored gaming updates. MDX understood that this new
`
`approach to mobile gaming would keep players engaged and keep games fresh. And
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`in fact, MDX’s innovative approach to mobile gaming led MDX to succeed in an
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`extremely competitive market.
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`The ’056 Patent’s claims provide a unique solution to this problem, updating
`
`mobile game content based on a request to a server, along with sending a message
`
`related to the updated content that is based on specific factors such that “a particular
`
`scene within the game may be rearranged so that the user has something new to look
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`at or explore” and that “the updated content may comprise a new level within the
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`game” for example. Id., 4:40-43. The claims thus improve the utility of video games
`
`on mobile devices by allowing videogame content to be updated with content based
`
`on a request to a server, along with a related message, as recited in the claims. See,
`
`e.g., id., 5:15-6:35. This improvement was groundbreaking at the time and was far
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`Patent No. 11,117,056
`from obvious in a pre-App Store and pre-smartphone world that had a static approach
`
`to mobile gaming.
`
`B.
`
`Petitioner’s Faulty Summary of the State of the Art Relies on
`Materials that Are Not Prior Art, Not Raised in Any Ground, and
`that Confirm the Patentability of the ’056 Patent’s Claims.
`The Petition attempts to provide a summary of the state of the art and in so
`
`doing suggests that “[g]ame developers embraced the idea of updateable games even
`
`before mobile games became popular.” Petition at 7. To support this position
`
`Petitioner relies on unauthenticated hearsay that is not even prior art, and which, in
`
`fact, draws the exact opposite conclusion and demonstrates the novelty of the
`
`claimed invention of the ’056 Patent in June 2007.
`
`The Petition begins by discussing references that address the same subject as
`
`addressed during prosecution—updated advertising—and relies on Exhibit 1015, an
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`article purportedly published in Australia and entitled “Productive Play 2.0: The
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`Logic of In-Game Advertising.” See, e.g., Petition at 7. Putting aside that Petitioner
`
`does nothing to authenticate this article, it is not prior art. Indeed, it states on its face
`
`that it was published in February 2009, more than a year and half after the claimed
`
`priority date of the ’056 Patent. See Ex. 1015 at 2. Even then, the first paragraph of
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`the article states that “suggestive events for the future of online gaming took place
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`Patent No. 11,117,056
`in the spring2 of 2007” (Ex. 1015 at 1 (emphasis added)) confirming that as of the
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`June 2007 priority date, the invention provided by the ’056 Patent was novel.
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`The Petition also relies on Exhibit 1016, a thesis entitled Advertising in
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`Computer Games. See, e.g., Petition at 7. While this thesis is stamped with the date
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`September 28, 2006, Petitioner tellingly does not submit any evidence corroborating
`
`it is a publication at all, let alone published on this date, or otherwise authenticating
`
`the Exhibit. Nor does Petitioner rely on Exhibit 1016 as a prior art reference. Further,
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`this thesis supports the novelty of the invention claimed in the ’056 Patent, stating
`
`in its abstract that “[t]his paper suggests advertisers should experiment with in-game
`
`advertising to gain skills that could become vital in the near future.” Ex. 1016 at 2
`
`(emphasis added).
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`The Petition next relies on Exhibit 1017, a press release purported to be dated
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`March 21, 2006, and entitled In-Game Advertising Goes Mobile. See, e.g., Petition
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`at 7. As with Exhibit 1016, Petitioner submits no evidence corroborating the date of
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`alleged publication or authenticating this Exhibit. Petitioner does not rely on Exhibit
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`1017 as a prior art reference, nor could it, as the press release is barely over one-
`
`page and provides no technical details at all. Further as with the other exhibits,
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`Exhibit 1017 confirms the novelty of the ’056 Patent, stating “[i]n the near future,
`
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`2 Spring in Australia runs from September to November, after the June 2007 priority date.
`https://www.australia.com/en-us/facts-and-planning/when-to-go/australias-seasons.html
`7
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`mobile in-game advertising will become increasingly attractive for providers of
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`mobile phones.” Ex. 1017 at 1 (emphasis added). Thus, this press release does not
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`describe prior art, but merely describes what may happen in the future.
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`Finally, the Petition relies on Exhibit 1018, purportedly published in 2001.
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`See, e.g., Petition at 7. Petitioner likewise submits no evidence corroborating the
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`date of alleged publication or authenticating this Exhibit. Exhibit 1018 similarly
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`confirms that in-game content updates were not available at the time of the priority
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`date of the ’056 Patent. Indeed, Exhibit 1018 expressly describes “[t]he biggest
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`change between the current game technologies and the future ones is that in the
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`future it will be possible to offer also games with realtime interactivity.” Ex. 1018 at
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`50 (emphasis added). Further, this article confirms exactly the need to address the
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`problem that the ’056 Patent in fact solved, describing that “life cycle[s] of [] certain
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`game[s] will [be] quite short, and will be replaced by more trendy games very
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`promptly.” Ex. 1018 at 52.
`
`C. The ’056 Patent and Its Parent Underwent Thorough Prosecution
`Addressing Similar Prior Art as the Petition.
`1) Prosecution of the Application that Led to the ’056 Patent.
`FPG filed its Application for the ’056 Patent on April 9, 2020. Ex. 1002 at
`
`135. The Application claimed priority to U.S. Patent No. 9,731,202 (“the ’202
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`Patent”), filed June 26, 2007, and incorporated the ’202 Patent by reference in its
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`entirety. Id. at 200. The Application also noted that it was a continuation of U.S.
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`IPR2024-00200
`Patent No. 11,117,056
`Patent No. 10,617,958 (“the ’958 Patent”) and incorporated the ’958 Patent by
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`reference in its entirety. Id.
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`In the first substantive Office Action mailed on September 15, 2020, the
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`Examiner rejected the claims under § 102 based on U.S. 2008/0307412 (“Marr”). Id.
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`at 98-99. Marr relates to a “distribution server that determines what advertisement
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`to place in a particular advertising space within the game based on considerations
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`such as the game title and the time of day, month year, etc.” Marr at [0004]. The
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`game in Marr is on a “client device” that “may be any other type of network capable
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`device. Such devices include, but are not limited to cellular telephones, personal
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`computers, laptop computers, television set-top boxes, portable internet access
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`devices, portable email devices, portable video game devices, personal digital
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`assistants, digital music players, and the like.” Id. at [0016].
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`The Examiner also rejected the claims under § 103 as allegedly obvious in
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`view of the combination of Marr and U.S. 2006/0136297 (“Willis”). Willis, which
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`was considered in the prosecution history for the ’202 Patent, relates to providing
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`targeted advertising to mobile video game platforms, where the advertising content
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`is delivered to gaming platforms in dependence upon a location of the mobile
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`platform. See Willis at [0015] and [0024]. The Examiner also noted that certain
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`dependent claims were “objected to as being dependent upon a rejected base claim
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`but would be allowable if rewritten in independent form including all of the
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`limitations of the base claim and any intervening claims.” Ex. 2002 at 101. Finally,
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`the Examiner issued a double patenting rejection of the Application based on the
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`’202 and ’958 Patents. Id.
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`In response, FPG amended the Application’s independent claims to include
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`element “send a message relating to the in-game video game content to the mobile
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`communication device in response to receiving the request, wherein the message is
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`pre-selected by the server based on a model type associated with the mobile
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`communication device, a service subscription associated with the mobile
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`communication device, or a service provider for the service subscription associated
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`with the mobile communication device” from the dependent claims the Examiner
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`had pointed out as allowable if incorporated into the independent claims. Id. at 76-
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`80. FPG then argued that the amended independent claims “are therefore allowable
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`at least because of the incorporated subject matter.” Id. at 81.
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`Thereafter, in response to a final Office Action, FPG filed a terminal
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`disclaimer over the ’958 Patent and requested reconsideration of the Application. Id.
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`at 56-64. The Application was then allowed on June 3, 2021. Id. at 30-35, 48. The
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`application that led to the ’056 Patent issued only after its parent was pending for
`
`nearly ten years and received multiple prior art rejections addressing art and
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`argument that is very similarly to what is presented in the Petition.
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`IPR2024-00200
`Patent No. 11,117,056
`2) The Prosecution History of the ’056 Patent’s Parent, the ’202
`Patent, Included the PTAB’s Confirmation of Patentability.
`As discussed, the ’056 Patent claims priority to the ’202 Patent, which went
`
`through a lengthy—almost ten-year—prosecution process, including multiple
`
`appeals, the first of which led the Examiner to reopen prosecution and issue a new
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`non-final rejection, and the second of which reversed the Examiner’s rejections
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`based upon prior art. Petitioner’s repetitive arguments addressing similar prior art
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`should be rejected as insufficient to institute review.
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`FPG filed the application that eventually issued as the ’202 Patent on June 26,
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`2007. Ex. 2002 at 289. The Examiner initially issued multiple rejections based on
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`US 2004/0127279 (“Gatto”). Id. at 100-05, 127-29, 176-81, 202-04, 225-28. Gatto
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`concerns email tickets with a promotional layer that is initially shown to an email
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`recipient and a hidden, secret layer that is gradually revealed following a
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`predetermined action by the recipient. See Gatto at [0010]-[0011]. The email ticket
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`in Gatto also includes authentication information that enables authentication of the
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`ticket so a recipient can potentially win a prize. See id. at [0011].
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`After a series of arguments, FPG amended the claims that ultimately issued
`
`as the ’202 Patent to recite “checking what updated video-game content to send
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`based on one of the factors including a type of the mobile communication device, a
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`telecom service associated with the mobile communication device, and a service
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`provider of the telecom service.” Ex. 2002 at 185-86. FPG explained that Gatto did
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`not anticipate the claims because “Gatto is not relevant video-game content at all.”
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`Id. at 187. Further, “Gatto does not disclose that this so-called content is ‘updated,’
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`or that the program ‘check[s] what updated content to send based on one of the
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`factors including a type of the mobile communication device, a telecom service
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`associated with the mobile communication device, and a service provider of the
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`telecom service.’” Id. at 188. As FPG went on to explain, the claim requires
`
`“‘checking what updated content to send,’ rather than which display program a
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`graphical animation should use.” Id. Such an embodiment was not disclosed by the
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`prior art.
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`After a series of rejections, FPG presented these arguments in a pre-appeal
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`brief (id. at 164-68) and in an appeal brief once the pre-appeal panel determined that
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`the application should proceed to the BPAI. Id. at 132-51. Thereafter, the Examiner
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`reopened prosecution, relying on the same prior art as used previously. Id. at 124-
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`29. However, the Examiner’s rejection was newly based on the Willis reference
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`discussed above as a primary reference for anticipation, and Gatto as a secondary
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`reference in an obviousness rejection of dependent claims. Id.
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`The Examiner added Willis to teach the limitation of “the video-game content
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`is selected based on the location of the mobile communication device” because
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`“Gatto fails to teach the video-game content is selected based on the location of the
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`mobile communication device.” Ex. 2002 at 180. The Examiner went on “Willis
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`discloses video-game content is selected based on the location of the mobile
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`communication device.” Id. (emphasis added).
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`Thus, FPG explained in response to the rejection that “Willis discloses that
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`advertising content is sent merely based on the geographic location of the gamer…
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`Regardless of whether the video game devices disclosed in Willis may be associated
`
`with a ‘type,’ ‘telecom service,’ and/or ‘service provider,’ nothing in Willis discloses
`
`that one of those characteristics, as claimed here, determines the advertising
`
`information sent to those devices according to Willis's method.” Id. at 113 (emphasis
`
`added). Rather, Willis “is directed to techniques for delivering advertising content
`
`to a gaming platform based on the location of the gaming platform.” Id. at 112. The
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`system described by Willis “communicates with a geolocation server to determine a
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`playing location of a gamer and then provides this location information to an
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`advertising broker.” Id. Willis’s “advertising broker determines both the appropriate
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`content and the identities of advertisement service providers for serving the content
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`to the platform.” Id.
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`Thus, as FPG explained to the Examiner, “[n]othing in Willis, however,
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`discloses that ‘updated video-game content’ is sent or uploaded ‘based on one of the
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`factors including a type of the mobile communication device, a telecom service
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`associated with the mobile communication device, and a service provider of the
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`telecom service.” Id. at 113.
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`The Examiner maintained the rejection and thus FPG filed a second notice of
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`appeal to the PTAB. Id. at 91, 99-106. On appeal, FPG distinguished the claimed
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`invention from the prior art based on the same claim element requiring “checking
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`what updated video-game content to send based on one of the factors including a
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`type of the mobile communication device, a telecom service associated with the
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`mobile communication device, and a service provider of the telecom service.” Id. at
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`73-81.
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`The PTAB issued a decision reversing the Examiner’s rejection of the
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`application. Id. at 40-43. The PTAB explained that “[w]e concur with Appellant’s
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`argument that the Examiner erred in rejecting independent claim 15 under 35 U.S.C.
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`§ 102(b) as being anticipated by Willis.” Id. In particular, the PTAB explained that
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`“Willis does not disclose, either expressly or inherently, the limitation ‘checking
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`what updated video-game content to send based on one of the factors including a
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`type of the mobile communication device, a telecom service associated with the
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`mobile communication device, and a service provider of the telecom service.’” Id.
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`The Board did not include any new ground of rejection.
`
`Thus, the PTAB in addressing the ’202 Patent distinguished the prior art based
`
`on a claim element similar to one recited in the independent claims of the ’056
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`Patent.
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`’202 Patent Element
`Found Patentable by
`PTAB (Ex. 2002 at 40-
`43.)
`checking what updated
`video-game content to
`send based on one of the
`factors including a type
`of the mobile
`communication device, a
`telecom service
`associated with the
`mobile communication
`device, and a service
`provider of the telecom
`service
`
`
`
`’056 Patent, Claim 1
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`IPR2024-00200
`Patent No. 11,117,056
`’056 Patent, Claim 9
`
`the message is pre-
`selected by the server
`based on a model type
`associated with the
`mobile communication
`device, a service
`subscription associated
`with the mobile
`communication device,
`or a service provider for
`the service subscription
`associated with the
`mobile communication
`device
`
`the message is pre-
`selected by the server
`based on a model type
`associated with the
`mobile communication
`device, a service
`subscription associated
`with the mobile
`communication device,
`or a service provider for
`the service subscription
`associated with the
`mobile communication
`device
`
`III. THE BOARD SHOULD DENY INSTITUTION OF THE
`PETITION.
`A. Extensive Prosecution History, Including Very Similar Art,
`Weighs in Favor of Denial Under § 325(d).
`The Board should exercise its discretion to deny institution under § 325(d)
`
`because the Petition presents “the same or substantially the same prior art or
`
`arguments previously … presented to the Office,” 35 U.S.C. § 325(d), and because
`
`Petitioner failed to meet its burden to show material error with respect to such art or
`
`arguments. Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH,
`
`IPR2019-01469, Paper 6 (PTAB Feb. 13, 2020) (precedential) (“Advanced
`
`Bionics”); Becton, Dickinson & Co. v. B. Braun Melsungen AG, IPR2017-01586,
`
`US2008 23091265 1
`
`15
`
`
`

`

`IPR2024-00200
`Patent No. 11,117,056
`Paper 8 (PTAB Dec. 15, 2017) (precedential as to Section III.C.5, first paragraph)
`
`(“Becton”).
`
`Under Advanced Bionics, the Board first considers “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.”
`
`IPR2019-01469, Paper 6 at 7-8. If “either condition of [the] first part of the
`
`framework is satisfied,” the Board then considers “whether the petitioner has
`
`demonstrated that the Office erred in a manner material to the patentability of
`
`challenged claims.” Id. at 8. “If the petitioner fails to show that the Office erred, the
`
`Director may exercise his discretion not to institute inter partes review.” Id. (citing
`
`Becton, IPR2017-01586, Paper 8 at 24).
`
`Here, institution should be denied because substantially the same prior art and
`
`arguments previously were presented to the Office, the Examiner correctly resolved
`
`them, and Petitioner makes no allegations to the contrary.
`
`1) Part 1 of Advanced Bionics: The Thorough Prosecution History
`of the ’056 Patent Considered Substantially the Same Prior Art
`and Arguments Petitioner Presents.
`As explained in further detail above, the ’056 Patent also incorporates by the
`
`reference the ’202 Patent, prosecution of which began in 2007 and proceeded for
`
`nearly ten years. This extended prosecution included multiple Office Actions, a pre-
`
`appeal brief, two appeal briefs, and ultimately a decision from the PTAB reversing
`
`US2008 23091265 1
`
`16
`
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`

`

`IPR2024-00200
`Patent No. 11,117,056
`the Examiner’s rejection. During this time the Examiner and the PTAB addressed
`
`two references that are similar to the primary references relied upon by the Petition.
`
`The prosecution history of the ’202 Patent is relevant under § 325(d) for
`
`determining whether to institute a petition for IPR of its child, the ’056 Patent. Edge
`
`Endo, LLC v. Michael Scianamblo, IPR2018-01321, Paper 15 at 15-16 (PTAB Jan.
`
`14, 2019) (exercising discretion to deny institution under § 325(d), and “find[ing]
`
`that the respective prosecutions of related [patents] are pertinent for consideration of
`
`whether to exercise our discretion to deny institution under Section 325(d).”);
`
`Microsoft Corp., et al. v. Koninklijke Philips N.V., IPR2018-00279, Paper 11 at 9-
`
`19 (PTAB June 8, 2018).
`
`The nearly ten-year examination of the parent of the ’056 Patent weighs
`
`heavily against institution of a proceeding based on the Petition here. See Juniper
`
`Networks, Inc. v. Mobile Telecommunications Techs., LLC, IPR2017-00642, 2018
`
`WL 1358386, at *4 n. 5 (Mar. 14, 2018) (finding that “additional circumstances,”
`
`which may include a long prosecution history and prior appeals to the Board, “may
`
`be relevant to our exercise of discretion under § 325(d) in the context of
`
`examination.”); see also Kayak Software Corp., et al. v. IBM Corp., No. CBM2016-
`
`00075, at *12-13 (P.T.A.B. Dec. 15, 2016) (designated informative) (“While length
`
`of prosecution and the numbers of Office Actions and Board Decisions do not, by
`
`themselves, definitively mandate for or against institution on a particular ground, on
`
`US2008 23091265 1
`
`17
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`

`IPR2024-00200
`Patent No. 11,117,056
`these facts, we are persuaded that they do weigh heavily against institution of the
`
`prior art grounds proffered by Petitioner.”).
`
`Further, there are similarities between the art in this Petition and the art in the
`
`’056 Patent’s prosecution. This is another factor that weighs against institution. See
`
`Juniper Networks, Inc., 2018 WL 1358386, at *4; 35 U.S.C.A. § 325(d) (“In
`
`determining whether to institute ... the Director may take into account whether, and
`
`reject the petition or request because, the same or substantially the same prior art or
`
`arguments previously were presented to the Office.”).
`
`As explained, during prosecution of the Application that led to the ’202 Patent
`
`the Examiner and Board considered Willis. The very same reference was considered
`
`during the prosecution of the ’056 Patent as well. Willis is “related to dynamic
`
`content delivery,” and more particularly providing new advertising content to mobile
`
`video games. See Willis at [0002] (“relates to dynamic content delivery, and more
`
`particularly to a system and a method of delivering dynamic content that is
`
`dependent on the geographic location (geolocation) of the recipient.”). Indeed,
`
`Willis explains that it “describe[s] insertion of advertising content into video games
`
`during execution thereof, advertising content delivered to mobile platforms and
`
`based on geographic location information is generally advantageous.” Id. at [0039].
`
`The new advertising content in Willis is selected based on the geographical location
`
`of the mobile platform. Id. Similarly, the primary reference relied upon by the
`
`US2008 23091265 1
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`18
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`

`

`IPR2024-00200
`Patent No. 11,117,056
`Examiner during prosecution of the ’056 Patent was U.S. 2008/0307412 to Marr,
`
`which describes a distribution server to provide adve