Trials@uspto.gov
`571-272-7822
`
`Paper 16
`Date: October 25, 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.
`
`IPR2021-00716
`Patent 8,688,028 B2
`
`
`
`
`
`
`
`
`
`Before JUSTIN T. ARBES, HYUN J. JUNG, and KEVIN C. TROCK,
`Administrative Patent Judges.
`ARBES, Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`I.
`INTRODUCTION
`A. Background and Summary
`Petitioner Volkswagen Group of America, Inc. filed a Petition
`(Paper 1, “Pet.”) requesting inter partes review of claims 11, 14–16, and 18
`of U.S. Patent No. 8,688,028 B2 (Ex. 1001, “the ’028 patent”) pursuant to
`35 U.S.C. § 311(a). Patent Owner StratosAudio, Inc. filed a Preliminary
`Response (Paper 6, “Prelim. Resp.”) pursuant to 35 U.S.C. § 313. With our
`
`
`
`StratosAudio Exhibit 2019
`Hyundai v. StratosAudio
`IPR2021-01303
`Page 1 of 36
`
`
`571-272-7822
`
`Paper 16
`Date: October 25, 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.
`
`IPR2021-00716
`Patent 8,688,028 B2
`
`
`
`
`
`
`
`
`
`Before JUSTIN T. ARBES, HYUN J. JUNG, and KEVIN C. TROCK,
`Administrative Patent Judges.
`ARBES, Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`I.
`INTRODUCTION
`A. Background and Summary
`Petitioner Volkswagen Group of America, Inc. filed a Petition
`(Paper 1, “Pet.”) requesting inter partes review of claims 11, 14–16, and 18
`of U.S. Patent No. 8,688,028 B2 (Ex. 1001, “the ’028 patent”) pursuant to
`35 U.S.C. § 311(a). Patent Owner StratosAudio, Inc. filed a Preliminary
`Response (Paper 6, “Prelim. Resp.”) pursuant to 35 U.S.C. § 313. With our
`
`
`
`StratosAudio Exhibit 2019
`Hyundai v. StratosAudio
`IPR2021-01303
`Page 1 of 36
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`
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`IPR2021-00716
`Patent 8,688,028 B2
`authorization (Paper 11), Petitioner filed a Reply (Paper 12, “Reply”) and
`Patent Owner filed a Sur-Reply (Paper 14, “Sur-Reply”) directed solely to
`the issue of whether we should exercise our discretion to deny the Petition
`under 35 U.S.C. § 314(a).
`Pursuant to 35 U.S.C. § 314(a), the Director may not authorize an
`inter partes review unless the information in the petition and preliminary
`response “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.” See 37 C.F.R. § 42.4(a) (“The Board institutes the trial on behalf
`of the Director.”). For the reasons that follow, we institute an inter partes
`review as to claims 11, 14–16, and 18 of the ’028 patent on all grounds of
`unpatentability asserted in the Petition.
`
`
`B. Related Matters
`The parties indicate that the ’028 patent is the subject of the following
`district court cases: StratosAudio, Inc. v. Volkswagen Group of America,
`Inc., Case No. 6:20-cv-1131 (W.D. Tex.) (“the Volkswagen case”),
`StratosAudio, Inc. v. Hyundai Motor America, Case No. 6:20-cv-1125
`(W.D. Tex.), StratosAudio, Inc. v. Mazda Motor of America, Inc.,
`Case No. 6:20-cv-1126 (W.D. Tex.), StratosAudio, Inc. v. Subaru of
`America, Inc., Case No. 6:20-cv-1128 (W.D. Tex.), and StratosAudio, Inc.
`v. Volvo Cars of North America, LLC, Case No. 6:20-cv-1129 (W.D. Tex.)
`(collectively, “the district court cases”). See Pet. 1; Paper 5, 1. Petitioner
`filed a petition challenging claims of a patent related to the ’028 patent in
`Case IPR2021-00712, and petitions challenging claims of other patents
`asserted in the district court cases in Cases IPR2021-00717, IPR2021-00718,
`IPR2021-00719, IPR2021-00720, and IPR2021-00721. A different
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`Patent 8,688,028 B2
`petitioner filed a petition challenging claims of the ’028 patent in
`Case IPR2021-01303 and petitions challenging claims of other patents
`asserted in the district court cases in Cases IPR2021-01267, IPR2021-01305,
`and IPR2021-01371.
`
`
`C. The ’028 Patent
`The ’028 patent discloses “[a] broadcast response system [that]
`provides, e.g., a radio broadcast listener with the ability to obtain media
`content such as music or speech while listening to the radio.” Ex. 1001,
`code (57). “From the early days of FM broadcast transmission, stations have
`included ancillary signals such as background music or reading services for
`the blind along with a main carrier signal.” Id. at col. 1, ll. 26–28. “The
`most current and widely used data transmission standard is the United States
`Radio Broadcast Data Systems (‘RBDS’) standard” in which a system
`“broadcast[s] a variety of program-related information,” such as station “call
`letters, station format, traffic alerts and scrolling text messages,” on a
`“subcarrier of a standard FM broadcast channel.” Id. at col. 1, ll. 32–53.
`The ’028 patent states that “[b]roadcasters using the RBDS standard can
`distribute information to a large number of users,” but “the standard does not
`allow individual users to respond to the broadcast information.” Id. at col. 2,
`ll. 26–29. For example, a user listening to the radio may like a particular
`song that he or she would like to purchase, but “must write down or
`remember the identifying information and then go to a store or online
`retailer to purchase the media.” Id. at col. 2, ll. 30–37. The ’028 patent
`purportedly solves that problem by allowing the user to respond to the
`broadcast and purchase media content. Id. at col. 2, ll. 53–58.
`
`3
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`IPR2021-00716
`Patent 8,688,028 B2
`The ’028 patent includes Figures 1A–D, which are reproduced
`together below.
`
`
`
`Figures 1A–D depict radio station 140, radio receiver 100, and various other
`devices. Id.at col. 4, ll. 22–25. Radio automation or CD playback system
`142 “extract[s] information about songs or a radio program” from various
`sources and provides playlist information to Automatic Purchase System
`(APS) server 144, which matches the extracted information with information
`in a database of audio files available to download. Id. at col. 5, ll. 41–52.
`If such a file is available, APS server 144 provides download information to
`RBDS/RDS encoder 148. Id. at col. 5, ll. 52–55. RBDS/RDS encoder 148
`then “transmits the RBDS/RDS information using the 57 khz RBDS/RDS
`subcarrier 170 to the FM transmission system 146. The RBDS/RDS
`
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`IPR2021-00716
`Patent 8,688,028 B2
`subcarrier signal 170 is mixed by the FM transmission system 146 with the
`FM baseband program signal 172 and any other subcarriers.” Id. at col. 5,
`ll. 57–62. “The FM transmission system 146 then transmits an FM [radio
`frequency (RF)] signal 162 which is received by the radio receiver 100.”
`Id. at col. 5, ll. 62–63.
`The ’028 patent describes various types of information that can be
`provided to the radio user using the data subcarrier signal, such as a song
`title, artist, album name, purchase price of the song, and IP address for the
`location where the digital version of the song is stored. Id. at col. 3,
`ll. 39–45, col. 5, ll. 4–13, 48–49. A “reference number” representing the
`information stored in a lookup table accessed by APS server 144 “can also
`be employed for ease of implementation.” Id. at col. 3, ll. 42–48.
`RF demodulator section 102 “splits the [received FM RF signal]
`into an audio signal and a data signal.” Id. at col. 4, ll. 39–43. Audio
`demodulator amplifier section 108 receives the audio signal and converts it
`to audio signal 128 that can be output on speaker 118. Id. at col. 4,
`ll. 35–38, 53–54. RBDS/RDS decoder 106 receives the data signal and
`processes it to display information to the user on scrolling display 110. Id.
`at col. 4, ll. 39–47, col. 4, l. 66–col. 5, l. 3.
`The ’028 patent further describes a process whereby “a user can place
`an order to download a song using the control interface 116” of radio
`receiver 100. Id. at col. 5, ll. 14–15. Radio receiver 100 provides a signal to
`authentication and billing system 152 (e.g., over wireless Internet connection
`156) and, when the purchase is approved, download server 154 provides the
`requested material to radio receiver 100 (e.g., over wireless Internet
`connection 158). Id. at col. 5, ll. 15–40. The ’028 patent discloses that
`“[i]n one embodiment, activity of each sale using the [disclosed] system is
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`Patent 8,688,028 B2
`tracked for the purposes of aggregating data or ‘Data Mining’ for sale to
`interested parties such as trade publications and record companies.” Id. at
`col. 3, ll. 52–55.
`
`
`D. Illustrative Claim
`Challenged claim 11 of the ’028 patent is independent. Claims 14–16
`and 18 each depend directly from claim 11. Claim 11 recites (with letter
`designations used in the Petition to refer to the various limitations):
`11. A method for correlating media content identifying
`data with at least one broadcast segment received by a
`communication device, the method comprising:
`[a] receiving a broadcast stream comprising the at least
`one broadcast segment and associated media content;
`[b] receiving a data stream associated with the broadcast
`stream, the data stream comprising, at a minimum, the media
`content identifying data, wherein the media content identifying
`data comprises at least one element;
`[c] extracting the media content identifying data from the
`data stream, associating each media content identifying data
`element with at least one of a plurality of media content;
`[d] storing in an electronic memory of the communication
`device, at a minimum, media content identifying data elements
`into identifying data aggregates, each identifying data aggregate
`associated with at least one of the plurality of media content and
`the at least one broadcast segment, [e] wherein the at least one
`broadcast segment is corollary to the at least one of the plurality
`of media content; and
`[f] providing for presentation of at least a portion of the
`data elements stored
`in
`the electronic memory of
`the
`communication device, whereby the providing provides selective
`outputting, using an interface, of at least one of the following:
`the media content identifying data, the media content, the
`corollary broadcast segment, a temporal position of the corollary
`broadcast segment of the broadcast stream.
`
`6
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`Patent 8,688,028 B2
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`E. Evidence
`Petitioner relies on the following prior art:
`U.S. Patent No. 6,317,784 B1, filed Sept. 29, 1998, issued
`Nov. 13, 2001 (Ex. 1005, “Mackintosh”); and
`U.S. Patent No. 5,579,537, issued Nov. 26, 1996
`(Ex. 1004, “Takahisa”).
`
`
`F. Prior Art and Asserted Grounds
`Petitioner asserts that claims 11, 14–16, and 18 of the ’028 patent are
`unpatentable on the following grounds:
`Claims Challenged
`35 U.S.C. §
`11, 14–16, 18
`102(b)1
`11, 14–16, 18
`103(a)
`
`Reference/Basis
`Takahisa
`Mackintosh
`
`
`
`II. ANALYSIS
`A. Discretionary Denial Under 35 U.S.C. § 314(a)
`Institution of inter partes review is discretionary. See Harmonic Inc.
`v. Avid Tech., Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016) (“[T]he PTO is
`permitted, but never compelled, to institute an [inter partes review (IPR)]
`proceeding.”); 35 U.S.C. § 314(a) (“The Director may not authorize an inter
`partes review to be instituted unless the Director 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
`
`
`1 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
`(2011) (“AIA”), amended 35 U.S.C. §§ 102, 103, and 112. Because the
`challenged claims of the ’028 patent have an effective filing date before the
`effective date of the applicable AIA amendments, we refer to the pre-AIA
`versions of 35 U.S.C. §§ 102, 103, and 112. See Pet. 3.
`
`7
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`Patent 8,688,028 B2
`that the petitioner would prevail with respect to at least 1 of the claims
`challenged in the petition.” (emphasis added)). In the Preliminary Response,
`Patent Owner argues that we should exercise our discretion to deny the
`Petition in view of the district court cases. Prelim. Resp. 4–22. According
`to Patent Owner, instituting an inter partes review in this proceeding “would
`be entirely duplicative of the five [district court cases] and would risk the
`two tribunals reaching inconsistent results.” Id. at 6.
`The Board has held that the advanced state of a parallel district court
`action is a factor that may weigh in favor of denying a petition under
`§ 314(a). See NHK Spring Co. v. Intri-Plex Techs., Inc., IPR2018-00752,
`Paper 8 at 20 (PTAB Sept. 12, 2018) (precedential) (“NHK”); Patent Trial
`and Appeal Board Consolidated Trial Practice Guide (Nov. 2019), 58 & n.2,
`available at https://www.uspto.gov/TrialPracticeGuideConsolidated (“Trial
`Practice Guide”). We consider the following factors to assess “whether
`efficiency, fairness, and the merits support the exercise of authority to deny
`institution in view of an earlier trial date in the parallel proceeding”:
`1. whether the court granted a stay or evidence exists that one
`may be granted if a proceeding is instituted;
`proximity of the court’s trial date to the Board’s projected
`statutory deadline for a final written decision;
`investment in the parallel proceeding by the court and the
`parties;
`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
`other circumstances that impact the Board’s exercise of
`discretion, including the merits.
`
`3.
`
`2.
`
`4.
`
`6.
`
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`Patent 8,688,028 B2
`Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 at 5–6 (PTAB Mar. 20,
`2020) (precedential) (“Fintiv”). In evaluating these factors, we “take[] a
`holistic view of whether efficiency and integrity of the system are best
`served by denying or instituting review.” Id. at 6. Upon consideration of
`these factors, we decline to exercise our discretion to deny the Petition.
`
`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
`Volkswagen case. See Prelim. Resp. 7; Reply 2. Patent Owner argues that
`the district court’s “historical record” makes the district court cases
`“unlikely to be stayed” pending review by the Board. Prelim. Resp. 7–8, 11,
`21. 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
`any of the district court cases pending inter partes review. Given that
`neither party has requested such a stay from the district court, we view this
`factor as neutral.2
`
`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 set a trial date for the
`Volkswagen case of October 3, 2022. Prelim. Resp. 12. Petitioner,
`
`
`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 would be neutral.” See Prelim. Resp. 11 n.5 (citing
`Supercell Oy v. Gree, Inc., IPR2020-01628, Paper 9 at 7 (PTAB Feb. 17,
`2021)).
`
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`however, asserts that this trial date is tentative and that “[t]he tentatively
`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 late October 2022. As currently scheduled, the trial date in the
`Volkswagen case 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 the decision whether to institute 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 Volkswagen case is currently set for
`less than a month before the projected statutory deadline for our final written
`decision, 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. 16. Patent Owner states that the parties
`have exchanged preliminary infringement and invalidity contentions,
`a Markman hearing was scheduled for October 5, 2021, and fact discovery
`begins the day after the Markman hearing. Id. at 16–17.
`Petitioner, however, argues that this factor favors institution because
`relatively little work has been done that would “justify denial of institution.”
`
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`Patent 8,688,028 B2
`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”)).
`Based on the current record, it appears that only a modest amount of
`work has been done in the Volkswagen case that may be relevant to the
`issues raised in the Petition with respect to the ’028 patent. Although
`Petitioner served preliminary invalidity contentions and a Markman hearing
`was held on September 28, 2021, 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
`addressed in the Markman hearing have any direct bearing on the challenged
`claims of the ’028 patent and asserted grounds in this proceeding. A review
`of the Joint Claim Construction Statement filed by the parties in the district
`court cases indicates that “[t]he five cases have been briefed together for
`claim construction proceedings.” Ex. 3001. With respect to the ’028 patent,
`Petitioner asserts that three claim terms are indefinite and Patent Owner
`asserts that the terms should be construed to have their “[p]lain and ordinary
`meaning.” Id. at 1–2. 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 district court cases has any bearing or probative
`value with respect to the patentability issues raised in the Petition with
`respect to the ’028 patent.
`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. “If the evidence shows that the petitioner filed the petition
`expeditiously, such as promptly after becoming aware of the claims being
`
`11
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`Patent 8,688,028 B2
`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 5.3
`In a conference call with the parties held on September 8, 2021, to discuss
`supplemental briefing with respect to the § 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. Paper 11, 2 (citing Ex. 2006).
`The complaint filed by Patent Owner alleges infringement of seven
`different patents against Petitioner, among them the ’028 patent. Ex. 3002.
`With respect to the ’028 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 ‘028 patent, including but
`not limited to claims 11, 14–16, and 18, and continue[d] to do so since the
`issuance of the ‘028 patent.” Ex. 3002 ¶ 27 (emphasis added). The
`complaint does not limit, or precisely identify, the claims of the ’028 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
`’028 patent against Petitioner.
`
`
`3 The complaint in the Volkswagen case was filed on December 11, 2020.
`Petitioner filed its Petition in this proceeding on April 16, 2021.
`
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`We determine that Petitioner was diligent in filing the Petition only
`four months after the filing of the complaint in the Volkswagen case.
`Indeed, at the time of filing its Petition, Petitioner did not have the benefit of
`Patent Owner’s preliminary infringement contentions, which were served on
`May 13, 2021, approximately one month after the Petition in this case was
`filed. See Ex. 2007; Fintiv, Paper 11 at 11 & n.21 (explaining that “it is
`often reasonable for a petitioner to wait to file its petition until it learns
`which claims are being asserted against it in the parallel proceeding,” and
`citing an earlier case finding that a petitioner was “diligent in filing the
`petition within two months of [the] patent owner narrowing the asserted
`claims in the district court proceeding”).
`Because of the relatively early stage of the Volkswagen case, 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 ’028 patent,
`and Petitioner’s diligence in filing its Petition, we find that this factor weighs
`strongly 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.”
`Prelim. Resp. 18. Patent Owner also points out that Petitioner “incorporated
`its grounds for this [inter partes review (IPR)] proceeding into the invalidity
`contentions” in the Volkswagen case. Id. (citing Ex. 2009, 50). Petitioner,
`however, “has agreed to stipulate that, if this IPR is instituted, it will not
`assert in [the Volkswagen case] any ground of invalidity presented in this
`
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`IPR.” Reply 4 (citing Ex. 1015). Stipulations, such as Petitioner’s
`affirmative stipulation here, mitigate to some extent concerns of duplicative
`efforts between the Board and the Volkswagen case with respect to the
`challenges raised in the Petition. See Sand Revolution, 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 Volkswagen case].”
`Prelim. Resp. 20. Petitioner does not contest this assertion. See Pet. 1;
`Reply 5. 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 (PTAB Aug. 18, 2021)
`(“Juniper”)). The analysis of Fintiv factor 5 in Juniper relies on a Board
`decision in Huawei Techs. Co., Ltd. v. WSOU Investments, LLC,
`IPR2021-00222, Paper 10 (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.” See Huawei,
`Paper 10 at 18; Juniper, Paper 9 at 16.
`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
`
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`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. Fintiv, Paper 11 at 14–15. Patent Owner argues that “none of
`the grounds set forth in the Petition meet the institution standard.” Prelim.
`Resp. 22. We disagree. As explained below, on the preliminary record, the
`merits of Petitioner’s case are straightforward and strong, at least as to the
`asserted ground based on Takahisa, and Patent Owner has not yet made a
`persuasive response to Petitioner’s allegations. See infra Section II.E.
`Petitioner’s arguments on this record appear to be consistent with the
`disclosure of Takahisa. See id. Because of this, instituting inter partes
`review “may 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 the case, we determine that this
`factor weighs against exercising discretionary denial.
`
`
`7. Holistic Assessment of Fintiv Factors
`We consider the above factors and take “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
`
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`system. For these reasons, we decline to exercise our discretion to deny
`institution under § 314(a).
`
`
`B. Legal Standards
`“Anticipation requires that every limitation of the claim in issue be
`disclosed, either expressly or under principles of inherency, in a single prior
`art reference,” Corning Glass Works v. Sumitomo Elec. U.S.A., Inc.,
`868 F.2d 1251, 1255–56 (Fed. Cir. 1989), and that the claim limitations be
`“arranged or combined in the same way as recited in the claim,”
`Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008).
`However, “the reference need not satisfy an ipsissimis verbis test.” In re
`Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009). “In an anticipation analysis,
`the dispositive question is whether a skilled artisan would ‘reasonably
`understand or infer’ from a prior art reference that every claim limitation is
`disclosed in that single reference.” Acoustic Tech., Inc. v. Itron Networked
`Solutions, Inc., 949 F.3d 1366, 1373 (Fed. Cir. 2020) (citation omitted).
`A claim is unpatentable for obviousness if, to one of ordinary skill in
`the pertinent art, “the differences between the subject matter sought to be
`patented and the prior art are such that the subject matter as a whole would
`have been obvious at the time the invention was made.” KSR Int’l Co. v.
`Teleflex Inc., 550 U.S. 398, 406 (2007) (quoting 35 U.S.C. § 103(a) (2006)).
`The question of obviousness is resolved on the basis of underlying factual
`determinations, including “the scope and content of the prior art”;
`“differences between the prior art and the claims at issue”; and “the level of
`ordinary skill in the pertinent art.” Graham v. John Deere Co., 383 U.S. 1,
`17–18 (1966). Additionally, secondary considerations, such as “commercial
`success, long felt but unsolved needs, failure of others, etc., might be utilized
`
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`to give light to the circumstances surrounding the origin of the subject
`matter sought to be patented. As indicia of obviousness or nonobviousness,
`these inquiries may have relevancy.” Id. When conducting an obviousness
`analysis, we consider a prior art reference “not only for what it expressly
`teaches, but also for what it fairly suggests.” Bradium Techs. LLC v. Iancu,
`923 F.3d 1032, 1049 (Fed. Cir. 2019) (citation omitted).
`A patent claim “is not proved obvious merely by demonstrating that
`each of its elements was, independently, known in the prior art.” KSR,
`550 U.S. at 418. An obviousness determination requires finding “both ‘that
`a skilled artisan would have been motivated to combine the teachings of the
`prior art references to achieve the claimed invention, and that the skilled
`artisan would have had a reasonable expectation of success in doing so.’”
`Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359,
`1367–68 (Fed. Cir. 2016) (citation omitted); see KSR, 550 U.S. at 418
`(for an obviousness analysis, “it can be important to identify a reason that
`would have prompted a person of ordinary skill in the relevant field to
`combine the elements in the way the claimed new invention does”).
`“Although the KSR test is flexible, the Board ‘must still be careful not
`to allow hindsight reconstruction of references . . . without any explanation
`as to how or why the references would be combined to produce the claimed
`invention.’” TriVascular, Inc. v. Samuels, 812 F.3d 1056, 1066 (Fed. Cir.
`2016) (citation omitted). Further, an assertion of obviousness “cannot be
`sustained by mere conclusory statements; instead, there must be some
`articulated reasoning with some rational underpinning to support the legal
`conclusion of obviousness.” KSR, 550 U.S. at 418 (quoting In re Kahn,
`441 F.3d 977, 988 (Fed. Cir. 2006)); accord In re NuVasive, Inc., 842 F.3d
`1376, 1383 (Fed. Cir. 2016) (stating that “conclusory statements” amount to
`
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`an “insufficient articulation[] of motivation to combine”; “instead, the
`finding must be supported by a ‘reasoned explanation’” (citation omitted));
`In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016)
`(“To satisfy its burden of proving obviousness, a petitioner cannot employ
`mere conclusory statements. The petitioner must instead articulate specific
`reasoning, based on evidence of record, to support the legal conclusion of
`obviousness.”).
`
`
`C. Level of Ordinary Skill in the Art
`Petitioner argues that at the time of the ’028 patent (September 2000),
`a person of ordinary skill in the art would have had “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, or, alternatively, an advanced degree (such as a master’s degree)
`in computer science or electrical engineering (or a related field).” Pet. 8
`(citing Ex. 1003 ¶ 44); see Ex. 1003 ¶ 29. Patent Owner does not address
`the level of ordinary skill in the art in its Preliminary Response. Based on
`the record presented, including our review of the ’028 patent and the types
`of problems and solutions described in the ’028 patent and cited prior art,
`we agree with Petitioner’s proposed definition of the level of ordinary skill
`in the art and apply it for purposes of this Decision. See, e.g., Ex. 1001,
`col. 1, l. 25–col. 2, l. 49 (describing in the “Background” section of the
`’028 patent various FM broadcast and other communication methods).
`
`
`
`
`
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`
`D. Claim Interpretation
`We interpret the challenged claims
`using the same claim construction standard that would be used to
`construe the claim in a civil action under 35 U.S.C. 282(b),
`including construing the claim in accordance with the ordinary
`and customary meaning of such claim as understood by one of
`ordinary skill in the art and the prosecution history pertaining to
`the patent.
`37 C.F.R. § 42.100(b) (2020). “In determining the meaning of [a] disputed
`claim limitation, we look principally to the intrinsic evidence of record,
`examining the claim language itself, the written description, and the
`prosecution history, if in evidence.” DePuy Spine, Inc. v. Medtronic
`Sofamor Danek, Inc., 469 F.3d 1005, 1014 (Fed. Cir. 2006). Claim terms
`are generally
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