`
`
`Paper 13
`Entered: February 8, 2023
`
`Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`
`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.
`____________
`
`IPR2022-01332
`Patent 9,779,418 B2
`____________
`
`
`
`Before BART A. GERSTENBLITH, MICHELLE N. WORMMEESTER,
`and ARTHUR M. PESLAK, Administrative Patent Judges.
`
`WORMMEESTER, Administrative Patent Judge.
`
`
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`

`

`IPR2022-01332
`Patent 9,779,418 B2
`
`
`INTRODUCTION
`I.
`Samsung Electronics Co., Ltd., Samsung Electronics America, Inc.
`(collectively, “Samsung”), and Google LLC (collectively, “Petitioner”) filed
`a Petition (Paper 4, “Pet.”) requesting inter partes review of claims 19–25 of
`U.S. Patent No. 9,779,418 B2 (Ex. 1001, “the ’418 patent”). Ryan Hardin
`and Andrew Hill (collectively, “Patent Owner”) filed a Preliminary
`Response (Paper 9, “Prelim. Resp.”). With our authorization, Petitioner
`filed a Preliminary Reply (Paper 11, “Prelim. Reply”) to Patent Owner’s
`Preliminary Response, and Patent Owner filed a Preliminary Sur-reply
`(Paper 12, “Prelim. Sur-reply”) to Petitioner’s Preliminary Reply.1
`Petitioner also filed a Notice Ranking Petitions and Explaining
`Material Differences Between Petitions for U.S. Patent No. 9,779,418.
`Paper 5 (“Notice”). Patent Owner filed a Response to Petitioner’s Notice.
`Paper 10 (“Notice Resp.”).
`We have jurisdiction under 35 U.S.C. § 314 and 37 C.F.R. § 42.4(a).
`Under 35 U.S.C. § 314(a), 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.” For the
`reasons that follow, we institute an inter partes review as to all the
`challenged claims of the ’418 patent, namely, claims 19–25, based on the
`sole ground presented in the Petition.
`
`
`
`1 We authorized the parties to file these papers in an e-mail dated
`December 8, 2022.
`
`2
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`IPR2022-01332
`Patent 9,779,418 B2
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`II. BACKGROUND
`A. Related Proceedings
`The parties identify a related federal district court case, Hardin v.
`Samsung Electronics Co., No. 2:21-cv-00290-JRG (E.D. Tex.). Pet. 70;
`Paper 8, 1 (Patent Owner’s Mandatory Notices).
`The parties additionally indicate that Petitioner concurrently filed
`several other, related petitions for inter partes review. Pet. 70–71; Paper 8,
`1. Two related petitions also involve the ’418 patent, one petition
`challenging claims 1–10 (not challenged in this proceeding) in IPR2022-
`01330, and the other petition challenging claims 11–18 (not challenged in
`this proceeding) in IPR2022-01331. Pet. 71; Notice 2; Paper 8, 1. In
`separate decisions, we institute review in those proceedings.
`
`
`B. The ’418 Patent
`As background, the ’418 patent explains that advertisements and other
`content can be “broadcast to any mobile device within a city, or a similar
`area,” or can be delivered over the Internet “in response to a request,
`received from the receiving device.” Ex. 1001, 1:40–47. According to the
`’418 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 1:60–64.
`An exemplary content delivery system is depicted in Figure 1 of the
`’418 patent, reproduced below.
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`IPR2022-01332
`Patent 9,779,418 B2
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`Figure 1 is an “abstract representation of exclusive content delivery to
`particular reserved areas.” Ex. 1001, 2:41–43. System 100, as shown in
`Figure 1, provides “exclusive delivery of advertising or other content to
`registered applications running on mobile devices located within a particular
`proximity to a reserved geographic area.” Id. at 3:9–13. 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 3:13–17.
`For example, content delivery platform 112 receives a request from
`developer platform 108 to register a program or other application for use on
`mobile devices, and “can use the registered application program to provide
`selected content to mobile devices.” Ex. 1001, 3:17–21. According to the
`’418 patent, “a registered application program is provided to mobile devices
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`Patent 9,779,418 B2
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`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 3:22–26. Additionally, “[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.” Id.
`at 3:32–34. The ’418 patent 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 3:34–39.
`Figure 2 of the ’418 patent is reproduced below.
`
`
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`Patent 9,779,418 B2
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`Figure 2 “is a diagram illustrating a target location other than the location of
`the mobile device executing a registered application.” Ex. 1001, 2:44–47.
`The ’418 patent explains the following regarding Figure 2:
`[A] user of registered application 231 is located within the
`perimeter defining 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. . . .
`[O]bject of interest 233 could be a friend . . . employing . . . [a]
`device capable of sending location information 216 . . . to
`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. . . .
`
`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 . . . .
`Id. at 5:43–6:27.
`
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`IPR2022-01332
`Patent 9,779,418 B2
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`
`Figure 4 of the ’418 patent is reproduced below.
`
`
`Figure 4 “is a flowchart illustrating a method of reserving a geographic
`area.” Ex. 1001, 2:51–53. In particular, the ’418 patent states that
`method 400 “allow[s] sponsors to reserve particular geographic areas.” Id.
`at 8:62–65. The ’418 patent explains the following regarding the disclosed
`method of reserving a geographic area:
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`IPR2022-01332
`Patent 9,779,418 B2
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`
`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
`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 8:65–9:46.
`
`
`C. Illustrative Claim
`As noted above, Petitioner challenges claims 19–25 of the ’418 patent.
`Claim 19, reproduced below, is independent and illustrative of the claims
`under challenge.
`19. 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 instructions for:
`implementing, on a mobile device, at least one computer
`readable program instruction, made available for use by
`one or more distinct application programs operating on
`the mobile device, for receiving, from a particular one
`application program of the one or more distinct
`application programs during
`the particular one
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`IPR2022-01332
`Patent 9,779,418 B2
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`
`application program's execution on the mobile device, a
`request to reserve, for the particular one application
`program, at least one designated geographic area of
`interest for having a particular associated identifier
`exclusively provided for use by the particular one
`application program after it is determined, by at least use
`of at least one processor tangibly embodied by the
`mobile device and of location information representing a
`physical geographic location of the mobile device as
`determined by a location-determination component
`tangibly embodied in the mobile device for determining
`the mobile device's physical geographic location, that the
`mobile device has at least entered the at least one
`designated geographic area of interest, wherein the at
`least one computer readable program
`instruction
`comprises at least one input parameter for receiving,
`from the particular one application program, data
`representing a) the particular associated identifier as
`provided content associated with the at least one
`designated geographic area of interest and exclusively
`related to the particular one application program, and b)
`a perimeter definition defining, with at least reference to
`longitude and latitude, the at least one designated
`geographic area of interest, and wherein the one or more
`distinct application programs each comprises a system of
`executable coded instructions as programmed by at least
`one developer for execution on the mobile device;
`receiving, using the at least one computer readable program
`instruction, from a first particular application program
`during its execution on the mobile device, a first request
`for a reservation for a first particular designated
`geographic area of interest for having a first particular
`associated identifier exclusively provided for use by the
`first particular application program after it is determined
`that the mobile device has at least entered the first
`particular designated geographic area of
`interest,
`wherein the first request comprises data representing a)
`the first particular associated identifier, represented by a
`data string, as provided content by the first particular
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`IPR2022-01332
`Patent 9,779,418 B2
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`application program to be associated with the first
`particular designated geographic area of interest and
`exclusively related to the first particular application
`program, and b) a first perimeter definition provided by
`the first particular application program, wherein the first
`perimeter definition comprises at least data representing
`a first latitude and longitude coordinate and a first radius
`value for defining
`the first particular designated
`geographic area of interest;
`determining availability for the first particular designated
`geographic area of interest to be reserved for the first
`particular application program;
`using the first perimeter definition in conjunction with the
`first particular associated identifier to establish the first
`particular designated geographic area of interest in the
`first request as an area reserved for first content related
`to the first particular application program and not an area
`reserved for first content related to other application
`programs, wherein the first content related to the first
`particular application program comprises the first
`particular associated identifier;
`storing, in a memory tangibly embodied by the mobile
`device, in response to receiving the first request, after
`availability for the first particular designated geographic
`area of interest to be reserved for the first particular
`application program has been positively determined, an
`at least first record, for the first particular application
`program, associated with the first particular associated
`identifier and the first particular designated geographic
`area of interest, thereby designating the first particular
`application program as a first one of the one or more
`registered application programs on the mobile device,
`wherein the one or more registered application programs
`on the mobile device each consists of an application
`program designated for having a particular identifier,
`being associated with a particular reserved geographic
`area of interest, to be exclusively provided for use by
`said application program after it is determined, by at least
`
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`IPR2022-01332
`Patent 9,779,418 B2
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`use of the at least one processor and of the location
`information, that the mobile device has at least entered
`said particular reserved geographic area of interest;
`receiving, using the at least one computer readable program
`instruction, from a second particular application program
`during its execution on the mobile device, a second
`request for a reservation for a second particular
`designated geographic area of interest for having a
`second particular associated
`identifier exclusively
`provided for use by the second particular application
`program after it is determined that the mobile device has
`at
`least entered the second particular designated
`geographic area of interest, wherein the second request
`comprises data representing a) the second particular
`associated identifier, represented by a data string, as
`provided content by the second particular application
`program to be associated with the second particular
`designated geographic area of interest and exclusively
`related to the second particular application program, and
`b) a second perimeter definition provided by the second
`particular application program, wherein the second
`perimeter definition comprises at least data representing
`a second latitude and longitude coordinate and a second
`radius value
`for defining
`the second particular
`designated geographic area of interest;
`determining availability for the second particular designated
`geographic area of interest to be reserved for the second
`particular application program;
`using the second perimeter definition in conjunction with
`the second particular associated identifier to establish the
`second particular designated geographic area of interest
`in the second request as an area reserved for second
`content related to the second particular application
`program and not an area reserved for second content
`related to other application programs, wherein the
`second content related
`to
`the second particular
`application program comprises the second particular
`associated identifier;
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`IPR2022-01332
`Patent 9,779,418 B2
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`storing, in the memory, in response to receiving the second
`request, after availability for the second particular
`designated geographic area of interest to be reserved for
`the second particular application program has been
`positively determined, an at least second record, for the
`second particular application program, associated with
`the second particular associated identifier and the second
`particular designated geographic area of interest, thereby
`designating the second particular application program as
`a second one of the one or more registered application
`programs on the mobile device;
`selecting the first particular associated identifier associated
`with the at least first record stored in the memory to be
`provided for use by the first one of the one or more
`registered application programs on the mobile device
`after it is determined, by at least use of the at least one
`processor, of the location information, and of the first
`particular designated geographic area of
`interest
`associated with the at least first record stored in the
`memory for the first one of the one or more registered
`application programs on the mobile device, that the
`mobile device has at least entered the first particular
`designated geographic area of interest associated with
`the at least first record stored in the memory and has
`remained therein for at least a first designated length of
`time;
`identifier
`the second particular associated
`selecting
`associated with the at least second record stored in the
`memory to be provided for use by the second one of the
`one or more registered application programs on the
`mobile device after it is determined, by at least use of the
`at least one processor, of the location information, and of
`the second particular designated geographic area of
`interest associated with the at least second record stored
`in the memory for the second one of the one or more
`registered application programs on the mobile device,
`that the mobile device has at least entered the second
`particular designated geographic area of
`interest
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`IPR2022-01332
`Patent 9,779,418 B2
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`
`associated with the at least second record stored in the
`memory and has remained therein for at least a second
`designated length of time;
`providing, to the first one of the one or more registered
`application programs on the mobile device, at least the
`first particular associated identifier from its selecting in
`response to receiving, from the first one of the one or
`more registered application programs on the mobile
`device, a request to receive content; and
`providing, to the second one of the one or more registered
`application programs on the mobile device, at least the
`second particular associated identifier from its selecting
`in response to receiving, from the second one of the one
`or more registered application programs on the mobile
`device, a request to receive content.
`Ex. 1001, 23:38–26:15.
`
`
`D. Asserted Ground of Unpatentability
`Petitioner challenges claims 19–25 of the ’418 patent on the following
`sole ground of obviousness. Pet. 3, 21–67.
`
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`IPR2022-01332
`Patent 9,779,418 B2
`
`
`Reference(s)/Basis
`35 U.S.C. §2
`Claims Challenged
`Hardin ’665,3 Salmre4
`103
`19–25
`In support of its arguments, Petitioner relies on a Declaration of David H.
`Williams (Ex. 1003).
`Patent Owner submits a Declaration of Scott Andrew Denning
`(Ex. 2001) to support its Preliminary Response.
`
`
`III. DISCUSSION
`A. Level of Ordinary Skill in the Art
`We consider the asserted ground of unpatentability in view of the
`understanding of a person of ordinary skill in the art. Graham v. John Deere
`Co., 383 U.S. 1, 17–18 (1966). Relying on the declaration testimony of
`Mr. Williams, Petitioner proposes that a person of ordinary skill in the art at
`the time of the invention “would have had at least a bachelor’s degree in
`computer science or a comparable field of study and at least five years of
`
`
`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 application for the ’418 patent was filed on January 29, 2016 (Ex. 1001,
`code (22)), and claims priority to an application filed on May 1, 2009 (id. at
`code (63)). Petitioner contests the ’418 patent’s priority claim, asserting that
`the earliest priority date of the challenged claims is January 29, 2015.
`Pet. 22. 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 Hardin et al., U.S. Publ’n No. 2010/0279665 A1, Nov. 4, 2010 (Ex. 1005).
`4 Salmre et al., U.S. Publ’n No. 2006/0116817 A1, June 1, 2006 (Ex. 1006).
`
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`professional experience in mobile or location-based computing or other
`relevant academic experience.” Pet. 20 (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 Petitioner’s
`proposed level of ordinary skill in the art in his declaration supporting Patent
`Owner’s Preliminary Response. Ex. 2001 ¶ 26.
`On this record, at this stage of the proceeding, we find that
`Petitioner’s uncontested proposed level of ordinary skill in the art is
`consistent with the level of ordinary skill in the art reflected by the
`’418 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 proposed level of ordinary skill in the art in our consideration of
`the issues presently before us.
`
`
`B. Claim Construction
`In an inter partes review proceeding, we construe a claim of a patent
`“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).” See 37 C.F.R.
`§ 42.100(b) (2019). That standard involves construing claims in accordance
`with the ordinary and customary meaning of such claims as would have been
`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).
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`Patent 9,779,418 B2
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`Petitioner asserts that it “believe[s] that no express claim
`constructions are necessary, and the claims should be given their plain and
`ordinary meaning in this proceeding.” Pet. 21. Similarly, Patent Owner
`asserts that it “do[es] not believe the Board needs to construe any terms.”
`Prelim. Resp. 33. For purposes of this Decision, we conclude that no claim
`term requires express interpretation at this time to resolve any controversy in
`this proceeding. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d
`795, 803 (Fed. Cir. 1999).
`
`
`C. Obviousness over Hardin ’665 and Salmre
`As noted above, Petitioner filed three petitions challenging claims of
`the ’418 patent. Recently, we instituted inter partes review in IPR2022-
`01331, one of the cases in which Petitioner challenges claims of the
`’418 patent. See Samsung Elecs. Co. v. Hardin, IPR2022-01331, Paper 14
`(PTAB Feb. 7, 2023) (institution decision). The parties acknowledge that
`the issues raised in this proceeding are substantially identical to those raised
`in IPR2022-01331. Notice 4 (“Petitioner[] 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 in IPR2022-01331 raise substantially the same issues,
`arguments, and evidence. In particular, we note at least the following
`substantial similarities between the issues in this proceeding and those raised
`in IPR2022-01331:
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`(1) Petitioner asserts that substantially the same two claim limitations
`lack written description support in U.S. Application No. 12/434,094 (“the
`’094 application”) and U.S. Patent Application No. 13/856,392 (“the ’392
`application”) (compare Pet. 22–26, with IPR2022-01331, Paper 4 at 22–26
`(petition));
`(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, 26–27,
`with IPR2022-01331, Paper 4 at 1, 2, 26–27);
`(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. 27–67, with IPR2022-01331,
`Paper 4 at 27–69);
`(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. 62–67, with IPR2022-01331, Paper 4
`at 64–69);
`(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 ’418 patent are entitled to the priority date of
`the ’094 application (see generally Prelim. Resp.; IPR2022-01331, Paper 10
`(preliminary response));
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`(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
`IPR2022-01331, Paper 10 at 61–66);
`(7) Patent Owner’s Response to Petitioner’s Notice Ranking Petitions
`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 the claims of the
`’418 patent in a single petition (compare Notice Resp., with IPR2022-01331,
`Paper 11 (Patent Owner’s response to Petitioner’s notice ranking petitions));
`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. 33–44, with IPR2022-01331,
`Paper 10 at 33–44).
`With the exception of issue (7), which we address further below,5 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 14) in IPR2022-01331. Therefore, we
`adopt and incorporate our findings and determinations from that decision as
`though they were fully set forth herein.
`Accordingly, for the reasons set forth in IPR2022-01331, Paper 14,
`we: (1) determine, based on the present record, that challenged claims 19–
`
`
`5 We discuss issue (7) further below because our consideration of that issue
`here is different than our consideration of that issue in IPR2022-01331.
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`25 of the ’418 patent are not entitled to the priority date of the
`’094 application, and, therefore, Hardin ’665 is available as prior art to the
`’418 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 19–25 of the ’418 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).
`
`
`D. Discretion Under 35 U.S.C. § 314(a) – Multiple Petitions
`As noted above, Petitioner filed three petitions on the same day in
`IPR2022-01330, IPR2022-01331, and IPR2022-01332, challenging different
`claim sets of the ’418 patent. Pet. 70–71; Notice 2. 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 IPR2022-01331),
`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 an explanation of the
`differences between the petitions. See PTAB Consolidated Trial Practice
`Guide, 59–60 (Nov. 2019) (“CTPG”).6 In IPR2022-01331, Petitioner
`
`
`6 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
`
`19
`
`

`

`IPR2022-01332
`Patent 9,779,418 B2
`
`challenges claims 11–18, and ranks the petition as “A.” Notice 2. In
`IPR2022-01332, which is this proceeding, Petitioner challenges claims 19–
`25, and ranks the instant Petition as “B.” Id. In IPR2022-01330, Petitioner
`challenges claims 1–10, 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 2. Petitioner asserts that claims 1, 11, 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 4.
`Petitioner specifies that claim 1 is directed to a method, claim 11 is directed
`to a mobile device, and claim 19 is a Beauregard claim.7 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.
`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 ’418 patent are “very
`long,” comprising 7,637 words; (2) Patent Owner has asserted twenty-one of
`the twenty-five claims of the ’418 patent in the co-pending district court
`case; and (3) “[d]emonstrating the ’418 patent’s broken priority chain”
`entails an “extensive discussion of the prosecution history” as well as
`
`
`7 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).
`
`20
`
`

`

`IPR2022-01332
`Patent 9,779,418 B2
`
`“requires analysis not normally needed in petitions for inter partes review.”
`Id. at 2–3. 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. at 3.
`Petitioner adds t