Trials@uspto.gov
`Tel: 571-272-7822
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`
`
`
`
`
`Paper 8
`Date: September 3, 2021
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`LENOVO (UNITED STATES) INC.,
`Petitioner,
`
`v.
`
`LITL LLC,
`Patent Owner.
`
`
`
`IPR2021-00681
`Patent 8,289,688 B2
`
`
`
`
`
`
`
`
`
`
`
`
`Before KRISTINA M. KALAN, CHRISTOPHER M. KAISER,
`and BRIAN D. RANGE, Administrative Patent Judges.
`
`KAISER, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`

`

`IPR2021-00681
`Patent 8,289,688 B2
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`
`A. Background
`
`INTRODUCTION
`
`Lenovo (United States) Inc. (“Petitioner”) filed a Petition (Paper 1,
`
`“Pet.”) requesting an inter partes review of claims 1–9 and 11–32 of U.S.
`
`Patent No. 8,289,688 B2 (Ex. 1001, “the ’688 patent”). LiTL LLC, Inc.
`
`(“Patent Owner”) filed a Preliminary Response. Paper 7 (“Prelim. Resp.”).
`
`We have authority to determine whether to institute an inter partes
`
`review. 35 U.S.C. § 314(b); 37 C.F.R. § 42.4(a) (2020). The standard for
`
`instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which
`
`provides that an inter partes review may not be instituted unless “there is a
`
`reasonable likelihood that the petitioner would prevail with respect to at least
`
`1 of the claims challenged in the petition.”
`
`After considering the Petition, the Preliminary Response, and the
`
`evidence of record, we determine that Petitioner has not demonstrated a
`
`reasonable likelihood that it would prevail with respect to at least one
`
`challenged claim. Accordingly, we do not institute an inter partes review of
`
`any challenged claim on any asserted ground.
`
`B. Related Matters
`
`The parties identify LiTL LLC v. Lenovo (United States), Inc., Case
`
`No. 1:20-cv-00689 (D. Del.), as a matter related to the present proceeding.
`
`Pet. 1; Paper 6, 1. Patent Owner also notes that there are several related
`
`inter partes review proceedings: IPR2021-00786, IPR2021-00800,
`
`IPR2021-00821, and IPR2021-00822. Paper 6, 1.
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`2
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`IPR2021-00681
`Patent 8,289,688 B2
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`
`C. The Asserted Grounds of Unpatentability
`
`Petitioner contends that claims 1–9 and 11–321 of the ’688 patent are
`
`unpatentable based on the following grounds (Pet. 37–113):2
`
`Claim(s) Challenged 35 U.S.C. §3
`1–7, 19, 29–32
`103
`12, 13, 24, 26
`103
`8, 9, 14–16, 20, 23,
`25
`17, 18, 21, 22, 27, 28 103
`11
`103
`
`103
`
`References/Basis
`Shimura,4 Hisano5
`Shimura, Tsuji6
`
`Shimura, Hisano, Tsuji
`
`Shimura, Hisano, Shigeo7
`Shimura, Hisano, Shigeo, Choi8
`
`D. The ’688 Patent
`
`The ’688 patent, titled “Portable Computer with Multiple Display
`
`Configurations,” issued on October 16, 2012. Ex. 1001, codes (45), (54).
`
`The patent relates to a “portable computer that is configurable between a
`
`plurality of display modes.” Id. at code (57). According to the ’688 patent,
`
`
`1 Patent Owner has disclaimed claim 29. Ex. 2009, 1.
`
`2 Petitioner also relies on a declaration from Jean Renard Ward. Ex. 1010.
`
`3 The earliest priority date claimed by the ’688 patent is April 1, 2008.
`Ex. 1001, codes (22), (60). Thus, the application leading to the ’688 patent
`has an effective filing date before March 16, 2013, so patentability is
`governed by the versions of 35 U.S.C. §§ 102 and 103 that were in force
`before they were amended by the Leahy-Smith America Invents Act
`(“AIA”), Pub. L. No. 112–29, 125 Stat. 284 (2011).
`
`4 JP 1994-242853 A, published September 2, 1994 (Ex. 1003) (certified
`English translation provided as Ex. 1004).
`
`5 US 2006/0034042 A1, published Feb. 16, 2006 (Ex. 1005).
`
`6 US 2005/0062715 A1, published Mar. 24, 2005 (Ex. 1006).
`
`7 JP 1996-179851 A, published July 12, 1996 (Ex. 1007) (certified English
`translation provided as Ex. 1008).
`
`8 US 6,918,159 B2, issued July 19, 2005 (Ex. 1009).
`
`3
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`

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`IPR2021-00681
`Patent 8,289,688 B2
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`“[c]onventional portable computers most commonly have a ‘clam-shell’
`
`configuration, with a base including the keyboard, various ports, connectors
`
`and/or inputs . . . and a display component pivotably coupled to the base by
`
`a hinge.” Id. at 1:21–27. Conventional computers sometimes “operat[e] in
`
`‘tablet mode,’” and the ’688 patent also describes existing computers that
`
`were “capable of operating either as a normal laptop computer receiving user
`
`input via a keyboard (‘laptop mode’), or as a tablet computer receiving user
`
`input via a touch screen.” Id. at 1:32–41. In this latter case, “the display
`
`component of the computer is attached to the base of the computer by hinges
`
`that allow the display to be tilted relative to the base (for laptop mode), and
`
`to be rotated and folded against the base to configure the computer into
`
`tablet mode.” Id. at 1:41–46.
`
`The ’688 patent builds on these configurations, describing “a portable
`
`computer” that “is configurable between various modes, including a closed
`
`mode, a laptop mode, an easel mode, a flat mode, and a frame mode.” Id.
`
`at 2:19–22. Each of these modes is depicted in a figure of the ’688 patent.
`
`Id. at 4:40–5:39. Figure 1, reproduced below, shows the laptop mode.
`
`
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`4
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`IPR2021-00681
`Patent 8,289,688 B2
`
`Figure 1 depicts the portable computer of the ’688 patent in laptop mode.
`
`Id. at 6:24–27. Display component 102 is “inclined at a viewing angle from
`
`the base 104.” Id. at 6:27–28.
`
`Figure 2, reproduced below, shows the closed mode.
`
`
`
`Figure 2 depicts the portable computer of the ’688 patent in closed mode.
`
`Id. at 6:63–64. The angle between display component 102 and base 104 is
`
`zero, and “the display screen is disposed ‘face down’ against the keyboard of
`
`the base 104.” Id. at 6:65–7:1.
`
`Figure 4, reproduced below, shows the easel mode.
`
`
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`5
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`IPR2021-00681
`Patent 8,289,688 B2
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`Figure 4 depicts the portable computer of the ’688 patent in the easel mode.
`
`Id. at 7:48–49. “[B]ase 104 and the display component 102 form an inverted
`
`‘V’ shape with the bottom of the base and the back of the display component
`
`fac[ing one] another.” Id. at 7:49–57.
`
`Figure 26, reproduced below, shows the frame mode.
`
`
`
`Figure 26 depicts the portable computer of the ’688 patent in the frame
`
`mode. Id. at 16:1–3. In this mode, display component 102 and base 104 are
`
`separated by a similar angle 134 as in the easel mode, but “the portable
`
`computer is placed on a surface 212 with the keyboard 106 ‘face down’ . . .
`
`and the display 110 facing upward,” rather than being placed in the “inverted
`
`‘V’” of the easel mode. Id. at 16:3–13.
`
`Figure 27, reproduced below, shows the flat mode.
`
`
`
`6
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`IPR2021-00681
`Patent 8,289,688 B2
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`Figure 27 depicts the portable computer of the ’688 patent in the flat mode.
`
`Id. at 16:18–20. Display component 102 and base 104 are “rotated (or
`
`opened) to approximately 180 degrees with respect to” one another, “such
`
`that the base component and display component lay flat on a surface, with
`
`the keyboard 106 and display screen 110 exposed.” Id. at 16:20–24.
`
`In some of these display modes, the ’688 patent describes rotating the
`
`information displayed on display screen 110 “such that the information
`
`appears ‘right-way-up,’ even though the display screen is upside-down
`
`compared to when the portable computer is in the laptop mode.” Id. at 8:7–
`
`12. The portable computer may “include[] an orientation (or mode) sensor
`
`that is configured to detect whether the portable computer is in the laptop
`
`mode or the easel mode, and to adjust the display accordingly.” Id. at 8:17–
`
`20. In addition, in some modes, the portable computer of the ’688 patent
`
`may be configured to permit a user to rotate the information displayed
`
`manually by 90 or 180 degrees. Id. at 16:27–50.
`
`E. Illustrative Claim
`
`Claims 1–9 and 11–32 of the ’688 patent are challenged. Claims 1,
`
`11, 12, 17, 19, and 29 are independent, and claim 1 is illustrative; it recites:
`
`1. A portable computer configurable between a plurality
`of display modes including a closed mode, a laptop
`mode and an easel mode, the portable computer
`comprising:
`
`a single display component including a display
`screen;
`
`a base including a keyboard;
`
`a hinge assembly at least partially housed within
`the base and the display component configured to
`pivotably couple the display component to the
`base, wherein the hinge assembly defines a single
`
`7
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`

`IPR2021-00681
`Patent 8,289,688 B2
`
`
`longitudinal axis running along an interface
`between the display component and the base, and
`wherein the display component and the base are
`rotatable about the single longitudinal axis;
`
`wherein, in the closed mode, the display screen is
`disposed substantially against the base;
`
`wherein rotating either the single display
`component or the base by an operator about the
`single longitudinal axis up to approximately 180
`degrees from the closed mode configures the
`portable computer into the laptop mode, wherein in
`the laptop mode the single display component is
`oriented towards the operator and the keyboard is
`oriented to receive input from the operator;
`
`wherein rotating either the single display
`component or the base by the operator about the
`single longitudinal axis beyond approximately 180
`degrees from the closed mode configures the
`portable computer into the easel mode; and
`
`wherein in the easel mode the single display
`component is oriented facing the operator with the
`keyboard oriented away from the operator.
`
`Ex. 1001, 17:10–38.
`
`A. Procedural Defects
`
`ANALYSIS
`
`A petition for inter partes review must “identif[y], in writing and with
`
`particularity, each claim challenged, the grounds on which the challenge to
`
`each claim is based, and the evidence that supports the grounds for the
`
`challenge to each claim.” 35 U.S.C. § 312(a)(3). According to 37 C.F.R.
`
`§ 42.104(b)(4), a petition for inter partes review “must identify how the
`
`construed claim is unpatentable under the statutory grounds on which the
`
`petitioner challenges the claims, and must specify where each element of the
`
`8
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`IPR2021-00681
`Patent 8,289,688 B2
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`claim is found in the prior art patents or printed publications relied upon.”
`
`Rule 42.104(b)(5) adds that the Petition must “identify[] specific portions of
`
`the evidence that support the challenge.” Similarly, Rule 42.22(a)(2) states
`
`that each petition must include “[a] full statement of the reasons for the relief
`
`requested, including a detailed explanation of the significance of the
`
`evidence including material facts, and the governing law, rules, and
`
`precedent.” The Patent Trial Practice Guide suggests that “parties should
`
`avoid submitting a repository of all the information that a judge could
`
`possibly consider, and instead focus on concise, well-organized, easy-to-
`
`follow arguments supported by readily identifiable evidence of record.”
`
`Patent Trial and Appeal Board Consolidated Trial Practice Guide, available
`
`at https://www.uspto.gov/TrialPracticeGuideConsolidated (Nov. 14, 2019),
`
`at 39. Patent Owner argues that the Petition fails to comply with each of
`
`these requirements with respect to each of the asserted grounds. Prelim.
`
`Resp. 8–15. For the reasons discussed below, we agree with Patent Owner’s
`
`argument.
`
`1. The Structure of the Petition Creates a Lack of Clarity
`
`The Petition’s lack of clarity begins with the labyrinthine way
`
`Petitioner chooses to present its unpatentability arguments. A brief
`
`description of the structure of the Petition will illustrate this problem. The
`
`Petition’s unpatentability analysis begins with a synopsis of each reference,
`
`describing what Petitioner contends the references relied upon in the Petition
`
`generally disclose. Pet. 17–37 (§§ VII.A.1–VII.A.5). These sections
`
`paraphrase the disclosure of the references, and they include figures that add
`
`annotations to the figures of the references, as well as some citations to the
`
`Ward Declaration. Id.
`
`9
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`IPR2021-00681
`Patent 8,289,688 B2
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`
`Next, each of the Petition’s five asserted grounds begins with a
`
`section describing a hypothetical computer that a person of ordinary skill in
`
`the art allegedly would have arrived at by combining the teachings of the
`
`references asserted in that particular ground. Id. at 37–49, 66–69, 76–87,
`
`92–95, 100–105 (§§ VII.B.1, VII.C.1, VII.D.1, VII.E.1, VII.F.1); see also
`
`Ex. 1013 (describing the hypothetical computers of each asserted ground).9
`
`These sections rely heavily on the Ward Declaration, cite to multiple
`
`portions of the references in question, and contain further characterizations
`
`of the disclosure of the references, including figures with added annotations.
`
`Pet. 37–49, 66–69, 76–87, 92–95, 100–105. They also refer back to earlier
`
`sections of the Petition. Id.
`
`Finally, each asserted ground in the Petition presents a list of the
`
`limitations of the challenged claims with some discussion of how the prior
`
`art in question teaches or suggests those limitations. Id. at 49–66, 69–76,
`
`87–91, 95–100, 105–113 (§§ VII.B.2–VII.B.13, VII.C.2–VII.C.5, VII.D.2–
`
`VII.D.9, VII.E.2–VII.E.7, VII.F.2). For support, these sections refer
`
`extensively back to, and rely extensively upon, the previously discussed
`
`sections of the Petition. Id. Patent Owner demonstrates this nested form of
`
`argument in graphical form for one portion of the Petition in the figure
`
`reproduced below.
`
`
`9 To the extent Petitioner intends to rely on the content of Exhibit 1013 for a
`clear description of the hypothetical computers it uses in its arguments, that
`constitutes incorporation by reference in violation of 37 C.F.R. § 42.6(a)(3).
`
`10
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`IPR2021-00681
`Patent 8,289,688 B2
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`
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`Prelim. Resp. 10. In the figure reproduced above, Patent Owner summarizes
`
`Petitioner’s argument for limitation [25b] of claim 25 of the ’688 patent. Id.
`
`Specifically, the figure shows that the “2 sentences” of argument in the
`
`“[25b]” portion of the Petition refer back to nine sections of the Petition
`
`covering “24 pages” and that those nine sections refer back to one another,
`
`as well as to an additional seven sections of the Petition spanning an
`
`additional six pages. Id. Patent Owner’s figure accurately represents the
`
`structure of Petitioner’s argument. See Pet. 91 (citing Pet. 14–16, 37–49
`
`(citing Pet. 17–26), 56–59 (citing Pet. 17–26, 54), 59 (citing Pet. 37–49),
`
`59–60 (citing Pet. 37–49, 56–59), 60 (citing Pet. 37–49, 56–60), 61–63
`
`(citing Pet. 17–26, 49–51, 55–61)).
`
`Thus, Petitioner’s unpatentability analysis relies on the description of
`
`a set of hypothetical computers relying, in part, on Petitioner’s descriptions
`
`and characterizations of the teachings of the prior art. The result of all these
`
`layers of analysis is that the final unpatentability analysis is two or three
`
`levels removed from the actual disclosure of the references. Petitioner’s
`
`11
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`IPR2021-00681
`Patent 8,289,688 B2
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`approach completely blurs the line between the actual teachings of each
`
`asserted reference, Petitioner’s modifications to those teachings, and
`
`Petitioner’s characterizations of those teachings.
`
`A good example of the nested nature of the cross-references in the
`
`Petition can be seen in the analysis of limitation [13a]. In alleging that
`
`“Shimura discloses [13a]” and “[t]he Shimura-Hisano combination10
`
`discloses the function and corresponding structure for the means-plus-
`
`function limitation in [13a],” the Petition cites to several earlier sections.
`
`Pet. 75 (citing Pet. §§ VI.C, VII.A.1, VII.B.4, VII.B.5.a, VII.B.5.b). These
`
`earlier sections cover pages 14–22 and 56–60 of the Petition, a span of
`
`fourteen pages. In addition, some of the cited sections themselves cite other
`
`portions of the Petition. Id. at 56–59 (§ VII.B.4, citing Pet. §§ VI.C,
`
`VII.A.1, VII.B.1, VII.B.2.a, VII.B.2.e), 59 (§ VII.B.5.a, citing Pet.
`
`§ VII.B.1), 59–60 (§ VII.B.5.b, citing Pet. §§ VII.B.1, VII.B.4, VII.B.5.a).
`
`All told, the material cited on page 75 of the Petition, together with the
`
`material cited in that cited material, covers eight sections of the Petition
`
`spanning thirty pages, none of which expressly discusses the language of
`
`limitation [13a] or how the prior art teaches or suggests that language. This
`
`approach of forcing the reader to follow a web of nested cross-references to
`
`find Petitioner’s arguments improperly shifts the burden of deciphering
`
`Petitioner’s arguments onto Patent Owner and the Board. See Apple Inc. v.
`
`ContentGuard Holdings, Inc., IPR2015-00442, Paper 9 at 5–10 (PTAB July
`
`13, 2015).
`
`
`10 Although Petitioner challenges claim 13 on the basis of the combination
`of Shimura and Tsuji, Petitioner argues here that a different combination of
`references, Shimura and Hisano, teaches or suggests limitation [13a].
`
`12
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`IPR2021-00681
`Patent 8,289,688 B2
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`2. The Ward Declaration Contributes to the Petition’s Lack of
`Clarity
`
`As in ContentGuard, the problem of nested citations here is not
`
`limited to the Petition. The Ward Declaration also makes use of the same
`
`type of internal cross-references. For example, in arguing that the prior art
`
`teaches or suggests limitation [13a], the Petition cites to paragraph 253 of
`
`the Ward Declaration. Pet. 75 (citing Ex. 1010 ¶ 253). That paragraph,
`
`however, cites to nine additional paragraphs and three additional sections of
`
`the declaration for support. Ex. 1010 ¶ 253 (citing Ex. 1010 ¶¶ 116, 124,
`
`127–133, §§ VIII.A.4, VIII.A.5.a, VIII.A.5.b). Together, the cited material
`
`spans twenty paragraphs of the Ward Declaration. See id. ¶¶ 116, 124, 127–
`
`133, 188–198. Similar citations from the declaration to other large portions
`
`of the declaration plague Ward’s discussion of many of the challenged
`
`claims. See, e.g., Ex. 1010 ¶¶ 188–193 (discussing claim 3 and citing Ex.
`
`1010 ¶¶ 111, 112, 124, 150–169, 170, 171, 178), 297–299 (discussing
`
`limitation [25b] and citing Ex. 1010 ¶¶ 123, 124, 150–169, 188–200, 207–
`
`215).
`
`In most cases, the material the Petition cites in the Ward Declaration,
`
`together with the other portions of the declaration cited therein, is far more
`
`extensive than any argument present in the Petition. See, e.g., Pet. 56–59
`
`(four pages of argument regarding claim 3, relying on testimony appearing
`
`on twenty-three pages of Ward Declaration), 75 (four lines of argument
`
`regarding limitation [13a], relying on testimony appearing on seventeen
`
`pages of Ward Declaration), 91 (six lines of argument regarding limitation
`
`[25b], relying on testimony appearing on twenty-six pages of Ward
`
`Declaration). This incorporation by reference also contributes to the
`
`deficiency of the Petition. See 37 C.F.R. § 42.6(a)(3).
`
`13
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`IPR2021-00681
`Patent 8,289,688 B2
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`3. The Petition’s Analysis of the Challenged Claims is Largely
`Conclusory
`
`As noted above, the Petition’s discussion of nearly every limitation
`
`relies upon earlier portions of the Petition (usually in a nested fashion) to
`
`identify the evidence that allegedly supports Petitioner’s unpatentability
`
`arguments. See, e.g., id. at 56–59 (citing Pet. §§ VI.C, VII.A.1, VII.B.1,
`
`VII.B.2.a, VII.B.2.e), 75 (citing Pet. §§ VI.C, VII.A.1, VII.B.4, VII.B.5.a,
`
`VII.B.5.b), 91 (citing Pet. §§ VI.C, VII.B.1, VII.B.4, VII.B.5.a, VII.B.5.b,
`
`VII.B.6, VII.B.9.e–VII.B.9.h). Some of these sections also contain text
`
`explaining Petitioner’s argument that the prior art teaches or suggests the
`
`limitation in question, along with citations directly to the relevant prior art.
`
`See, e.g., id. at 56–59 (citing Ex. 1004 ¶ 12, Fig. 1). Most of these sections,
`
`however, do not contain this type of argument, opting instead for conclusory
`
`statements that a particular reference or the hypothetical combination of
`
`references discloses the limitation in question, referring the reader to earlier
`
`portions of the Petition for any relevant argument. See, e.g., id. at 75, 91.
`
`This latter type of argument is particularly problematic because it shifts an
`
`even greater portion of the burden of deciphering Petitioner’s arguments
`
`onto Patent Owner and the Board. For these limitations, Petitioner provides
`
`no argument at all, requiring Patent Owner or the Board to sift through
`
`multiple lengthy sections of the Petition even to determine what argument
`
`Petitioner intends to make. And this type of argument appears more often
`
`than not in the Petition; the great majority of the limitations discussed are
`
`discussed only in this fashion. See Pet. 54–56, 59–61, 63–65, 69–70, 75,
`
`89–91, 95–100, 105, 111–112 (discussing limitations [1c2], [1c3], [1e], [1g],
`
`[2], [4b], [5]–[7], [19pre]–[19d], [19g], [29pre], [29b]–[29f], [30], [31],
`
`[12pre]–[12e], [13a], [13b], [24], [9a], [9b], [14a], [14b], [15a], [15b], [16a],
`
`14
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`IPR2021-00681
`Patent 8,289,688 B2
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`[16b], [20], [23], [25a], [25b], [17pre]–[17j], [18a]–[18c], [22], [27a], [28],
`
`[11pre]–[11b], [11d]). Moreover, this particular type of deficient argument
`
`affects multiple limitations of each of the independent claims of the ’688
`
`patent, as well as limitations of many of the dependent claims. Id.
`
`4. The Petition’s Incorporation of Exhibit 1012 by Reference
`Exacerbates the Lack of Clarity
`
`The Petition’s deficient analysis is further exacerbated by Petitioner’s
`
`drafting of the Petition in such a way as to make it incomprehensible unless
`
`we ignore our rule against incorporation by reference. The arguments in the
`
`Petition rely extensively on abbreviations for the limitations of the ’688
`
`patent’s claims, such as [1pre], [1c2], and [17f]. Pet. 37–113. There is no
`
`way to understand many of Petitioner’s arguments without an understanding
`
`of the meaning of these abbreviations. See, e.g., id. at 54 (arguing that “[t]he
`
`Shimura-Hisano combination discloses [1c2] and renders it obvious,”
`
`without defining what “[1c2]” means). Despite the reader’s need to
`
`understand these abbreviations, the Petition does not define them. Id. at 1–
`
`113. Instead, Petitioner directs us to Exhibit 1012 for the definitions of these
`
`abbreviations. Id. at 11 (“EX-1012 is a claim listing that enumerates each
`
`claim element.”). But “[a]rguments must not be incorporated by reference
`
`from one document into another document.” 37 C.F.R. § 42.6(a)(3). This
`
`additional layer of obfuscation, in violation of Rule 42.6(a)(3), takes the
`
`Petition even further away from the clarity required by Rules 42.22(a) and
`
`42.104(b).
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`15
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`IPR2021-00681
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`5.
`
`Some of the Petition’s Arguments Can Be Understood but
`Lack Sufficient Explanation in Support
`
`In addition to the problems discussed above, some arguments in the
`
`Petition can be understood but lack sufficient explanation in support. For
`
`example, Petitioner offers a construction of the term “display orientation
`
`module,” which it contends is a means-plus-function term that has a
`
`different function in each claim in which it appears (and in some cases,
`
`different functions in different limitations of the same claim). Pet. 14–16.
`
`Despite these differing functions, Petitioner’s arguments that the prior art
`
`teaches or suggests the function of this term in claims 4, 5, 11, 13, 14, 16,
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`19, and 25 all rely exclusively on citation back to Petitioner’s argument for
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`claim 3 (which, according to Petitioner, recites a different function). Id.
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`at 60–63, 75, 89–91, 111–112 (citing Pet. §§ VII.B.4). The Petition does not
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`contain any explanation of why the teaching of one function also teaches a
`
`different function, leaving the Petition deficient with respect to claims 4, 5,
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`11, 13, 14, 16, 19, and 25.
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`6. Conclusion
`
`As explained above, the Petition provides deficient arguments that fail
`
`to explain Petitioner’s positions fully. Where the Petition provides some
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`explanation, it does so only through a web of internal cross-references that
`
`require the reader to engage in extensive analysis just to decipher what is
`
`being argued, much less evaluate the merits of that argument. Although it
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`might be possible for us to wade through this voluminous information and
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`separate the teachings of the references, the Ward testimony, Petitioner’s
`
`characterizations of the evidence, and Petitioner’s arguments, that is not our
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`role. Instead, Petitioner is required to “specify where each element of the
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`16
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`IPR2021-00681
`Patent 8,289,688 B2
`
`claim is found in the prior art patents or printed publications relied upon”
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`and to both “identify[] specific portions of the evidence that support the
`
`challenge” and explain “the relevance of [that] evidence to the challenge
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`raised.” 37 C.F.R. § 42.104(b)(4)–(5); see also id. § 42.22(a)(2) (petitions
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`“must include . . . [a] full statement of the reasons for the relief requested,
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`including a detailed explanation of the significance of the evidence”).
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`Petitioner has not complied with our rules. To hold otherwise would require
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`us to “play archaeologist with the record,” which we decline to do. DeSilva
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`v. DiLeonardi, 181 F.3d 865, 866–67 (7th Cir. 1999),
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`Based on all these deficiencies, the Petition fails to specify
`
`sufficiently where the limitations of the challenged claims of the ’688 patent
`
`are taught or suggested by any of the asserted references. It also fails to
`
`provide a sufficiently detailed explanation of the significance of the citations
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`to the asserted references and the Ward Declaration. These failures violate
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`the requirements of 35 U.S.C. § 312(a)(3), 37 C.F.R. § 42.22(a)(2), and
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`37 C.F.R. § 42.104(b)(4)–(5). Because these requirements must be met to
`
`show that “there is a reasonable likelihood that the petitioner would prevail
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`with respect to at least 1 of the claims challenged in the petition” under
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`35 U.S.C. § 314(a), we determine that Petitioner has not made such a
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`showing.
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`B. Remaining Arguments
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`Petitioner presents arguments for the construction of some claim
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`terms, and Patent Owner disagrees with some of those arguments. Pet. 11–
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`17; Prelim. Resp. 18–24. Petitioner and Patent Owner also present
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`arguments on the merits of each of Petitioner’s five asserted grounds of
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`unpatentability. Pet. 37–113; Prelim. Resp. 37–80. Finally, Patent Owner
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`17
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`IPR2021-00681
`Patent 8,289,688 B2
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`argues that Petitioner circumvented the word-count limit applicable to the
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`Petition by moving some material into exhibits and by improperly
`
`formatting its citations. Prelim. Resp. 17–18. Because we determine that
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`the Petition does not satisfy the requirements of 35 U.S.C. § 312(a)(3),
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`37 C.F.R. § 42.22(a)(2), and 37 C.F.R. § 42.104(b)(4)–(5), we need not
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`evaluate these arguments.
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`CONCLUSION
`
`Upon consideration of the Petition, the Preliminary Response, and the
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`evidence presented, we determine that Petitioner has not shown a reasonable
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`likelihood that it will prevail in showing that at least one of the challenged
`
`claims is unpatentable. Accordingly, we do not institute an inter partes
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`review of any challenged claim based on any ground asserted in the Petition.
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`
`
`It is hereby
`
`ORDER
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`ORDERED that, pursuant to 35 U.S.C. § 314, the Petition is denied,
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`and no inter partes review is instituted.
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`
`
`
`
`18
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`

`

`IPR2021-00681
`Patent 8,289,688 B2
`
`For PETITIONER:
`
`Martin Bader
`Nam Kim
`SHEPPARD, MULLIN, RICHTER & HAMPTON LLP
`mbader@sheppardmullin.com
`nkim@sheppardmullin.com
`
`
`For PATENT OWNER:
`
`Gerald B. Hrycyszyn
`Richard F. Giunta
`Jason Balich
`WOLF GREENFIELD & SACKS, P.C.
`ghrycyszyn-ptab@wolfgreenfield.com
`rgiunta-ptab@wolfgreenfield.com
`jbalich-ptab@wolfgreenfield.com
`
`
`
`
`
`19
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`