Trials@uspto.gov
`Tel: 571-272-7822
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`Paper 10
`Entered: October 13, 2015
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`OPENTV, INC.,
`Patent Owner.
`
`
`
`Case IPR2015-01031
`Patent 7,900,229 B2
`_______________
`
`
`
`
`Before JAMES B. ARPIN, DAVID C. MCKONE, and SCOTT C. MOORE,
`Administrative Patent Judges.
`
`ARPIN, Administrative Patent Judge.
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`

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`IPR2015-01031
`Patent 7,900,229 B2
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`
`A. Background
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`I.
`
`INTRODUCTION
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`Apple Inc. (“Petitioner”) filed a Petition (Paper 1; “Pet.”) to institute
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`an inter partes review of claims 14–16, 19, 21, 24, 26, 28, 30, and 31 of
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`Patent No. US 7,900,229 B2 (Ex. 1001; “the ’229 patent”) pursuant to 35
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`U.S.C. §§ 311–319. Pet. 1. OpenTV, Inc. (“Patent Owner”) filed a
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`Preliminary Response (Paper 6; “Prelim. Resp.”). We have jurisdiction
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`under 35 U.S.C. § 314,1 which provides that an inter partes review may not
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`be instituted “unless . . . there is a reasonable likelihood that the petitioner
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`would prevail with respect to at least 1 of the claims challenged in the
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`petition.” 35 U.S.C. § 314(a).
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`Petitioner relies upon the following references, documents, and
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`declaration in support of its grounds for challenging the identified claims of
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`the ’229 patent:
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`
`
`Exhibit
`No.
`1003
`
`1004
`
`1005
`
`1006
`1007
`
`1016
`
`References, Documents, and Declaration
`
`Patent Application Publication No. EP 1 100 268 A2 to
`Tomioka et al. (“Tomioka”)
`Excerpts from Jochen Schiller, Mobile Communications
`(2000) (“Schiller”)
`Unexamined Patent Application Publication No. JP H11-7453
`A to Kotani, and Certified English Translation (“Kotani”)
`Patent No. US 7,305,691 B2 to Cristofalo (“Cristofalo”)
`Patent Application Publication No. US 2002/0111154 A1 to
`Eldering et al. (“Eldering”)
`
`Declaration of Charles A. Knutson
`
`
`1 See Section 6(a) of the Leahy-Smith America Invents Act (“AIA”), Pub. L.
`No. 112-29, 116 Stat. 284, 300 (2011).
`
`2
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`

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`IPR2015-01031
`Patent 7,900,229 B2
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`
`Petitioner asserts that all of the challenged claims are unpatentable on
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`any of the following grounds (Pet. 2–3, 11–60):
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`Reference(s)
`Grounds
`35 U.S.C. § 102(a) Tomioka
`
`35 U.S.C. § 103(a) Tomioka
`
`35 U.S.C. § 103(a) Tomioka and Schiller
`
`35 U.S.C. § 103(a) Tomioka and Kotani
`
`Claims
`14–16, 19, 21, 24, 26,
`28, 30, and 31
`14–16, 19, 21, 24, 26,
`28, 30, and 31
`14–16, 19, 21, 24, 26,
`28, 30, and 31
`14–16, 19, 21, 24, 26,
`28, 30, and 31
`14–16, 19, 21, 24, 26,
`28, 30, and 31
`14–16, 19, 21, 24, 26,
`28, 30, and 31
`14–16, 19, 21, 24, 26,
`28, 30, and 31
`For the reasons set forth below and on this record, we determine that
`
`35 U.S.C. § 102(e) Cristofalo
`
`35 U.S.C. § 103(a) Cristofalo
`
`35 U.S.C. § 103(a) Cristofalo and Eldering
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`Petitioner demonstrates a reasonable likelihood of prevailing in showing that
`
`claims 14–16, 19, 21, 24, 26, 28, 30, and 31 of the ’229 patent are
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`anticipated by Tomioka; but that Petitioner fails to demonstrate a reasonable
`
`likelihood of prevailing in showing the unpatentability of any of the other
`
`challenged claims on any other asserted ground. Accordingly, we grant
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`institution of inter partes review as to claims 14–16, 19, 21, 24, 26, 28, 30,
`
`and 31 of the ’229 patent.
`
`B. Related Proceedings
`
`The parties indicate that the ’229 patent is the subject of OpenTV, Inc.
`
`et al. v. Apple Inc., Civil Action No. 3:14-cv-01622-HSG (N.D. CA). Pet. 1;
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`Paper 5, 2.
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`3
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`Patent 7,900,229 B2
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`C. The ’229 Patent
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`The ’229 patent is directed to “[a] system and method for utilizing
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`user profiles in an interactive television system.” Ex. 1001, Abstract. The
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`system may create or update a user profile, or both, based on a user’s
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`activity on a first device, and select data to transmit to a user on a second
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`device based at least in part on the profile. Id.; accord id. at col. 6, l. 54–
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`col. 7, l. 3. Interactive television systems were known for providing content
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`besides television and for allowing user input and personalization. Id. at
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`col. 1, ll. 15–18, 30–45. It was known that systems frequently include “a
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`set-top box connected to a television set and a recording device, but may
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`consist of any number of suitable devices.” Id. For example, an interactive
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`television system may include a broadcast station, a set-top box, and a
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`remote unit, such as a mobile or fixed unit. See id. at col. 2, ll. 11–58,
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`Abstract.
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`In particular, the Specification of the ’229 patent teaches a system and
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`method in which a “user may access the system through various means” and
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`the system “creat[es] and maintain[s] a user profile which reflects activity of
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`the user within the system.” Id. at col. 1, l. 63–col. 2, l. 1. A user’s activity
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`“such as television viewing” may create or update “a user profile which
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`reflects the user’s viewing activities,” and the user’s profile may reflect
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`other activities such as “cell phone or other mobile unit activities and
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`communications.” Id. at col. 2, ll. 1–6, col. 7, ll. 18–42; see also id. at col. 2,
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`l. 59–col 3, l. 2 (“The user may also input information into the user
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`profile.”); col. 13, ll. 1–3 (“Web surfing”). Information is delivered to a user
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`on a device based at least in part on a user profile available across devices.
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`See id. at col. 6, l. 64–col. 7, l. 3, col. 10, ll. 47–60. For example, “a user’s
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`4
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`cell phone activity may affect the information the user receives at home on
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`their television, and vice versa.” Id. at col. 2, ll. 6–10.
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`D. Illustrative Claim
`
` Petitioner challenges claims 14–16, 19, 21, 24, 26, 28, 30, and 31 of
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`the ’229 patent. Claims 14 (an interactive television system) and 26 (a
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`computer readable storage medium) are independent. Claims 15, 16, 19, 21,
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`and 24 depend directly or indirectly from claim 14; and claims 28, 30, and
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`31 depend directly or indirectly from claim 26.2 Claim 14 is illustrative and
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`is reproduced below:
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`14. An interactive television system comprising:
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`a remote unit;
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`a set-top box; and
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`a broadcast station coupled to convey a programming signal to
`the set-top box;
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`wherein the system is configured to:
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`update a user profile responsive to a first user activity,
`the first user activity being initiated via a first device
`corresponding to one of the remote unit and the set-top box;
`
`
`detect a second user activity, the second user activity
`being initiated via a second device corresponding to one of the
`remote unit and the set-top box, the second device being
`different from the first device, wherein either
`
`(i) the first user activity comprises an activity related to
`
`
`2 Claim 21 depends from claim 14 via intervening claim 20, and claim 28
`depends from claim 26 via intervening claim 27. Petitioner does not
`challenge claim 20 or 27 expressly. See Pet. 30, 53–54. Nevertheless,
`because we institute on the asserted ground of anticipation by Tomioka, we
`consider the limitations of claims 20 and 27 in our evaluation of claims 21
`and 28, respectively.
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`television viewing and the second user activity comprises
`an activity unrelated to television viewing, or
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`(ii) the first user activity comprises an activity unrelated
`to television viewing and the second user activity
`comprises an activity related to television viewing;
`
`access the user profile in response to the second user
`activity; and
`
`transmit data responsive to the second user activity,
`wherein the transmitted data is based at least in part on
`the user profile, and wherein the first user activity
`affects a content of said data transmitted to the user
`responsive to the second user activity.
`
`Ex. 1001, col. 14, ll. 33–59 (emphases added). Disputed limitations are
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`emphasized.
`
`E. Claim Construction
`
`Consistent with the statute and the legislative history of the AIA, we
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`interpret claims of an unexpired patent using the broadest reasonable
`
`interpretation in light of the specification of the patent. See 37 C.F.R.
`
`§ 42.100(b); In re Cuozzo Speed Techs. LLC, 793 F.3d 1268, 1277
`
`(“Congress implicitly approved the broadest reasonable interpretation
`
`standard in enacting the AIA”), 1279 (“the standard was properly adopted by
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`PTO regulation.”) (Fed. Cir. 2015); Office Patent Trial Practice Guide, 77
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`Fed. Reg. 48756, 48766 (Aug. 14, 2012). There is a presumption that claim
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`terms are given their ordinary and customary meaning, as would be
`
`understood by a person of ordinary skill in the art in the context of the
`
`specification. See In re Translogic Tech. Inc., 504 F.3d 1249, 1257 (Fed.
`
`Cir. 2007). An applicant may rebut that presumption by providing a
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`definition of the term in the specification with reasonable clarity,
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`deliberateness, and precision. See In re Paulsen, 30 F.3d 1475, 1480 (Fed.
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`6
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`Cir. 1994). In the absence of such a definition, limitations are not to be read
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`from the specification into the claims. See In re Van Geuns, 988 F.2d 1181,
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`1184 (Fed. Cir. 1993).
`
`Petitioner proposes constructions for various claim terms. Pet. 8–10.
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`At this time, Patent Owner does not contest expressly Petitioner’s proposed
`
`claim constructions for the identified terms or present its own claim
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`constructions for any terms. See Prelim. Resp. 7 n.1 (reserving the right to
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`provide claim constructions later, if review is instituted). On this record, we
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`are persuaded that Petitioner’s proposed constructions of the identified terms
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`are not inconsistent with the broadest reasonable construction of those terms
`
`in light of with the Specification. For purposes of this Decision, however,
`
`no claim terms require express construction.
`
`II. ANALYSIS
`
`A. Overview
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`Petitioner argues that claims 14–16, 19, 21, 24, 26, 28, 30, and 31 of
`
`the ’229 patent are anticipated by Tomioka or Cristofalo or are rendered
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`obvious by Tomioka or Cristofalo, alone or in combination with other
`
`references described above. See supra Sec. I.A.
`
`“A claim is anticipated only if each and every element as set forth in
`
`the claim is found, either expressly or inherently described, in a single prior
`
`art reference.” Verdegaal Bros. v. Union Oil Co., 814 F.2d 628, 631 (Fed.
`
`Cir. 1987). The elements must be arranged as required by the claim, but this
`
`is not an ipsissimis verbis test. In re Bond, 910 F.2d 831, 832 (Fed. Cir.
`
`1990). “[U]nless a reference discloses within the four corners of the
`
`document not only all of the limitations claimed but also all of the
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`limitations arranged or combined in the same way as recited in the claim, it
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`cannot be said to prove prior invention of the thing claimed, and thus, cannot
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`anticipate under 35 U.S.C. § 102.” Net MoneyIN, Inc. v. VeriSign, Inc., 545
`
`F.3d 1359, 1371 (Fed. Cir. 2008); accord Application of Arkley, 455 F.2d
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`586 (CCPA 1972). Moreover, “it is proper to take into account not only
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`specific teachings of the reference but also the inferences which one skilled
`
`in the art would reasonably be expected to draw therefrom.” In re Preda,
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`401 F.2d 825, 826 (CCPA 1968).
`
`A patent claim is unpatentable under 35 U.S.C. § 103(a) if the
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`differences between the claimed subject matter and the prior art are “such
`
`that the subject matter[,] as a whole[,] would have been obvious at the time
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`the invention was made to a person having ordinary skill in the art to which
`
`said subject matter pertains.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
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`406 (2007). The question of obviousness is resolved on the basis of
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`underlying factual determinations, including: (1) the scope and content of
`
`the prior art; (2) any differences between the claimed subject matter and the
`
`prior art; (3) the level of skill in the art3
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`; and (4) objective evidence of
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`nonobviousness, i.e., secondary considerations.4 Graham v. John Deere Co.,
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`383 U.S. 1, 17–18 (1966). For the reasons set forth below and on this
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`record, we are persuaded that Petitioner demonstrates a reasonable
`
`
`3 Petitioner proposes a definition for a person of ordinary skill in the art.
`Pet. 7; see Ex. 1016 ¶¶ 37–38. At this time, Patent Owner does not contest
`this definition expressly or present an alternative definition. For purposes of
`this Decision and to the extent necessary, we adopt Petitioner’s definition.
`4 Patent Owner does not contend in its Preliminary Response that secondary
`considerations are present, which would render the challenged claims
`patentable over the applied references.
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`likelihood of prevailing in its challenge to claims 14–16, 19, 21, 24, 26, 28,
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`30, and 31 of the ’229 patent as anticipated by Tomioka.
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`B. Asserted Grounds
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`1. Anticipation by Tomioka
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`Petitioner provides a claim chart mapping the disclosure of Tomioka
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`on challenged claims 14–16, 19, 21, and 24 of the ’229 patent. Pet. 18–31.
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`With respect to independent claim 26, Petitioner argues that independent
`
`claim 26 is “virtually identical” to independent claim 14, except that claim
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`26 recites “[a] computer-readable storage medium comprising program
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`instructions, or triggers to launch execution of program instructions, wherein
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`the program instructions are executable by a computing device.” Pet. 31
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`(quoting Ex. 1001, col. 15, ll. 39–42). Thus, Petitioner relies largely on its
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`claim chart with respect to claim 14 to demonstrate that Tomioka discloses
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`each and every element of claim 26. Id. at 31–32.
`
`Petitioner acknowledges, however, that claim 26 recites program
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`instructions stored on a computer readable medium, rather than system
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`components, as in claim 14. Id. at 32. Petitioner argues that “Tomioka also
`
`discloses software ‘schemes,’ ‘modules’ and ‘intelligent agents’ that will
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`perform system steps, along with multiple options for storage.” Id. at 32
`
`(citing Ex. 1003 ¶¶ 52–55, 58, 94, 104, and Fig. 2). Thus, Petitioner argues
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`that Tomioka discloses the use of removable storage devices or servers
`
`storing software to perform the program instructions to accomplish the
`
`recited steps of claim 26. Id. Similarly, Petitioner relies, in part, on its
`
`claim chart mapping Tomioka to claims 14, 19, and 24, which depend from
`
`claim 14, in order to demonstrate that Tomioka discloses the additional
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`elements of claims 28, 30, and 31, which depend from claim 26. Id. at 32–
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`33 (citing various paragraphs from Tomioka in support of Petitioner’s
`
`arguments with respect to each additional element).
`
`Patent Owner contends that Petitioner’s anticipation arguments are
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`deficient for two reasons. First, Patent Owner contends that Petitioner fails
`
`to address the claimed interaction between the first user activity and the
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`second user activity with particularity. Prelim. Resp. 4–5 (citing Pet. 22–
`
`28). Second, Patent Owner contends that, because Petitioner’s mapping of
`
`Tomioka onto the challenged claims “relies on multiple, distinct teachings
`
`(e.g., different embodiments) of the reference, it fails to anticipate the claims
`
`as a matter of law.” Id. at 5 (citing Net MoneyIN, 545 F.3d at 1369). On this
`
`record, we are not persuaded by either contention.
`
`
`
`With respect to Patent Owner’s first contention, Petitioner argues that
`
`Tomioka’s disclosed system is configured to “transmit data responsive to the
`
`second user activity, wherein the transmitted data is based at least in part on
`
`the user profile, and wherein the first user activity affects a content of said
`
`data transmitted to the user responsive to the second activity,” as recited in
`
`claim 14. Pet. 14. In particular, Petitioner argues that the system “records
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`and presents to the user audio and video information based upon the user’s
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`prior viewing and listening habits, preferences, and personal characteristics,
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`generally referred to as user information.” Id. at 14–15 (quoting Ex. 1003
`
`¶ 40 (emphases added)). Further, Petitioner argues that Tomioka discloses
`
`an intelligent agent that can “consult with the user description scheme and
`
`obtain information that it needs for acting on behalf of the user,” and that
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`the Tomioka system can “discover programs that fit the taste of the user,
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`alert the user about such programs, and/or record them autonomously.” Id.
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`at 15 (quoting Ex. 1003 ¶ 63 (emphasis added)). Thus, Petitioner argues that
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`Tomioka’s system “gathers and provides ‘user specific information’ used in
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`‘authoring and updating the user description scheme,’ and ‘[i]n this manner,
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`desirable content may be provided to the user.’” Id. (quoting Ex. 1003 ¶ 55).
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`Consequently, because Tomioka discloses the use of activity both related
`
`and unrelated to television viewing from different devices to create or update
`
`a user profile (see Pet. 22–23 (citing Ex. 1003 ¶¶ 46, 62)) and because
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`Tomioka discloses that devices may access content from different sources in
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`accordance with user information (see id. at 24 (citing Ex. 1003 ¶ 69), 25
`
`(citing Ex. 1003 ¶¶ 58, 60)), we are persuaded that Petitioner has
`
`demonstrated a reasonable likelihood of prevailing in showing that the
`
`recited interaction between the first user activity and the second user activity
`
`is disclosed by Tomioka.
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`
`
`With respect to Patent Owner’s second contention, Petitioner relies on
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`disclosure in paragraphs spanning Tomioka’s specification. Pet. 18–31. We
`
`note that Tomioka’s Figure 1 generally depicts a first embodiment of
`
`Tomioka’s disclosed system (Ex. 1003 ¶ 8), and Figures 2 and 3 relate
`
`generally to the embodiment of Figure 1 (id. at ¶¶ 9–10). Figures 4–12
`
`depict an audiovisual interface that is suitable for a preferred audiovisual
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`depiction scheme. Id. ¶ 76. Figures 13–21 generally depict “an alternative
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`embodiment” of the program description scheme, such as program
`
`description scheme 18 of Figure 1 (id. ¶¶ 20–28, 79–88); and Figures 22–27
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`generally depict “an exemplary embodiment” of user preference description
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`scheme 20 of Figure 1 (id. ¶¶ 29–34, 89–104).
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`Based on the current record, we are not persuaded that the cited
`
`disclosures of Tomioka relate to distinct embodiments. We read Figures 22–
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`27 and the accompanying text to describe variations of the embodiment of
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`Figure 1, rather than alternative embodiments. Patent Owner does not point
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`to anything in the disclosure of Tomioka that demonstrates that the
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`paragraphs relied upon by Petitioner describe separate and unrelated
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`embodiments. As discussed above, Tomioka’s Figures 1 and 22 are directed
`
`to the same user preference description scheme 20; and the majority of
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`Petitioner’s mapped citations relate to this common embodiment. Pet. 18–
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`31; see Kennametal, Inc. v. Ingersoll Cutting Tool Co., 780 F.3d 1376, 1381
`
`(Fed. Cir. 2015) (“[A] reference can anticipate a claim even if it ‘d[oes] not
`
`expressly spell out’ all the limitations arranged or combined as in the claim,
`
`if a person of skill in the art, reading the reference, would ‘at once envisage’
`
`the claimed arrangement or combination.”); Nelson Products, Inc. v. Bal
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`Seal Engineering, Inc., Case IPR2014-00572, slip op. 22 (PTAB Sept. 24,
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`2015) (Paper 55).
`
`For the reasons set forth above and on this record, we are persuaded
`
`that Petitioner has established a reasonable likelihood of prevailing in
`
`showing that claims 14–16, 19, 21, 24, 26, 28, 30, and 31 of the ’229 patent
`
`are anticipated by Tomioka.
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`2. Obviousness over Tomioka, alone or in combination with
`Schiller or Kotani
`
`Petitioner argues that, “[t]o the extent the Board may determine that
`
`certain limitations of claims 14–16, 19, 21, 24, 26, 28, 30, and 31 are not
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`anticipated by Tomioka, these claims are obvious based on Tomioka.”
`
`Pet. 33. Further, with respect to the combinations of Tomioka with Schiller
`
`or Kotani, Petitioner argues that each of these grounds for unpatentability is
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`an “alternative” based on possible deficiencies in the disclosure of Tomioka.
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`Id. at 34, 36. Patent Owner contends that Petitioner’s arguments regarding
`
`the alleged obviousness of claims 14–16, 19, 21, 24, 26, 28, 30, and 31 are
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`incomplete and insufficient to demonstrate a reasonable likelihood of
`
`prevailing on the obviousness challenges. Prelim, Resp. 3–4. We agree
`
`with Patent Owner.
`
`As noted above, in order to demonstrate obviousness, Petitioner must
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`identify any differences between the claimed subject matter and the prior art.
`
`See Graham, 383 U.S. at 17–18; Travelocity.com L.P. v. Cronos
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`Technologies, LLC, Case CBM2014-00082, slip op. at 19 (PTAB Sept. 15,
`
`2014) (Paper 10). Petitioner does not identify with sufficient specificity
`
`what limitations are missing from Tomioka that a person of ordinary skill in
`
`the art would have modified Tomioka to supply or would have sought for in
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`the teachings of Schiller or Kotani. Id. at 33–38. Instead, Petitioner merely
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`suggests that various limitations, such as the set-top box (see Pet. 33, 35) or
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`the steps of “updat[ing],” “detect[ing],” “access[ing],” and “transmit[ting]”
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`(see id. at 37–38), if found to be missing from Tomioka, may be taught or
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`suggested by Tomioka itself, Schiller, or Kotani; and that a person of
`
`ordinary skill in the art would have had reason to modify the teachings of
`
`Tomioka or combine the teachings of Tomioka and Schiller or Kotani to
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`remedy this possible deficiency in Tomioka (id. at 33–38). Our Rules
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`require a petition state “[h]ow the construed claim is unpatentable under the
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`statutory grounds identified in paragraph (b)(2) of this section. The petition
`
`must specify where each element of the claim is found in the prior art
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`patents or printed publications relied upon.” 37 C.F.R. § 42.104(b)(4). On
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`this record, we are not persuaded that Petitioner has established a reasonable
`
`likelihood of prevailing in showing that claims 14–16, 19, 21, 24, 26, 28, 30,
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`and 31 of the ’229 patent rendered obvious by Tomioka, alone or in
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`combination with Schiller or Kotani.
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`3. Anticipation by Cristofalo
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`As with Tomioka, Petitioner provides a claim chart mapping the
`
`disclosure of Cristofalo on challenged claims 14–16, 19, 21, and 24 of the
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`’229 patent. Pet. 44–54. With respect to independent claim 26 of the ’229
`
`patent, Petitioner argues that independent claim 26 is “similar” to
`
`independent claim 14, except that claim 26 recites ‘[a] computer-readable
`
`storage medium comprising program instructions, or triggers to launch
`
`execution of program instructions, wherein the program instructions are
`
`executable by a computing device,’” instead of an interactive television
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`system. See Pet. 54. Petitioner argues, however, that, according to
`
`Cristofalo, “the software that causes a computer to perform the method of
`
`the present invention may be stored on any storage medium known in the
`
`art.” Id. at 55 (quoting Ex. 1006, col. 20, ll. 9–12). Petitioner relies largely
`
`on its claim chart with respect to claim 14 to demonstrate that Cristofalo
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`discloses each and every element of claim 26. Id. Similarly, Petitioner
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`relies, in part, on its claim chart mapping Cristofalo to claims 14, 19, and 24,
`
`which depend from claim 14, in order to demonstrate that Cristofalo
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`discloses the additional elements of claims 28, 30, and 31, which depend
`
`from claim 26. Id. at 55–56 (citing various paragraphs from Cristofalo in
`
`support of Petitioner’s arguments with respect to each additional element).
`
`Patent Owner contends that Petitioner’s anticipation arguments are
`
`deficient for two reasons. First, Patent Owner contends that, because
`
`Petitioner’s mapping of Cristofalo onto the challenged claims relies on
`
`“multiple embodiments in the Cristofalo reference for the claimed
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`interaction without explanation,” it is deficient as a matter of law. Prelim.
`
`Resp. 5. Second, Patent Owner contends that Petitioner’s reliance on the
`
`disclosure of issued claims from Cristofalo (Pet. 54 (citing Ex. 1006, Claims
`
`70, 71)) is improper because Petitioner fails to demonstrate that these claims
`
`are supported by the original disclosure of Cristofalo and entitled to the
`
`benefit of its filing date. Prelim. Resp. 6. Because we are persuaded by
`
`Patent Owner’s first contention, we do not reach its second contention.
`
`
`
`With respect to Patent Owner’s first contention, Petitioner relies on
`
`disclosure in paragraphs spanning Cristofalo’s specification. See, e.g.,
`
`Pet. 39–54. We note that Cristofalo’s Figures 1 and 2 generally depict a first
`
`embodiment of Cristofalo’s disclosed system and method (Ex. 1006, col. 2,
`
`ll. 40–44, 65–66; col. 4, ll. 6–7), and that Figures 3 and 4 relate to “another”
`
`and “yet another” embodiment of Cristofalo’s disclosed system, respectively
`
`(id. at col. 2, ll. 44–51).
`
`Based on the current record, we find that the cited disclosures of
`
`Cristofalo relate to separate embodiments. Petitioner maps text from
`
`Cristofalo describing each of the three disclosed embodiments onto the
`
`elements of claims 14–16, 19, 21, and 24 of the ’229 patent. See, e.g., Pet.
`
`49–50 (citing Ex. 1006, col. 3, ll. 10–26 (relating to Fig. 2), col. 17, ll. 18–
`
`22 (relating to Figs 3 and 4)). Petitioner does not explain why these
`
`disclosures of separate embodiments may be combined properly to disclose
`
`the elements of the challenged claims. Further, to the extent that Petitioner
`
`believes that less than all of the cited disclosures are necessary to
`
`demonstrate anticipation by Cristofalo, Petitioner fails to explain what
`
`disclosure it is relying upon to support this ground for unpatentability.
`
`Absent such explanations, we find Petitioner’s arguments and evidence
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`insufficient to demonstrate anticipation of the challenged claims by
`
`Cristofalo.
`
`For the reasons set forth above and on this record, we are not
`
`persuaded that Petitioner has established a reasonable likelihood of
`
`prevailing in showing that claims 14–16, 19, 21, 24, 26, 28, 30, and 31 of the
`
`’229 patent are anticipated by Cristofalo.
`
`4. Obviousness over Cristofalo, alone or in combination with
`Eldering
`
`
`Petitioner argues that, “[t]o the extent the Board may determine that
`
`certain limitations of claims 14–16, 19, 21, 24, 26, 28, 30, and 31 are not
`
`anticipated by Cristofalo, these claims are obvious based on Cristofalo.”
`
`Pet. 56. Further with respect to the combination of Cristofalo and Eldering,
`
`Petitioner argues that this ground for unpatentability is an “alternative”
`
`based on possible deficiencies in the disclosure of Cristofalo. Id. at 57.
`
`Patent Owner contends that Petitioner’s arguments regarding the alleged
`
`obviousness of claims 14–16, 19, 21, 24, 26, 28, 30, and 31 are incomplete
`
`and insufficient to demonstrate a reasonable likelihood of prevailing on the
`
`obviousness challenges. Prelim, Resp. 3–4. We agree with Patent Owner.
`
`As noted above, in order to demonstrate obviousness, Petitioner must
`
`identify any differences between the claimed subject matter and the prior art.
`
`Graham, 383 U.S. at 17–18; see Case CBM2014-00082, slip op. at 19
`
`(Paper 10). As with the obviousness grounds based on Tomioka, Petitioner
`
`does not identify with sufficient specificity what limitations are missing
`
`from Cristofalo that a person of ordinary skill in the art would have modified
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`Cristofalo to supply5 or would have sought for in the teachings of Eldering.
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`Id. at 56–60. Instead, with respect to the combination of the teachings of
`
`Cristofalo and Eldering, Petitioner suggests that the step of “updat[ing]” (see
`
`id. at 58–59), if found to be missing from Cristofalo, may be taught or
`
`suggested by Eldering (id.), and that a person of ordinary skill in the art
`
`would have had reason to combine the teachings of Cristofalo and Eldering
`
`to remedy this possible deficiency in Cristofalo (id. at 57–58). On this
`
`record, we are not persuaded that Petitioner has established a reasonable
`
`likelihood of prevailing in showing that claims 14–16, 19, 21, 24, 26, 28, 30,
`
`and 31 of the ’229 patent rendered obvious by Cristofalo, alone or in
`
`combination with Eldering.
`
`III. CONCLUSION
`
`For the reasons set forth herein and on this record, we are persuaded
`
`that Petitioner demonstrates a reasonable likelihood of prevailing in showing
`
`the anticipation by Tomioka of claims 14–16, 19, 21, 24, 26, 28, 30, and 31
`
`of the ’229 patent. We are not persuaded that Petitioner demonstrates a
`
`reasonable likelihood of prevailing in showing the unpatentability of any
`
`other challenged claim on any other asserted ground. See supra Sec. I.A.
`
`We have not made a final determination under 35 U.S.C. § 318(a) as to the
`
`
`5 We note that Petitioner’s citation to large portions of Dr. Knutson’s
`declaration cannot supply this deficiency. Pet. 56–57 (citing Ex. 1016
`¶¶ 105, 117–172); see also 37 C.F.R. § 42.6(a)(3) (“Arguments must not be
`incorporated by reference from one document into another document.”);
`Cisco Systems, Inc. v. C-Cation Techs., LLC, Case IPR2014-00454, slip op.
`at 9 (PTAB Aug. 29, 2014) (Paper 12) (informative) (“This practice of citing
`the Declaration to support conclusory statements that are not otherwise
`supported in the Petition also amounts to incorporation by reference.”).
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`construction of claim terms, the patentability of challenged claims, or any
`
`underlying factual determinations and/or legal conclusions.
`
`IV. ORDER
`
`For the reasons given, it is
`
`ORDERED that inter partes review is instituted as to claims 14–16,
`
`19, 21, 24, 26, 28, 30, and 31 of the ’229 patent under 35 U.S.C. § 102(a) as
`
`anticipated by Tomioka; and
`
`FURTHER ORDERED that inter partes review is not instituted on
`
`any other challenged claim on any other ground; and
`
`FURTHER ORDERED that, pursuant to 35 U.S.C. § 314(a), inter
`
`partes review of the ʼ229 patent is hereby instituted commencing on the
`
`entry date of this Decision, 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 review.
`
`
`
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`IPR2015-01031
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`PETITIONER:
`
`Mark E. Miller
`Ryan K. Yagura
`Brian M. Cook
`Xin-Yi Zhou
`J. Kevin Murray
`Anne E. Huffsmith
`O’MELVENY & MYERS LLP
`markmiller@omm.com
`ryagura@omm.com
`bcook@omm.com
`vzhou@omm.com
`kmurray@omm.com
`ahuffsmith@omm.com
`
`
`PATENT OWNER:
`
`Erika H. Arner
`Joshua L. Goldberg
`Alyssa Holtslander
`Daniel Tucker
`
`FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLP
`erika.arner@finnegan.com
`joshua.goldberg@finnegan.com
`alyssa.holtslander@finnegan.com
`daniel.tucker@finnegan.com
`
`
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