Trials@uspto. gov
`571-272-7822
`
`Paper 58
`Date: March 12, 2024
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`IRONSOURCE LTD.,
`Petitioner,
`
`V.
`
`DIGITAL TURBINE INC.,
`Patent Owner.
`
`PGR2022-00053
`Patent 11,157,256 B2
`
`Before KALYAN K. DESHPANDE,Vice ChiefAdministrative Patent
`Judge, MONICA S. ULLAGADDIand IFTIKHAR AHMED,
`Administrative Patent Judges.
`
`AHMED, Administrative Patent Judge.
`
`JUDGMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`Granting Petitioner’s Motion on Collateral Estoppel
`Granting Patent Owner’s Revised Motion to Amend
`Dismissing Petitioner’s Motion to Exclude
`35 U.S.C. $§ 326(d), 328(a); 37 CFE-R. § 42. 64(c)
`
`
`571-272-7822
`
`Paper 58
`Date: March 12, 2024
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`IRONSOURCE LTD.,
`Petitioner,
`
`V.
`
`DIGITAL TURBINE INC.,
`Patent Owner.
`
`PGR2022-00053
`Patent 11,157,256 B2
`
`Before KALYAN K. DESHPANDE,Vice ChiefAdministrative Patent
`Judge, MONICA S. ULLAGADDIand IFTIKHAR AHMED,
`Administrative Patent Judges.
`
`AHMED, Administrative Patent Judge.
`
`JUDGMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`Granting Petitioner’s Motion on Collateral Estoppel
`Granting Patent Owner’s Revised Motion to Amend
`Dismissing Petitioner’s Motion to Exclude
`35 U.S.C. $§ 326(d), 328(a); 37 CFE-R. § 42. 64(c)
`
`
`
`PGR2022-00053
`Patent 11,157,256 B2
`
`I.
`
`INTRODUCTION
`
`IronSource Ltd. (“Petitioner”) requested a post-grant review of claims
`
`1—22 (the “challenged claims”) ofU.S. Patent 11,157,256 B2 (Ex. 1001, “the
`
`°256 patent”). Paper 1 (““Petition” or “Pet.”). Digital Turbine Inc. (“Patent
`
`Owner’) filed a Preliminary Response. Paper9. Applying the standard set
`
`forth in 35 U.S.C. § 324(a), we instituted a post-grant review ofthe
`
`challenged claims. Paper 10 (“Inst. Dec.”).
`
`After institution, Patent Ownerfiled a Patent Owner Response
`
`(Paper 14, “PO Resp.”), Petitionerfiled a Reply to Patent Owner’s Response
`
`(Paper 19, “Pet. Reply”), and Patent Ownerfiled a Sur-reply (Paper 34, “PO
`
`Sur-reply”). Additionally, Patent Ownerfiled a Contingent Motion to
`
`Amendunder 37 C.F.R. § 42.221 (Paper 15), Petitioner filed an Opposition
`
`to the MTA(Paper 29), and we issued a preliminary guidance preliminarily
`
`determining Patent Owner hadfailed to show that the proposed substitute
`
`claims had requisite written description support under 35 U.S.C. § 112(a)
`
`and also that Petitioner has demonstrated a reasonablelikelihood of
`
`establishing that proposed substitute claims are unpatentable as obvious in
`
`view ofthe asserted art (Paper 27).
`
`Patent Ownerthen filed a Revised Contingent Motion to Amend
`
`(Paper 35, “Revised MTA”or “RMTA”). Petitioner filed an Opposition to
`
`the Revised MTA (Paper 39, “RMTA Opp.”), Patent Ownerfiled a Reply to
`
`Petitioner’s Opposition to the Revised MTA(Paper 48, “RMTA Reply”),
`
`and Petitionerfiled a Sur-reply to Patent Owner’s Reply to the Revised
`
`MTA(Paper 52, “RMTASur-reply”).
`
`An oral argument washeld in this proceeding on January 26, 2024,
`
`and a transcript was entered into the record. Paper 57 (“Tr.”).
`
`
`
`PGR2022-00053
`Patent 11,157,256 B2
`
`Wehave jurisdiction under 35 U.S.C. § 6. This Decision isafinal
`
`written decision under 35 U.S.C. § 328(a) as to the patentability of claims
`
`1—22 of the ’256 patent. For the reasons discussed below, we determine that
`
`Petitioner has shownbya preponderance ofthe evidencethat claims 1—22 of
`
`the ’256 patent are unpatentable. We grant Patent Owner’s Revised
`
`Contingent Motion to Amend as to proposed substitute claims 23-37.
`
`I. BACKGROUND
`
`A, Real Parties in Interest
`
`Petitioner identifies itselfas the real party-in-interest. Pet. 1. Patent
`
`Owneridentifies itselfas the real party-in-interest. Paper 4, 1.
`
`B. RelatedMatters
`
`The parties identify PGR2021-00096 challenging U.S. Patent
`
`10,782,951 (“the °951 patent”), ofwhich the ’256 patent is a continuation.
`
`Pet. 1; Paper 4, 1.
`
`C. The ’256 Patent (Ex. 1001)
`
`The ’256 patent, titled “Instant Installation ofApps,” wasfiled on
`
`August 13, 2020, as Application No. 16/992,194 (“the ’194 application”).
`
`Ex. 1001, codes (21), (22), (54). The patent describes an installation client
`
`for installing new software applications (“apps”) on a device, without
`
`redirecting the device to anapp store.
`
`/d. at 1:52—54. Theinstallation client
`
`enables users to download new appsin the background while maintaining
`
`interaction with their currently-used application. /d. at 2:6—12.
`
`
`
`PGR2022-00053
`Patent 11,157,256 B2
`
`Figure | of the ’256 patent is reproduced below.
`
`100
`
`
`
`Figure 1, above, shows a block diagram of device 100 for running software
`
`applications, which includes processor 110 connected to non-transitory
`
`memory 120, which stores apps 130 and installation client 140.
`
`/d. at 9:22—
`
`25, 9:36—-54. Device 100 may bea mobile device.
`
`/d. at 9:41—42.
`
`The ’256 patent describes the following example of a user using an
`
`app running on device 100:
`
`The current app displays an “instant install” link (e.g. an ad
`containing a clickable link) for a different app (denoted herein
`the newapp). When theuserselects the “instant install” link in
`order to download the new app,installation client 140 1s invoked
`torun inthe background. The current appis not exited. The user
`may continue to use the current app without being aware that
`installation client 140 is now active in the background.
`Installation client 140 automatically downloads an installation
`file for the newapp.... The installation file is used to install the
`new app on the device.
`
`Td. at 9:43—54.
`
`
`
`PGR2022-00053
`Patent 11,157,256 B2
`
`The ’256 patent describes different methods for downloading the
`
`applicationfile. See id. at 9:59-10:3. For example, “installation client 140
`
`obtains address information (e.g. a link) to the installation file” by
`
`“[q]uerying an addressrepository (e.g. on an external server) over the
`
`network and receiving the address information in response to the query.” /d.
`
`Figure 6 of the ’256 patent is reproduced below.
`
` ; Instant
`
`instal
`app selected
`
`Lee eeeeeee eeeee eneeed
`
`:
`at? 860
` i
`
`Figure 6, above, showsa flowchart illustrating a methodfor installing
`
`software applications on a device, beginning with selecting an install link for
`
`an app (step 610), followed by determining whetheraninstallation client1s
`
`available (step 620).
`
`/d. at 13:55—63. If“YES,” the installation clientis
`
`invokedin the background (step 630), and proceeds to download the
`
`installationfile for the app (step 640) andinstall the app using the
`
`installation file (step 650). /d. at 13:64—14:2. If“NO,”the device is
`
`redirected to an app store (step660).
`
`/d. at 14:3—4.
`
`
`
`PGR2022-00053
`Patent 11,157,256 B2
`
`Figure 7 of the ’256 patent is reproduced below.
`
`:
`
`installation Client
`
`
`
`Figure 7, above, shows a schematic diagram ofinstallation client 700,
`
`including several modules. /d. at 14:10—13. User Experience (UX) module
`
`UX 710 handlesinteraction with the user, and supports functionality such as
`
`providing app details, handling animationsfor display, and handling
`
`operations when aninstall link is selected. /d. at 14:19-31. Download and
`
`Installer 720 downloads and installs the new app whentheinstall link is
`
`selected. /d. at 14:32—37. Reporter 750 monitors events occurring in the
`
`installation client, such as clicks on links, user confirmationto install app,
`
`successful download, successful install and other status/failure related
`
`events. /d. at 14:38—51.
`
`D. Challenged Claims
`
`Petitioner challenges claims 1—22, ofwhich claims 1, 14, and 21 are
`
`independent claims. Claim 1 is reproduced below.
`
`[pre] A network-connected device configured for running
`1.
`software applications, comprising:
`
`
`
`PGR2022-00053
`Patent 11,157,256 B2
`
`[a] a network interface configured for communicating over a
`network;
`
`[b] at least one non-transitory computer readable storage medium
`storing instructions; and
`
`[c] at least one processor associated with said networkinterface
`and said storage medium, configured for executing said
`instructionsto:
`
`[d]
`
`identify that a link for installation of a first software
`application is selected by user interaction with a second
`software application running on said device, the link being
`embedded in content displayed on said device by the second
`software application;
`
`[e]
`
`in response to said identifying, determine whether an
`installation client for downloading andinstalling applications
`on said device is available on said device, said installation
`client comprising a third software application;
`
`[f] whensaid installation client is available on said device:
`
`[f1] invoke, without exiting said second software application,
`said installation client for downloading and installing
`applications on said device to run in the background on
`said device;
`
`[f2] instruct said installation clientto automatically download
`an installation file of said first software application to said
`device over said network using said network interface in
`the background onsaid device, without directing said user
`interaction to an app store; and
`
`[f3] using said downloadedinstallation file, install said first
`software application on said device in the background on
`said device while maintaining a user experience of
`interaction with said second software application in the
`foreground; and
`
`[g] whensaid installation client is unavailable on said device,
`redirect said device to an app store for downloadingsaidfirst
`software application on said device.
`
`Ex. 1001, 21:2—40 (annotations from Pet. 8—9).
`
`
`
`PGR2022-00053
`Patent 11,157,256 B2
`
`E. The Asserted Grounds
`
`Weinstituted trial based on the following groundsofunpatentability:
`
`
`
`2, AIS, Ta
`
`353.57, 15-17,
`
`Eligibility
`
`Pasha, Yamada
`Pasha. Molinet’
`
`Inst. Dec. 7, 58; Pet. 4. Petitioner supports its arguments with declaration
`
`testimony ofKevin C. Almeroth, Ph.D. Ex. 1008. Patent Owner supports
`
`its arguments with declaration testimony ofZhuoquing Morely Mao, Ph.D.
`
`Exs. 2005, 2012.
`
`IH. PETITIONER’S MOTION ON COLLATERAL ESTOPPEL
`
`With our authorization, Petitioner filed a Motion to Preclude Patent
`
`Owner’s Arguments Based on Issue Preclusion/Collateral Estoppel and
`
`Waiver. Paper 47 (“Motion”). Patent Ownerfiled an Opposition (Paper 49,
`
`“Opp.’’), Petitioner filed a Reply (Paper 51, “Mot. Reply), and Patent Owner
`
`filed a Sur-reply (Paper 53, “Mot. Sur-reply’’).
`
`' Welist the challenged claims for the anticipation and obviousness grounds
`based on actual arguments presented in the Petition (see Pet. 49-86) andnot
`the claims listed at the beginning ofthe Petition(see id. at 4).
`7 U.S. Patent 10,353,686 B1, filed December28, 2016, issued July 16, 2019
`(Ex. 1003, “Pasha”).
`> U.S. Patent Application No. 2010/0095294 A1, published April 15, 2010
`(Ex. 1004, “Yamada’”’).
`‘U.S. Patent Application No. 2016/0142859 A1, published May 19, 2016
`(Ex. 1005, “Molinet’).
`
`
`
`PGR2022-00053
`Patent 11,157,256 B2
`
`A. Collateral Estoppel as to Petitioner’s $$ 102, 103 Challenges
`
`I. Petitioner’s Contentions
`
`Petitioner contendsthat “[b]ased on the doctrines of collateral
`
`estoppel and waiver,all claims ofthe ’256 patent are invalid” in view of our
`
`final written decision in PGR2021-00096. Mot. 1 (citing ironSource Ltd. v.
`
`Digital Turbine Inc., PGR2021-00096, Paper 49 (PTAB Jan. 4, 2023) (“the
`
`°096 Decision”)). Petitioner points out, “[i]n the ’096 Decision, the Board
`
`construed several contested claim terms,including ‘invoke,’ ‘redirect,’ and
`
`‘deep link,’ and found all claims ofthe ’951 patent invalid as being
`
`anticipated by, or obvious in view of [Pasha].” /d. Petitioner also notes that
`
`Patent Ownerfiled a notice of appeal to the Federal Circuit challenging the
`
`°096 Decision ([PGR2021-00096], Paper 50), but subsequentlyfiled an
`
`uncontested motion to terminate the appeal, which was granted on October
`
`20, 2023 (PGR2021-00096, Paper 51), rendering the °096 Decisionfinal. /d
`
`at 1-2. Petitioner further notes that the 256 patent challenged hereis a
`
`continuation ofthe application that issued as the 951 patent, with an
`
`identical specification, and nearly identical claims. /d. at 2. Petitioner
`
`contends that “independentclaims 1, 14, and 21 ofthe ’256 patent are
`
`slightly broader than corresponding claims 1, 12, and 17 of the °951 patent,”
`
`and the dependent claims ofthe ’256 patentare identical to the dependent
`
`claims ofthe ’951 patent or have only insubstantial differences. /d. at 2-3,
`
`App’x. Petitioner’s table “summariz[ing] the correspondence of claims of
`
`the ’256 patent with those in the now invalid parent, the 951 patent,” 1s
`
`reproducedbelow.
`
`
`
`1
`
`US
`16
`13
`14
`
`18 (substantially similar to claim
`15, but “automatic download” now
`reads “installation”
`19
`20 “non-mobile device”
`21 (see claim 1) same broadening
`
`15
`
`15
`
`17 (see claim 1
`
`Id. at 3-4.
`
`Petitioner contends that the same issuesofpatentability were decided
`
`in the ’096 Decision given the substantially identical independentclaims.
`
`Petitioner identifies two differences between the independent claims ofthe
`
`°951 patent and the ’256 patent: (1) the term “mobile device” in the 951
`
`10
`
`PGR2022-00053
`Patent 11,157,256 B2
`
`1 — preamble broadenedto “network|1 - preamble recites a “mobile
`connected device”
`device”
`1 — redirecting element broadened__|1 — redirecting clause recites “for
`to “for downloading”(7.e., “and
`downloading andinstalling...”
`installing” removed
`2
`
`sD
`1
`
`OO
`ee
`7
`8 (substantially similarto claim 7,|7
`
`but“automaticdownload”now FO
`
`reads“installation”
`
`O0 1
`0t
`
`2 (non-mobile device
`IS
`10
`
`
`
`PGR2022-00053
`Patent 11,157,256 B2
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`patent has been broadened to “network connected device”in the ’256 patent,
`
`and (2) the last limitation ofthe ’256 patent’s independentclaimsrecites
`
`“downloading”instead of “downloading and installing.” /d. at 6—7 (citing
`
`Paper 14,3). Petitioner contends those differences “do not materially alter
`
`the question ofvalidity” that was previously decided,1.e., that the
`
`independent claims ofthe 951 patent are anticipated by Pasha. /d. at 7. As
`
`such, Petitioner argues, “independent claims 1, 14, and 21 of the ’256 patent
`
`are anticipated by Pasha based on the doctrine of collateral estoppel.” /d.
`
`Petitioner contends that dependent claims 2, 4-10, 13, 15, 17-19 and
`
`22 of the ’256 patent are invalid underthe doctrine of collateral estoppel
`
`because those claims correspond to dependent claims 3-11, 14-16, and 18 of
`
`the °951 patent, which were found to be anticipated by Pasha. /d. at 7-8
`
`(citing ’096 Decision 60, 62, 66). Petitioner also contends that dependent
`
`claims 2, 3, 5—7, 15—17, and 22 of the ’256 patent are invalid underthe
`
`doctrine of collateral estoppel because those claims correspond to dependent
`
`claims 2, 4-6, 11, 13, 14, 16, and 18 of the °951 patent, which were found to
`
`be obvious over Pasha. /d. at 7—8 (citing ’096 Decision 66).
`
`Petitioner contends dependentclaims8, 12, 18, and 20 of the ’256
`
`patent do not have exact counterparts in the °951 patent, but have limitations
`
`whichare inconsequential to the question ofvalidity. /d. Petitioner asserts
`
`that “Patent Ownerclearly agrees that these claimsare not patentably
`
`distinct, as it has not separately argued in favor ofpatentability of any of
`
`these claims, instead relying solely on its argumentsin favor ofthe
`
`patentability ofthe independent claims.” /d. Petitioner contendsthat claims
`
`12 and 20 merely adda recitation that the “network connected device”is a
`
`“non-mobile device,” and this has no bearing on the question of invalidity
`
`over Pasha because Patent Owner has never argued this as a patentable
`
`11
`
`
`
`PGR2022-00053
`Patent 11,157,256 B2
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`difference and because Pasha teachesvarious non-mobile devices. /d. at 8-9
`
`(citing Ex. 1003, 3:25—32; Ex. 1008 4 112).
`
`Petitioner contendsthat claims 8 and 18 of the ’256 patent make
`
`minor changesto the language of claims 7 and 15 of the °951 patent,
`
`removing a “prior to” temporallimitation from the ’951 patent claims and
`
`replacing the “automatic download”limitation with “installation.” /d. at 10.
`
`That, Petitioner contends, “is a distinction without a patentable difference.”
`
`Id. According to Petitioner, “the differences between the unadjudicated
`
`patent claims andadjudicated patent claims do not materially alter the
`
`question of invalidity.” /d. at 9-10 (quoting Ohio Willow Wood Co.v. Alps
`
`S., LLC, 735 F.3d 1333, 1342 (Fed. Cir. 2013)).
`
`2. Patent Owner’s Opposition
`
`Patent Owner respondsthat Petitioner’s motion should be denied as
`
`mootbecausebriefing with respect to the issued claims ofthe ’256 patent
`
`was completed before Petitioner filed its motion. Opp. 1. As to dependent
`
`claims 8, 12, 18, and 20, Patent Ownerarguesthat these claimsdiffer
`
`materially in scope from those considered in PGR2021-00096 and thus
`
`collateral estoppel does not apply to these claims. /d. at 2. According to
`
`Patent Owner,“claims8 and 18 are different with respect to: (1) the timing
`
`of the user prompt and (2) what action is performed—ainstallation versus
`
`automatic download,” and the Board has not considered these aspects in the
`
`prior proceeding. /d. at 2—3 (citing Ohio Willow, 735 F.3d at 1342). Patent
`
`Owneralso arguesthat claims 12 and 20 are different becausetheyrecite “a
`
`non-mobile device,” whereas theclaims ofthe 951 patent specifically
`
`pertain to “a mobiledevice.” /d. at 3. Patent Ownerthus contendsthat the
`
`validity of claims 8, 12, 18, and 20 should be determined according to the
`
`groundsin the Petition.
`
`12
`
`
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`PGR2022-00053
`Patent 11,157,256 B2
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`3. Our Analysis
`
`It is well established that collateral estoppel applies to AIA
`
`proceedings before the Board. See Google LLC v. HammondDev. Int’l,
`
`Inc., 54 F.4th 1377, 1381 (Fed. Cir. 2022) (citing Papst Licensing GMBH &
`
`Co. KG v. Samsung Elecs. Am., Inc., 924 F.3d 1243, 1251 (Fed. Cir. 2019)).
`
`Collateral estoppel in AIA proceedings “‘is not limited ‘to patent claimsthat
`
`are identical. Rather, it is the identity ofthe issues that werelitigated that
`
`determines whethercollateral estoppel should apply.’” Nestle USA, Inc. v.
`
`Steuben Foods, Inc., 884 F.3d 1350, 1352 (Fed. Cir. 2018) (quoting Ohio
`
`Willow, 735 F.3d at 1342).
`
`The party seeking to invoke collateral estoppel must show:(1)
`the issue is identical to one decidedin thefirst action; (2) the
`issue was actually litigated in the first action; (3) resolution of
`the issue wasessential to a final judgmentin thefirst action; and
`(4) [the party against who collateral estoppel is being asserted]
`had a full and fair opportunity to litigate the issue in the first
`action.
`
`Google, 54 F.4th at 1381 (quoting /n re Freeman, 30 F.3d 1459, 1465 (Fed.
`
`Cir. 1994)). Collateral estoppel may also operateto barre-litigation of
`
`commonissuesin actions involving different but related patents. Mycogen
`
`Plant Science, Inc. v. Monsanto Co., 252 F.3d 1306, 1310 (Fed. Cir. 2001)
`
`(citing Amgen, Inc. v. Genetics Inst., Inc. ,98 F.3d 1328, 1329-32 (Fed. Cir.
`
`1996); Interconnect Planning Corp.v. Feil, 774 F.2d 1132, 1136 (Fed. Cir.
`
`1985)).
`
`Weare persuadedthat each ofthe four Goog/e requirements is
`
`satisfied and, accordingly, agree with Petitioner that the challenged claims of
`
`the ’256 patent are unpatentable in light of our Final Written Decision in
`
`PGR2021-00096.
`
`13
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`
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`PGR2022-00053
`Patent 11,157,256 B2
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`Patent Ownerdoes“not argue that collateral estoppel ‘does not
`
`attach.’” Mot. Sur-reply 1. Instead, Patent Owner’s argumentis that the
`
`motion should be denied because briefing was complete when Petitioner’s
`
`motion wasfiled and Patent Ownerno longer had an opportunity to make
`
`new or additionalarguments. Opp. 1. PatentOwner, however, doesnotcite,
`
`nor can wefind, any authority for this proposition.
`
`On the contrary, the Federal Circuit has held that collateral estoppel
`
`“applies even though the precluding judgment... comes into existence
`
`while the case as to which preclusion 1s sought... is on appeal.” Google,
`
`54 F.4th at 1381 (quoting Soverain Software LLC v. Victoria’s Secret Direct
`
`BrandMemt., LLC, 778 F.3d 1311, 1315 (Fed. Cir. 2015)) (emphasis
`
`added). In Google, the preclusive judgment which petitioner relied upon
`
`became final we// after petitioner Googlefiled an interpartes review
`
`petition and wasnotable toraise its collateral estoppel argumentin its
`
`petition or in its subsequent papers before the Board.
`
`/d. Under such
`
`circumstances, the court held, petitioner does notforfeit its collateral
`
`estoppel argumentbyraising it for the first time on appeal. /d. (citing
`
`Soverain Software, 778 F.3d at 1315).
`
`Here too, Petitioner could not haveraised its collateral estoppel
`
`argumentbefore the briefing on the merits ofthis case completed because
`
`Patent Owner had appealed our ’096 Decision to the Federal Circuit. See
`
`PGR2021-00096, Paper 50. That appeal was dismissed by the court, on a
`
`motion by Patent Owner, on October 20, 2023. PGR2021-00096, Paper 51.
`
`Petitioner’s collateral estoppel argumentis therefore not forfeited or
`
`rendered mootbyraising it for the first time after October 13, 2023—after
`
`merits briefing was complete. Paper 11,11; Paper 45. Oral arguments in
`
`this proceeding, and more importantly, our final written decision in this
`
`14
`
`
`
`PGR2022-00053
`Patent 11,157,256 B2
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`proceeding, werestill pending when Petitionerfiled its motion. Paper 37, 6.
`
`Under such circumstances, we are not persuadedthat Petitioner’s estoppel
`
`arguments can be rendered moot based simply on the briefing schedule of a
`
`case. See Ohio Willow, 735 F.3d at 1342 (“Collateral estoppel protects a
`
`party from havingto litigate issues that have been fully andfairly tried in a
`
`previous action and adversely resolved against a party-opponent.”’); see also
`
`Ohio Willow Wood Co. v. ALPS S., LLC, No. 2:04-CV-1223, 2012 WL
`
`2196083, at *7(S.D. Ohio June 15, 2012) (ruling on a motion for summary
`
`judgment on the issue of collateral estoppel while motions addressed to the
`
`merits werestill pending).
`
`Turning to the four requirements laid out in Google, Patent Owner
`
`disputes only thefirst one, and only as to four dependent claims. Opp. 2-3.
`
`Asevident from the Petitioner’s claim comparisontable, reproduced above,
`
`the claims ofthe ’256 patent are almost identical to the claims ofthe 951
`
`patentor use s/ightly different language to describe substantially the same
`
`invention. See also Mot. App’x. Theasserted anticipation and obviousness
`
`grounds based on Pasha are identical to those that we resolved in the prior
`
`proceeding.
`
`Patent Ownerarguesthat “claims 8 and 18 are different with respect
`
`to: (1) the timing ofthe user prompt and (2) whataction is performed—
`
`installation versus automatic download.” /d. at 2-3. As to the first
`
`difference, claims 8 and 18 of the ’256 patentare, in fact, broader than the
`
`corresponding ’951 patent claims becausethey do not require the “prior to”
`
`temporal limitation, and thus, our prior findings would apply equally to these
`
`claims. As tothe second difference, we do not view the change from
`
`“automatic download”to “installation” to be a substantial difference given
`
`that the independent claims ofthe ’951 patent already recitesucha
`
`15
`
`
`
`PGR2022-00053
`Patent 11,157,256 B2
`
`functionality, and ourprior findingsas to those aspects would apply equally
`
`here. Weare therefore not persuadedthat this aspect creates a new issue of
`
`validity for us to resolve.
`
`Likewise, the limitation “non-mobile device” in claims 12 and 20 is
`
`not a substantial difference given that the claimed invention is directed to
`
`running software applications. The ’256 patent specification broadly defines
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`non-mobile devicesto include “network enabled devices” (Ex. 1001,
`
`2:65—67), and we have foundthat Pasha’s “computer system 600”teaches
`
`such devices. See, e.g., 096 Decision 38 (citing Ex. 1003, 23:14—56).
`
`Further, Patent Ownerhas never argued that the mobile or non-mobile
`
`aspect ofthe device is important to patentability to either the °951 or ’256
`
`patent claims. This differencetherefore does not materially alter the
`
`question ofpatentability. See Soverain Software, 778 F.3d at 1319-20
`
`(holding that the unadjudicated claim’s additionallimitation did not
`
`materially alterthe question ofpatentability because it simply involved the
`
`“routine incorporation ofInternet technology into existing processes,” which
`
`would have been obvious). Federal Circuit precedent does notlimit
`
`collateral estoppel to patent claimsthat are identical. Rather, it is the
`
`identity ofthe issues that were litigated that determines whethercollateral
`
`estoppel shouldapply. See Ohio Willow, 735 F.3d at 1342. Weare not
`
`persuaded that the differences in claims 8, 12, 18, and 20 create a new issue
`
`of validity.
`
`Since the issues of patentability of claims 1-18 of the ’951 patent
`
`and claims 1—22 of the ’256 patentare identical and the other elements of
`
`collateral estoppel are undisputed, we determine that collateral estoppel
`
`applies and, accordingly, hold claims 1—22 of the ’256 patent
`
`unpatentable. See Google, 54 F.4th at 1381.
`
`16
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`PGR2022-00053
`Patent 11,157,256 B2
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`B. Collateral Estoppelas to Petitioner’s § 101 Challenges
`
`Patent Ownerarguesthat to the extent collateral estoppel applies, it
`
`also applies to Petitioner’s asserted groundofinvalidity under Section 101.
`
`Opp. 2. Patent Owner contends that in PGR2021-0096, we considereda
`
`ground underSection 101 for the ’096 patent claims that are substantially
`
`similar to the ’256 claims challenged here, and Petitioner is estopped from
`
`raising this ground. /d. (citing 096 Decision 32).
`
`Petitioner respondsthat while the Section 101 argumentin this
`
`proceeding is essentially identical to the PGR2021-00096, the determination
`
`of this issue wasnot“essential to a final judgementin thefirst action.” Mot.
`
`Reply 2—3. Petitioner arguesthat “[t]he ‘final judgement’ in PGR2021-
`
`0096, is that all claims ofU.S. Patent No. 10,782,951 are invalid on grounds
`
`of 35 U.S.C. §§ 102, 103,” and “[h]Javing foundall claims invalid on other
`
`grounds, the Board’s prior determination with respect to 35 U.S.C. §101
`
`amounts to the denial of an argumentthat would have provided alternative
`
`support for the judgement, but was not essential to thatjudgement.” /d. at 3.
`
`Patent Ownerrespondsthat “werendered‘final judgments,’ as the
`
`term is used in thecase law, on twoseparate grounds/issues—patent
`
`eligibility under § 101 and patent validity under §§ 102/103.” Mot.
`
`Sur-reply 2. According to Patent Owner,“Petitioner mistakenly treats the
`
`overall outcomeofthe first PGR as a single ‘final judgment’ to which the
`
`§ 101 ‘issue’ allegedly was not‘essential.’” /d. Instead, Patent Owner
`
`argues, we only need to consider whether an underlying issue such as claim
`
`construction wasessential to a final judgment on a particular ground/issue
`
`such as validity. /d. (citing A.B. Dick Co. v. Burroughs Corp. , 713 F.2d 700,
`
`704 (Fed. Cir. 1983)).
`
`17
`
`
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`PGR2022-00053
`Patent 11,157,256 B2
`
`Weagree with Patent Ownerthat ourprior decision as to Petitioner’s
`
`patent eligibility ground under 35 U.S.C. § 101 is a judgment in and ofitself,
`
`or at the least, for the purposesof collateral estoppel, is a necessary part of
`
`the judgment in that case. As the Federal Circuit has explained, the purpose
`
`of the requirementthat a finding be “necessary” to ajudgmentis to prevent
`
`the incidental or collateral determination of a nonessential issue from
`
`precluding reconsideration ofthat issue in later litigation. See Mother’s
`
`Rest., Inc. vy. Mama’s Pizza, Inc. ,723 F.2d 1566, 1571 (Fed. Cir. 1983)
`
`(explaining that the requirement“does not mean that the finding must be so
`
`crucial that, withoutit, the judgment could not stand”) (citing Restatement
`
`(Second) ofJudgments § 27 commenth(1980)); accordIn re Freeman, 30
`
`F.3d at 1466. What we are required to evaluate underthis factor is whether
`
`the issue “wasthe focus ofthe parties’ pleadings and wasfullylitigated,” or
`
`one where we “reachedout to make determinationsas to issues which were
`
`not before [us].” Mother’s Rest.,723 F.2d at 1571.
`
`Petitioner’s Section 101 challenge wasthe veryfirst ground of
`
`invalidity that Petitioner asserted in PGR202 1-00096—1twasclearly the
`
`focus ofthe petition there. See PGR2021-00096, Paper 2, at 26-52. Our
`
`findings of fact and legal conclusionsspelled out in detail our determinations
`
`leading to our decision that Petitioner had not shown that the ’951 patent
`
`claims were directed to ineligible subject matter. See 096 Decision 22—32.
`
`Petitioner’s Section 101 challenge was, therefore, before us, and
`
`accordingly, was decided even though wealso reacheda decision on
`
`Petitioner’s other challenges. Mother's Rest., 723 F.2d at 1571 n.8 (And
`
`the mere existence of another possible groundfor ajudgment doesnot
`
`deprive the factual determination upon which the decision actually rested of
`
`preclusive effect.”) (citations omitted).
`
`18
`
`
`
`PGR2022-00053
`Patent 11,157,256 B2
`
`“Noris this a case where a secondproceeding involving the same
`
`issues was unforeseen.” /d. Petitioner filed the Petition here just a few
`
`monthsafter we instituted review in PGR2021-00096, and, therefore, should
`
`have been awareofthe possibility that we would accord preclusive effect to
`
`any findings made in the °096 Decision. /d.; see also In re Freeman, 30
`
`F.3dat 1467. We further agree with Patent Ownerthat “[t|he public policy
`
`of issue preclusion—preventingrelitigating the same issue—doesnot favor
`
`allowing Petitionerto relitigate the already-decided issue of § 101 patent
`
`eligibility.”° Mot. Sur-reply 2-3.
`
`Petitioner also arguesthat it was deprivedafull and fair opportunity
`
`to litigate the issue in thefirst action because Petitioner could not present the
`
`Section 101 issue to the Federal Circuit as a stand-alone issue for
`
`cross-appeal. Mot. Reply 3 (citing Bailey v. Dart Container Corp. ofMich.,
`
`292 F.3d 1360, 1362 (Fed. Cir. 2002)). Even ifPetitioner were correct, we
`
`are not persuadedthatPetitioner’s inability to file a cross-appeal alone
`
`deprived Petitioner ofafull and fair opportunity to litigate the issue,
`
`especially given that Petitioner had the opportunity to at least raise any
`
`potential errors to the court in its appellee’s briefs, but instead consented to
`
`the dismissal ofPatent Owner’s appeal. Mot. Sur-reply 3 (“Petitioner could
`
`have, but did not, oppose withdrawal ofthe appeal.”’) (citing Digital Turbine,
`
`Inc. v. IronSource Ltd., No. 2023-1606, Dkt. No. 18, at 6 (Fed. Cir. Oct. 5,
`
`2023)). Moreover, Petitioner offers no authority to suggest a full andfair
`
`opportunity to litigate necessarily requires review ofour decision by the
`
`Federal Circuit. See SoverainSoftware,778 F.3d at 1317 (explaining that
`
`> The broad estoppel provisions in 35 U.S.C. § 325(e) further counsel that
`issue preclusion should apply to the same issuesofpatentability of almost
`identical claims of a continuation patent.
`
`19
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`
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`PGR2022-00053
`Patent 11,157,256 B2
`
`the ability to appeal exception applies only whenreview is precluded as a
`
`matter of law, and does not apply in cases where review is available butis
`
`not sought).
`
`Lastly, “Petitioner agrees that the Section 101 argumentin this
`
`proceeding is essentially identical to the first action.” Mot. Reply 2.
`
`Accordingly, the issues of patentability of claims 1-18 of the 951
`
`patent and claims 1—22 of the ’256 patent under Section 101 are identical
`
`and becausethe other Google factors weigh in favor of collateral estoppel,
`
`we hold that Petitioner is precluded from challenging claims 1—22 of the
`
`°256 patent under section 101, and therefore, those claims have not been
`
`shown unpatentable under Section 101. See Google, 54 F.4th at 1381.
`
`IV. REVISED MOTION TO AMEND
`
`Having determinedthat original claims 1—22 ofthe ’256 patent are
`
`unpatentable (supra § II.A), we proceed to address Patent Owner’s Revised
`
`Motion to Amend. Patent Owner contingently movesto allow proposed
`
`substitute claims 23-37, should we determinethat any ofthe original claims
`
`are unpatentable. Revised MTA 1, App. A. Forthe reasons below, wefind
`
`that Patent Owner’s motion meets the statutory and regulatory requirements
`
`set forth in 35 U.S.C. § 326(d) and 37 C.F.R. § 42.221, and that Petitioner
`
`has not metits burden in proving by a preponderance ofthe evidence that
`
`proposed substitute claims 23—37 are unpatentable.
`
`A. Proposed Substitute Claims
`
`Patent Ownerproposes claims 23-37 as substitute claims for some of
`
`the original claims. Revised MTA 1, App. A. Patent Owner proposes
`
`claims 23, 31, and 37 as substitute claimsfor original independent claims1,
`
`14, and 21, respectively. /d. at 24-31. Patent Ownerproposesclaims 24—30
`
`20
`
`
`
`PGR2022-00053
`Patent 11,157,256 B2
`
`and 32—36 as substitute claimsfor original dependent claims3, 6, 7, 9-12,
`
`16,17, 19, and 20.
`
`/d.
`
`Proposed substitute claim 23 is representative and reproduced below
`
`using underscoring to indicate text addedto original independent claim 1.
`
`(Substitute for claim 1) A network-connected device
`23.
`configured for running software applications, comprising:
`
`a network interface configured for communicating over a
`network;
`
`at least one non-transitory computer readable storage medium
`storing instructions; and
`
`at least one processorassociated with said network interface and
`said storage medium, configured for executing said
`instructionsto:
`
`identify that a link for installation ofa first software application
`is selected by user interaction with a second software
`application running on said device,
`the link being
`em
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