Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`
`
`Paper 17
`Entered: May 20, 2014
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
` SAMSUNG ELECTRONICS CO., LTD; SAMSUNG ELECTRONICS
`AMERICA, INC.; SAMSUNG TELECOMMUNICATIONS
`AMERICA, LLC; LG ELECTRONICS, INC.; LG ELECTRONICS
`U.S.A., INC.; LG ELECTRONICS MOBILECOMM USA, INC.;
`HTC CORP.; and HTC AMERICA, INC.
`Petitioners
`
`v.
`
`
`
`
`
` AFFINITY LABS OF TEXAS, LLC
`Patent Owner
`____________
`
`Case IPR2014-00212
`Patent 7,953,390 B2
`____________
`
`
`Before KEVIN F. TURNER, LYNNE E. PETTIGREW, and
`JON B. TORNQUIST, Administrative Patent Judges.
`
`TORNQUIST, Administrative Patent Judge.
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`Samsung Ex. 1016 p. 1
`
`
`571-272-7822
`
`
`
`
`
`
`
`Paper 17
`Entered: May 20, 2014
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
` SAMSUNG ELECTRONICS CO., LTD; SAMSUNG ELECTRONICS
`AMERICA, INC.; SAMSUNG TELECOMMUNICATIONS
`AMERICA, LLC; LG ELECTRONICS, INC.; LG ELECTRONICS
`U.S.A., INC.; LG ELECTRONICS MOBILECOMM USA, INC.;
`HTC CORP.; and HTC AMERICA, INC.
`Petitioners
`
`v.
`
`
`
`
`
` AFFINITY LABS OF TEXAS, LLC
`Patent Owner
`____________
`
`Case IPR2014-00212
`Patent 7,953,390 B2
`____________
`
`
`Before KEVIN F. TURNER, LYNNE E. PETTIGREW, and
`JON B. TORNQUIST, Administrative Patent Judges.
`
`TORNQUIST, Administrative Patent Judge.
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`Samsung Ex. 1016 p. 1
`
`
`
`Case IPR2014-00212
`Patent 7,953,390 B2
`
`
`I. INTRODUCTION
`On December 2, 2013, Samsung Electronics Co., Ltd., Samsung
`Electronics America, Inc., Samsung Telecommunications America, LLC,
`LG Electronics, Inc., LG Electronics U.S.A., Inc., LG Electronics
`Mobilecomm USA, Inc., HTC Corp., and HTC America, Inc. (“Petitioners”)
`filed a Petition for inter partes review of claims 16, 19, and 20 of U.S.
`Patent 7,953,390 B2 (“the ’390 patent”). Paper 1. On December 12, 2013,
`Petitioners filed a corrected Petition. Paper 10 (“Pet.”). The owner of the
`’390 patent, Affinity Labs of Texas, LLC (“Patent Owner”), filed a
`Preliminary Response to the Petition on March 11, 2014. Paper 16 (“Prelim.
`Resp.”). We have jurisdiction under 35 U.S.C. § 314.
`The standard for instituting an inter partes review is set forth in 35
`U.S.C. § 314(a), which provides:
`THRESHOLD – The Director may not authorize an inter partes
`review to be instituted unless the Director determines that the
`information presented in the petition filed under section 311
`and any response filed under section 313 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.
`Upon consideration of the Petition and the Preliminary Response, we
`determine that there is a reasonable likelihood that Petitioners would prevail
`with respect to claims 16, 19, and 20 of the ’390 patent. Accordingly,
`pursuant to 35 U.S.C. § 314, we authorize an inter partes review to be
`instituted as to those claims.
`A. Related Proceedings
`The ’390 patent is being asserted in Affinity Labs of Texas, LLC v.
`Samsung Electronics Co., Ltd., 1:12-cv-557 (E.D. Tex.). Paper 15. The
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`Case IPR2014-00212
`Patent 7,953,390 B2
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`’390 patent is also the subject of pending inter partes review petition
`IPR2014-00209. Id.
`B. Prior Art Relied Upon
`Petitioners rely on the following prior art references:
`Hitson
`2002/0010759 A1
`Jan. 24, 2002 Ex. 1103
`Bork
`6,633,932 B1
`Oct. 14, 2003 Ex. 1105
`Fuller
`6,711,622 B1
`Mar. 23, 2004 Ex. 1106
`Lee
`6,728,531 B1
`Apr. 27, 2004 Ex. 1107
`Ravi
`6,292,834 B1
`Sept. 18, 2001 Ex. 1109
`Carmel
`6,389,473 B1
`May 14, 2002 Ex. 1110
`
`
`C. The Asserted Grounds
`Petitioners assert the following grounds of unpatentability (Pet. 8-9):
`References
`Basis
`Claims
`Hitson and Fuller
`§103
`16, 19, and 20
`Hitson, Bork, Fuller
`§103
`16, 19, and 20
`Lee, Bork, and Ravi
`§103
`16, 19, and 20
`Hitson, Fuller, and Carmel
`§103
`19
`Hitson, Bork, Fuller, and
`§103
`19
`Carmel
`Lee, Bork, Ravi, and Carmel
`
`
`§103
`
`19
`
`D. The ’390 Patent
`The ’390 patent is directed to a delivery system for digitally stored
`content. Ex. 1101, 1:17-19. In particular, the ’390 patent relates to the
`wireless delivery of media content, such as songs, video, on-line radio
`stations, on-line broadcasts, and text. Id. at 2:55-59, 3:10-15, 3:37-39,
`
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`Case IPR2014-00212
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`14:41-44.
`Many different wireless devices may be used to select and receive
`media content in the system and method of the ’390 patent, including “a
`network radio, a modular device, an audio system, a personal digital
`assistant (PDA), a cellular phone, or other electronic devices operable to
`receive information wirelessly.” Id. at 4:29-32. In at least one embodiment,
`the wireless device contains a physical interface that allows a different
`electronic device to communicate with, and to recharge the battery of, the
`wireless device using a single cable having multiple conductive elements.
`See id. at 17:18-62, 20:9-20.
`In one embodiment of the ’390 patent, a user selects desired audio
`information from a webpage. Id. at 14:34-44. This audio information may
`include “a single song, a plurality [of] different songs,” or “an entire album.”
`Id. at 14:42-44. After the user finishes selecting the desired songs, the
`system creates both a playlist and a listing of “network or URL locations”
`where the songs on the playlist may be found. Id. at 14:44-53. The songs on
`the playlist then are retrieved from one or more of the listed network
`locations and streamed to the user. Id. at 5:58-6:10, 14:50-61, 15:46-51.
`The selected songs may be streamed to a user over a high-speed
`wireless communications network. Id. at 5:64-6:7. In this
`embodiment, selected content is delivered initially to the wireless
`device at a high transmission rate. Id. Once a sufficient buffer has
`been established in the memory of the wireless device, the rest of the
`selected content then is transmitted at a second, slower rate. Id.
`E. Illustrative Claims
`
`Of the challenged claims, only claim 16 is independent. Claim 16 and
`
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`4
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`Case IPR2014-00212
`Patent 7,953,390 B2
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`dependent claim 19 are illustrative of the claims at issue and are reproduced
`below:
` 16. A system for content delivery, comprising:
`a portable device having a display, a local rechargeable battery,
`a wireless communication system, and a processor;
`
`
` 19. The system of claim 16, wherein the stored instructions
`are further operable to cause the processor: (1) to obtain a
`listing of network locations at which to access the streaming
`media; and (2) to cause a first of the network locations to be
`accessed to facilitate a streaming delivery of the streaming
`media.
`
`
`(line breaks added for readability).
`
`
`
`
`
`5
`
` physical interface of the portable device, the physical
`interface configured to connect to an interface system that
`includes a cable having multiple conductive elements,
`wherein the physical interface is designed such that a
`different electronic device can be communicatively coupled
`with the physical interface of the portable device using the
`interface system in a manner that allows the different
`electronic device to recharge the local rechargeable battery
`using at least one of the multiple conductive elements and to
`communicate with the portable device using at least one other
`of the multiple conductive elements; and
`
` computer-readable medium having stored instructions that
`when executed are operable to cause the processor: (1) to
`present an icon on the display, the icon associated with
`content that is deliverable as streaming media; (2) to
`recognize a selection of the icon; and (3) to switch between a
`set of communication rates at which the portable device
`receives a first portion and a second portion of the content,
`wherein the set of communication rates comprise at least a
`first data rate and a second data rate that is slower than the
`first data rate.
`
` a
`
` a
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`Samsung Ex. 1016 p. 5
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`Case IPR2014-00212
`Patent 7,953,390 B2
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`
`II. ANALYSIS
`
`A. Claim Construction
`In an inter partes review, “[a] claim in an unexpired patent shall be
`given its broadest reasonable construction in light of the specification of the
`patent in which it appears.” 37 C.F.R. § 42.100(b); see also Office Patent
`Trial Practice Guide, 77 Fed. Reg. 48,756, 48,766 (Aug. 14, 2012). In
`determining the broadest reasonable construction, a claim term is presumed
`to carry its ordinary and customary meaning. See In re Translogic Tech.,
`Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). This presumption may be
`rebutted when a patentee, acting as a lexicographer, sets forth an alternate
`definition of a term in the specification with reasonable clarity,
`deliberateness, and precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir.
`1994).
`Petitioners provide proposed constructions for multiple claim terms.
`Pet. 14-17. Patent Owner disputes one of these constructions and submits its
`own proposed construction. Prelim. Resp. 6-8. For this decision, we
`construe only the one claim term we deem necessary for institution.
`A listing of network locations at which to access the streaming media
`
`Patent Owner’s Proposal
`A list of network addresses
`corresponding to portions of an
`available media. Prelim. Resp. 6-8.
`
`
`Petitioners’ Proposal
`A list of sources, addresses or links
`for streaming media that is available
`on a network. Pet. 16-17.
`
`Petitioners assert that the “listing of network locations” may contain
`
`multiple network locations for multiple files or songs on a network. Pet. 16-
`17, 53-54. Patent Owner argues Petitioners’ proposed construction is too
`broad. According to Patent Owner, because the term “the streaming media”
`
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`refers to a single file or song, and because “network locations” refer to a
`plurality of network locations, each of the listed network locations must
`provide a portion of the same single, broken-up media file. Prelim. Resp. 6-
`8.
`
`The foundation of Patent Owner’s argument is that the term “the
`streaming media” refers to a single file or song. The term “streaming
`media” is not defined explicitly in the ’390 patent. In the context of claims
`16, 19, and 20, the term is introduced first in independent claim 16, which
`recites: “(1) to present an icon on the display, the icon associated with
`content that is deliverable as streaming media.” Use of the term
`“deliverable as” indicates that “streaming media” refers to the method of
`content delivery, and not to a single file or song, as asserted by Patent
`Owner. This is consistent with the general definition of “streaming,” which
`is “relating to or being the transfer of data (as audio or video material) in a
`continuous stream especially for immediate processing or playback”
`(Streaming Definition, MERRIAM-WEBSTER.com, http://www.merriam-
`webster.com/dictionary/streaming); see also (Streaming Media Definition,
`http://www.techopedia.com/definition/14586/streaming-media) (noting that
`“streaming media” refers to a method of delivering multimedia elements).
`It is, instead, the term “content” in claim 16 that indicates what
`information is delivered “as streaming media.” In the ’390 specification, the
`term “content,” and the related terms “desirable audio information” and
`“selected audio information,” are not limited to a single file or song. Ex.
`1101, 1:17-19, 2:48-65, 6:20-33, 7:21-30, 8:64-9:5, 14:36-58. In addition, to
`the extent that “the streaming media” in claim 19 was intended to identify
`more than the method of content delivery, use of the word “the” in “the
`
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`streaming media” presumptively carries the meaning of “one or more,” and
`Patent Owner directs us to no portion of the ’390 patent specification or
`prosecution history expressing a clear intent to limit the scope of “the
`streaming media” in claim 19, or “content” in claim 16, to a single file or
`song. See Free Motion Fitness, Inc. v. Cybex Int’l, Inc., 423 F.3d 1343,
`1350-1351 (Fed. Cir. 2005) (noting that the terms “a,” “an,” and “the” are
`presumed to mean “one or more” when used in conjunction with the
`antecedent “comprising”); Prelim. Resp. 6-7. Therefore, we are not
`persuaded that “the streaming media” in claim 19 is limited to a single file of
`song or that each network location must contain a portion of the same,
`broken-up media file.
`
`Petitioners also propose that “network locations” be construed as
`“sources, addresses, or links.” Pet. 16-17 (citing Ex. 1101, 3:42-51, 10:3-5,
`14:48-58). Upon review of Petitioners’ argument and the ’390 specification,
`however, we are not persuaded that the term “network locations” is defined
`expressly as “sources, addresses, or links,” nor is it evident why this term
`requires construction at this time. See Ex. 1101, 3:44-54, 14:48-58.
`In light of the foregoing, we conclude that the broadest reasonable
`construction of the term “a listing of network locations at which to access
`the streaming media” is “a listing of network locations at which content that
`is to be delivered as streaming media may be accessed.”
`B. Obviousness of Claims 16, 19, and 20 Over Hitson and Fuller and
`Hitson, Bork, and Fuller
`
`Petitioners assert that claims 16, 19, and 20 are unpatentable under 35
`
`U.S.C. § 103 over Hitson and Fuller, as well as Hitson, Bork, and Fuller. In
`support of their argument, Petitioners provide detailed claims charts and rely
`
`
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`8
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`on the supporting declaration testimony of Dr. Schuyler Quackenbush (Ex.
`1118).
`1. Hitson
`
`
`Hitson relates to a system and method for delivering multimedia
`content to a computer, portable media player, or other electronic device. Ex.
`1103, Abstract. In Hitson, the portable media player may connect to another
`device or a server through either a wireless or wired connection, including a
`Universal Serial Bus (“USB”) cable connection. Id. ¶¶ 0005, 0006, 0039,
`0050, 0085, Fig. 22. At least one of the portable media players disclosed in
`Hitson has a display, a rechargeable battery, a processor, and memory. Id.
`¶ 0005; Pet. 19; Ex. 1118 ¶¶ 37-38.
`
`In the Hitson system, multimedia content is stored in one or more
`media databases, which are accessible through one or more web servers. Ex.
`1103 ¶ 0131. Using a web browser, a user may view a list of this available
`content, select desired songs or video, and request that the selected songs
`and video be streamed to the portable media player. Id. ¶¶ 0076, 0112-
`0113, 0131, 0133. The transmission rate for the streaming content is
`determined “through software, hardware, or by asking a user.” Id. ¶ 0070.
`For example, the user may inform the system that a “narrowband” or
`“broadband” connection is available. Id. at Fig. 3.
`2. Bork
`Bork is directed to a universal serial bus (“USB”) interface and cable.
`Ex. 1105, Abstract. The USB cable has multiple conductive elements,
`allowing an electronic device simultaneously to communicate with, and
`recharge the battery of, a portable device. Id. at 5:12-14, 5:41-43, 6:66-7:12,
`8:18-28. According to Bork, this single cable system has numerous
`
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`advantages. Id. at 2:54-63. First, a bulky electrical power transformer is not
`required for the portable device. Id. at 2:54-63, 5:5-15, Figs. 21, 22.
`Second, a user can synchronize data with a computer and download software
`updates for the portable device at the same time the battery of the portable
`device is being recharged. Id. at 4:17-24, 4:47-55, Fig. 22. Finally, a laptop
`computer running solely on battery power can recharge the battery of
`another portable device, which, according to Bork, is useful when another
`source of power is unavailable. Id. at 8:18-28.
`3. Fuller
`Fuller is directed to a system and method for providing streaming
`audio and video to users. Ex. 1106, Abstract. In Fuller, a web browser is
`used to review and select available content on a network. See id. at 4:46-49,
`8:30-36, Figs. 1-3. This available content may include links for, among
`other things, an audio jukebox or a live radio broadcast. Id. at Fig. 3. After
`a user selects desired content, the selected items then are streamed to the
`user. Id. at 2:57-59, 8:30-36.
`In Fuller, the server transmits a Java applet to the client device. Id. at
`8:37-41. This Java applet serves both to decode the streaming audio data
`and to monitor the rate at which the client receives and processes
`information from the server. Id. at 8:37-41, 10:11-17. If the Java applet
`determines that the client is not receiving the audio or video data at a
`sufficient rate, the applet can instruct the server to reduce the rate of
`transmission to “more appropriately match the bandwidth availability of the
`client.” Id. at 10:11-17.
`
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`
`4. Analysis
`Petitioners contend that Hitson, Bork, and Fuller disclose all the
`limitations of claims 16, 19, and 20. In particular, Petitioners assert that
`Hitson discloses a portable device with a display, a local rechargeable
`battery, a wireless communication system, and a processor. Pet. 18-20, 25-
`26; Ex. 1103 ¶¶ 0003, 0005, 0012, 0039, 0050, 0080; Ex. 1118 ¶¶ 37-39.
`Petitioners also assert that Hitson discloses allowing “users to view a list of
`content (e.g., a playlist) that is available to be streamed to the PMP, select
`the content, and request a continuous content stream.” Pet. 19; Ex. 1103
`¶ 0076. Petitioners further assert that both Hitson and Bork disclose using a
`USB interface, and that Bork, in particular, discloses a USB interface that
`permits an electronic device to both communicate with, and recharge the
`battery of, a portable device using a single cable having multiple conductive
`elements. Pet. 19-21; Ex. 1103 ¶¶ 0006, 0050, Fig. 22; Ex. 1105, 5:12-14,
`6:66-7:12, 8:18-28. Petitioners further assert that Fuller discloses switching
`the transmission rate of streaming media between an initial, higher rate and a
`second, lower rate. Pet. 21, 24-25, 35; Ex. 1106, 10:11-17; Ex. 1118 ¶¶ 61-
`62.
`
`With respect to the rationale for combining these references,
`Petitioners argue that one of ordinary skill in the art would have been
`motivated to implement Bork’s USB interface and cable in the system of
`Hitson in light of the numerous benefits disclosed for these elements in
`Bork, including the ability to synchronize and recharge a portable device
`using a single cable. Pet. 22-23; Ex. 1105, 2:54-63; Ex. 1118 ¶¶ 43-50.
`Petitioners further assert that one of ordinary skill in the art would have been
`motivated to modify Hitson to implement Fuller’s method of monitoring and
`
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`adjusting transmission rates, in order to ensure the “efficient and
`uninterrupted delivery of streaming content.” Pet. 24; Ex. 1118 ¶¶ 61-62.
`According to Petitioners, the combination of Hitson, Bork, and Fuller would
`merely bring together known elements, each performing the same function
`as it does separately, to yield a predictable result. Pet. 23-25; Ex. 1118
`¶¶ 48-50, 61-62.
`Patent Owner makes three primary arguments against the combination
`of Hitson, Bork, and Fuller. First, Patent Owner argues that one of ordinary
`skill in the art would not have combined Hitson with Bork or Fuller because
`Hitson does not contain a “detailed technical disclosure of the actual
`hardware” used to perform the claimed method, and is simply focused on
`“providing an economic incentive to multimedia producers to provide high
`quality, digital content.” Prelim. Resp. 11-12. Patent Owner does not
`explain sufficiently, however, what specific technical disclosure is lacking in
`Hitson or why one of ordinary skill in the art could not implement Hitson’s
`method without this information. Patent Owner also does not explain
`sufficiently why Hitson’s stated goal of providing economic incentive to
`multimedia producers would discourage one of skill in the art from
`combining Hitson with Bork and Fuller. See KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398, 420 (2007) (rejecting the argument that one of ordinary skill
`would be led only to elements of the prior art designed to solve the same
`problem); In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994) (noting that “[a]
`reference may be said to teach away when a person of ordinary skill in the
`art, upon reading the reference, would be discouraged from following the
`path set out in the reference”). Therefore, at this stage of the proceeding, we
`are not persuaded by Patent Owner’s arguments.
`
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`Second, Patent Owner argues that one of ordinary skill in the art
`would not incorporate Bork’s USB interface into the Hitson system because
`“[i]t is nonsensical and impractical for a portable device to use its own
`battery power to recharge the battery of another device.” Prelim. Resp. 13.
`At this stage of the proceeding, we do not find this argument persuasive
`because Bork explicitly teaches using a portable device to recharge the
`battery of another portable device, and provides a reasonable rationale for
`why one would seek to use such a configuration. See Ex. 1105, 8:18-28
`(disclosing that it is advantageous to use a portable computer to recharge the
`battery of a portable device when travelling). Patent Owner also asserts that
`the two servers described in Hitson would not need a USB interface “as
`neither server likely has a battery.” Prelim. Resp. 13. Hitson, however, is
`not limited to connecting two servers. Ex. 1103 ¶¶ 0038-0039, Fig. 23. For
`example, Hitson discloses that the portable media device may act as a client,
`exchanging files with a server through a wired or wireless connection. Id.
`¶¶ 0039, 0050. Therefore, on this record, we are not persuaded by Patent
`Owner’s argument.
`Finally, Patent Owner argues that one of skill in the art would not
`modify Hitson to incorporate Fuller’s method of controlling data
`transmission rates because “Hitson already provided a solution to the
`problem of data transmission bandwidth.” Prelim. Resp. 13. At this stage of
`the proceeding, we are not persuaded by Patent Owner’s argument because
`Patent Owner has not explained sufficiently why Hitson’s general disclosure
`of selecting a data transmission rate through “software, hardware, or by
`asking a user” would indicate to one of ordinary skill in the art that there are
`
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`no potential bandwidth or resource allocation issues in the Hitson system.
`See Ex. 1103 ¶ 0070.
`In addition to arguing that one of ordinary skill in the art would not
`combine the references, Patent Owner also argues that Hitson, Bork, and
`Fuller do not disclose or suggest all of the limitations of claims 16, 19, and
`20. With respect to claim 16, Patent Owner argues that Fuller does not teach
`or suggest that the portable device varies the communications rate between
`the server and the portable device. According to Patent Owner, in Fuller it is
`the web server, through the download of the Java applet, which controls the
`communications rate of the system, and not the portable device. Prelim.
`Resp. 26-27. On this record, we are not persuaded by this argument
`because, regardless of where the Java applet originates from in Fuller, it is
`the microprocessor of the portable device that executes and controls the Java
`applet code. Ex. 1106, 8:37-42, 8:55-56 (noting that the client executes the
`Java applets).
`
`Patent Owner also argues that Hitson, Fuller, and Bork do not teach
`the limitations of claim 19 because the references only disclose obtaining a
`listing of network locations for several different media to be streamed, and
`not a “listing of network locations” for the same single, broken-up file or
`song. Prelim. Resp. at 28-33. We do not find this argument persuasive
`because it is premised on Patent Owner’s proposed claim construction that
`we did not adopt.
`Upon review of Hitson, Bork, and Fuller, as well as Petitioners’ and
`Patent Owner’s arguments, we are persuaded that Petitioners have set forth
`sufficient articulated reasoning with rational underpinning to support the
`proposed combination of references. See KSR, 550 U.S. at 418. We,
`
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`therefore, conclude that Petitioners have demonstrated a reasonable
`likelihood that claims 16, 19, and 20 would have been obvious over Hitson,
`Bork, and Fuller. In view of our decision to institute inter partes review on
`this ground, we deny as redundant the Hitson and Fuller ground asserted by
`Petitioners.
`C. Obviousness of Claim 19 Over Hitson, Fuller, and Carmel and
`Hitson, Bork, Fuller, and Carmel
`
`Petitioners contend that claim 19 also would have been obvious under
`35 U.S.C. § 103 over Hitson, Fuller, and Carmel, as well as Hitson, Fuller,
`Bork, and Carmel. Petitioners rely upon these grounds of unpatentability to
`address Patent Owner’s proposed construction requiring multiple network
`locations for a single, broken-up file or song. Pet. 54. As we have declined
`to adopt Patent Owner’s proposed construction, Petitioners’ grounds relying
`on Hitson, Fuller, and Carmel and Hitson, Bork, Fuller, and Carmel are
`redundant to the ground of unpatentability on which we initiate inter partes
`review. Therefore, we do not authorize an inter partes review on these
`grounds.
`D. Obviousness of Claims 16, 19, and 20 Over Lee, Bork, and Ravi
`and Claim 19 Over Lee, Bork, Ravi, and Carmel
`
`Petitioners assert that claims 16, 19, and 20 are unpatentable under 35
`
`U.S.C. § 103 as obvious over Lee, Bork, and Ravi, and that claim 19 is
`unpatentable under 35 U.S.C. § 103 as obvious over Lee, Bork, Ravi, and
`Carmel. Pet. 8-9. Petitioners do not explain, however, why either set of
`references is stronger with respect to certain claims than the Hitson-based
`grounds discussed above. Therefore, we exercise our discretion not to go
`forward with all of the grounds proffered by Petitioners, and do not
`
`
`
`
`15
`
`Samsung Ex. 1016 p. 15
`
`
`
`Case IPR2014-00212
`Patent 7,953,390 B2
`
`authorize an inter partes review on these grounds. See 37 C.F.R.
`§ 42.108(a).
`
`III. CONCLUSION
`For the foregoing reasons, we determine that the information
`presented in the Petition and Preliminary Response establishes that there is a
`reasonable likelihood that Petitioners would prevail in showing the
`unpatentability of claims 16, 19, and 20 of the ’390 patent.
`At this stage of the proceeding, the Board has not made a final
`determination as to the patentability of any challenged claim.
`
`
`IV. ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED that pursuant to 35 U.S.C. § 314, an inter partes review is
`instituted as to claims 16, 19, and 20 of the ’390 patent on the following
`ground: claims 16, 19, and 20 as unpatentable under 35 U.S.C. § 103 as
`obvious over Hitson, Bork, and Fuller.
`FURTHER ORDERED that pursuant to 35 U.S.C. § 314(a), inter
`partes review of the ’390 patent is hereby instituted commencing on the
`entry date of this Order, and pursuant to 35 U.S.C. § 314(c) and 37 C.F.R.
`§ 42.4, notice is hereby given of the institution of a trial; and
`FURTHER ORDERED that the trial is limited to the grounds
`identified above and no other grounds are authorized.
`
`
`
`
`16
`
`Samsung Ex. 1016 p. 16
`
`
`
`
`
`Case IPR2014-00212
`Patent 7,953,390 B2
`
`
`For PETITIONERS:
`J. Steven Baughman
`Gabrielle E. Higgins
`ROPES & GRAY LLP
`steven.baughman@ropesgray.com
`gabrielle.higgins@ropesgray.com
`
`Timothy J. May
`Joshua L. Goldberg
`FINNEGAN, HENDERSON, FARABOW,
`GARRETT & DUNNER, L.L.P.
`timothy.may@finnegan.com
`joshua.goldberg@finnegan.com
`
`
`B. Todd Patterson
`Jerry R. Selinger
`PATTERSON & SHERIDAN, LLP
`tpatterson@pattersonsheridan.com
`jselinger@pattersonsheridan.com
`
`For PATENT OWNER:
`Mark Rozman
`TROP, PRUNER & HU, P.C.
`rozman@tphm.com
`Timothy G. Newman
`LARSON NEWMAN
`tnewman@larsonnewman.com
`
`Ryan M. Schultz
`ROBINS, KAPLAN, MILLER & CIRESI L.L.P.
`rmschultz@rkmc.com
`
`
`
`
`
`
`
`17
`
`Samsung Ex. 1016 p. 17
`
`
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