`Trials@uspto.gov
`Entered: February 1, 2019
`Tel: 571-272-7822
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`QUALCOMM INCORPORATED,
`Patent Owner.
`____________
`
`Case IPR2018-01280
`Patent 7,844,037 B2
`____________
`
`Before DANIEL N. FISHMAN, MICHELLE N. WORMEESTER, and
`SCOTT B. HOWARD, Administrative Patent Judges.
`
`HOWARD, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`IPR2018-01280
`Patent 7,844,037 B2
`INTRODUCTION
`I.
`Apple Inc. (“Petitioner”) filed a Petition to institute an inter partes
`review of claims 1–16 and 181 of U.S. Patent No. 7,844,037 B2 (Ex. 1001,
`“the ’037 patent”) pursuant to 35 U.S.C. §§ 311–319. Paper 2 (“Pet.”).
`Qualcomm Incorporated (“Patent Owner”) filed a Patent Owner Preliminary
`Response. Paper 10 (“Prelim. Resp.”).
`We have authority, acting on the designation of the Director, to
`determine whether to institute an inter partes review under 35 U.S.C. § 314
`and 37 C.F.R. § 42.4(a). Inter partes review may not be instituted unless
`“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.” 35 U.S.C. § 314(a). On April 24, 2018, the
`Supreme Court held that a decision to institute under 35 U.S.C. § 314 may
`not institute on fewer than all claims challenged in the petition. SAS Inst.,
`Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018).
`Upon consideration of the Petition, Patent Owner’s Preliminary
`Response, and the associated evidence, we conclude that the Petition relies
`on the same prior art and the same or substantially the same argument that
`was presented previously to the Office. Thus, we exercise our discretion
`under 35 U.S.C. § 325(d) and deny institution of an inter partes review.
`
`
`1 As discussed below in Section II.A, the Petition also seeks inter partes
`review of claims 19–25. However, because those claims have been
`statutorily disclaimed by Patent Owner, they are treated as if they were never
`part of the ’037 patent. See infra Section II.A.
`
`2
`
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`IPR2018-01280
`Patent 7,844,037 B2
`
`Real Party-In-Interest
`A.
`Petitioner identifies Apple, Inc. as the real party-in-interest. Pet. 50.
`
`Related Proceedings
`B.
`The parties identify the following currently pending patent litigation
`proceeding in which the ’037 patent is asserted: Qualcomm Inc. v. Apple
`Inc., Case No. 3:17-cv-02403 (S.D. Cal.). Id.; Paper 3, 2. Additionally,
`Patent Owner identifies a second request for inter partes review of the
`’037 patent: Apple Inc. v. Qualcomm Inc., Case IPR2018–01279. Paper 3, 2
`
`The ’037 Patent
`C.
`The ’037 patent is titled “Method and Device for Enabling Message
`Responses to Incoming Phone Calls.” Ex. 1001, [54]. According to the
`’037 patent, the claimed invention enables “message replies to be made to
`incoming calls.” Id. at 1:64–65. “For example, rather than pick up a phone
`call or forward the phone call to voicemail, the user may simply generate a
`text (or other form of) message to the caller.” Id. at 1:67–2:3. Thus, when
`using the claimed invention,
`[r]ather than answer the call or perform some other action like
`forwarding the call to voicemail, . . . the recipient computing
`device 110 issues a message response 122 to the calling device
`120. In one embodiment, the message response 122 is an
`alternative to the user of the recipient device 110 having to
`decline or not answer the incoming call 112.
`Id. at 3:56–63.
`As another alternative, in one implementation, the
`message creation data 222 is generated in response to a trigger
`from a user 202. The phone application 210, message response
`module 230, or some other component may prompt the user to
`message respond to a caller in response to receipt of call data
`202. The prompt may occur shortly after the incoming call 204
`is received, such as with or before the first “ring” generated on
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`IPR2018-01280
`Patent 7,844,037 B2
`the computing device 200 for the incoming call. For example,
`the user may be able to elect message response as one option
`along with other options of answering or declining the
`incoming call 204.
`Id. at 5:24–34. Figure 4 of the ’037 patent (not reproduced herein)
`“illustrates a message for handling incoming calls with message replies,
`under an embodiment of the invention.” Id. at 1:53–54.
`
`The Challenged Claims
`D.
`Petitioner challenges claims 1–16 and 18 of the ’037 patent. Pet. 1.
`Claim 1 is independent, is illustrative of the subject matter of the challenged
`claims, and reads as follows:
`1.
`A method for operating a first computing device,
`the method being implemented by one or more processors of
`the computing device and comprising:
`receiving, from a second computing device, an incoming
`call to initiate a voice-exchange session;
`in response to receiving the incoming call, determining a
`message identifier associated with the second computing
`device, wherein the message identifier is determined based at
`least in part on data provided with the incoming call;
`in response to receiving the incoming call, prompting a
`user of the first computing device to enter user input that
`instructs the first computing device to handle the incoming call
`by composing, while not answering the incoming call, a
`message to a user of the second computing device; and
`responsive to receiving the incoming call and the user
`entering the user input, automatically addressing the message to
`the second computing device using the message identifier
`determined from the incoming call.
`Ex. 1001, 9:63–10:15
`
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`IPR2018-01280
`Patent 7,844,037 B2
`
`E.
`
`Asserted Grounds of Unpatentability
`Petitioner asserts the following grounds of unpatentability:
`References
`Basis2
`Challenged Claims
`Brown3 in view of Moran4
`§ 103(a) 1–6, 12–16, and 18
`Brown in view of Moran and
`§ 103(a) 7–11
`Tsampalis5
`
`Pet. 3. In its analysis, Petitioner relies on the declaration testimony of
`Dr. Narayan B. Mandayam (Ex. 1003).
`
`II. ANALYSIS
`A. Patent Owner’s Disclaimer of Claims 19–25
`Petitioner seeks, among other things, inter partes review of claims
`19–25 of the ’037 patent. See Pet. 3, 30–37, 45–46, 48–49. Subsequent to
`the filing of the Petition, Patent Owner filed a statutory disclaimer of claims
`19–25 of the ’037 patent. Ex. 2001; see also Prelim. Resp. 1–2 n.1.
`Patent Owner argues that the statutory disclaimer renders moot
`Petitioner’s request regarding claims 19–25. Prelim. Resp. 1–2 n.1. Patent
`Owner also cites our rules that state that “[n]o inter partes review will be
`instituted based on disclaimed claims.” Id. (quoting 37 C.F.R. § 42.107(e)).
`In considering Federal Circuit precedent and our rules, we conclude
`that we cannot institute a trial on claims that have been disclaimed, and,
`
`
`2 The Leahy-Smith America Invents Act (“AIA”) included revisions to
`35 U.S.C. § 103 effective on March 16, 2013. Because the ’037 patent
`issued from an application filed before March 16, 2013, we apply the pre-
`AIA versions of the statutory bases for unpatentability.
`3 U.S. Patent Appl. 2004/0203794 (published Oct. 14, 2004) (Ex. 1005).
`4 U.S. Patent Appl. 2003/0104827 (published June 5, 2003) (Ex. 1006).
`5 U.S. Patent Appl. 2004/0203956 (published Oct. 14, 2004) (Ex. 1007).
`
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`IPR2018-01280
`Patent 7,844,037 B2
`thus, no longer exist. Cf. Vectra Fitness, Inc. v. TNWK Corp., 162 F.3d
`1379, 1383 (Fed. Cir. 1998) (“This court has interpreted the term
`‘considered as part of the original patent’ in section 253 to mean that the
`patent is treated as though the disclaimed claims never existed.”); Guinn v.
`Kopf, 96 F.3d 1419, 1422 (Fed. Cir. 1996); Genetics Inst., LLC v. Novartis
`Vaccines & Diagnostics, Inc., 655 F.3d 1291, 1299 (Fed. Cir. 2011); 37
`C.F.R. § 42.107(e). That conclusion is consistent with other panel decisions
`in inter partes review proceedings that addressed a near identical
`circumstance as we address here. See, e.g., Vestas-American Wind Tech.,
`Inc. v. Gen. Elec. Co., IPR2018-01015, slip op. at 12–14 (PTAB Nov. 14,
`2018) (Paper 9); Intuitive Surgical, Inc. v. Ethicon LLC, IPR2018-00935,
`slip op. 9–10 (PTAB Dec. 7, 2018) (Paper 9). We share the same view as
`the panel in Vestas that such a conclusion is consistent with the statutory
`scope of inter partes review as laid out in 35 U.S.C. §§ 311(b) and 318(a)
`and is not at odds with the Supreme Court’s recent decision in SAS. See
`Vestas, slip op. at 12–14. Accordingly, we treat claims 19–25 as having
`never been part of the ’037 patent, and Petitioner cannot seek inter partes
`review of those claims.
`
`B. Discretionary Denial Under 35 U.S.C. § 325(d)
`Petitioner’s Arguments Regarding Brown
`1.
`Petitioner argues Brown teaches “in response to receiving the
`incoming call, prompting a user of the first computing device to enter user
`input that instructs the first computing device to handle the incoming call by
`composing, while not answering the incoming call, a message to a user of
`the second computing device” as recited in claim 1. See Pet. 17–18.
`Specifically, Petitioner argues “Brown teaches that ‘[a] user may recognize
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`Patent 7,844,037 B2
`that an incoming call is being received by the activation of a ringer,
`vibration device, visual notification (such as a light, text message, etc.),
`etc.’” Id. at 17 (quoting Ex. 1005 ¶ 26). Petitioner further argues Brown
`teaches that “[i]n response to the visual notification or other prompt, the
`‘user actuates a key or key sequence to request an auto-response to the
`incoming phone call’” and that “a user could select an auto-response button
`118 on their wireless phone 100 when their phone starts ringing, which
`would stop the ringing of the phone and initiate the auto-response
`sequence.” Id. (emphasis omitted) (quoting Ex. 1005 ¶ 26). Petitioner
`further argues that the auto-response can include a text message and, in that
`case, the call will not be answered. Id. at 17–18 (citing Ex. 1005 ¶ 30;
`Ex. 1003 ¶ 99).
`
`Patent Owner’s Section 325(d) Argument
`2.
`Patent Owner argues that we should, based on the Becton factors,6
`exercise our discretion and deny institution under 35 U.S.C. § 325(d).
`Prelim. Resp. 34–44 (applying Becton factors). According to Patent Owner,
`the Office previously considered Brown during the original prosecution of
`the ’037 patent. Id. at 35. Patent Owner further explains that the Examiner
`“raised an obviousness rejection [based on Brown] during prosecution and
`that Applicant distinguished over successfully by amending the claims.” Id.
`(citing Ex. 1002, 156–186). Therefore, Patent Owner argues, “[n]ot only
`does the Petition rely on the same reference, Brown, that was carefully
`examined by the Examiner, the Petition relies on the same embodiments (of
`
`
`6 See Becton, Dickinson & Company v. B. Braun Melsungen AG, Case
`IPR2017-01586, slip op. at 17–18 (PTAB Dec. 15, 2017) (Paper 8)
`(informative).
`
`7
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`Patent 7,844,037 B2
`Brown) and arguments that were discussed in detail during prosecution of
`the ’037 Patent.” Id. at 35–36 (emphasis omitted).
`More specifically, Patent Owner argues that following a rejection
`based on Fostick and Brown, Applicant amended claim 1 to include the
`“prompting a user” step. Id. at 36–37 (citing Ex. 1002, 165). Patent Owner
`further argues that Applicant argued, in light of the claim amendment, that
`Brown does not teach the limitation; instead, according to Applicant, Brown
`teaches that “the messages were either (i) sent over the same voicepath as
`the incoming call, and/or (ii) the messages were sent without requesting user
`input in response to an incoming call.” Id. at 37–38 (citing Ex. 1002, 166–
`68). Patent Owner further argues “the Examiner understood that Brown did
`not disclose [the prompting step] and withdrew the rejection over the
`combination of Fostick and Brown in the subsequent office action. Id. at 38
`(citing Ex. 1002, 141) (emphasis omitted). However, according to Patent
`Owner, “Petitioner argues that the very same limitation is disclosed in
`Brown.” Id. at 39 (emphasis omitted).
`Patent Owner further argues we should exercise our discretion and
`deny institution because (1) Petitioner relies on Brown, which the Examiner
`substantively considered during prosecution of the ’037 patent; (2) Moran,
`the secondary reference is cumulative of the other prior art considered
`during prosecution; (3) the Petitioner does not address the Examiner’s
`findings and conclusions; and (4) the additional evidence presented with the
`Petition “adds only insignificant evidence to the art already considered.” Id.
`at 34–44.
`
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`Patent 7,844,037 B2
`
`Analysis
`3.
`Institution of inter partes review is discretionary. Harmonic Inc. v.
`Avid Tech, Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016) (holding “the PTO is
`permitted, but never compelled, to institute an IPR proceeding”). Moreover,
`35 U.S.C. § 325(d) provides, in relevant part: “In determining whether to
`institute or order a proceeding under this chapter, chapter 30, or chapter 31,
`the Director may take into account whether, and reject the petition or request
`because, the same or substantially the same prior art or arguments previously
`were presented to the Office.”
`“While petitioners may have sound reasons for raising art or
`arguments similar to those previously considered by the Office, the Board
`weighs petitioners’ desires to be heard against the interests of patent owners,
`who seek to avoid harassment and enjoy quiet title to their rights.” Neil
`Ziegman, N.P.Z., Inc. v. Stephens, Case IPR2015-01860, slip op. at 12–13
`(PTAB Feb. 24, 2016) (Paper 11) (citing H.R. Rep. No. 112-98, pt. 1, at 48
`(2011)). “On the one hand, there are the interests in conserving the
`resources of the Office and granting patent owners repose on issues and
`prior art that have been considered previously.” Fox Factory, Inc. v. SRAM,
`LLC, Case IPR2016-01876, slip op. at 7 (PTAB Apr. 3, 2017) (Paper 8).
`“On the other hand, there are the interests of giving petitioners the
`opportunity to be heard and correcting any errors by the Office in allowing a
`patent—in the case of an inter partes review—over prior art patents and
`printed publications.” Id.
`The Board has previously identified a group of common non-
`exclusive factors, which we have weighed in determining whether to
`exercise our discretion:
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`Patent 7,844,037 B2
`(a) the similarities and material differences between the asserted
`art and the prior art involved during examination; (b) the
`cumulative nature of the asserted art and the prior art evaluated
`during examination; (c) the extent to which the asserted art was
`evaluated during examination, including whether the prior art
`was the basis for rejection; (d) the extent of the overlap between
`the arguments made during examination and the manner in
`which Petitioner relies on the prior art or Patent Owner
`distinguishes the prior art; (e) whether Petitioner has pointed
`out sufficiently how the Examiner erred in its evaluation of the
`asserted prior art; and (f) the extent to which additional
`evidence and facts presented in the Petition warrant
`reconsideration of the prior art or arguments.
`Becton, slip op. at 17–18 (Paper No. 8) (footnote omitted).
`
`a.
`
`The Similarities and Material Differences between
`the Asserted Art and the Prior Art Involved during
`Examination
`Each ground of the Petition relies on Brown as the primary reference.
`See Pet. 3. Specifically, Petitioner relies on Brown Figure 2 embodiment (as
`discussed in paragraph 26) and the Brown Figure 4 embodiment (as
`discussed in paragraph 30). See id. at 17–18; Ex. 1005 ¶¶ 26, 30. During
`prosecution of the ’037 patent, the Examiner initially rejected the claims of
`the application based on, inter alia, the Brown Figure 2 embodiment (as
`discussed in paragraph 27). See Ex. 1002, 181; Ex. 1005 ¶ 27. Additionally,
`the applicant argues that neither the Brown Figure 2 embodiment nor the
`Brown Figure 4 embodiment taught the prompting step. Ex. 1102, 167–68.
`Because Petitioner relies on the same embodiments considered by the
`Examiner during the prosecution of the ’037 patent, this factor weighs
`strongly against instituting.
`
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`b.
`
`The Cumulative Nature of the Asserted Art and the
`Prior Art Evaluated during Examination
`On the one hand, as discussed above, Brown was evaluated by the
`Examiner during the prosecution of the ’037 patent. On the other hand,
`neither Moran (relied on in grounds 2A and 2B) nor Tsampalis (ground 2B)
`was considered during prosecution.
`Petitioner did not address the issue of whether Moran and Tsampalis
`are cumulative of the references considered during the examination of the
`application that issued as the ’037 patent. Although Patent Owner argues
`Moran is cumulative of Fostick—a reference considered by the Examiner—
`Patent Owner is silent on whether Tsampalis is cumulative. See Prelim.
`Resp. 39–41.
`We do not find Moran and Tsampalis to be cumulative references.
`With regard to Moran, Patent Owner relies on attorney argument. However,
`it is well-settled that mere attorney arguments and conclusory statements,
`which are unsupported by factual evidence, are entitled to little probative
`value. In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997); see also In re
`Pearson, 494 F.2d 1399, 1405 (CCPA 1974) (attorney argument is not
`evidence). Based on the circumstances of this case, we are not persuaded by
`Patent Owner’s argument and citation to the references without supporting
`testimony that Moran and Fostick teach the same invention.
`Because Brown, the primary reference relied on in the Petition, was
`evaluated during the prosecution of the ’037 patent, this factor weighs
`against instituting. However, because neither Moran nor Tsampalis was
`considered, the factor does not weigh strongly.
`
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`c.
`
`The Extent to Which the Asserted Art Was
`Evaluated During Examination, Including Whether
`the Prior Art Was the Basis for Rejection
`During prosecution, the Examiner relied on Brown in rejecting the
`claims. Ex. 1002, 181. Accordingly, this is not a case where a reference
`was merely cited on an Information Disclosure Statement. Although the fact
`that the Office did not previously consider all the references cited on the
`Information Disclosure Statement is a mitigating factor, it is outweighed by
`the Office’s prior consideration of Brown. Accordingly, this factor weighs
`against instituting.
`
`d.
`
`The Extent of the Overlap between the Arguments
`Made during Examination and the Manner in
`Which Petitioner Relies on the Prior Art
`During prosecution of the ’037 patent, the Examiner initially relied, in
`part, on the Brown Figure 2 embodiment to reject the pending claims as
`obvious. See Ex. 1002, 181. Following an amendment to the claims that
`added the prompting step, the applicant argued Brown did not teach the
`prompting step; instead, the applicant argued that embodiment of Brown
`“discloses an approach where a message is transmitted over the voicepath of
`the incoming call.” Id. at 167. The applicant further argued that the Brown
`Figure 4 embodiment “discloses an approach where the user is not prompted
`to respond to an incoming call, since the user has previously instructed that
`all incoming calls be automatically responded to by a text message.” Id. at
`167–68.
`Similar to the discussion of Brown during the examination of the ’037
`patent, Petitioner relies on a combination of the Brown Figure 2 and Brown
`Figure 4 embodiments to show how Brown teaches the prompting step. See
`
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`IPR2018-01280
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`Pet. 17–18. Because of similarity of the arguments made in the Petition to
`the arguments made during prosecution, this factor weighs strongly against
`instituting.
`
`e. Whether Petitioner Has Pointed Out Sufficiently
`How the Examiner Erred in Its Evaluation of the
`Asserted Prior Art
`Petitioner has not pointed to error by the Examiner or even addressed
`the findings made by the Examiner during the examination of the
`’037 patent. Accordingly, this factor weighs strongly against instituting.
`
`f.
`
`The Extent to Which Additional Evidence and
`Facts Presented in the Petition Warrant
`Reconsideration of the Prior Art or Arguments
`Petitioner relies on the testimony of Dr. Mandayam. See Ex. 1003.
`However, Dr. Mandayam’s testimony presents little, if any, persuasive
`technical evidence or explanation as to how Brown teaches the prompting
`step. Dr. Mandayam testifies, in relevant part, as follows:
`98.
`In the combination, Brown teaches that “[a] user
`may recognize that an incoming call is being received by the
`activation of a ringer, vibration device, visual notification (such
`as a light, text message, etc.), etc.” APPLE-1005, ¶ 26
`(emphasis added). In response to the visual notification or
`other prompt, the “user actuates a key or key sequence to
`request an auto-response to the incoming phone call.” Id.
`(emphasis added). Brown describes that “a user could select an
`autoresponse button 118 on their wireless phone 100 when their
`phone starts ringing, which would stop the ringing of the phone
`and initiate the auto-response sequence.” Id.
`99. Brown teaches that the “auto-response to the
`incoming phone call” can include a “text message . . .
`transmitted using any suitable protocol, such as Short Message
`Service (SMS) or other protocols.” Id., ¶ 30. In such a case,
`Brown teaches that “[b]ecause the message will be responded to
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`via a text message, the call need not be connected.” Id. A
`POSITA would understand that if an incoming call is not
`connected, as taught by Brown, the incoming call is not
`answered. See APPLE-1005, ¶ 30.
`Ex. 1003 ¶¶ 98–99. However, Dr. Mandayam merely quotes from Brown
`without providing any detailed technical explanations beyond those apparent
`on the face of Brown. See id. Without such detailed technical explanation,
`based on the facts of this case we are not persuaded that the mere existence
`of additional testimony warrants reconsideration of the prior art and
`arguments presented earlier to the Office.
`Accordingly, this factor weighs against instituting.
`
`g. Weighing the Factors
`Brown, a reference used in all grounds of the Petition, was relied upon
`by the Examiner in rejecting claims during the original prosecution of the
`’037 patent. Following an amendment to the claims adding the prompting
`step along with arguments by the applicant explaining why Brown did not
`teach that new limitation, the Examiner shifted to new references and no
`longer relied on Brown. See Ex. 1002, 142–149, 156–168, 178–181.
`Subsequent to additional prosecution, the Examiner allowed the claims and
`provided the following statement of reasons for allowance:
`Regarding claims 1, 19, and 30, in combination with
`other limitations of the claims, the prior art of record fails to
`disclose or specifically suggested in response to receiving the
`incoming call, prompting a user of the first computing device to
`enter user input that instructs the first computing device to
`handle the incoming call by composing, while not answering
`the incoming call, a message to a user of the second computing
`device; and responsive to receiving the incoming call and the
`user entering the user input, automatically addressing the
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`message to the second computing device using the message
`identifier determined from the incoming call.
`Ex. 1002, 35 (emphases added). That is, the Examiner specifically held that
`Brown, a reference the Examiner previously relied upon, did not teach or
`suggest the prompting step recited in claim 1.
`Although the other references relied on in the Petition for other claims
`limitations are different, the focus of Petitioner’s arguments relating to the
`prompting step are the same as the Examiner considered and rejected during
`original examination of the application that issued as the ’037 patent. Based
`on our evaluation of the non-exclusive factors above, we are persuaded that
`the same or substantially the same prior art or arguments presented in the
`Petition previously were considered and rejected by the Office and that
`Petitioner has not provided persuasive argument as to why we should
`reconsider the Office’s earlier determination. Accordingly, we exercise our
`discretion under 35 U.S.C. § 325(d) and do not institute an inter partes
`review of the ’037 patent.
`
`III. ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED the Petition for an inter partes review of claims 1–16 and
`18 of U.S. patent 7,844,037 B2 is denied.
`
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`Patent 7,844,037 B2
`PETITIONER:
`
`W. Karl Renner
`Thomas A. Rozylowicz
`Timothy W. Riffe
`FISH & RICHARDSON P.C.
`axf-ptab@fr.com
`rozylowicz@fr.com
`riffe@fr.com
`PTABInbound@fr.com
`
`
`PATENT OWNER:
`
`Brian W. Oaks
`Chad Walters
`Charles Yeh
`Eliot Williams
`Joseph Akalski
`Jessica Lin
`BAKER BOTTS L.L.P.
`brian.oaks@bakerbotts.com
`chad.walters@bakerbotts.com
`charles.yeh@bakerbotts.com
`eliot.williams@bakerbotts.com
`joe.akalski@bakerbotts.com
`jessica.lin@bakerbotts.com
`
`
`
`16
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`