Trials@uspto.gov
`571-272-7822
`
`
`
`
`
` Paper 13
`Entered: February 8, 2023
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`SAMSUNG ELECTRONICS CO., LTD., SAMSUNG ELECTRONICS
`AMERICA, INC., and GOOGLE LLC,
`Petitioner,
`v.
`
`RYAN HARDIN and ANDREW HILL,
`Patent Owner.
`____________
`
`IPR2022-01328
`Patent 10,049,387 B2
`____________
`
`
`Before BART A. GERSTENBLITH, MICHELLE N. WORMMEESTER,
`and ARTHUR M. PESLAK, Administrative Patent Judges.
`
`GERSTENBLITH, Administrative Patent Judge.
`
`
`
`
`
`
`
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`

`

`IPR2022-01328
`Patent 10,049,387 B2
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`
`I.
`
`INTRODUCTION
`
`Background
`
`Samsung Electronics Co., Ltd., Samsung Electronics America, Inc.
`(collectively, “Samsung”) and Google LLC (“Google”; collectively,
`“Petitioner”) filed a Petition (Paper 4, “Pet.”) requesting institution of inter
`partes review of claims 10–18, 31, and 32 (“the Challenged Claims”) of
`U.S. Patent No. 10,049,387 B2 (Ex. 1001, “the ’387 patent”). Petitioner also
`filed a Notice Ranking Petitions and Explaining Material Differences
`Between Petitions for U.S. Patent No. 10,049,387 (Paper 5, “Notice”)
`because Petitioner filed two additional petitions challenging claims of the
`’387 patent in IPR2022-01327 and IPR2022-01329. Ryan Hardin and
`Andrew Hill (collectively, “Patent Owner”) filed a Preliminary Response
`(Paper 9, “Prelim. Resp.”) and a Response to Petitioner’s Notice (Paper 10,
`“Notice Resp.”). With our prior authorization, Petitioner filed a limited1
`Preliminary Reply (Paper 11, “Prelim. Reply”), and Patent Owner filed a
`Sur-reply (Paper 12, “Prelim. Sur-reply”).
`An inter partes review may be instituted only if “the information
`presented in the petition . . . and any [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.” 35 U.S.C. § 314(a)
`(2018). For the reasons below, Petitioner has established a reasonable
`
`
`1 Petitioner’s Preliminary Reply is limited to the issue of discretionary denial
`pursuant to Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB
`Mar. 20, 2020) (precedential), and, particularly, the effect of Samsung’s
`stipulation in related litigation, in accordance with Sotera Wireless, Inc. v.
`Masimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020)
`(precedential as to § II.A).
`
`2
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`IPR2022-01328
`Patent 10,049,387 B2
`
`likelihood that it would prevail in showing the unpatentability of at least one
`of the Challenged Claims. Accordingly, we institute an inter partes review
`of the Challenged Claims on all grounds raised in the Petition.
`
`Related Proceedings
`
`The parties identify Hardin et al. v. Samsung Electronics Co., Ltd.
`and Samsung Electronics America, Inc., No. 2:21-CV-00290-JRG (E.D.
`Tex.), as a related matter. Pet. 68; Paper 8 (Patent Owner’s Mandatory
`Notices), 1. Petitioner also challenges claims of the ’387 patent in
`IPR2022-01327 and IPR2022-01329, and challenges claims of two related
`patents in the following proceedings: U.S. Patent No. 9,779,418 B2
`(IPR2022-01330, IPR2022-01331, and IPR2022-01332); and U.S. Patent
`No. 10,984,447 B2 (IPR2022-01333, IPR2022-01334, and IPR2022-01335).
`Pet. 68; Paper 8, 1. Additionally, Petitioner identifies U.S. Patent
`Application No. 17/182,809, as a pending continuation application of U.S.
`Patent Application No. 16/019,285. Pet. 68.
`
`Real Parties in Interest
`
`Petitioner and Patent Owner each identifies itself as the real party in
`interest. Pet. 67; Paper 8, 1.
`
`3
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`IPR2022-01328
`Patent 10,049,387 B2
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`
`
`
`The Asserted Ground of Unpatentability and Declaration
`Evidence
`Petitioner challenges the patentability of claims 10–18, 31, and 32 of
`the ’387 patent on the following ground:
`Reference(s)/Basis
`Claim(s) Challenged 35 U.S.C. §2
`Hardin ’665,3 Salmre4
`10–18, 31, 32
`103
`Pet. 3. Petitioner supports its challenge with a Declaration of David
`H. Williams (Ex. 1003). Patent Owner supports its Preliminary Response
`with a Declaration of Scott A. Denning (Ex. 2001).
`
`The ’387 Patent
`
`The ’387 patent is titled “Exclusive Delivery of Content Within
`Geographic Areas.” Ex. 1001, code (54). The ’387 patent issued on
`August 14, 2018, and claims priority through a series of continuation
`applications to U.S. Patent Application No. 12/434,094 (“the
`’094 application”), filed May 1, 2009. Id. at code (63).
`
`2 The Leahy-Smith America Invents Act (“AIA”) included revisions to
`35 U.S.C. § 103 that became effective on March 16, 2013. One of the
`central issues in this proceeding is the priority date of the Challenged
`Claims. The ’387 patent was filed on September 2, 2017 (Ex. 1001,
`code (22)), and claims priority to an application filed May 1, 2009 (id. at
`code (63)). Petitioner contests the ’387 patent’s priority claim, asserting that
`the earliest priority date of the Challenged Claims is January 29, 2015.
`Pet. 27–28. Because we find that Petitioner has established a reasonable
`likelihood of prevailing on the present record, we apply the current version
`of § 103 here. Our analysis, however, would be the same regardless of
`which version of the statute is applied because the critical issues before us
`are not impacted by the differences in the two versions of the statute.
`3 U.S. Patent Application Publication No. 2010/0279665 A1, published
`Nov. 4, 2010 (Ex. 1005, “Hardin ’665”).
`4 U.S. Patent Application Publication No. 2006/0116817 A1, published
`June 1, 2006 (Ex. 1006, “Salmre”).
`
`4
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`IPR2022-01328
`Patent 10,049,387 B2
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`
`As background, the ’387 patent explains that advertisements and other
`content can be broadcast “to any mobile device within a city, or a similar
`area,” or can delivered over the Internet “in response to a request, received
`from the receiving device.” See Ex. 1001, 1:37–52. According to the
`’387 patent, in order to provide more targeted advertising, a “content
`delivery platform can receive a request from a registered application
`program for content to be displayed on a mobile device, and the request can
`be used to determine a target location.” Id. at 1:65–2:2. An exemplary
`content delivery system is depicted in Figure 1, reproduced below.
`
`Figure 1 “is an abstract representation of exclusive content delivery to
`particular reserved areas.” Id. at 2:48–50. System 100, depicted in Figure 1,
`“can provide exclusive delivery of advertising or other content to registered
`
`
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`applications running on mobile devices located within a particular proximity
`to a reserved geographic area.” Id. at 3:17–21. System 100 “includes
`content delivery platform 112, which is in communication with developer
`platform 108, and systems or individuals operating under control of
`sponsor A 121, sponsor C 123, and sponsor B 125.” Id. at 3:21–25. The
`’387 patent provides that content delivery platform 112 receives a request
`from developer platform 108 to register a program or other application for
`use on mobile devices, and uses “the registered application program to
`provide selected content to mobile devices.” Id. at 3:25–29. According to
`the ’387 patent, “a registered application program is provided to mobile
`devices by developer platform 108, content delivery platform 112, one of
`sponsor A 121, sponsor C 123, or sponsor B 125, or by another desired
`delivery mechanism.” Id. at 3:30–34.
`The ’387 patent explains that “[s]ponsor A 121, sponsor C 123, or
`sponsor B 125 can reserve an exclusive interest in a particular geographic
`area by sending a request to content delivery platform 112.” Ex. 1001,
`3:40–42. The ’387 patent further explains that “the request can be for
`exclusive delivery of content to mobile devices running any registered
`application within given geographic areas, or for content to be delivered to
`particular registered applications based on a target location.” Id. at 3:43–47.
`
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`
`Figure 2 of the ’387 patent is reproduced below.
`
`
`Figure 2 “is a diagram illustrating a target location other than the location of
`the mobile device executing a registered application.” Ex. 1001, 2:51–54.
`The ’387 patent explains the following regarding Figure 2:
`[A] user of registered application 231 is located within the
`perimeter defining a first sponsor’s reserved area 207. Object
`of interest 233 is located in second sponsor’s reserved area 205.
`In some embodiments, object of interest 233 can be any type of
`object of interest to the user of registered application 231. . . . In
`some embodiments, target location information 216 can be any
`type of information that can be used to determine the location
`of the object of interest 233. . . .
`
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`IPR2022-01328
`Patent 10,049,387 B2
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`
`In response to receiving the target location
`
`information 216 from object of interest 233, registered
`application 231 can send a request 213 to content delivery
`platform 212. The request can include, but is not limited to,
`information indicating the location of object of interest 233, a
`request for content, information indicating the location of
`registered application 231, information indicating the identity
`of the registered application 231, and a previously received
`request identifier.
`
`Content delivery platform 212 can receive and process
`request 213 to identify the location of registered application 231
`and the location of object of interest 233. . . .
`Content delivery platform 212 can provide registered
`application information 217 to second sponsor 225 to allow
`second sponsor 225 to deliver second sponsor’s content 214 to
`registered application 231. . . . In some embodiments,
`application information 217 need not be provided to second
`sponsor 225, but instead can be processed internally by content
`delivery platform 212, and a determination can be made for
`second sponsor’s content 214 to be delivered directly to
`application 231 from content delivery platform 212, or a third
`party (not illustrated).
`Id. at 5:53–6:35.
`
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`
`Figure 4 of the ’387 patent is reproduced below.
`
`
`Figure 4 “is a flowchart illustrating a method of reserving a geographic
`area.” Ex. 1001, 2:59–61. In particular, the ’387 patent states that
`method 400 “allow[s] sponsors to reserve particular geographic areas.” Id.
`at 9:3–6. The ’387 patent explains the following regarding the disclosed
`method of reserving a geographic area:
`Method 400 begins, as illustrated by block 401. As illustrated
`by block 403, a content delivery platform, for example content
`delivery platform 112 as illustrated in FIG. 1, can receive a
`
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`IPR2022-01328
`Patent 10,049,387 B2
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`
`request for sponsor registration . . . . As illustrated by
`block 405, the sponsor can establish perimeters defining
`geographic areas of exclusive or semi-exclusive control. These
`geographic areas are areas the sponsor wishes to reserve for
`delivery of his own advertisements or other content controlled
`by the sponsor.
`. . . .
`As illustrated by block 407, a sponsor’s request for a
`selected area is received. . . .
`As illustrated by block 411, if an area selected for
`exclusive or semi-exclusive content delivery is available, the
`selected geographic area can be reserved for the sponsor. . . .
`A sponsor can provide content for delivery to mobile
`devices having target locations contained within its reserved
`area, as illustrated by block 415.
`Id. at 9:6–54.
`
`Illustrative Claim
`
`Claim 10, the sole independent claim challenged in this proceeding, is
`illustrative of the claimed subject matter and is reproduced below with
`Petitioner’s bracketing added for reference (see Pet. v–vi (Listing of
`Challenged Claims)):
`[10.pre] A non-transitory computer readable medium
`tangibly embodying at least one program of computer
`executable instructions, wherein the at least one program of
`computer executable instructions comprises at least one
`instruction for:
`[10.a] receiving, on a mobile device, from an application
`program during its execution in the mobile device, one or more
`requests to reserve at least one selected geographic area of
`interest, wherein the at least one selected geographic area of
`interest in each of the one or more requests is being requested
`via said application program to be reserved for having a
`particular identifier associated with the at least one selected
`geographic area of interest provided to said application program
`
`10
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`IPR2022-01328
`Patent 10,049,387 B2
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`
`[10.b] after it has been determined, by at least use of at least
`one processor tangibly embodied by the mobile device and of
`location information representing at least one physical
`geographic location of the mobile device as determined by a
`location-determination component tangibly embodied by the
`mobile device, that the mobile device has at least entered the at
`least one selected geographic area of interest, and
`[10.c] wherein each of the one or more requests comprises data
`representing a) said particular identifier, represented by a data
`string, as content provided via said application program to be
`associated with the at least one selected geographic area of
`interest, [10.d] b) at least one latitude value, at least one
`longitude value, and at least one radius value, each being
`provided via said application program, to be used for
`establishing a perimeter boundary for the at least one selected
`geographic area of interest, and c) information specifying at
`least one area bound by the perimeter boundary as the at least
`one selected geographic area of interest;
`[10.e] registering said application program, in a memory
`tangibly embodied by the mobile device, for having said
`particular identifier provided to said application program after it
`has been determined, by at least use of the at least one
`processor and of the location information, that the mobile
`device has at least entered the at least one selected geographic
`area of interest;
`[10.f] storing, in the memory, at least one record, for said
`application program, associated with said particular identifier
`and the at least one selected geographic area of interest;
`[10.g] obtaining the location information representing at
`least one physical geographic location of the mobile device as
`determined by the location-determination component; and
`[10.h] after it has been determined, by at least use of the
`at least one processor, of the location information, and of the at
`least one selected geographic area of interest associated with
`the at least one record stored in the memory for said application
`program, that the mobile device has at least entered the at least
`one selected geographic area of interest associated with the at
`
`11
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`IPR2022-01328
`Patent 10,049,387 B2
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`
`least one record stored in the memory and has remained therein
`for at least a designated length of time, [10.i] providing at least
`said particular identifier associated with the at least one record
`stored in the memory to said application program.
`Ex. 1001, 16:17–17:9.
`
`Level of Ordinary Skill in the Art
`
`Petitioner, supported by Mr. Williams’ testimony, proposes that a
`person of ordinary skill in the art at the time of the invention (“either
`5/1/2009 or 1/29/2015”) would have had “at least a bachelor’s degree in
`computer science or a comparable field of study and at least five years of
`professional experience in mobile or location-based computing or other
`relevant academic experience.” Pet. 21 (citing Ex. 1003 ¶¶ 38–41).
`In the Preliminary Response, Patent Owner acknowledges Petitioner’s
`proposed level of ordinary skill in the art, but does not take a position on the
`issue. Prelim. Resp. 46. Mr. Denning, however, applies Mr. Williams’ level
`of ordinary skill in the art in Mr. Denning’s Declaration in support in Patent
`Owner’s Preliminary Response. Ex. 2001 ¶ 26.
`At this stage of the proceeding and on the present record, we find that
`Petitioner’s uncontested level of ordinary skill in the art is consistent with
`the level of ordinary skill in the art reflected by the ’387 patent and the prior
`art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir.
`2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich,
`579 F.2d 86, 91 (CCPA 1978). Therefore, we adopt Petitioner’s level of
`ordinary skill in the art in our consideration of the issues presently before us.
`
`CLAIM CONSTRUCTION
`II.
`In this inter partes review, claims are construed using the same claim
`construction standard that would be used to construe the claims in a civil
`
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`IPR2022-01328
`Patent 10,049,387 B2
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`action under 35 U.S.C. § 282(b). See 37 C.F.R. § 42.100(b) (2021). The
`claim construction standard includes construing claims in accordance with
`the ordinary and customary meaning of such claims as understood by one of
`ordinary skill in the art at the time of the invention. See id.; Phillips v. AWH
`Corp., 415 F.3d 1303, 1312–14 (Fed. Cir. 2005) (en banc). In construing
`claims in accordance with their ordinary and customary meaning, we take
`into account the specification and prosecution history. Phillips, 415 F.3d at
`1315–17.
`Additionally, only terms that are in controversy need to be construed,
`and these need be construed only to the extent necessary to resolve the
`controversy. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375
`(Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . .
`that are in controversy, and only to the extent necessary to resolve the
`controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc.,
`200 F.3d 795, 803 (Fed. Cir. 1999)).
`Petitioner explains that it has “taken the position in [district court] that
`several claim terms are indefinite,” but “solely for purposes of this
`proceeding[,] Petitioner[] adopt[s] [Patent Owner’s] position that each such
`term should receive its plain and ordinary meaning.” Pet. 21. Petitioner
`contends that “because Hardin ’6655 contains the identical disclosure as the
`specification of the challenged ’387 patent, Petitioner[] believe[s] that no
`express claim constructions are necessary, and the claims should be given
`
`
`5 Throughout the Petition, Petitioner italicizes the names of the references
`(i.e., Hardin ’665 and Salmre). See, e.g., Pet. 20 (indicating both). In this
`Decision, we have removed the italics from these terms in any quoted
`material and do not further indicate such removal.
`
`13
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`IPR2022-01328
`Patent 10,049,387 B2
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`their plain and ordinary meaning in this proceeding.” Id. at 21–22 (footnote
`added) (citing Phillips, 415 F.3d at 1303).
`In the Preliminary Response, Patent Owner acknowledges that
`Petitioner proposes that the claim terms should be given their plain and
`ordinary meaning, but does not affirmatively agree with Petitioner’s
`statement. Prelim. Resp. 33. Patent Owner, however, contends that “[f]or
`purposes of this response, Patent Owner[] do[es] not believe the Board needs
`to construe any terms.” Id.
`At this stage of the proceeding, we need not construe any claim terms
`expressly because none are in dispute. Realtime Data, 912 F.3d at 1375
`(quoting Vivid Techs., 200 F.3d at 803).
`
`III. ANALYSIS
`As noted above, Petitioner filed three petitions challenging claims of
`the ’387 patent. Recently, we instituted inter partes review in IPR2022-
`01327, one of the cases in which Petitioner challenges claims of the
`’387 patent. See Samsung Elecs. Co. v. Hardin, IPR2022-01327, Paper 13
`(PTAB Feb. 7, 2023) (institution decision). The parties acknowledge that
`the issues raised in this proceeding are substantially identical to those raised
`in IPR2022-01327. Notice 3 (“Petitioner[s] note[s] that the analysis in each
`petition is substantially similar due to the repetitive nature of the challenged
`claims.”); Prelim. Resp. 1 n.1 (“Because the petitions each raise the same
`written description argument, the inventors’ Patent Owner Preliminary
`Responses are substantively identical.”). Based on our review of the
`briefing filed in this proceeding, we agree with the parties that the briefs in
`this proceeding and IPR2022-01327 raise substantially the same issues,
`arguments, and evidence. In particular, we note at least the following
`
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`Patent 10,049,387 B2
`
`substantial similarities between the issues in this proceeding and those raised
`in IPR2022-01327:
`(1) Petitioner asserts that substantially the same two claim limitations
`lack written description support in the ’094 application and U.S. Patent
`Application No. 13/856,392 (“the ’392 application”) (compare Pet. 23–27,
`with IPR2022-01327, Paper 4 (petition) at 23–27);
`(2) Petitioner asserts that because these limitations lack written
`description support in the ’094 and ’392 applications, the Challenged Claims
`are not entitled to the priority date of either of these applications and,
`therefore, Hardin ’665 (the pre-issuance publication of the ’094 application)
`is available as prior art to the Challenged Claims (compare Pet. 1, 2, 27–28,
`with IPR2022-01327, Paper 4 at 1, 2, 27–28);
`(3) Petitioner asserts that the same combination of references—
`Hardin ’665 and Salmre—would have rendered the subject matter of the
`claims challenged in each petition obvious to one of ordinary skill in the art
`at the time of the invention (compare Pet. 28–59, with IPR2022-01327,
`Paper 4 at 28–63);
`(4) Petitioner asserts the same reasons with rational underpinning as to
`why one of ordinary skill in the art would have been motivated to combine
`the teachings of Hardin ’665 and Salmre as proposed with a reasonable
`expectation of success (compare Pet. 59–65, with IPR2022-01327, Paper 4
`at 63–69);
`(5) Patent Owner does not raise an argument responding to
`Petitioner’s challenge based on Hardin ’665 and Salmre aside from whether
`the Challenged Claims of the ’387 patent are entitled to the priority date of
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`the ’094 application (see generally Prelim. Resp.; IPR2022-01327, Paper 9
`(preliminary response));
`(6) Patent Owner relies on the same argument and evidence to assert
`that we should exercise our discretion to deny institution pursuant to 35
`U.S.C. § 314(a) and Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11
`(PTAB Mar. 20, 2020) (precedential) (compare Prelim. Resp. 61–66, with
`IPR2022-01327, Paper 9 at 61–66);
`(7) Patent Owner’s Response to Petitioner’s Notice relies on the same
`argument and evidence to assert that we should exercise our discretion to
`deny institution of the instant Petition pursuant to 35 U.S.C. § 314(a)
`because Petitioner should have challenged all of the claims of the
`’387 patent in a single petition (compare Notice Resp., with IPR2022-01327,
`Paper 10 (Patent Owner’s notice response)); and
`(8) Patent Owner relies on the same argument and evidence to assert
`that we should exercise our discretion to deny institution pursuant to
`35 U.S.C. § 325(d) (compare Prelim. Resp. 34–44, with IPR2022-01327,
`Paper 9 at 34–44).
`With the exception of issue (7), which we address further below,6 our
`analysis of the parties’ arguments and evidence, at this stage of the
`proceeding, is identical to the detailed analysis we undertook and fully set
`forth in the institution decision (Paper 13) in IPR2022-01327. Therefore, we
`adopt and incorporate our findings and determinations from that decision as
`though they were fully set forth herein.
`
`
`6 We discuss issue (7) further below because our consideration of that issue
`here is different than our consideration of that issue in IPR2022-01327.
`
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`
`Accordingly, for the reasons set forth in IPR2022-01327, Paper 13,
`we: (1) determine, based on the present record, that the Challenged Claims
`of the ’387 patent are not entitled to the priority date of the ’094 application,
`and, therefore, Hardin ’665 is available as prior art to the ’387 patent;
`(2) determine that, on balance, considering the record presently before us,
`Petitioner has established a reasonable likelihood that it would prevail in
`showing that the combination of Hardin ’665 and Salmre would have
`rendered the subject matter of claims 10–18, 31, and 32 of the ’387 patent
`obvious to one of ordinary skill in the art at the time of the invention;
`(3) decline to exercise our discretion to deny institution pursuant to 35
`U.S.C. § 314(a) and Fintiv; and (4) decline to exercise our discretion to deny
`institution pursuant to 35 U.S.C. § 325(d).
`
`IV. DISCRETION UNDER 35 U.S.C. § 314(a) –
`MULTIPLE PETITIONS
`As noted above, Petitioner filed three petitions on the same day in
`IPR2022-01327, IPR2022-01328, and IPR2022-01329, challenging different
`claim sets of the ’387 patent. Pet. 68; Notice 1. Because our analysis of
`whether to exercise our discretion to deny institution of the instant Petition
`(i.e., Petitioner’s second-ranked petition) is different than our analysis of this
`issue in the context of Petitioner’s first-ranked petition (in IPR2022-01327),
`we address this issue here fully. We begin with Petitioner’s Notice which,
`pursuant to the Board’s Consolidated Trial Practice Guide (“Trial Practice
`Guide”), provides a ranking of the three petitions in the order in which
`Petitioner wishes the Board to consider the merits and a succinct explanation
`of the differences between the Petitions. See PTAB Consolidated Trial
`
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`Practice Guide, 59–60 (Nov. 2019) (“CTPG”).7 In IPR2022-01327,
`Petitioner challenges claims 1–9, 29, and 30, and ranks the petition as “A.”
`Notice 1. In this proceeding, Petitioner challenges claims 10–18, 31, and 32,
`and ranks the instant Petition as “B.” Id. And, in IPR2022-01329,
`Petitioner challenges claims 19–28, 33, and 34, and ranks the petition as
`“C.” Id.
`As noted above, in each of the three petitions, Petitioner raises only
`one ground and that ground relies on the same combination of references,
`Hardin ’665 and Salmre. Notice 1. Petitioner asserts that claims 1, 10, and
`19 are independent and that the analyses of “these three similar independent
`claims (and similar corresponding dependent claims)” are “substantially
`similar due to the repetitive nature of the challenged claims.” Id. at 3.
`Petitioner specifies that claim 1 recites a mobile device, claim 10 is a
`Beauregard claim,8 and claim 19 is a method claim. Id. Petitioner further
`acknowledges that, “given the similarity between the independent claims,
`the Board’s analysis of one petition will in all likelihood be similar to the
`analysis required by the other two.” Id. at 4.
`Despite the similarities across the petitions, Petitioner contends that
`three petitions “are necessary because there was no practicable way to fit the
`challenges in a single petition containing less than 14,000 words.” Notice 2.
`As support, Petitioner asserts that (1) the claims of the ’387 patent are “very
`long,” comprising 4,332 words; (2) Patent Owner has asserted all thirty-four
`
`
`7 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
`8 A Beauregard claim is a computer-readable medium claim, named after
`the decision by the U.S. Court of Appeals for the Federal Circuit in In re
`Beauregard, 53 F.3d 1583 (Fed. Cir. 1995).
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`IPR2022-01328
`Patent 10,049,387 B2
`
`claims of the ’387 patent in the co-pending district court case; and
`(3) “demonstrating the ’387 patent’s broken priority chain” entails an
`“extensive discussion of the prosecution history” as well as “requires
`analysis not normally needed in petitions for inter partes review.” Id.
`Petitioner further asserts that it has “drafted the challenges as efficiently as
`possible,” and that “each petition relies on the same prior art combination,”
`thereby “easing any burden on the Board.” Id. Petitioner adds that it neither
`serially challenged the same claims based on different references nor had the
`benefit of any preliminary response, given that it filed all three petitions
`concurrently. Id. at 3.
`According to Petitioner, denying institution of any of the petitions
`would be unfair. Notice 4. Petitioner asserts that it “neither drafted the
`lengthy claims of the ’387 patent nor had any say in how many claims would
`be included in the patent.” Id. Petitioner further asserts that it had no “say
`in what claims to assert in district court litigation” and that Patent Owner
`“should bear any burden caused by an unreasonable multiplicity of lengthy
`claims.” Id.
`Patent Owner counters that “at most only one petition should be
`instituted . . . and the rest denied.” Notice Resp. 1. Patent Owner contends
`that our Trial Practice Guide “confirms[] [that] filing three petitions against
`a single patent is prima facie unnecessary and unreasonable.” Id. at 3 (citing
`CTPG 59). Patent Owner also points out that Petitioner fails to acknowledge
`or attempt to rebut the statement in the Trial Practice Guide concerning the
`filing of three or more petitions. Id.
`Patent Owner further contends that Petitioner’s argument that the
`claims in the ’387 patent are very long is without merit. Notice Resp. 4.
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`IPR2022-01328
`Patent 10,049,387 B2
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`According to Patent Owner, “[e]ven if the claims total 4,332 words, that still
`leaves over 9,500 words for analysis (and over 23,500 words in two
`petitions).” Id. Additionally, Patent Owner contends that the fact that the
`petitions are based on the same broken priority chain arguments and the
`same prior art combination “weigh[s] against, not for, instituting multiple
`petitions.” Id. According to Patent Owner, “other than different claims,
`Petitioner[] concede[s] that the petitions are materially the same.” Id. (citing
`Notice 3).
`Pursuant to 35 U.S.C. § 314(a), the Board “is permitted, but never
`compelled, to institute an IPR proceeding.” Harmonic Inc. v. Avid Tech.,
`Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016); see also 37 C.F.R. § 42.4(a)
`(“The Board institutes the trial on behalf of the Director.”). That is,
`institution of an inter partes review is discretionary. In evaluating whether
`to exercise that discretion here, we turn to the Trial Practice Guide, which
`provides guidance on whether institution of more than one concurrently filed
`petition challenging the same patent is appropriate. See CTPG 59.
`The Trial Practice Guide states that “one petition should be sufficient
`to challenge the claims of a patent in most situations.” CTPG 59. “Two or
`more petitions filed against the same patent at or about the same time . . .
`may place a substantial and unnecessary burden on the Board and the patent
`owner and could raise fairness, timing, and efficiency concerns.” Id. (citing
`35 U.S.C. § 316(b)). Although rare circumstances may necessitate two
`petitions, “the Board finds it unlikely that circumstances will arise where
`three or more petitions by a petitioner with respect to a particular patent will
`be appropriate.” Id. We do not agree with Patent Owner, however, that this
`statement in the Trial Practice Guide means that the filing of three petitions
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`IPR2022-01328
`Patent 10,049,387 B2
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`challenging the same patent “is prima facie unreasonable and unnecessary.”
`See Notice Resp. 3. Rather, our determination is based on the specific facts
`of each case, starting with Petitioner’s explanation of why multiple petitions
`may be necessary.
`To help the Board determine whether multiple petitions are necessary,
`the Trial Practice Guide further instructs a petitioner filing multiple petitions
`challenging the same patent to explain “the differences between the
`petitions, why the issues addressed by the differences are material, and why
`the Board should exercise its discretion to institute additional petitions if it
`identifies one petition that satisfies petitioner’s burden under 35 U.S.C.
`§ 314(a).” CTPG 59–60. Additionally, the Trial Practice Guide instructs the
`patent owner to “clearly proffer any necessary stipulations,” where the
`patent owner asserts that “the differences identified by the petitioner are
`directed to an issue that is not material or not in dis