Trials@uspto.gov
`571.272.7822
`
`
`
`
`
`Paper 16
`Entered: October 22, 2021
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`VOLKSWAGEN GROUP OF AMERICA, INC.,
`Petitioner,
`
`v.
`
`STRATOSAUDIO, INC.,
`Patent Owner.
`____________
`
`IPR2021-00721
`Patent 8,166,081 B2
`____________
`
`
`
`Before JUSTIN T. ARBES, HYUN J. JUNG, and
`KEVIN C. TROCK, Administrative Patent Judges.
`
`
`
`TROCK, Administrative Patent Judge.
`
`
`
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314(a)
`
`
`
`
`
`
`
`571.272.7822
`
`
`
`
`
`Paper 16
`Entered: October 22, 2021
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`VOLKSWAGEN GROUP OF AMERICA, INC.,
`Petitioner,
`
`v.
`
`STRATOSAUDIO, INC.,
`Patent Owner.
`____________
`
`IPR2021-00721
`Patent 8,166,081 B2
`____________
`
`
`
`Before JUSTIN T. ARBES, HYUN J. JUNG, and
`KEVIN C. TROCK, Administrative Patent Judges.
`
`
`
`TROCK, Administrative Patent Judge.
`
`
`
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314(a)
`
`
`
`
`
`
`
`
`IPR2021-00721
`Patent 8,166,081 B2
`
`INTRODUCTION
`I.
`Petitioner Volkswagen Group of America, Inc. filed a Petition (Paper
`1, “Pet.”) requesting inter partes review of claims 9–11 and 23 (the
`“challenged claims”) of U.S. Patent No. 8,166,081 B2 (Ex. 1001, “the ’081
`Patent”). Patent Owner StratosAudio, Inc. filed a Preliminary Response.
`Paper 6 (“Prelim. Resp.”). Pursuant to an Order, Paper 11, Petitioner filed a
`Reply, Paper 12 (“Reply”), and Patent Owner filed a Sur-reply, Paper 14
`(“Sur-reply”) to address issues raised in Patent Owner’s Preliminary
`Response.
`Under 35 U.S.C. § 314(a), an inter partes review may not be instituted
`unless the information presented in the Petition and any response thereto
`shows “there is a reasonable likelihood that the petitioner would prevail with
`respect to at least 1 of the claims challenged in the petition.” Taking into
`account the arguments presented in Patent Owner’s Preliminary Response,
`we conclude that the information presented in the Petition establishes that
`there is a reasonable likelihood that Petitioner would prevail in challenging
`at least one of claims 9–11 and 23 of the ’081 Patent as unpatentable under
`the grounds presented in the Petition. Pursuant to § 314, we hereby institute
`an inter partes review as to the challenged claims of the ’081 Patent.
`A. Real Party in Interest
`The parties identify themselves as real parties in interest. Pet. 1;
`Paper 4, 1.
`B. Related Matters
`
`The parties identify the following as related matters:
`• StratosAudio, Inc. v. Hyundai Motor America, No. 20-cv-
`01125-ADA (W.D. Tex.);
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`Patent 8,166,081 B2
`• StratosAudio, Inc. v. Mazda Motor of America, Inc., No. 20-cv-
`01126-ADA (W.D. Tex.).
`• StratosAudio, Inc. v. Subaru of America, Inc., No. 20-cv-01128-
`ADA (W.D. Tex.).
`• StratosAudio, Inc. v. Volvo Cars USA, LLC, No. 20-cv-01129-
`ADA (W.D. Tex.).
`• StratosAudio, Inc. v. Volkswagen Group of America, Inc., No.
`6:20-cv-1131 (W.D. Tex.);1
`
`Pet. 1; Paper 4, 1.
`C. The ’081 Patent
`The ’081 Patent relates to media advertising and associating an
`advertising media signal with another media signal. Ex. 1001, 1:18–20. The
`’081 Patent explains that it is generally desirable to associate products with
`specific characteristics and such associations may increase the chance that a
`potential customer will decide to purchase a product when the product is
`associated with a favorable characteristic. Id. at 1:22–30. In view of this,
`the ’081 Patent states that an advertisement may be more effective if it is
`associated with an image of a celebrity or another media element that
`exhibits favorable characteristics. Id. at 1:30–34.
`The ’081 Patent describes a media enhancement system that is
`configured to associate a secondary media signal (e.g., an advertisement) to
`a primary media signal (e.g., a radio broadcast). Id. at 3:8–12. The ’081
`Patent explains that the secondary media signal may be based on the content
`
`1 Patent Owner identifies this proceeding as StratosAudio, Inc. v.
`Volkswagen Group of America, Inc., No. 20-cv-01127-ADA (W.D. Tex.).
`Paper 4, 1. The correct case number appears to be 6:20-cv-1131-ADA. Ex.
`2006, 1.
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`Patent 8,166,081 B2
`of the primary media, user characteristics (e.g., demographic and/or
`geographic information), and/or third party preferences (e.g., the goals of
`advertisers). Id. at 3:17–21.
`The ’081 Patent discloses one example in which a radio station
`transmits a song in a first media signal that is received by a user enabled-
`device (e.g., a cellular phone with a radio). Id. at 3:27–30. A media
`association system analyzes the song to determine what media elements can
`be associated with the song, and the media association system provides a
`second media signal (e.g., an advertisement) to the user enabled-device. Id.
`at 3:30–36. While the user enabled-device is playing the song, the user
`enabled-device displays the media content in the second media signal (e.g., a
`still or moving picture of the advertised product). Id. at 3:37–40. The ’081
`Patent discloses another embodiment in which a user enabled-device is
`playing a song from a first media signal, media content from a second media
`signal (e.g., a still or moving picture with selectable audio of an advertised
`product) is displayed by the user enabled-device, and the audio track for the
`first media signal is paused upon selection of the second media signal audio.
`Id. at 3:41–47.
`Figure 1A of the ’081 Patent is reproduced below.
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`Patent 8,166,081 B2
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`Figure 1A, above, is a block diagram that depicts signals and
`identifiers correlated and transmitted between elements of a media
`enhancement system. Id. at 2:41–43. The system can include first
`transmitter 3, control management system 100, media association system 2,
`primary device 4, and advertisement entity 6. Id. at 8:11–16. First
`transmitter 3 can be broadcast content from a radio station, from over the
`internet, through a cable line, or satellite, and/or through other
`communication methods. Id. at 8:17–24. For instance, first transmitter 3
`can send first media signal 111 that is received by primary device 4. Id. at
`8:41–43.
`Figure 1B of the ’081 Patent is reproduced below.
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`Patent 8,166,081 B2
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`
`According to the ’081 Patent, Figure 1B, above, is a block diagram
`illustrating that media association system 2 can send or transmit secondary
`or related media signal 114, using information regarding the media content
`of first media signal 111, to primary device 4 and/or ancillary device 5
`through an Internet connection. Id. at 9:34–37, 9:39–48. Advertisement
`entity 6 can send advertisement signal 113 to media association system 2 so
`advertisement signal 113 is provided to primary device 4 upon the latter
`receiving a specific song from first transmitter 3 via first media signal 111.
`Id. at 10:24–29.
`The ’081 Patent explains that unique identifier 115 can be provided
`for each media signal (i.e., first media signal 111 and advertisement media
`signal 113) to facilitate the assignment and/or sending of advertisement
`
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`Patent 8,166,081 B2
`media signal 113 with first media signal 111. Id. at 12:66–13:3. According
`to the ’081 Patent, unique identifier 115 can be stored in a database and/or
`other location, such as control management system 100, along with other
`relevant information. Id. at 13:13–15. The ’081 Patent discloses that unique
`identifier 115 can be used by media association system 2, advertisement
`entity 6, first transmitter 3, and/or primary device 4 and/or control
`management system 100 to track and/or record the results of any signal and
`to determine whether the signal should be provided to primary device 4
`and/or the user. Id. at 13:16–22.
`Figure 3 of the ’081 Patent is reproduced below.
`
`
`Figure 3, shown above, is an illustration that depicts primary device 4,
`such as a radio-enabled cellular phone, with display panel 450 that is
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`Patent 8,166,081 B2
`connected to media association system 2. Id. at 2:50–51, 18:55–57, 19:11–
`13, 19:17. Primary device 4 receives first media signal 111 (not shown in
`Fig. 3) via receiver 455 and/or wire data connection 470. Id. at 18:57–59.
`First media signal 111 includes, for example, a radio program that primary
`device 4 can play to a user via speaker 453. Id. at 18:61–63. Display panel
`450 can show information relating to the radio program being played. Id. at
`19:13–15. For instance, upper portion 451 of the display panel can include
`textual information corresponding to the radio’s music. Id. at 19:17–22.
`The information about the radio’s music may be obtained from a Radio
`Broadcast Data System (RBDS) and/or Radio Data System (RDS) signal
`accompanying first media signal 111 when the latter is in the form of a radio
`signal. Id. at 24:63–65. Lower panel 452 displays advertisement media
`signal 113 (not shown in Fig. 3), which may comprise any form of media
`content. Id. at 12:40–42, 19:45–46.
`Primary device 4 can also send signals to transmitter 3, media
`association system 2, control management system 100, and/or advertisement
`entity 6. Id. at 15:9–12. For example, the signals from primary device 4 can
`be responses to interactive media signals. Id. at 15:12–14. Primary device 4
`can transmit user behavior, can report location, direction of motion, and/or
`speed, and can detect other information about a user and/or the user’s
`location and/or environment. Id. at 15:17–27. The ’081 Patent explains that
`this information can be used by media association system 2 to determine
`what media and/or advertisements to send to primary device 4 to obtain a
`user’s reaction and/or what media and/or advertisements are likely to elicit a
`positive reaction at a given time and/or when the user is in a given state or
`environment. Id. at 15:27–34.
`
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`Patent 8,166,081 B2
`D. Challenged Claims
`Petitioner challenges claims 9–11 and 23. Claim 9 is the only
`independent claim. Claim 9 is reproduced below:
`9[pre] A
`system
`for
`combining multiple media
`comprising:
`9[a] a first receiver module configured to receive at least
`a first media content and data enabling the
`identification of a specific instance of the first
`media content from a first broadcast medium;
`9[b] a second receiver module configured to receive at
`least a second media signal content and uniquely
`identifying data specific to at least the second media
`content,
`the second media content received discretely from
`the first media content;
`9[d] an output system configured to present concurrently
`the first media content and the second media content
`on an output of the first receiver module or the
`second receiver module;
`9[e] an input module configured to receive at least a
`response input responsive to the second media
`content; and
`9[f] a transmitting module configured to transmit a
`response message having at least the uniquely
`identifying data specific to the second media
`content to a computer server.
`Ex. 1001, 35:22–41 (bracketed labelling designated by Petitioner; see
`Pet. 15–42).
`
`9[c]
`
`E. Evidence
`Petitioner relies upon the following evidence:
`(1) U.S. Patent No. US 6,349,329 B1, issued February 19, 2002
`(“Mackintosh”) (Ex. 1004);
`
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`Patent 8,166,081 B2
`(2) U.S. Patent Application Publication No. 2005/0262542 A1,
`published November 24, 2005 (“DeWeese”) (Ex. 1005); and
`(3) Declaration of Tim A. Williams, Ph.D. (Ex. 1003).
`F. Asserted Grounds of Unpatentability
`Petitioner asserts the following grounds of unpatentability:
`
`References
`
`Mackintosh
`
`Mackintosh
`
`DeWeese
`
`DeWeese
`
`Basis
`
`Claims Challenged
`
`§ 102(b)
`
`§ 103(a)
`
`§ 102(b)
`
`§ 103(a)
`
`9–11, 23
`
`9–11, 23
`
`9–11, 23
`
`9–11, 23
`
`Pet. 3.
`
`II. ANALYSIS
`
`A. 35 U.S.C. § 314(a)
`Patent Owner argues that we should exercise our discretion to deny
`institution under 35 U.S.C. § 314(a). Prelim. Resp. 4 (citing Apple Inc. v.
`Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (precedential)
`(“Fintiv”)). Patent Owner has asserted the ’081 Patent against five different
`defendants in separate cases filed in the United States District Court for the
`Western District of Texas. Id. at 4–5. Petitioner is the defendant in only one
`of those proceedings, StratosAudio, Inc. v. Volkswagen Group of America,
`Inc., Doc. No. 6:20-cv-01131 (W.D. Tex. Dec. 11, 2020) (the “parallel
`proceeding”). Id. According to Patent Owner, instituting inter partes
`review in this case “would be entirely duplicative of the five litigations [in
`district court] and would risk the two tribunals reaching inconsistent results.”
`Id. at 6. Patent Owner argues that the Board should deny institution
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`“because all six of the Fintiv factors weigh in favor of denying institution.”
`Id. at 4.
`35 U.S.C. § 314(a) states:
`[t]he Director may not authorize an inter partes review to
`be instituted unless the Director2 determines that 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.
`Under § 314(a), the Board has discretion to deny institution of an inter
`partes review. Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2140
`(2016) (“[T]he agency’s decision to deny a petition is a matter committed to
`the Patent Office’s discretion.”). Under our precedent, the Board may
`exercise this discretion if instituting inter partes review would lead to
`“inefficient use of Board resources.” See NHK Spring Co., Ltd. v. Intri-Plex
`Techs., Inc., IPR2018-00752, Paper 8 at 20 (PTAB Sept. 12, 2018)
`(precedential) (“NHK”).
`In Fintiv, the Board discussed various factors that “relate to whether
`efficiency, fairness, and the merits support the exercise of authority to deny
`institution.” Fintiv, Paper 11 at 6. Pursuant to Fintiv, the Board assesses the
`following factors to determine whether to exercise its discretion to deny
`institution:
`1. whether the court granted a stay or evidence exists that one may be
`granted if a proceeding is instituted;
`2. proximity of the court’s trial date to the Board’s projected statutory
`deadline for a final written decision;
`
`
`2 “The Board institutes the trial on behalf of the Director.” 37 C.F.R.
`§ 42.4(a).
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`3. investment in the parallel proceeding by the court and the parties;
`4. overlap between issues raised in the petition and in the parallel
`proceeding;
`5. whether the petitioner and the defendant in the parallel proceeding
`are the same party; and
`6. other circumstances that impact the Board’s exercise of discretion,
`including the merits.
`See Fintiv, Paper 11 at 6.
`For the reasons discussed below, we do not agree with Patent Owner
`that the circumstances of this case warrant denial of institution under
`§ 314(a).
`1. Whether the court granted a stay or evidence exists that one
`may be granted if a proceeding is instituted
`According to the parties, the district court has not issued a stay in the
`parallel proceeding. See Prelim. Resp. 7; Reply 2. Patent Owner argues that
`the judge’s “historical record on the bench” makes the parallel proceeding
`“unlikely to be stayed pending PTAB review.” Prelim. Resp. 8, 12.
`Petitioner, however, points out that “neither party has requested a stay,” and
`asserts that “this factor is neutral here.” Reply 2.
`We decline to infer how the district court may rule on a motion to stay
`the parallel proceeding pending inter partes review. Given that neither party
`has requested such a stay from the district court, we view this factor as
`neutral.3
`
`
`3 Patent Owner asserts, and we agree, that if “factor 1 does not favor denying
`institution because neither Petitioner nor Patent Owner has requested a stay,
`at most, factor 1 would be neutral.” Prelim. Resp. 12 n.5 (citing Supercell
`Oy v. Gree, Inc., IPR2020-01628, Paper 9 at 7 (PTAB Feb. 17, 2021).
`
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`Patent 8,166,081 B2
`2. Proximity of the court’s trial date to the Board’s projected
`statutory deadline for a final written decision
`According to Patent Owner, the district court has set a date for trial in
`the parallel proceeding for October 3, 2022. Prelim. Resp. 13. Petitioner,
`however, asserts that this trial date is tentative and that the “scheduled trial
`date here is particularly in doubt as it is for five separate defendants.” Reply
`2.
`
`The projected statutory deadline for the Final Written Decision in this
`case is October 27, 2022, approximately 3 weeks after the currently
`scheduled trial date. As currently scheduled, the trial date in the district
`court proceeding is only slightly earlier than the due date for the final written
`decision. Where the trial date and the projected date of our final written
`decision are at or around the same time, as they are here, the efficiency and
`fairness concerns that underlie the Fintiv analysis are not as strong, and will
`instead implicate other factors. See Fintiv, Paper 11 at 9 (“If the court’s trial
`date is at or around the same time as the projected statutory deadline . . . , the
`decision whether to institute will likely implicate other factors discussed
`herein, such as the resources that have been invested in the parallel
`proceeding.”).
`Because the scheduled trial in the parallel proceeding is currently set
`for less than a month before the projected statutory deadline, we view this
`factor as neutral.
`3. Investment in the parallel proceeding by the court and the
`parties
`Patent Owner argues that this factor favors denial of institution
`because “[t]he parties have already invested substantial time in the district
`court litigations.” Prelim. Resp. 17. Patent Owner advises that the parties
`
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`have exchanged preliminary infringement and invalidity contentions, a
`Markman hearing was scheduled for October 5, 2021, and fact discovery
`will begin the day after the Markman hearing. Id.
`Petitioner, however, argues that this factor favors institution because
`relatively little work has been done that would “justify denial of institution.”
`Reply 3–4 (citing Sand Revolution II, LLC v. Continental Intermodal Grp. –
`Trucking LLC, IPR2019-01393, Paper 24 (PTAB June 16, 2020)
`(informative) (“Sand Revolution II”)).
`Based on the current record, it appears that only a modest amount of
`work has been done in the parallel proceeding that may be relevant to the
`issues raised in the Petition with respect to the ’081 Patent. While
`preliminary invalidity contentions have been provided and a Markman
`hearing has been held in the parallel proceeding, fact discovery has only just
`begun and expert discovery has not yet commenced. See Ex. 2016, 4.
`Moreover, the parties have not advised us whether any of the issues
`being addressed in the Markman hearing have any direct bearing on the
`challenged claims of the ’081 Patent and the asserted grounds in this
`proceeding. A review of the Joint Claim Construction Statement filed by the
`parties in the parallel proceeding indicates that “[t]he five cases have been
`briefed together for claim construction proceedings.” See Ex. 3001, 1 (Joint
`Claim Construction Statement, StratosAudio, Inc. v. Volkswagen Group of
`America, Inc., 6:20-cv-01131-ADA (W.D. Tex. filed Sept. 22, 2021)).
`Indeed, with respect to the ’081 Patent, the Joint Claim Construction
`Statement states that “there are no claim construction disputes with respect
`to the ’081 and ’405 patents” at issue in the Markman hearing. Id. Given
`this information, it is difficult to see how any of the work done by the parties
`and the district court with respect to the Markman hearing in the parallel
`
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`proceeding has any bearing or probative value with respect to the
`patentability issues of the ’081 Patent raised in the Petition.
`Petitioner also argues that it exercised diligence in filing the Petition
`in this case. Reply 5. Under Fintiv, a petitioner’s diligence or delay in filing
`a petition may be relevant when assessing Factor 3. See Fintiv, Paper 11 at
`11–12.4 If the evidence shows that a petitioner filed its petition
`expeditiously, such as promptly after becoming aware of the claims being
`asserted, this fact has weighed against denying institution. Id. at 11 (citing
`Intel Corp. v. VLSI Tech. LLC, IPR2019-01192, Paper 15 at 12–13 (PTAB
`Jan. 9, 2020); Illumina Inc. v. Natera, Inc., IPR2019-01201, Paper 19 at 8
`(PTAB Dec. 18, 2019)).
`Petitioner indicates that it filed its Petition “within four months of
`Patent Owner’s filing of a seven-patent infringement complaint.” Reply 5.5
`In a conference call with the parties held on September 8, 2021, to discuss
`supplemental briefing with respect to the 35 U.S.C. § 314(a) issues raised in
`Patent Owner’s Preliminary Response, Petitioner explained that it filed the
`Petition only four months after service of the complaint, which was prior to
`the district court setting a schedule and trial date in its July 2021 Scheduling
`Order. See Paper 11, 2 (citing Ex. 2006).
`
`
`4 The Fintiv decision discusses a Petitioner’s diligence in filing a Petition
`with respect to Factor 3. See Fintiv, Paper 11 at 11–12. Petitioner, however,
`raises diligence in filing the Petition with respect to Fintiv Factor 6. See
`Reply 5. For consistency, we discuss Petitioner’s diligence here.
`5 The complaint in the parallel proceeding (StratosAudio, Inc. v. Volkswagen
`Group of America, Inc., No. 6:20-cv-1131 (W.D. Tex.)) indicates that it was
`filed against Petitioner on December 11, 2020. Ex. 3002. Petitioner filed its
`Petition in this proceeding on April 16, 2021.
`
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`The complaint filed by Patent Owner in district court alleges
`infringement of seven different patents against Petitioner, among them the
`’081 Patent. See Ex. 3002, 1. With respect to the ’081 Patent, Patent Owner
`broadly alleges that Petitioner “makes, uses, offers for sale, sells, and/or
`imports into the United States certain products and services that directly
`infringe, literally and/or under the doctrine of equivalents, one or more
`claims of the ‘081 Patent, including but not limited to claims 9-11 and 23,
`and continue to do so since the issuance of the ‘081 patent.” Id. at 6
`(emphasis added). The complaint does not limit, or precisely identify, the
`claims of the ’081 Patent that Petitioner will have to defend itself against at
`trial. Put another way, the complaint leaves open the option of asserting
`any, or all of, the claims of the ’081 Patent against Petitioner.
`Given the uncertainty of knowing exactly which claims Petitioner
`would have to defend itself against at trial, we determine that Petitioner was
`diligent in filing the Petition only four months after the filing of the
`complaint in the parallel proceeding. Indeed, prior to filing the Petition,
`Petitioner did not even have the benefit of Patent Owner’s Preliminary
`Infringement Contentions, which were not served in the parallel proceeding
`until May 12, 2021, approximately one month after the Petition in this case
`was filed. See Ex. 2007.
`Because of the relatively early stage of the parallel proceeding, the
`modest amount of work that appears to have been done that might be
`relevant to the issues raised in the Petition with respect to the ’081 Patent,
`and Petitioner’s diligence in filing the Petition, we find this factor weighs
`strongly against the exercise of discretionary denial.
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`4. Overlap between issues raised in the petition and in the parallel
`proceeding
`Patent Owner contends that “there is complete overlap between the
`invalidity positions asserted in the Petition and the invalidity contentions
`served by Petitioner and the four other defendants in the parallel litigations.”
`Prelim. Resp. 18–19. Patent Owner also argues that Petitioner “has
`incorporated its grounds for this IPR proceeding into the invalidity
`contentions” in the parallel proceeding. Id. at 19 (citing Ex. 2009).
`Petitioner, however, “has agreed to stipulate that, if this IPR is
`instituted, it will not assert in Western District of Texas case no. 6:20-cv-
`1131- ADA any ground of invalidity presented in this IPR.” Reply 4 (citing
`Exhibit 1012).
`Stipulations, such as Petitioner’s affirmative stipulation here, mitigate
`to some extent concerns of duplicative efforts between the Board and the
`parallel proceeding with respect to the challenges raised in the Petition. See
`Sand Revolution II, Paper 24 at 11–12. Therefore, given the facts here and
`Petitioner’s stipulation, we find that this factor weighs marginally against
`exercising discretionary denial.
`5. Whether the petitioner and the defendant in the parallel
`proceeding are the same party
`“If a petitioner is unrelated to a defendant in an earlier court
`proceeding, the Board has weighed this fact against exercising discretion.”
`Fintiv, Paper 11 at 13–14. Here, Patent Owner argues that “[t]here is no
`dispute that the parties here are the same as in the [parallel proceeding].”
`Prelim. Resp. 20. Petitioner does not contest this assertion and the Petition
`indicates that this is correct. See Reply 5; Pet. 1 (“The Challenged Claims
`are asserted by Patent Owner against Petitioner in StratosAudio, Inc. v.
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`Volkswagen Group of America, Inc., No. 6:20-cv-1131, pending in the
`United States District Court for the Western District of Texas.”).
`Petitioner, however, argues that “[b]ecause it is uncertain whether the
`district court proceeding or the IPR will conclude first, the fifth Fintiv factor
`is neutral.” Reply 5 (citing Juniper Networks, Inc. v. WSOU Investments,
`LLC, IPR2021-00538, Paper 9 at 5 (PTAB Aug. 18, 2021)) (“Juniper”).
`The analysis of Fintiv Factor 5 in Juniper relies on a Board decision in
`Huawei Tech. Co., Ltd. v. WSOU Inv., LLC, IPR2021-00222, Paper 10 at 11
`(PTAB June 7, 2021) (“Huawei”), which stated that Fintiv Factor 5 “favors
`denial if trial precedes the Board’s Final Written Decision and favors
`institution if the opposite is true.” Huawei at 18 (citing Google LLC, et al. v.
`Parus Holdings, Inc., IPR2020-00846, Paper 9 at 20–21 (PTAB Oct. 21,
`2020)).
`Here, the parties are the same, but the trial date is currently set only a
`few weeks before the projected statutory deadline for a final written
`decision. Because of the close proximity between the currently scheduled
`trial date and the projected statutory deadline for a final written decision, we
`view this factor as only slightly in favor of discretionary denial or neutral.
`6. Other circumstances that impact the Board’s exercise of
`discretion, including the merits
`The last Fintiv factor evaluates the merits and other relevant aspects
`of this case. See Fintiv, Paper 11 at 14. Patent Owner argues that “none of
`the grounds set forth in the Petition meet the institution standard.” Prelim.
`Resp. 22. We do not agree. Considering the evidence and the parties’
`arguments, we determine Petitioner has established a reasonable likelihood
`that it would prevail with respect to at least one of the challenged claims.
`For example, as discussed below with respect to independent claim 9,
`
`18
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`IPR2021-00721
`Patent 8,166,081 B2
`Petitioner provides persuasive evidence that each of the recited limitations of
`independent claim 9 is disclosed by Mackintosh. Instituting inter partes
`review under these circumstances would “serve the interest of overall system
`efficiency and integrity because it allows the proceeding to continue in the
`event that the parallel proceeding settles or fails to resolve the patentability
`question presented.” Fintiv, Paper 11 at 15.
`Given the merits of this case, we determine this factor weighs against
`exercising discretionary denial.
`7. Conclusion
`We consider “a holistic view of whether efficiency and integrity of the
`system are best served by denying or instituting review.” Fintiv, Paper 11 at
`6. In our view, the facts weighing against exercising discretion to deny
`institution collectively outweigh those favoring denial and concerns about
`potential inefficiency or integrity of the system. For these reasons, we
`decline to exercise our discretion under 35 U.S.C. § 314(a) to deny inter
`partes review.
`B. Level of Ordinary Skill in the Art
`In determining the level of skill in the art, we consider the type of
`problems encountered in the art, the prior art solutions to those problems, the
`rapidity with which innovations are made, the sophistication of the
`technology, and the educational level of active workers in the field. Custom
`Accessories, Inc. v. Jeffrey-Allan Indus. Inc., 807 F.2d 955, 962 (Fed. Cir.
`1986); Orthopedic Equip. Co. v. U.S., 702 F.2d 1005, 1011 (Fed. Cir. 1983).
`Petitioner contends that “a person of ordinary skill in the art
`(‘POSITA’) would have had at least a B.S. in computer science or electrical
`engineering or a related field, and approximately three years of experience
`working in the communications or Internet-related industries” and that this is
`
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`IPR2021-00721
`Patent 8,166,081 B2
`approximate because “a higher education or skill level might make up for
`less experience, and vice-versa; for example, a POSITA could have a
`master’s degree with no industry experience.” Pet. 7 (citing Ex. 1003 ¶ 33).
`Patent Owner does not dispute this level of skill. See generally Prelim.
`Resp.
`Petitioner’s description of the level of ordinary skill appears to be
`generally consistent with the subject matter of the ’081 Patent. For purposes
`of this Decision, we adopt Petitioner’s assessment of the level of ordinary
`skill.
`C. Claim Construction
`For petitions filed on or after November 13, 2018, the “broadest
`reasonable interpretation” standard has been replaced with the federal court
`claim construction standard that is used to construe a claim in a civil action
`under 35 U.S.C. § 282(b). This is the same claim construction standard
`articulated in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en
`banc), and its progeny.
`Under Phillips, 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.
`Only terms that are in controversy need to be construed, and then only
`to the extent necessary to resolve the controversy. Nidec Motor Corp. v.
`Zhongshan Broad Ocean Motor Co. Matal, 868 F.3d 1013, 1017 (Fed. Cir.
`
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`IPR2021-00721
`Patent 8,166,081 B2
`2017) (in the context of an inter partes review, applying Vivid Techs., Inc. v.
`Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).
`1. “media content”
`Petitioner asserts that it adopts the ’081 Patent’s definition of “media
`content,” which is:
`[T]he terms “media” or “media content” are broad terms that
`comprise any form of content, including without limitation,
`graphics, videos, sounds, text, text messages, interactive
`applications, vibrations, television and/or radio programming,
`podcasts, movies, songs, games, telephone conversations,
`speeches, news, information, advertisements, polls votes,
`personal messages, and/or other physical manifestations
`capable of communicating a concept or idea.
`Pet. 8 (quoting Ex. 1001, 5:22–29; citing Ex. 1003 ¶¶ 39–40). Patent Owner
`does not dispute Petitioner’s construction. See generally Prelim. Resp.
`While the ’081 Patent does not provide a strict definition for the term
`“media content,” the specification does state that “the terms ‘media’ or
`‘media content’ are broad terms that comprise any form of content.”
`Ex. 1001, 5:20–23. The ’081 Patent also provides a number of different
`examples of media or media content, such as “graphics, videos, sounds, text,
`text messages . . . television and/or radio programming, podcasts, movies,
`songs, games, telephone conversations, speeches, news, information,
`advertisements, polls votes, [and] personal messages.” Id. at 5:24–28.
`For purposes of this Decision, w
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