Trials@uspto.gov
`571-272-7822
`
`Paper 9
`Date: January 25, 2022
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`HYUNDAI MOTOR AMERICA,
`Petitioner,
`
`v.
`
`STRATOSAUDIO, INC.,
`Patent Owner.
`
`IPR2021-01267
`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
`
`
`
`
`
`
`
`
`571-272-7822
`
`Paper 9
`Date: January 25, 2022
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`HYUNDAI MOTOR AMERICA,
`Petitioner,
`
`v.
`
`STRATOSAUDIO, INC.,
`Patent Owner.
`
`IPR2021-01267
`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
`
`
`
`
`
`
`
`
`
`IPR2021-01267
`Patent 8,166,081 B2
`
`I.
`
`INTRODUCTION
`
`Hyundai Motor America (“Petitioner”) filed a Petition (Paper 2, “Pet.”
`
`or “Petition”) to institute an inter partes review of claims 9–11, 15, and 23
`
`of U.S. Patent No. 8,166,081 B2 (Ex. 1001, “the ’081 Patent”).
`
`StratosAudio, Inc. (“Patent Owner”) filed a Preliminary Response. Paper 8
`
`(“Prelim. Resp.”).
`
`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.” 35 U.S.C. § 314(a). Upon
`
`consideration of the entirety of the current record, we determine that
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`Petitioner has shown a reasonable likelihood that it would prevail in showing
`
`the unpatentability of at least one of the challenged claims. Accordingly, we
`
`institute an inter partes review.
`
`A. Real Parties in Interest
`
`Petitioner identifies Hyundai Motor America and Hyundai Motor
`
`Company as the real parties-in-interest. Pet. 2. Patent Owner identifies
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`itself, StratosAudio, Inc., as the only real party in interest. Paper 5, 1.
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`B. Related Matters
`
`The parties identify the following as related matters: StratosAudio Inc.
`
`v. Hyundai Motor America, No. 6:20-cv-01125-ADA (W.D. Tex.);
`
`StratosAudio, Inc. v. Volkswagen Group of America, Inc., No. 6:20-cv-1131
`
`(W.D. Tex.); StratosAudio, Inc. v. Mazda Motor of America, Inc., No. 6:20-
`
`cv-01126 (W.D. Tex.); StratosAudio, Inc. v. Subaru of America, Inc., No.
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`6:20-cv-01128 (W.D. Tex.); and StratosAudio, Inc. v. Volvo Cars of North
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`America, LLC, No. 6:20-cv-01129 (W.D. Tex.). Pet. 2–3; Paper 5, 1.
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`2
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`IPR2021-01267
`Patent 8,166,081 B2
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`The parties also indicate that the ’081 Patent is the subject of an inter
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`partes proceeding, Volkswagen Group of America, Inc. v. StratosAudio, Inc.,
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`IPR2021-00721 (PTAB Apr. 16, 2021) (“the ’721 IPR”). Pet. 3; Paper 5, 1.
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`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
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`’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
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`associated with a favorable characteristic. Id. at 1:22–30. In view of this,
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`the ’081 Patent states that an advertisement may be more effective if it is
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`associated with an image of a celebrity or another media element that
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`exhibits favorable characteristics. Id. at 1:30–34.
`
`The ’081 Patent describes a media enhancement system that is
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`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
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`Patent explains that the secondary media signal may be based on the content
`
`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
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`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
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`association system analyzes the song to determine what media elements can
`
`be associated with the song, and the media association system provides a
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`second media signal (e.g., an advertisement) to the user enabled-device. Id.
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`at 3:30–36. While the user enabled-device is playing the song, the user
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`3
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`enabled-device displays the media content in the second media signal (e.g., a
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`still or moving picture of the advertised product). Id. at 3:37–40. The ’081
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`Patent discloses another embodiment in which a user enabled-device is
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`playing a song from a first media signal, media content from a second media
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`signal (e.g., a still or moving picture with selectable audio of an advertised
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`product) is displayed by the user enabled-device, and the audio track for the
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`first media signal is paused upon selection of the second media signal audio.
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`Id. at 3:41–47.
`
`Figure 1A of the ’081 Patent is reproduced below.
`
`
`
`Figure 1A, above, is a block diagram that depicts signals and
`
`identifiers correlated and transmitted between elements of a media
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`enhancement system. Id. at 2:41–43. The system can include first
`
`transmitter 3, control management system 100, media association system 2,
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`primary device 4, and advertisement entity 6. Id. at 8:11–16. First
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`transmitter 3 can be broadcast content from a radio station, from over the
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`4
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`internet, through a cable line, or satellite, and/or through other
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`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.
`
`
`
`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
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`of first media signal 111, to primary device 4 and/or ancillary device 5
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`through an Internet connection. Id. at 9:34–37, 9:39–48. Advertisement
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`entity 6 can send advertisement signal 113 to media association system 2 so
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`advertisement signal 113 is provided to primary device 4 upon the latter
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`5
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`IPR2021-01267
`Patent 8,166,081 B2
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`receiving a specific song from first transmitter 3 via first media signal 111.
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`Id. at 10:24–29.
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`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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`media signal 113 with first media signal 111. Id. at 12:66–13:3. According
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`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
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`relevant information. Id. at 13:13–15. The ’081 Patent discloses that unique
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`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
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`to determine whether the signal should be provided to primary device 4
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`and/or the user. Id. at 13:16–22.
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`Figure 3 of the ’081 Patent is reproduced below.
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`6
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`Patent 8,166,081 B2
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`
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`Figure 3, shown above, is an illustration that depicts primary device 4,
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`such as a radio-enabled cellular phone, with display panel 450 that is
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`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
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`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
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`7
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`Patent 8,166,081 B2
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`accompanying first media signal 111 when the latter is in the form of a radio
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`signal. Id. at 24:63–65. Lower panel 452 displays advertisement media
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`signal 113 (not shown in Fig. 3), which may comprise any form of media
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`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
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`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
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`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
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`what media and/or advertisements to send to primary device 4 to obtain a
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`user’s reaction and/or what media and/or advertisements are likely to elicit a
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`positive reaction at a given time and/or when the user is in a given state or
`
`environment. Id. at 15:27–34.
`
`D. Challenged Claims
`
`Petitioner challenges claims 9–11, 15, and 23. Claim 9 is independent
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`and is set out below:
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`system
`9[pre] A
`comprising:
`
`for
`
`combining multiple media
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`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
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`8
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`Patent 8,166,081 B2
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`the second media content received
`content,
`discretely from the first media content;
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`9[c] 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[d] an input module configured to receive at least a
`response input responsive to the second media
`content; and
`
`9[e] 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. 23–30) (claim corrected as indicated in the Certificate of Correction; see
`
`Ex. 1001, p. 35).
`
`E. Evidence
`
`Petitioner relies upon the following evidence:
`
`(1) U.S. Patent No. 5,303,393, issued April 12, 1994 (“Noreen”)
`
`(Ex. 1005);
`
`(2) U.S. Patent No. 6,628,928 B1, issued September 30, 2003
`
`(“Crosby”) (Ex. 1006);
`
`(3) World Intellectual Property Organization Publication No.
`
`WO 02/067447 A2, published August 29, 2002 (“Ellis 2002”) (Ex. 1007);
`
`(4) U.S. Patent Application Publication No. 2005/0227611 A1,
`
`published October 13, 2005 (“Ellis 2005”) (Ex. 1008); and
`
`(5) Declaration of Kevin C. Almeroth, Ph.D. (Ex. 1002).
`
`F. Prior Art and Asserted Grounds
`
`Petitioner asserts the following grounds of unpatentability:
`
`9
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`
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`IPR2021-01267
`Patent 8,166,081 B2
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`Claim(s) Challenged
`9, 15, 23
`9, 15, 23
`10, 11
`9–11, 15, 23
`9–11, 15, 23
`
`35 U.S.C. §
`103(a)
`103(a)
`103(a)
`103(a)
`103(a)
`
`Reference(s)/Basis
`Noreen
`Noreen, Crosby
`Noreen, Crosby, Ellis 2002
`Ellis 2005
`Ellis 2005, Crosby
`
`Pet. 4.
`
`A. 35 U.S.C. § 314(a)
`
`II. ANALYSIS
`
`Patent Owner argues that we should exercise our discretion to deny
`
`institution under 35 U.S.C. § 314(a). Prelim. Resp. 2–3 (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 3. Petitioner is the defendant in only one
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`of those proceedings, StratosAudio Inc. v. Hyundai Motor America, No.
`
`6:20-cv-01125-ADA (W.D. Tex.) (the “parallel proceeding”). Id.
`
`According to Patent Owner, instituting inter partes review in this case
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`“would be duplicative of the five litigations [in district court] and would risk
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`the two tribunals reaching inconsistent results.” Id. at 5. Patent Owner
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`argues that the Board should deny institution “because all six of the Fintiv
`
`factors weigh in favor of discretionary denial of institution.” Id. at 2–3.
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`35 U.S.C. § 314(a) states:
`
`[t]he Director may not authorize an inter partes review to
`be instituted unless the Director1 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
`
`
`1 “The Board institutes the trial on behalf of the Director.” 37 C.F.R.
`§ 42.4(a).
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`10
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`Patent 8,166,081 B2
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`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
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`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;
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`2. proximity of the court’s trial date to the Board’s projected statutory
`
`deadline for a final written decision;
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`3. investment in the parallel proceeding by the court and the parties;
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`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
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`6. other circumstances that impact the Board’s exercise of discretion,
`
`including the merits.
`
`Id.
`
`11
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`Patent 8,166,081 B2
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`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
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`According to the parties, the district court has not issued a stay in the
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`parallel proceeding. See Pet. 60; Prelim. Resp. 6. Patent Owner argues that
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`given the judge’s record “it is highly unlikely that the district court would
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`grant a stay if the Board institutes trial.” Prelim. Resp. 7. Petitioner,
`
`however, points out that “there is no stay motion that the Court could have
`
`acted upon yet,” and asserts that “this factor is neutral where no stay motion
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`was filed before institution.” Pet. 60–61.
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`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
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`has requested such a stay from the district court, we view this factor as
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`neutral.2
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`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. 12. Petitioner,
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`however, asserts that this trial date is only “estimated.” Pet. 61 (citing Ex.
`
`1009). The projected statutory deadline for a final written decision in this
`
`
`2 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 should be considered neutral.” Prelim. Resp. 11 n.3 (citing
`Supercell Oy v. Gree, Inc., IPR2020-01628, Paper 9 at 7 (PTAB Feb. 17,
`2021).
`
`12
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`IPR2021-01267
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`case, if instituted, would be January 28, 2023, approximately 3–4 months
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`after the currently scheduled trial date.
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`Petitioner argues that “where [a final written decision] is due within a
`
`few months of any district court trial, [discretion] weighs only slightly in
`
`favor of denial.” Pet. 62 (citing Hulu, LLC v. SITO Mobile, Ltd., IPR2021-
`
`00298, Paper 11 at 10–11 (PTAB May 19, 2021) (“Hulu”); Facebook, Inc. v.
`
`USC IP P’ship, LP, IPR2021-00033, Paper 13 (PTAB Apr. 30, 2021); DISH
`
`Network L.L.C. v. Broadband iTV, Inc., IPR2020-01280, Paper 17 (PTAB
`
`Feb. 4, 2021) (“DISH”); Apple Inc. v. Koss Corp., IPR2021-00305, Paper 14
`
`at 13 (PTAB June 3, 2021)).
`
`Patent Owner, however, argues that the Board “routinely finds that a
`
`court’s trial scheduled to be held before the final written decision date favors
`
`denial.” Prelim. Resp. 12 (citing E-One, Inc. v. Oshkosh Corp., IPR2019-
`
`00161, Paper 16 at 6–7 (PTAB May 15, 2019)).
`
`Our precedent states that “[i]f the court’s trial date is earlier than the
`
`projected statutory deadline [for a final written decision], the Board
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`generally has weighed this fact in favor of exercising authority to deny
`
`institution under NHK.” Fintiv, Paper 11 at 9.
`
`Because the currently scheduled trial in the parallel proceeding is 3–4
`
`months before the projected statutory deadline for a final written decision in
`
`this case, if instituted, we view this factor as favoring discretionary denial.
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`3. Investment in the parallel proceeding by the court and the parties
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`Patent Owner argues that this factor favors denial of institution
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`because “the parties and Court have already invested substantial time and
`
`effort” in the parallel proceeding. Prelim. Resp. 15. Patent Owner indicates
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`that the parties have “exchanged preliminary infringement and invalidity
`
`contentions, . . . [t]he Court then held a Markman hearing on September 28,
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`13
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`2021, and ruled on disputed claim terms at that hearing . . . [and] [f]act
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`discovery opened September 28, 2021.” Id. at 16–17. Patent Owner also
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`indicates that it “will serve final infringement contentions and . . .
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`[Petitioner] will serve final invalidity contentions by November 29, 2021.”
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`Id. at 17.
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`Petitioner, however, argues that “[t]here has been minimal
`
`development of the underlying case” and that “the most cost intensive period
`
`in the district court case will occur after the institution decision.” Pet. 62–
`
`63. Petitioner argues that “[t]his alone weighs against denial.” Id. at 63
`
`(citing Hulu, Paper 11 at 13 (“IPR instituted where ‘the district court
`
`proceeding remains at the early stages, and a significant portion of work still
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`remains to be done in the district court proceeding’”)). Petitioner also
`
`argues that “even if claim construction had progressed to the point of an
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`order, the Board has recently noted that short claim construction orders
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`lacking in explanations do not represent significant investment by the trial
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`court.” Id. at 63 n.6 (citing DISH, Paper 17 at 18–20). Petitioner further
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`argues that it acted diligently because it “filed its petition many months
`
`before the statutory deadline to do so, and, significantly, only about two
`
`months after being served with preliminary infringement contentions.” Id. at
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`63.
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`Based on the current record, it appears that only a modest amount of
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`work may have been done in the parallel proceeding that might be relevant
`
`to the issues raised in the Petition with respect to the ’081 Patent. While
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`final invalidity contentions have been provided and a Markman hearing has
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`been held in the parallel proceeding, fact discovery has only just begun and
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`expert discovery has not yet commenced. See Ex. 2002, 4.
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`14
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`The parties have not indicated specifically whether any of the issues
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`addressed in the Markman hearing have any direct bearing on the challenged
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`claims of the ’081 Patent or the asserted grounds in this case. A review of
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`the Joint Claim Construction Statement filed by the parties in the parallel
`
`proceeding indicates that “there are no claim construction disputes with
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`respect to the ’081 and ’405 patents” at issue in the Markman hearing. See
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`Ex. 3001, 1 (Joint Claim Construction Statement, StratosAudio, Inc. v.
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`Hyundai Motor America, 6:20-cv-01125-ADA (W.D. Tex. filed Sept. 22,
`
`2021)). This is confirmed by the district court’s claim construction order
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`issued on December 15, 2021, where the district court did not construe any
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`claim terms with respect to the ’081 Patent. See Ex. 3002.
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`Given this information, it does not appear that the work done by the
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`parties and the district court with respect to the Markman hearing in the
`
`parallel proceeding would have any direct bearing or probative value with
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`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. Pet. 5. Petitioner indicates that it “filed its petition many
`
`months before the statutory deadline to do so, and, significantly, only about
`
`two months after being served with preliminary infringement contentions on
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`May 13, 2021.” Pet. 63.3
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`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. If the
`
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`3 The PACER docket report in the parallel proceeding indicates that the
`complaint was filed against Petitioner in the district court on December 11,
`2020. See Ex. 3003. The Petition for inter partes review in this case was
`accorded a filing date of July 16, 2021. Paper 3, 1.
`
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`15
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`evidence shows that a petitioner filed its petition expeditiously, such as
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`promptly after becoming aware of the claims being asserted, this fact has
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`weighed against exercising discretionary denial. 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
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`Dec. 18, 2019)).
`
`The complaint filed by Patent Owner in district court alleges
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`infringement of seven different patents against Petitioner, among them the
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`’081 Patent. See Ex. 3004. With respect to the ’081 Patent, the complaint
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`broadly alleges that Petitioner “makes, uses, offers for sale, sells, and/or
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`imports into the United States certain products and services that directly
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`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 [sic] to do so since the issuance of the ’081 patent.” Id. at 5
`
`(emphasis added). Although final infringement contentions have now been
`
`served, the complaint did not limit, or precisely identify, the claims of the
`
`’081 Patent that Petitioner would have to defend itself against at trial. Put
`
`another way, the complaint left open the option of asserting any, or all of,
`
`the claims of the ’081 Patent against Petitioner.
`
`Petitioner indicates that it received Patent Owner’s preliminary
`
`infringement contentions in the parallel proceeding on May 13, 2021. Pet.
`
`63. Given the uncertainty at the time of knowing exactly which claims
`
`Petitioner would have to defend itself against at trial, we determine that
`
`Petitioner was reasonably diligent in filing its Petition for inter partes review
`
`in this case approximately two months after receiving Patent Owner’s
`
`preliminary infringement contentions in the parallel proceeding.
`
`16
`
`
`
`IPR2021-01267
`Patent 8,166,081 B2
`
`Because of the stage of the parallel proceeding, the modest amount of
`
`work that might be relevant to the issues raised in the Petition with respect to
`
`the ’081 Patent, and Petitioner’s reasonable diligence in filing the Petition,
`
`we find this factor weighs against the exercise of discretionary denial.
`
`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”
`
`and that this factor “favors denial of institution.” Prelim. Resp. 18–19, 22.
`
`Petitioner, however, “stipulates that it will not pursue invalidity
`
`against the asserted claims in the district court using any obviousness ground
`
`that includes the primary references in this [P]etition” and that “[t]his factor
`
`thus weighs against denial.” Pet. 64–65; see Ex. 1021 (identifying Noreen
`
`and Ellis 2005 as the “primary references”).
`
`Stipulations, such as Petitioner’s affirmative stipulation here, mitigate
`
`to some degree concerns of duplicative efforts between the Board and the
`
`parallel proceeding with respect to the challenges raised in the Petition. See
`
`Sand Revolution II, LLC v. Continental Intermodal Grp. – Trucking LLC,
`
`IPR2019-01393, Paper 24 at 11–12 (June 16, 2020) (informative).
`
`Therefore, given the potential overlap here, but taking into account
`
`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.”
`
`17
`
`
`
`IPR2021-01267
`Patent 8,166,081 B2
`
`Fintiv, Paper 11 at 13–14. Patent Owner asserts that “[t]here is no dispute
`
`that the parties here are the same as in the [parallel proceeding]” and that
`
`this factor “favors denial of institution.” Prelim. Resp. 23 (citing Fintiv,
`
`IPR2020-00019, Paper 11 at 13–14). Petitioner does not contest the fact that
`
`it is the defendant in the parallel proceeding, but argues instead that “this
`
`factor does not outweigh the other factors that weigh against discretionary
`
`denial.” Pet. 65.
`
`Here, because the parties are the same in both proceedings, this factor
`
`does not weigh against exercising discretionary denial.
`
`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
`
`meets the institution standard.” Prelim. Resp. 25. 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, Petitioner provides persuasive
`
`evidence that each of the recited limitations of independent claim 9 is taught
`
`by Noreen. 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 particularly strong merits of this case, we determine this
`
`factor weighs against exercising discretionary denial.
`
`18
`
`
`
`IPR2021-01267
`Patent 8,166,081 B2
`
`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 exercising discretion to deny
`
`institution. 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 “[o]ne of ordinary skill in the art would have
`
`had a bachelor’s degree in electrical engineering, computer engineering,
`
`computer science, or a related field, and at least two years of experience in
`
`the communications or Internet-related industries, or the equivalent, with
`
`additional education substituting for experience and vice versa.” Pet. 9–10
`
`(citing Ex. 1002 ¶¶ 34, 40–42). Patent Owner does not address the level of
`
`ordinary skill in the Preliminary Response, nor does Patent Owner dispute
`
`Petitioner’s description of the level of ordinary 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
`
`19
`
`
`
`IPR2021-01267
`Patent 8,166,081 B2
`
`of this Decision, we adopt Petitioner’s assessment of the level of ordinary
`
`skill.4
`
`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.
`
`Petitioner states that it “does not believe that any term requires
`
`explicit construction to resolve the issues presented in this Petition.” Pet. 11
`
`(citing Ex. 1002 ¶¶ 31–33). Patent Owner does not address Petitioner’s
`
`positon, nor does Patent Owner propose any specific claim construction in
`
`the Preliminary Response. See generally Prelim. Resp.
`
`
`4 In IPR2021-00721, we preliminarily adopted the petitioner’s proposed
`definition of “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.” IPR2021-00721, Paper 16 at
`19–20. The descriptions are very similar.
`
`20
`
`
`
`IPR2021-01267
`Patent 8,166,081 B2
`
`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.
`
`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)). The parties do
`
`not identify any particular controversy regarding interpretation of the
`
`challenged claims. For purposes of this Decision, we do not find it
`
`necessary to expressly construe any particular claim term.
`
`D. Patentability Challenges
`
`As indicated above, Petitioner presents five grounds challenging the
`
`patentability of particular claims of the ’081 Patent under 35 U.S.C.
`
`§ 103(a). Petitioner challenges (1) claims 9, 15, and 23 as obvious over
`
`Noreen; (2) claims 9, 15, and 23 as obvious over
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