`571-272-7822
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`Paper No. 6
`Entered: May 30, 2019
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GUEST TEK INTERACTIVE ENTERTAINMENT LTD.,
`Petitioner,
`
`v.
`
`NOMADIX, INC.,
`Patent Owner.
`____________
`
`Case IPR2019-00211
`Patent 7,953,857 B2
`____________
`
`
`Before SALLY C. MEDLEY, DANIEL J. GALLIGAN, and
`JASON W. MELVIN, Administrative Patent Judges.
`
`MELVIN, Administrative Patent Judge.
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`
`
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`
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`
`
`DECISION
`Instituting Inter Partes Review
`35 U.S.C. § 314
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`
`
`
`
`Case IPR2019-00211
`Patent 7,953,857 B2
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`I.
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`INTRODUCTION
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`Guest Tek Interactive Entertainment Ltd. (“Petitioner”) filed a
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`Petition for inter partes review of claims 1 and 9 of U.S. Patent No.
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`7,953,857 B2 (Ex. 1001, “the ’857 patent”). Paper 1 (“Pet.”). Nomadix, Inc.
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`(“Patent Owner”) filed a Preliminary Response. Paper 5 (“Prelim. Resp.”).
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`Institution of an inter partes review is authorized by statute when “the
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`information presented in the petition . . . and any response . . . shows that
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`there is a reasonable likelihood that the petitioner would prevail with respect
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`to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a).
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`Upon consideration of the Petition and Preliminary Response, we conclude
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`the information presented shows that there is a reasonable likelihood that
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`Petitioner would prevail in establishing the unpatentability of claims 1 and 9
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`of the ’857 patent. We, therefore, institute inter partes review of the
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`challenged claims of the ’857 patent in this proceeding.
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`A. RELATED MATTERS
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`Petitioner indicates that Patent Owner is asserting the ’857 patent
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`against Petitioner in claims for a breach of a license agreement in Nomadix,
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`Inc. v. Guest Tek Interactive Entertainment Ltd., Case No. 2:16-cv-08033-
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`AB-FFM, pending in the United States District Court for the Central District
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`of California. Pet. 2; see also Paper 3, 1.
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`B. THE ’857 PATENT
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`The specification of the ’857 patent describes a “method and device
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`for dynamic bandwidth management on a per subscriber basis.” Ex. 1001,
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`3:30–31. A user/subscriber may set and adjust uplink and downlink
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`bandwidths of their network access service. Id. at 3:32–34. “[T]he
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`user/subscriber can increase or decrease the bandwidth of the uplink
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`connection so the user/subscriber only purchases the amount of bandwidth
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`appropriate for their network activity.” Id. at 3:45–48. Figures 2 and 3 of the
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`’857 patent are reproduced below.
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`Figure 2 of the ’857 patent is a block diagram of a communications network
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`implementing subscriber bandwidth management within a gateway device.
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`Ex. 1001, 4:20–23.
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`Figure 3 of the ’857 patent is a block diagram of a communications network
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`implementing uplink and downlink virtual queues in a gateway device. Ex.
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`1001, 4:24–27.
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`As seen from the above figures, a plurality of hosts 14, 14n
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`communicate data packets through communication network 10. Id. at 8:56–
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`58. Data packets are routed through an access concentrator 16 that
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`multiplexes data packets received from the plurality of hosts. Id. at 8:58–64.
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`Gateway 12 receives data packets at port 80 and communicates to uplink
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`queue 60 via uplink path 64. Id. at 8:60–63. Gateway 12 includes bandwidth
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`manager 30, which comprises subscriber selectable bandwidth module
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`(“SSB module”) 32 and traffic shaping module 34. Id. at 7:63–8:22. SSB
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`module 32 “limits the upstream and downstream bandwidths on each virtual
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`channel through the gateway device 10 to that which the respective
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`user/subscribers selected.” Id. at 8:22–26. SSB module 32 communicates
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`with subscriber management interface 50 to retrieve subscriber profiles 52,
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`which include user/subscriber selected bandwidth for uplink and downlink
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`data transfer. Id. at 8:29–34. SSB module 32 determines whether to
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`reschedule delivery of a packet at a later point in time to prevent the
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`user/subscriber from achieving a bandwidth greater than that which the
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`user/subscriber selected. Id. at 8:34–38. SSB module 32 calculates “the
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`appropriate delay, if any, using the size (in bytes) of the current data packet,
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`and the size and time of the previous packet delivered from the subscriber.”
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`Id. at 8:39–42. If it is determined that a packet should be delayed, SSB
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`module 32 places the packet in memory in a virtual queue for later delivery.
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`Id. at 8:49–51.
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`C. CHALLENGED CLAIMS
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`Challenged claims 1 and 9 are independent. Claim 1 is illustrative and
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`is reproduced below:
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`1. A system for allowing a user to dynamically control an
`amount of bandwidth available to the user in a network, the
`system comprising:
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`a first network interface for communicating over a
`communication link with a user device during a network
`session;
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`a second network interface for communicating with one or
`more computer networks;
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`a data storage system including an indication of a network
`communication bandwidth associated with the user
`device and selected by the user; and
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`a processor configured to calculate a delay period
`associated with a received packet based on the network
`communication bandwidth associated with the user, and
`the processor further configured to delay transmission of
`the packet based on the delay period to prevent the user
`device from achieving a bandwidth greater than the
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`network communication bandwidth associated with the
`user device and selected by the user.
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`Id. at 14:31–49. Claim 9 recites similar limitations, in method form. Id. at
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`15:1–14.
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`D. PROPOSED GROUNDS OF UNPATENTABILITY
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`Petitioner asserts the following grounds of unpatentability, each based
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`on 35 U.S.C. § 103:
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`References
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`Claims
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`Bonomi1 and Borella2
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`1 and 9
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`Chandran3 and Rupp4
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`1 and 9
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`Teraslinna5 and Bonomi 1 and 9
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`Pet. 4, 23–67. Petitioner also relies on the Declaration of Dr. Peter Dordal
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`(Ex. 1002). See generally Pet.
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`II. DISCUSSION
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`A. CLAIM CONSTRUCTION
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`In an inter partes review for a petition filed before November 13,
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`2018, we construe claim terms in an unexpired patent according to their
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`broadest-reasonable construction in light of the specification of the patent in
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`which they appear. 37 C.F.R. § 42.100(b) (2018); see Changes to the Claim
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`1 U.S. Patent No. 5,864,540, issued Jan. 26, 1999 (Ex. 1004).
`2 U.S. Patent No. 6,587,433 B1, issued July 1, 2003 (Ex. 1006).
`3 U.S. Patent No. 7,392,279 B1, issued June 24, 2008 (Ex. 1005).
`4 Björn Rupp et al., INDEX: A Platform for Determining How People Value
`the Quality of Their Internet Access, in Proceedings of the Sixth IEEE/IFIP
`International Workshop on Quality of Service 85 (IEEE 1998) (Ex. 1007).
`5 U.S. Patent No. 5,623,492, issued Apr. 22, 1997 (Ex. 1008).
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`Construction Standard for Interpreting Claims in Trial Proceedings Before
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`the Patent Trial and Appeal Board, 83 Fed. Reg. 51,340 (Oct. 11, 2018)
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`(amending 37 C.F.R. § 42.100(b) effective November 13, 2018).
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`Petitioner proposes constructions for “processor” and “data storage
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`system.” Pet. 9. Patent Owner does not oppose Petitioner’s proposed
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`constructions and contends that no express construction is required at this
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`stage. Prelim. Resp. 7.
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`To resolve the disputes regarding institution, we need not expressly
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`construe any claim term. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc.,
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`200 F.3d 795, 803 (Fed. Cir. 1999) (holding that “only those terms need be
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`construed that are in controversy, and only to the extent necessary to resolve
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`the controversy”); see also Nidec Motor Corp. v. Zhongshan Broad Ocean
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`Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs. in the
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`context of an inter partes review).
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`B. UNPATENTABILITY
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`In Case IPR2019-00253 (“the ’253 IPR”), Petitioner challenges the
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`patentability of U.S. Patent No. 8,626,922 B2 (“the ’922 patent”). The ’922
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`patent, also owned by Patent Owner, issued from a continuation of the
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`application that issued as the ’857 patent; thus, the two specifications have
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`no material differences. Compare Ex. 1001, 1:9–13, with ’253 IPR,
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`Ex. 1001, 1:9–15. The claims at issue in the ’253 IPR differ minimally from
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`the claims at issue here. Where the ’857 patent’s claim 1 recites “a data
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`storage system including an indication of a network communication
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`bandwidth associated with the user device and selected by the user”
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`(Ex. 1001, 14:39–41 (emphasis added)), the ’922 patent’s claim 1 recites “a
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`data storage system including a user profile record associated with a user,
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`the user profile record comprising an indication of a network
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`communication bandwidth associated with the user device” (’253 IPR,
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`Ex. 1001, 14:38–41 (emphasis added)). The two patents’ recitations of
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`claim 9 include similar distinctions. Compare Ex. 1001, 15:1–13, with
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`’253 IPR, Ex. 1001, 15:1–14.
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`In the ’253 IPR, Petitioner raises the same grounds of unpatentability
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`as it raises here. Compare Pet. 4, with ’253 IPR, Paper 1, 4. Moreover,
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`Petitioner’s assertions regarding the prior art are, for all practical purposes,
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`identical in the two proceedings. Compare Pet. 23–67, with ’253 IPR,
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`Paper 1, 24–66. Where, in the ’253 IPR, Petitioner asserts that skilled
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`artisans considering Chandran’s disclosures would have had reason “to
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`implement [Rupp]’s technique of storing dynamically selected service
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`classes with desired bandwidths for user devices in user profiles so they can
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`be retrieved later for traffic management,” it asserts in the present Petition
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`that there would have been reason “to implement [Rupp]’s technique of
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`allowing the user to dynamically select the bandwidth limits, associating the
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`bandwidth limits with user devices, and storing the bandwidth limits in a
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`data storage system.” Compare Pet. 51, with ’253 IPR, Paper 1, 50.
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`Importantly, however, Petitioner asserts in the ’253 IPR that the asserted
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`change would function “by allowing the user to select a specific amount of
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`bandwidth to be allotted to the user based on the type of application the user
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`plans on running.” ’253 IPR, Paper 1, 50. Thus, Petitioner’s assertions
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`regarding that combination are substantively the same in both proceedings.6
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`6 To be sure, there are some differences between the petitions in the two
`proceedings. Some are minor phrasing changes or formatting changes (e.g.,
`to spaces around ellipses). Petitioner also accounts for the limitation
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`Similarly, Patent Owner’s arguments against institution are the same
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`in the two proceedings. Compare Prelim. Resp. 9–44, with ’253 IPR,
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`Paper 5, 9–43. Indeed, we can identify no difference in Patent Owner’s
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`arguments other than as relates to the difference in Petitioner’s phrasing for
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`the combination of Chandran and Rupp, discussed above. Compare Prelim.
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`Resp. 28–29, with ’253 IPR, Paper 5, 28.
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`We recognize that this proceeding involves a different record than the
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`’253 IPR. Other than the petitions and preliminary responses as discussed
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`above, however, the differences are minor at best. For example, the
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`substantive content of Dr. Dordal’s declaration in this proceeding appears to
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`be the same as his declaration in the ’253 IPR, with some differences in
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`paragraph numbering. Compare Ex. 1002, with ’253 IPR, Ex. 1002. While
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`the citations to Dr. Dordal’s declaration in our institution decision from the
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`’253 IPR do not match the corresponding citations to his declaration here,
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`the content is the same. The asserted prior art and other supporting
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`references are the same. Thus, for the reasons discussed in our ’253 IPR
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`institution decision (see ’253 IPR, Paper 6), we determine that the record at
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`this stage of the proceeding shows a reasonable likelihood that Petitioner
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`will prevail with respect to its asserted grounds. Accordingly, we institute
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`review.
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`present in the claims of the patent at issue in the ’253 IPR but not present
`in this proceeding. Compare Pet. 33–34, with ’253 IPR, Paper 1, 33–34.
`None of the differences affects Patent Owner’s arguments in the
`corresponding preliminary response. See infra. We have reviewed
`Petitioner’s contentions and evidence regarding the minor differences
`between the claims here and those at issue in the ’253 IPR. On this record,
`we are persuaded that the differences do not affect our analysis or
`conclusions as explained in that case. See ’253 IPR, Paper 6.
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`C. DR. DORDAL’S DECLARATION
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`As in the ’253 IPR, Patent Owner argues that because Dr. Dordal’s
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`declaration is unsworn and not made under penalty of perjury, it is entitled
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`to no weight. Prelim. Resp. 9–10. We determine the better course is to
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`consider the declaration for purposes of institution and permit Petitioner to
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`remedy the deficiency. We authorize Petitioner to file, within ten days of
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`this Decision, a corrected Exhibit 1002 that complies with our rules.
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`37 C.F.R. §§ 1.68, 42.2, 42.53(a).
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`Accordingly, it is
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`III. ORDER
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`ORDERED that, pursuant to 35 U.S.C. § 314(a), inter partes review
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`of the ’857 patent is instituted for claims 1 and 9 on the grounds identified in
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`the Petition;
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`FURTHER ORDERED that pursuant to 35 U.S.C. § 314(c) and
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`37 C.F.R. § 42.4, notice is hereby given of the institution of a trial
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`commencing on the entry date of this decision; and
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`FURTHER ORDERED that Petitioner is authorized to file, within ten
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`days of this decision, a corrected Exhibit 1002 that complies with our rules
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`(37 C.F.R. §§ 1.68, 42.2, 42.53(a)).
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`Patent 7,953,857 B2
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`PETITIONER:
`
`Jeffrey W. Lesovitz
`Steven J. Rocci
`Daniel J. Goettle
`BAKER & HOSTETLER LLP
`jlesovitz@bakerlaw.com
`srocci@bakerlaw.com
`dgoettle@bakerlaw.com
`
`
`PATENT OWNER:
`
`Douglas G. Muehlhauser
`William H. Shreve
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`2dgm@knobbe.com
`2whs@knobbe.com
`BoxNomadix@knobbe.com
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