Trials@uspto.gov
`571.272.7822
`
`
`Paper No. 8
`Filed: July 14, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`VIPTELA, INC.,
`Petitioner,
`
`v.
`
`FATPIPE NETWORKS INDIA LIMITED,
`Patent Owner.
`____________
`
`Case IPR2017-00684
`Patent 6,775,235 B2
`____________
`
`
`
`Before STACEY G. WHITE, MICHELLE N. WORMMEESTER, and
`CHRISTA P. ZADO, Administrative Patent Judges.
`
`ZADO, Administrative Patent Judge.
`
`
`
`
`
`
`
`DECISION
`Institution of Inter Partes Review
`35 U.S.C. § 314(a) and 37 C.F.R. § 42.108
`
`
`
`571.272.7822
`
`
`Paper No. 8
`Filed: July 14, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`VIPTELA, INC.,
`Petitioner,
`
`v.
`
`FATPIPE NETWORKS INDIA LIMITED,
`Patent Owner.
`____________
`
`Case IPR2017-00684
`Patent 6,775,235 B2
`____________
`
`
`
`Before STACEY G. WHITE, MICHELLE N. WORMMEESTER, and
`CHRISTA P. ZADO, Administrative Patent Judges.
`
`ZADO, Administrative Patent Judge.
`
`
`
`
`
`
`
`DECISION
`Institution of Inter Partes Review
`35 U.S.C. § 314(a) and 37 C.F.R. § 42.108
`
`
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`IPR2017-00684
`Patent 6,775,235 B2
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`A. Background
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`I. INTRODUCTION
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`Viptela, Inc. (“Petitioner”) filed a Petition (Paper 1, “Pet.”) seeking to
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`institute an inter partes review of claims 4–15, 19, and 22–24 of U.S.
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`Patent No. 6,775,235 B2 (Ex. 1001, “the ’235 patent”) pursuant to 35 U.S.C.
`
`§§ 311–319. FatPipe Networks India Limited (“Patent Owner”) filed a
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`Preliminary Response.1 (Paper 6, “Prelim. Resp.”). We have jurisdiction
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`under 35 U.S.C. § 314(a), which provides that an inter partes review may
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`not be instituted “unless . . . there is a reasonable likelihood that the
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`petitioner would prevail with respect to at least 1 of the claims challenged in
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`the petition.”
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`Petitioner contends the challenged claims are unpatentable under
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`35 U.S.C. §§ 102 and 103 on the following specific grounds (Pet. 4, 9–60):
`
`Reference(s)
`Karol2
`Karol and Stallings3
`Karol
`
`Basis Claims Challenged
`§ 102 4–11, 14, 19 and 22–24
`§ 103 5, 6, 11–15, 19, and 22–24
`§ 103 4–15, 19, and 22–24
`
`
`1 The panel takes notice that the caption in Patent Owner’s Preliminary
`Response (Paper 6) reads “FATPIPE NETWORKS PRIVATE LIMITED,”
`which is a change from what Patent Owner stated as the Real Party-In-
`Interest in its Mandatory Notices (Paper 5, 1). The panel reminds Patent
`Owner that pursuant to 37 C.F.R. § 42.8(a)(3), new mandatory notices must
`be filed within 21 days if there are any changes to the information required
`under 37 C.F.R. § 42.8(b).
`
`2 U.S. Patent No. 6,628,617 B1 (“Karol,” Ex. 1006).
`
`3 William Stallings, Data and Computer Communications, Prentice-Hall, 5th
`Ed., 1997, ISBN-81-203-1240-6 (“Stallings,” Ex. 1011).
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`2
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`Our factual findings and conclusions at this stage of the proceeding are
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`based on the evidentiary record developed thus far. This is not a final
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`decision as to patentability of claims for which inter partes review is
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`instituted. Our final decision will be based on the record as fully developed
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`during trial. For reasons discussed below, we institute inter partes review of
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`claims 6 and 22–24 of the ʼ235 patent.
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`B. Related Proceedings
`
`Petitioner informs us that the ’235 patent has been asserted in the
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`following proceeding: FatPipe, Inc. v. Viptela, Inc., No. 1:16-cv-182 (D.
`
`Del.). Pet. 1; see also Paper 5, 1. In addition, the ’235 patent is the subject
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`of a separate proceeding, IPR2016-00976, filed by Talari Networks, Inc.
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`Pet. 2; Paper 5, 2.
`
`C. The ʼ235 Patent
`
`The ’235 patent describes a system and method for communicating
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`using two or more disparate networks in parallel. Ex. 1001, Abstract. For
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`example, an embodiment of this system could be composed of a virtual
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`private network (“VPN”) in parallel with a frame relay network. Id. at 1:19–
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`24. These parallel networks back each other up in case of failure and when
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`both networks are operational their loads are balanced between the parallel
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`networks. Id. at Abstract. An embodiment of this system is depicted in
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`Figure 10, which is shown below.
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`Figure 10 depicts an example of the network topology described in the ’235
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`patent. Id. at 8:29–30. Two sites 102 transmit and/or receive data from one
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`another. Id. at 2:38–40. These sites are connected by two disparate
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`networks, Internet 500 and frame relay network 106. Id. at 8:30–32. Each
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`location has frame relay router 105 and Internet router 104. Id. at 8:32–33.
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`“Access to the disparate networks at site A and site B is through an inventive
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`controller 602 at each site.” Id. at 6:34–36. Controller 602 “allows load-
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`balancing, redundancy, or other criteria to be used dynamically, on a
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`granularity as fine as packet-by-packet, to direct packets to an Internet router
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`and/or frame relay/point-to-point router according to the criteria.” Id. at
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`9:12–17.
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`Figure 7 of the ’235 patent is reproduced below.
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`
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`Figure 7 depicts controller 602. Id. at 10:59–60. Controller 602 is
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`connected to site 102 via site interface 702. Id. at 10:60–63. Packet path
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`selector 704 is hardware or software that determines which path a given
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`packet is to travel. Id. at 11:2–6. The criteria used to determine which path
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`a packet travels may be based on concerns such as redundancy,
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`load-balancing, or security. Id. at 11:6–63. Controller 602 also has two or
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`more network interfaces 706 (at least one per each network for which
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`controller 602 controls access). Id. at 11:64–67.
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`D. Illustrative Claim
`
`As noted above, Petitioner challenges claims 4–15, 19, and 22–24 of
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`the ʼ235 patent, of which claims 4, 5, 19, and 22 are independent. Claim 22
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`is illustrative of the challenged claims and is reproduced below:
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`22. A computer storage medium having a configuration that
`represents data and instructions which will cause
`performance of a method for combining connections for
`access to multiple parallel disparate networks, the
`method comprising the steps of:
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`5
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`obtaining at least two known location address ranges which
`have associated networks;
`obtaining topology information which specifies associated
`networks that provide, when working, connectivity
`between a current location and at least one destination
`location;
`receiving at the current location a packet which identifies a
`particular destination location by specifying a destination
`address for the destination location;
`determining whether the destination address lies within a
`known location address range; selecting a network path
`from among paths to disparate associated networks, said
`networks being in parallel at the current location, each of
`said networks specified in the topology information as
`capable of providing connectivity between the current
`location and the destination location;
`modifying the packet destination address to lie within a known
`location address range associated with the selected
`network if it does not already do so; and
`forwarding the packet on the selected network path.
`
`Ex. 1001, 19:31–20:24.
`
`
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`II. CLAIM CONSTRUCTION
`
`In an inter partes review, “[a] claim in an unexpired patent shall be
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`given its broadest reasonable construction in light of the specification of the
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`patent in which it appears.” 37 C.F.R. § 42.100(b). Under this standard, we
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`construe claim terms using “the broadest reasonable meaning of the words in
`
`their ordinary usage as they would be understood by one of ordinary skill in
`
`the art, taking into account whatever enlightenment by way of definitions or
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`otherwise that may be afforded by the written description contained in the
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`applicant’s specification.” In re Morris, 127 F.3d 1048, 1054 (Fed. Cir.
`
`1997).
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`Petitioner submits a list of terms for which Patent Owner has
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`proposed construction in a co-pending district court case. Pet. 6–7.
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`Petitioner, however, asserts that for the purposes of this Decision no terms
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`need to be construed. Id. Patent Owner does not address claim construction
`
`in its Preliminary Response. See generally Prelim. Resp. We reviewed the
`
`asserted grounds, and, for the purposes of this Decision, we have determined
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`that no terms require express construction. See Vivid Techs., Inc. v. Am. Sci.
`
`& Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).
`
`III. ANALYSIS
`
`A. 35 U.S.C. § 325(d)
`
`Patent Owner’s Preliminary Response focuses on the issue of whether
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`the Board should exercise its discretion and deny institution of Petitioner’s
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`asserted grounds under 35 U.S.C. § 325(d). Prelim. Resp. 1–9. We
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`instituted inter partes review in IPR2016-00976 (the “’976 IPR”) on
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`November 2, 2016. In that proceeding we instituted inter partes review of
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`claims 4, 5, 7–15, and 19 (the “previously instituted claims”) of the ’235
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`patent over the same art and the same grounds now asserted in this Petition.
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`See generally ’976 IPR, Paper 7 (PTAB Nov. 2, 2016). We note that in this
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`proceeding Petitioner challenges additional claims, claims 6 and 22–24 (the
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`“newly challenged claims”), not challenged in IPR2016-00976. Patent
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`Owner argues the arguments presented in this Petition are substantially the
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`same arguments as those before the office in the ’976 IPR and, therefore, we
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`should exercise our discretion and decline institution of the instant Petition.
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`Prelim. Resp. 1–2.
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`Petitioner characterizes its Petition as having substantial identity with
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`the previously instituted proceeding, specifically stating that “[t]he ‘235
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`Patent is also subject to a separate proceeding before the Board in IPR2016-
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`00976, filed by Talari Networks, Inc. (the ‘’976 IPR’).” Pet. 2. Petitioner
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`acknowledges that we instituted review in that proceeding and describes its
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`Petition as “substantially identical to the Petition in the ’976 IPR.” Id.
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`Institution of an inter partes review is discretionary. See 35 U.S.C.
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`§ 314(a) (authorizing institution of an inter partes review under particular
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`circumstances, but not requiring institution under any circumstances);
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`37 C.F.R. § 42.108(a) (“the Board may authorize the review to proceed”)
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`(emphasis added); Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1367
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`(Fed. Cir. 2016) (explaining that under § 314(a), “the PTO is permitted, but
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`never compelled, to institute an IPR proceeding”). Therefore, the question
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`before us is whether we should exercise our discretion and decline to go
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`forward with this Petition in light of the “substantially identical” proceeding
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`that is already before us. Our concern is not only whether “the same or
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`substantially the same prior art or arguments previously were presented to
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`the Office” as expressed in § 325(d), but also managing the resources of the
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`Office in order to secure the just, speedy, and inexpensive resolution of the
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`challenges to the patentability of the ’235 patent. See 37 C.F.R. § 42.1(b);
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`see also 35 U.S.C. § 316(b) (regulations for inter partes review proceedings
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`take into account “the efficient administration of the Office” and “the ability
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`of the Office to timely complete [instituted] proceedings”); and see H.R.
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`Rep. No. 112-98, pt.1, at 48 (2011) (post-grant proceedings conducted under
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`the AIA “are not to be used as tools for harassment or a means to prevent
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`market entry through repeated litigation and administrative attacks on the
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`validity of a patent. Doing so would frustrate the purpose of the section as
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`providing quick and cost effective alternatives to litigation.”). We review
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`the facts and analyze the issues before us in light of the discretion afforded
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`to us pursuant to §§ 314(a) and 325(d).
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`First, we note that the ’976 IPR is in an advanced stage. The Patent
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`Owner Response (’976 IPR, Paper 22 (PTAB Feb. 8, 2017)) was filed nearly
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`six months ago, the Petitioner’s Reply was filed approximately two months
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`ago (’976 IPR Paper 26, (PTAB May 18, 2017)), and the proceeding is set
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`for final oral hearing in a few weeks (’976 IPR, Paper 29 (PTAB June 14,
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`2017), setting the proceeding for oral hearing on August 14, 2017). A final
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`decision is due in the ’976 IPR by November 2, 2017. Thus, the ’976 IPR is
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`in its final stages and the grounds asserted in the instant Petition, which are
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`“substantially identical” to those in the ’976 IPR, are set for a final
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`disposition in the near term. This is a fact that weighs in favor of us
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`exercising discretion not to move forward with the instant Petition, at least
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`with respect to the previously instituted claims, because the issues raised
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`herein are fully briefed and ripe for a final decision in the ’976 IPR.
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`Second, we are mindful of the fact that Petitioner is not involved in
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`the ’976 IPR. It is important that we not extinguish Petitioner’s access to the
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`proceedings before this body just because another party has sought review of
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`the same claims. This is significant because a second petitioner has no
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`control over the decision to see a review through a determination on the
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`merits if the second petitioner is not a party in that matter. We must
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`examine the facts of the matter before us to take care that we do not impose
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`a strict bright line determination barring petitions from entities that are not
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`party to the original proceeding. Therefore, we need to examine the facts of
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`the case before us to determine whether it is appropriate to exercise our
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`discretion in this particular circumstance. As discussed previously, the
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`parties to the ’976 IPR have fully briefed that matter and it is set for final
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`oral hearing in a matter of weeks. At this point, the decision in the ’976 IPR
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`as to whether to see the matter through to final determination is squarely in
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`our hands, regardless of whether any settlement is reached between the
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`parties. See 37 C.F.R. § 42.74(a) (“The parties may agree to settle any issue
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`in a proceeding, but the Board is not a party to the settlement and may
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`independently determine any question of jurisdiction, patentability, or Office
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`practice.”). Thus, if we deem it appropriate, we can reach a final decision on
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`the grounds presented in the ’976 IPR with or without participation from the
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`petitioner in that matter. Therefore, the fact that Petitioner is not a party to
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`the ’976 IPR is at best neutral to our analysis regarding the previously
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`instituted claims due to the identity of the issues presented in the two
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`petitions.
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`Third, Petitioner makes no argument as to why we should go forward
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`with this Petition in light of the ’976 IPR. Petitioner knew of the previous
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`petition and described the two petitions as “substantially identical.” Pet. 2.
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`The instant Petition was filed January 13, 2017, more than two months after
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`the institution of the ’976 IPR. See ’976 IPR, Paper 7 (PTAB Nov. 2, 2016)
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`(instituting the ’976 IPR on November 2, 2016). Thus, Petitioner had the
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`benefit of reviewing Patent Owner’s Preliminary Response and our Decision
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`on Institution in the ’976 IPR prior to filing its Petition. Petitioner did not
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`seek to join the prior proceeding, but instead decided to go forward with its
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`own “substantially identical” Petition. We are not persuaded that it would
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`be an efficient use of our resources to address duplicative grounds that raise
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`no new art or arguments. See Samsung Elec. Co. v. Rembrandt Wireless
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`Techs., LP, Case IPR2015–00114, slip op. at 6 (PTAB Jan. 28, 2015) (Paper
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`14) (“[I]t is more efficient for the parties and the Board to address a matter
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`once rather than twice.”). This is especially true in light of the advanced
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`stage of the ’976 IPR. Therefore, we find these facts also weigh against
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`proceeding with respect to the previously instituted claims.
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`The newly challenged claims in this proceeding, which we noted
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`above were not challenged in the ’976 IPR, include a claim limitation not
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`addressed in the ’976 IPR that relates to modifying a packet destination
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`address to lie within a known location address range associated with the
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`selected network. Ex. 1001, 18:10–31, 19:31–20:30. Because the newly
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`challenged claims raise an issue not before us in the ’976 IPR, this factor
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`weighs in favor of our proceeding with respect to these claims.
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`As discussed above, the facts of this case support exercising our
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`discretion under §§ 314(a) and 325(d) with respect to the previously
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`instituted claims. Thus, we decline Petitioner’s request to institute inter
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`partes review of claims 4, 5, 7–15, and 19 of the ’235 patent. We do not,
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`however, decline institution of claims 6 and 22–24 under §§ 314(a) and
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`325(d) because those claims raise an issue not before us in the ’976 IPR.
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`Patent Owner also argues that, should we institute inter partes review
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`in this proceeding, we should exercise our discretion under § 325(d) and
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`merge this proceeding with the ’976 IPR. Prelim. Resp. 9. However,
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`because the ’976 IPR is at an advanced stage, as discussed above, and the
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`newly challenged claims raise an issue not present in the ’976 IPR, we
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`decline to merge the proceedings.
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`B. Unpatentability of Claims 6 and 22–24
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`Petitioner asserts that claims 6 and 22–24 are anticipated by Karol.
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`Pet. 4, 21–22, 30–31. Petitioner also contends that claims 6 and 22–24
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`would have been obvious over Karol in view of Stallings.4 Id. at 4, 35–37,
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`44–45. Finally, Petitioner argues that claims 6 and 22–24 would have been
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`obvious over Karol. Id. at 4, 52–53, 60. Petitioner supports its arguments
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`with a declaration from Dr. Leonard J. Forys (Ex. 1005). For the reasons
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`described below we are persuaded that Petitioner has made a showing
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`sufficient to satisfy the threshold of 35 U.S.C. § 314(a) as to at least one
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`challenged claim.
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`1. Overview of Karol
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`Karol is directed to “the internetworking of connectionless (e.g.,
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`Internet Protocol or ‘IP’) and connection oriented (e.g., ATM, MPLS,
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`RSVP) networks.” Ex. 1006, 1:7–10. Connectionless (“CL”) networks
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`require no explicit connection setup prior to transmitting datagrams. Id. at
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`1:19–24. In contrast, connection oriented (“CO”) networks determine a
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`route for the connection and allocate bandwidth resources along the route.
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`Id. at 1:31–39. Figure 1 of Karol is reproduced below.
`
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`4 We note that Petitioner does not make any argument in support of its
`contention that claim 24 would have been obvious over Karol in view of
`Stallings. Nevertheless, because we seek to achieve finality of review at the
`Board and avoid a parallel or serial review at the district court, we exercise
`our discretion and our institution of trial includes the ground of whether
`claim 24 is unpatentable as obvious over Karol in view of Stallings.
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`Figure 1 depicts CO and CL networks in a parallel configuration. Id. at
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`3:44–46. Datagrams ultimately destined for endpoint 151 may be sent from
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`source 101 to node 111 in CL network 110. Id. at 4:36–44. The datagrams
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`may be routed over either the CO or CL network in order to arrive at
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`endpoint 151. Id. at 4:40–44. CL-CO gateways 140 and 150 interconnect
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`the CL and CO networks and “allow[] datagrams (sometimes hereinafter
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`called messages) originated on the CL network to be transported . . . on the
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`CO network.” Id. at 3:30–37. “When a datagram arrives at CL-CO gateway
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`140 of FIG. 1, a determination is made if that packet should be carried by
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`CO network 160.” Id. at 5:23–25. CL-CO gateway 140 is described in more
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`detail in Figure 4, which is reproduced below.
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`Figure 4 illustrates the internal arrangements of CL-CO gateway 140. Id. at
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`6:31–32.
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`Generally speaking, each CL-CO gateway arranged in
`accordance with the present invention includes hardware and
`software modules that typically comprise (a) a switch fabric for
`CO networking, shown in FIG. 4 as CO switch 410, (b) a CL
`packet forwarding engine, shown in FIG. 4 as CL router/switch
`420, (c) a protocol converter 450, (d) a moderately sized
`packet buffer 440 for temporarily storing packets waiting for
`CO network setup or turnaround; and (e) a processor 430 and
`associated database 431 for controlling the gateway packet
`handling operations and for storing forwarding, flow control,
`header translation and other information. Input line cards 401
`and output line cards 402 connect the gateway of FIG. 4 to
`external networks, such that datagrams received in input line
`cards 401 can be directed either to CO switch 410 or CL
`router/switch 420, and such that output line cards 402 can
`receive datagrams from either of the last mentioned elements
`and direct them to external networks.
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`Id. at 6:32–50. The elements depicted in Figure 4 are controlled by
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`processor 430 and such control is implemented via programs stored in the
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`processor. Id. at 6:55–59. The routing procedures used by gateway 140
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`may adjust routing dynamically “to divert connections away from
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`overloaded call processors.” Id. at 17:64–67. In other words, routing “can
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`be adjusted to reflect bandwidth availability.” Id. at 18:1–2.
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`2. Analysis
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`Claim 22 is similar to claim 5 (which we addressed in the ’976 IPR),
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`but has the following differences. Claim 5 recites a method, whereas
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`claim 22 recites a computer storage medium configured to perform a
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`method. The method steps recited in claim 22 are identical to the method
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`steps recited in claim 5, except that claim 22 includes the following
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`additional step: “modifying the packet destination address to lie within a
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`known location address range associated with the selected network if it does
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`not already do so.”
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`For the preamble of claim 22, Petitioner relies on Karol’s description
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`of how each CL-CO gateway includes hardware and software to perform the
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`various relevant steps in Karol. Pet. 30.
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`For the steps recited in claim 22, Petitioner relies on its analysis for
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`claim 5, except for the “modifying” step, for which Petitioner relies on its
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`analysis with respect to claim 6 which depends from claim 5 and recites the
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`“modifying” step. Id.
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`Petitioner’s allegations regarding independent claim 5 may be
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`summarized as follows: Karol discloses multiple parallel disparate networks
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`through its discussion of CL and CO networks. Pet. 15–16. Karol discloses
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`obtaining at least two known location address ranges through its discussion
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`of routing tables. Id. at 16–17. Petitioner further asserts that Karol’s routing
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`tables contain information about route topology and connectivity. Id. at 17–
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`19. Karol’s datagrams are relied upon to disclose a packet that identifies a
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`particular destination location. Id. at 19. Karol “compar[es] the destination
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`IP address in each packet received at the CL-CO gateway to entries in the
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`databases to determine if the destination address lies within the routing
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`tables that include a known location address range for the destination
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`location.” Id. at 19–20. Petitioner argues in the alternative that Karol’s
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`discussion of the CL-CO gateway alone or the gateway in combination with
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`its associated routers and/or switches discloses the step of selecting a
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`network path from among the disparate parallel CO and CL networks. Id. at
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`20. In addition, Karol’s routing tables provide information as to the
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`connectivity between the current location and the destination. Id. at 20–21.
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`Petitioner’s allegations regarding dependent claim 6 may be
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`summarized as follows: Karol discloses modifying the packet destination
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`address through its disclosure of a protocol conversion that includes
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`converting the headers containing address information. Pet. 21–22. Of
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`necessity, the modified address lies within a known location address range
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`associated with the selected network because it is associated with the
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`connection oriented service. Id. Petitioner relies also on Karol’s disclosure
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`of a message that is modified to include route node information. Id. at 22.
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`Patent Owner’s Preliminary Response does not raise any arguments
`
`regarding whether Karol discloses the limitations of claim 22. On the record
`
`before us, we find Petitioner’s arguments and evidence to be persuasive.
`
`We have reviewed the parties’ arguments and supporting evidence,
`
`and we are persuaded, for purposes of this Decision, that Petitioner has
`
`demonstrated a reasonable likelihood it would prevail in showing
`
`unpatentability of claim 22 of the ’235 patent as anticipated by Karol.
`
`Having decided that Karol evinces a reasonable likelihood that at least
`
`one of the claims challenged in the Petition is unpatentable, and in keeping
`
`with our mission of resolving patent validity disputes in a just, speedy, and
`
`inexpensive manner, we exercise our discretion under 37 C.F.R § 42.108 to
`
`have the inter partes review proceed on challenged claims 6 and 22–24 on
`
`all grounds for which Karol is proffered as evidence of unpatentability. In
`
`doing so, we seek to achieve finality of review at the Board and avoid a
`
`parallel or serial review at the district court, at least with respect to Petitioner
`
`and the aforementioned statutory grounds for which Karol serves as a basis
`
`16
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`
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`IPR2017-00684
`Patent 6,775,235 B2
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`of the challenge. See Intex Recreation Corp. v. Bestway Inflatables &
`
`Material Corp., Case IPR2016-00180, slip op. at 8–11 (PTAB Jun. 6, 2016)
`
`(Paper 13); see also Synopsys, Inc. v. Mentor Graphics Corp., 814 F.3d
`
`1309, 1316 (Fed. Cir. 2016) (holding that “[t]he validity of claims for which
`
`the Board did not institute inter partes review can still be litigated in district
`
`court”).
`
`In exercising our discretion, we note that in the ’976 IPR, we found
`
`the same arguments and grounds of unpatentability that are argued in this
`
`proceeding to be persuasive for the purposes of institution, see generally
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`’976 IPR, Paper 7 (PTAB Nov. 2, 2016), except that in this proceeding a
`
`new claim limitation, relating to modifying an address, is present. Petitioner
`
`relies on Karol for this additional limitation. For reasons discussed above,
`
`on the present record we are persuaded that Karol discloses this feature.
`
`Also, we are “cognizant of the ramifications of partial institution
`
`where the grounds are in different statutory classes.” Amendments to the
`
`Rules of Practice for Trials Before the Patent Trial and Appeal Board, 80
`
`Fed. Reg. 50,720, 50,739 (Aug. 20, 2015) (Response to Comment 12). As
`
`such, concerns of fairness and efficiency in this case persuade us to institute
`
`not only on the ground of anticipation by Karol, but also on grounds of
`
`obviousness that include Karol as a basis of the challenge. See HP Inc. v.
`
`MPHJ Tech. Inv., LLC, 817 F.3d 1339, 1347 (Fed. Cir. 2016) (holding that
`
`petitioner was “not estopped from raising the obviousness of claim 13 in a
`
`subsequent court or Board proceeding” where Board instituted only on
`
`grounds of anticipation of claim 13).
`
`17
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`IPR2017-00684
`Patent 6,775,235 B2
`
`
`IV. CONCLUSION
`
`For the foregoing reasons, we institute inter partes review of claims 6
`
`and 22–24 of the ’235 patent. At this time, however, we have not made a
`
`final determination with respect to the patentability of these claims.
`
`
`
`
`
`18
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`IPR2017-00684
`Patent 6,775,235 B2
`
`
`
`
`V. ORDER
`
`Accordingly, it is:
`
`ORDERED that pursuant to 35 U.S.C. § 314(a), an inter partes
`
`review is hereby instituted as to claims 6 and 22–24 of the ’235 patent on the
`
`following grounds:
`
`A. Claims 6 and 22–24 as anticipated under 35 U.S.C. § 102 by
`
`Karol;
`
`B. Claims 6 and 22–24 as unpatentable under 35 U.S.C. § 103(a) over
`
`the teachings of Karol; and
`
`C. Claims 6 and 22–24 as unpatentable under 35 U.S.C. § 103(a) over
`
`the teachings of Karol and Stallings;
`
`FURTHER ORDERED that pursuant to 35 U.S.C. § 314(c) and
`
`37 C.F.R. § 42.4, inter partes review of the ʼ235 patent shall commence on
`
`the entry date of this Order, and notice is hereby given of the institution of a
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`trial; and
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`FURTHER ORDERED that no ground other than that specifically
`
`provided above is authorized.
`
`
`
`
`
`
`
`19
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`IPR2017-00684
`Patent 6,775,235 B2
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`
`
`
`PETITIONER:
`
`Robert Hilton
`George Davis
`MCGUIREWOODS LLP
`rhilton@mcguirewoods.com
`gdavis@mcguirewoods.com
`
`PATENT OWNER:
`
`Robert Mattson
`Thomas Yebernetsky
`OBLON, MCCLELLAND, MAIER & NEUSTADT, LLP
`cpdocketmattson@oblon.com
`tyebernetsky@oblon.com
`
`20
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`
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