Trials@uspto.gov
`571-272-7822
`
`
`
`Paper 8
`Date: November 27, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MICROSOFT CORPORATION
`Petitioner,
`
`v.
`
`UNILOC 2017 LLC,
`Patent Owner.
`____________
`
` IPR2019-01125
`Patent 7,016,676 B2
`____________
`
`
`
`Before JAMESON LEE, KEVIN F. TURNER, and
`MICHELLE N. WORMMEESTER, Administrative Patent Judges.
`
`LEE, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`571-272-7822
`
`
`
`Paper 8
`Date: November 27, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MICROSOFT CORPORATION
`Petitioner,
`
`v.
`
`UNILOC 2017 LLC,
`Patent Owner.
`____________
`
` IPR2019-01125
`Patent 7,016,676 B2
`____________
`
`
`
`Before JAMESON LEE, KEVIN F. TURNER, and
`MICHELLE N. WORMMEESTER, Administrative Patent Judges.
`
`LEE, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`IPR2019-01125
`Patent 7,016,676 B2
`
`
`I.
`
`INTRODUCTION
`
`A. Background
`On May 29, 2019, Petitioner filed a Petition to institute inter partes
`review of claim 5 of U.S. Patent No. 7,016,676 B2 (Ex. 1001, “the
`’676 patent”). Paper 2 (“Pet.”). Patent Owner filed a Preliminary
`Response. Paper 7 (“Prelim. Resp.”).
`To institute an inter partes review, we must determine that the
`information presented in the Petition 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). For reasons
`discussed below, we exercise our delegated discretion not to institute
`review.
`Accordingly, the Petition is denied, and no inter partes review is
`instituted.
`Related Matters
`B.
`The parties identify the following civil actions involving the
`’676 patent:
`
`Uniloc 2017 LLC v. Microsoft Corporation, No. 8:18-
`cv-02053 (C.D. Cal.);
`Uniloc 2017 LLC, et al. v. Google LLC, No. 2:18-cv-
`00495 (E.D. Tex.);
`Uniloc 2017 LLC v. Verizon Communications Inc., et
`al., No. 2:18-cv-00513 (E.D. Tex.);
`Uniloc 2017 LLC v. AT&T Services, Inc., et al.,
`No. 2:18-cv-00514 (E.D. Tex.);
`
`
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`Uniloc 2017 LLC, et al. v. Google LLC, No. 2:18-cv-
`00448 (E.D. Tex.);
`Uniloc 2017 LLC, et al. v. AT&T, Inc., et al., No. 2:18-
`cv-00379 (E.D. Tex.);
`Uniloc 2017 LLC, et al. v. Verizon Communications
`Inc., et al., No. 2:18-cv-00380 (E.D. Tex.); and
`Uniloc 2017 LLC, et al. v. Microsoft Corporation,
`No. 8:18-cv-01279 (C.D. Cal.).
`Pet. Xi; Paper 3, 2; Prelim. Resp. 3–4.
`Patent Owner also identifies other petitions for inter partes review of
`claims in the ’676 patent: IPR2019-01541, IPR2019-01550,
`IPR2019-01349, IPR2019-01350, and IPR2019-01116. Prelim. Resp. 3–4.
`The petitioner in IPR2019-01116 is also the petitioner in this proceeding.
`
`C.
`
`The ’676 Patent
`The ’676 patent “relates to a method of alternate control of radio
`systems of different standards in the same frequency band.” Ex. 1001, 1:7–
`9. For example, the two standards can be that of “US radio system
`IEEE802.11a and the European ETSI BRAN HiperLAN/2.” Id. at 1:19–20.
`“The two radio systems transmit in the same frequency bands between 5.5
`GHz and 5.875 GHz with approximately the same radio transmission
`method, but different transmission protocols.” Id. at 1:20–23.
`Specifically, under either of ETSI BRAN HiperLAN/2 or
`IEEE802.11a radio systems utilizes the same radio transmission method,
`i.e., a 64-carrier OFDM method and adaptive modulation and coding. Id.
`at 28–31. However, the Medium Access Control (MAC) of the two
`systems are totally different. Id. at 1:34–35. For these two standards the
`frequency band is between 5.15 GHz to 5.825 GHz. Id. at 5:35–37.
`
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`The ETSI BRAN HiperLAN/2 utilizes a centrally controlled
`reservation-based method in which a radio station takes over the role of a
`central station coordinating the radio resources. Id. at 1:35–38. That
`central radio station (Access Point, AP) periodically signals the MAC frame
`structure. Id. at 1:38–41. Figure 1 of the ’676 patent is reproduced below:
`
`
`Figure 1 shows the structure of the HiperLAN/2 MAC frame. Id. at
`4:45–46. “In a HiperLAN/2 system the central controller can be controlled
`via the Access Point (AP) which periodically generates the MAC frame and
`then transmits the data of the broadcast phase to individually control the
`service quality (Packet delay sending rate and so on) of individual links.”
`Id. at 4:50–54. Figure 2 of the ’676 patent is reproduced below:
`
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`Figure 2 diagrammatically shows the media access in systems
`
`working in accordance with the radio interface standard IEEE802.11a. Id.
`at 4:47–49. The Specification describes the IEEE802.11a standard as
`follows:
`The IEEE802.11a standard describes a CSMA/CA (Carrier
`Sense Multiple Access/Collision Avoidance) method not based
`on reservations, in which all the radio stations listen in on the
`medium and assume that the channel is unused for a minimum
`duration (Short InterFrame Space, SIFS) before 802.11a-MAC
`frames, thus user data packets, are transmitted if necessary. The
`method is highly suitable for self-organizing ad hoc networks,
`but requires positive acknowledgements of all the packets.
`Id. at 1:43–51. The Specification further describes the standard as follows:
`FIG. 2 shows by way of example the sequence for media access
`in accordance with IEEE802.11a. In accordance with a variant
`of the standard a station is to then transmit an RTS packet
`(Ready To Send) and wait for a CTS packet (Clear To Send)
`from the addressed station before it is allowed to transmit user
`data. All the other stations in the radio coverage area set a time
`monitoring (Network Allocation vector, NAV) and do not
`transmit until
`the addressed station has been sent an
`acknowledgment (ACKnowledge, ACK).
`Id. at 1:53–62.
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`Figure 3 of the ’676 patent is reproduced below:
`
`
`
`
`Figure 3 illustrates two wireless local area networks in accordance with a
`first radio interface standard and a second radio interface standard of the
`’676 patent. Id. at 4:43–44. The ’676 patent describes the standards as
`follows:
`A first wireless local area network comprises three
`
`stations 10, 11, and 12. These three stations 10, 11, and 12
`work in accordance with the first radio interface standard A,
`for example, in accordance with the HiperLAN/2 standard.
`
`A second wireless local area network includes four
`stations 14, 15, 16, and 17. These four stations 14, 15, 16, and
`17 work in accordance with the second radio interface
`standard B, for example, in accordance with the IEEE802.11a
`standard.
`Id. at 5:22–30 (emphases added). In both standards the frequency band is
`between 5.15 GHz and 5.825 GHz. Id. at 5:35–37.
`Central control station 13 is provided which controls the alternate
`access by the first wireless network and the second wireless network to the
`
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`common frequency band. Id. at 5:39–41. The Specification describes the
`alternate access control as follows:
`[T]he station 13 sends a broadcast message to the stations 14 to
`17 of the IEEE802.11a standard when the stations 10 to 12 do
`not need transmission capacity. This broadcast message
`preferably contains time information which informs the stations
`14 to 17 of the IEEE802.11[a] standard how long they are
`allowed to utilize the common frequency band.
`
`If the stations 10 to 12 of the first wireless network are
`HiperLAN/2 stations, the control station 13 preferably also
`operates as the central control station (Access Point) of the
`HiperLAN/2 network and co-ordinates its radio resources. In
`HiperLAN/2 systems it is planned beforehand at what time the
`stations are allowed to send. For this purpose the HiperLAN/2
`systems have a central controller (Access Point, AP) which
`receives the request for capacity from the various stations and
`assigns capacity accordingly. The central station 13 is
`preferably also provided for carrying out the function of the
`access point of the HiperLAN/2 standard.
`Id. at 5:42–63.
`
`The Specification describes that the control station is provided “for
`controlling the access to the frequency band for stations operating in
`accordance with the first radio interface standard.” Id. at 2:63–67
`(emphasis added). The Specification further describes that the control
`station is provided “for releasing the common frequency band for access by
`stations operating in accordance with the second radio interface standard,
`if stations operating in accordance with the first radio interface standard
`do not request access to the frequency band.” Id. at 3:7–13 (emphasis
`added). According to the Specification, “the first radio interface standard is
`given priority over the second radio interface standard in this manner.” Id.
`at 3:13–15 (emphasis added). The Specification states the following: “In
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`accordance with the invention a control station is provided which controls
`the alternate use of the common frequency band of the two radio interface
`standards.” Id. at 2:45–47.
`
`“The control station is preferably a station that may operate in
`accordance with both the first and the second radio interface standard.” Id.
`at 2:48–50. The Specification further describes that a first radio station
`operating in accordance with a first radio interface standard may “carry out
`functions that cause radio systems working in accordance with the second
`radio interface standard or radio systems working in accordance with the
`first radio interface standard to interpret the radio channel as interfered and
`occupy another radio channel for its own operation.” Id. at 3:63 to 4:2.
`Claim 1 is independent. Claim 5 depends from claim 1. Claims 1
`and 5 are reproduced below:
`1. An interface-control protocol method for a radio
`system which has at least one common frequency band that
`is provided for alternate use by a first and a second radio
`interface standard, the radio system comprising:
`stations which operate in accordance with a first radio
`interface standard and/or a second radio interface
`standard, and
`a control station which controls the alternate use of the
`frequency band,
`wherein the control station controls the access to the
`common frequency band for stations working in
`accordance with the first radio interface standard
`and—renders the frequency band available for access
`by the stations working in accordance with the second
`radio interface standard if stations working in
`accordance with the first radio interface standard do
`not request access to the frequency band.
`
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`5. The method as claimed in claim 1, wherein the control
`station also carries out functions which cause radio systems
`in accordance with the first radio interface standard to
`interpret the radio channel as interfered and to seize another
`radio channel for its own operation.
`Ex. 1001, 6:20–36, 6:51–55.
`Evidence Relied Upon by Petitioner
`D.
`
`Petitioner relies on the following references:1
`
`
`
`References2
`HomeRF3 Kevin J. Negus et al., HomeRF:
`Wireless Networking for the Connected
`Home, 7 IEEE PERSONAL
`COMMUNICATIONS 20–27 (2000).
`Jim Lansford et al., HomeRF: Bringing
`Wireless Connectivity Home, IEEE
`802.11, 1–27 (1999),
`http://www.ieee802.org/11/Documents/
`DocumentArchives/1999_docs/90548S-
`WPAN-HomeRF-Tutorial-Office-
`97.pdf.
`
`HomeRF
`Tutorial
`
`Date
`Feb. 29,
`2000
`
`Exhibit
`Ex. 1006
`
`Mar. 18,
`1999
`
`Ex. 1008
`
`
`1 The ’676 patent issued from Application No. 10/089,959, which is the
`designated United States application of International Application No.
`PCT/EP01/09258 filed under 35 U.S.C. § 371 on Aug. 8, 2001. Ex. 1001,
`Codes 21, 22, 86. The § 371 (c)(1), (2), (4) date is April 4, 2002. Id.
`2 In the interest of consistency and to avoid confusion, we adopt Petitioner’s
`designated abbreviations for the cited prior art references. See Pet. viii-ix.
`3 When citing to HomeRF, we refer to the original page numbers and not
`the inserted page numbers at the bottom right of each page of Exhibit 1006.
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`References
`HomeRF
`SWAP
`Spec. 1.3
`
`Haartsen
`
`SHARED WIRELESS ACCESS PROTOCOL
`(CORDLESS ACCESS) SPECIFICATION,
`(SWAP-CA) REV. 1.3 DRAFT
`200000229 The HomeRFTM Technical
`Committee, HomeRF Working Group
`U.S. Patent No. 7,280,580 B1
`
`Date
`Feb. 29,
`2000
`
`Exhibit
`Ex. 1018
`
`Ex. 1017
`
`Oct. 9,
`2007, filed
`Oct. 15,
`1999
`
`Petitioner additionally relies on the Declarations of Peter Rysavy
`(Ex. 1004), Gerard P. Grenier (Ex.1007), Christina Boyce (Ex. 1010),
`Rene DelaRosa (Ex. 1011), and Adrian Stephens (Ex. 1019). Petitioner
`also cites to page 3 of Webster’s New World College Dictionary (4th ed.
`1999) (“Webster’s Dictionary”) (Ex. 1005) for the meaning of
`“accordance.” Pet. 21.
`
`E. Asserted Grounds of Unpatentability
`
`Petitioner asserts the following grounds of unpatentability:
`
`Claim Challenged
`
`Basis4
`§ 103
`
`§ 103
`
`§ 103
`
`References
`HomeRF and HomeRF SWAP Spec. 1.3
`HomeRF, HomeRF Tutorial, and
`HomeRF SWAP Spec. 1.3
`HomeRF and Haartsen
`
`5
`
`5
`
`5
`
`
`4 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112–29, 125
`Stat. 284, 287–88 (2011), revised 35 U.S.C. § 103 effective March 16,
`2013. Because the challenged patent was filed before March 16, 2013, we
`refer to the pre-AIA version of § 103.
`
`
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`Claim Challenged
`
`5
`
`Basis
`§ 103
`
`References
`HomeRF, HomeRF Tutorial, and
`Haartsen
`
`II. ANALYSIS
`
`A.
`
`Patent Owner’s Arguments of
`Discretionary Denial under 35 U.S.C. § 325(d)
`Patent Owner argues that we should exercise discretion under
`35 U.S.C. § 325(d) not to institute review. Prelim. Resp. 16–18. As
`explained below in Section II.C., however, we exercise discretion under
`35 U.S.C. § 314(a) not to institute review for a reason different from that
`asserted by Patent Owner. Consequently, we do not reach Patent Owner’s
`arguments under 35 U.S.C. § 325(d).
`
`B.
`
`Claim Construction
`General Principles
`1.
`For petitions filed on or after November 13, 2018, we use the same
`claim construction standard that would be used to construe the claim in a
`civil action under 35 U.S.C. § 282(b), including construing the claim in
`accordance with the ordinary and customary meaning of such claim as
`understood by one of ordinary skill in the art and the prosecution history
`pertaining to the patent. See Changes to the Claim Construction Standard
`for Interpreting Claims in Trial Proceedings Before the Patent Trial and
`Appeal Board, 83 Fed. Reg. 51,340, 51,358 (Oct. 11, 2018) (amending
`37 C.F.R. § 42.100(b) effective November 13, 2018) (now codified at
`37 C.F.R. § 42.100(b) (2019)). The Petition here was filed on May 29,
`2019. Paper 2. We apply the claim construction standard from Phillips v.
`
`
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`AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc) (“the Phillips
`standard”).
`Claim terms are generally given their ordinary and customary
`meaning as would be understood by one with ordinary skill in the art in the
`context of the specification, the prosecution history, other claims, and even
`extrinsic evidence including expert and inventor testimony, dictionaries,
`and learned treatises, although extrinsic evidence is less significant than the
`intrinsic record. Phillips, 415 F.3d at 1312–17. Usually, the specification
`is dispositive, and it is the single best guide to the meaning of a disputed
`term. Id. at 1315.
`The specification may reveal a special definition given to a claim
`term by the patentee, or the specification may reveal an intentional
`disclaimer or disavowal of claim scope by the inventor. Id. at 1316. If an
`inventor acts as his or her own lexicographer, the definition must be set
`forth in the specification with reasonable clarity, deliberateness, and
`precision. Renishaw PLC v. Marposs Societa’ per Azioni, 158 F.3d 1243,
`1249 (Fed. Cir. 1998). The disavowal, if any, can be effectuated by
`language in the specification or the prosecution history. Poly-America, L.P.
`v. API Indus., Inc., 839 F.3d 1131, 1136 (Fed. Cir. 2016). “In either case,
`the standard for disavowal is exacting, requiring clear and unequivocal
`evidence that the claimed invention includes or does not include a particular
`feature.” Id.
`Only those claim terms that are in controversy need to be construed,
`and only to the extent necessary to resolve the controversy. Nidec Motor
`Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed.
`Cir. 2017); Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361
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`(Fed. Cir. 2011); Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795,
`803 (Fed. Cir. 1999).
`Ambiguous Claim Language
`2.
`Claim 5 reads as follows:
`5. The method as claimed in claim 1, wherein the control
`station also carries out functions which cause radio systems
`in accordance with the first radio interface standard to
`interpret the radio channel as interfered and to seize another
`radio channel for its own operation.
`Ex. 1001, 6:51–55 (emphases added).
`
`Claim 5 specifically refers to “radio systems” in plural. The only
`“radio system” that has been defined or otherwise set forth, however, is that
`radio system recited in claim 1, which includes stations that operate in
`accordance with a first radio interface standard and/or a second radio
`interface standard. Id. at 6:23–28. Further, given that that radio system
`includes stations which operate in accordance with a first and/or a second
`radio interface standard, it cannot be referred to simply as a radio system
`“in accordance with the first radio interface standard.”
`
`If the term at issue were not “radio systems” but “stations,” the
`language would be understandable because claim 1 cites to multiple stations
`that may operate in accordance with a first radio interface standard. But the
`term here is “radio systems,” and “radio system” and “station” are not used
`interchangeably in the context of claim 5 or claim 1 from which claim 5
`depends. Also, in the context of the Specification, the terms “radio system”
`and “station” are not used interchangeably. Indeed, the Specification states
`the following:
`
`
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`The radio system comprises one or more stations. The
`
`stations may be, for example, computers of a wireless local area
`network. The stations may be arranged, for example, only for
`operation in accordance with a first or second radio interface
`standard. But it is also possible for stations to operate in
`accordance with both the first and the second radio interface
`standard.
`
`A first number of stations preferably forms a wireless
`local area network in accordance with a first radio interface
`standard and a second number of stations forms a wireless
`network in accordance with a second radio interface standard.
`The first radio interface standard may be, for example, the
`HiperLAN/2 standard and the second radio interface standard
`may be the IEEE802.11a standard.
`Id. at 2:29–42. Thus, within the context of both the claim and the
`Specification, a radio system and a station are not the same. It is unclear
`what is referred to by the reference in claim 5 to “radio systems in
`accordance with the first radio interface standard.”
`
`We have reviewed the Specification and find nothing to give
`sufficient meaning to the recited phrase in the context of claim 5. The
`recited “radio systems” appear to be extraneous to the claim. Their role,
`identity, and interaction with the rest of the claim are all uncertain. For
`example, although the claim recites that these radio systems can interpret
`the radio channel as interfered, it is uncertain whether it is the
`communications of those radio systems or the stations defined in claim 1
`that are interfered. It is even uncertain whether the “radio systems” make
`any transmission over the common frequency band. In short, on this record
`it is uncertain what are the “radio systems” within the structural
`organization of claim 5.
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`We also do not think “radio systems” reads on the stations defined in
`
`claim 1. As discussed above, within the structural organization of claim 1,
`a station is different from a radio system in that a station is contained within
`a radio system. The Specification describes the same. Ex. 1001, 2:29.
`Further, the Specification consistently does not refer to a “station” as a
`“radio system.” In the context of claim 1, from which claim 5 depends, and
`in light of the Specification, there is but just one radio system, the one that
`includes the stations of claim 1. Even when viewed with a most lenient eye,
`it would be uncertain whether “radio systems” reads on the stations defined
`in claim 1.
`
`There also is uncertainty with regard to the recitation “for its own
`operation” at the end of claim 5. This phrase is too remote from the control
`station recited at the beginning of claim 5 to be referring to the control
`station, and the Specification appears not to support such a reading. We
`find no specific example in the Specification of any radio channel seized by
`another device “for use by the control station.” Further, although the phrase
`is proximate to the recited action of the “radio systems,” the word “its” does
`not agree, in number, to plural “radio systems.” Thus, the source or origin
`of the “it” in “its” is uncertain. We do not know what is the “it” that forms
`the basis for the possessive pronoun “its.”
`On this record, we conclude that to make sense of claim 5 we would
`have to engage in impermissible rewriting of the claim. In patent law, “the
`name of the game is the claim.” In re Hiniker Co., 150 F.3d 1362, 1369
`(Fed. Cir. 1998). We read the claims as they are written, and are
`“powerless to rewrite the claims.” SRAM Corp. v. AD-II Eng’g Inc.,
`465 F.3d 1351, 1359 (Fed. Cir. 2006); see also K-2 Corp. v. Solomon S.A.,
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`191 F.3d 1356, 1364 (Fed. Cir. 1999) (“Courts do not rewrite claims;
`instead, we give effect to the terms chosen by the patentee.”). We know of
`no authority suggesting that if a claim as written does not make sense, then
`we are to rewrite it, in the name of claim construction, to eliminate the
`problem.5
`
`For the foregoing reasons, we find that claim 5 has ambiguous claim
`scope, and it is unclear what is covered by claim 5.
`
`Exercising Delegated Discretion Not to Institute Review
`C.
`Institution of inter partes review is discretionary. 35 U.S.C.
`
`§ 314(a); SAS Inst., v. Iancu, 138 S. Ct. 1348, 1356 (2018). “[T]he PTO is
`permitted, but never compelled, to institute an IPR proceeding.” Harmonic
`Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016). Office
`Guidance issued June 5, 2018, states “[t]he panel will evaluate the
`challenges and determine whether, in the interests of efficient
`administration of the Office and integrity of the patent system (see 35 USC
`§ 316(b)), the entire petition should be denied under 35 USC § 314(a).”
`SAS Q&A’s Part D, Effect of SAS on Future Challenges that Could Be
`Denied for Statutory Reasons (June 5, 2018), available at
`https://www.uspto.gov/sites/default/files/documents/sas_qas_20180605.pdf.
`Because the claim language is ambiguous as discussed above, we
`have an inadequate basis to assess the merits of Petitioner’s alleged grounds
`
`
`5 We recognize that in limited circumstances, clear errors in claims can be
`corrected. See Novo Indus., L.P. v. Micro Molds Corp., 350 F.3d 1348,
`1354 (Fed. Cir. 2003). The deficiency in the claim language here clearly
`does not meet that standard. What the Applicant for patent intended by the
`language used is subject to much speculation and conjecture.
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`of unpatentability. If the scope of the claims cannot be determined without
`undue speculation, as is the case here, the differences between the claimed
`invention and the prior art cannot be ascertained. See BlackBerry Corp. v.
`MobileMedia Ideas, LLC, IPR2013-00036, Paper 65 at 19–20 (PTAB Mar.
`7, 2014) (citing In re Steele, 305 F.2d 859, 862–63 (CCPA 1962) and
`reasoning that “the prior art grounds of unpatentability must fall, pro forma,
`because they are based on speculative assumption as to the meaning of the
`claims”). In other words, “[w]ithout ascertaining the proper claim scope,
`we cannot conduct a necessary factual inquiry for determining
`obviousness—ascertaining differences between the claimed subject matter
`and the prior art.” Id. at 20 (citing Graham v. John Deere Co., 383 U.S. 1,
`17–18 (1966)).
`Also, the difficulties and speculation we would encounter at trial if
`review is instituted, stemming from ambiguous claim language,
`substantially increase the resources and efforts required for reaching a
`resolution and thus weigh heavily against institution of review. In the
`circumstance here, reaching the merits of the alleged grounds of
`unpatentability, either before or after institution of review, involves
`substantial uncertainty and speculation. See In re Steele, 305 F.2d at 862–
`63. Furthermore, given that any trial instituted here would address a single
`claim that we regard to be ambiguous, that issue would likely become the
`sole focus of that trial. That seems problematic given that Petitioner may
`not request to cancel any claim based on an assertion of indefiniteness. See
`35 U.S.C. § 311(b). See 35 U.S.C. § 311(b).
`
`For the foregoing reasons, we exercise our delegated discretion not to
`institute review. 35 U.S.C. § 314(a).
`
`17
`
`
`
`
`
`IPR2019-01125
`Patent 7,016,676 B2
`
`
`III. CONCLUSION
`We exercise our delegated discretion not to institute review.
`
`IV. ORDER
`
`It is
`ORDERED that the Petition is denied, and no inter partes review is
`instituted on any claim over any alleged ground of unpatentability.
`
`
`
`
`
`
`
`
`
`
`18
`
`
`
`IPR2019-01125
`Patent 7,016,676 B2
`
`For Petitioner:
`Derrick W. Toddy
`Andrew M. Mason
`Todd M. Siegel
`KLARQUIST SPARKMAN, LLP
`derrick.toddy@klarquist.com
`andrew.mason@klarquist.com
`todd.siegel@klarquist.com
`
`
`For Patent Owner:
`Ryan Loveless
`Brett Mangrum
`James Etheridge
`Jeffrey Huang
`ETHERIDGE LAW GROUP
`ryan@etheridgelaw.com
`brett@etheridgelaw.com
`jim@etheridgelaw.com
`jeff@etheridgelaw.com
`
`
`
`19
`
`
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