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.
`
`IPR2022-01335
`Patent 10,984,447 B2
`
`
`
`
`
`
`
`
`
`Before BART A. GERSTENBLITH, MICHELLE N. WORMMEESTER,
`and ARTHUR M. PESLAK, Administrative Patent Judges.
`
`PESLAK, Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
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`IPR2022-01335
`Patent 10,984,447 B2
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`
`INTRODUCTION
`I.
`Samsung Electronics Co., Ltd., Samsung Electronics America, Inc.,
`and Google LLC, (collectively “Petitioner”) filed a Petition pursuant
`to 35 U.S.C. §§ 311–319 requesting an inter partes review of claims 19, 20,
`and 37–52 (“the challenged claims”) of U.S. Patent No. 10,984,447 B2
`(“the ’447 patent,” Ex. 1001). Paper 4 (“Pet.”). Petitioner filed a
`Declaration of Mr. David H. Williams in support of the Petition. Ex. 1003.
`Patent Owner filed a Preliminary Response. Paper 9 (“Prelim. Resp.”).
`Patent Owner filed a Declaration of Mr. Scott Andrew Denning in support of
`the Preliminary Response. Ex. 2001.
`Petitioner filed a Notice Ranking Petitions and Explaining Material
`Differences Between Petitions for U.S. Patent No. 10,049,387.1 Paper 5
`(“Notice” or “Not.”). Patent Owner filed a Response to Petitioner’s Notice.
`Paper 10 (“Notice Response” or “Not. Resp.”).
`Petitioner filed an authorized Reply to the Preliminary Response.
`Paper 11 (“Prelim. Reply”).2 Patent Owner filed a Preliminary Sur-reply.
`Paper 12 (“Prelim. Sur-reply”).
` We have authority, acting on the designation of the Director, to
`determine whether to institute an inter partes review under 35 U.S.C.
`§ 314(a). See also 37 C.F.R § 42.4(a) (2018) (“The Board institutes the trial
`
`
`1 Petitioner filed, on the same day as the Petition, two other petitions
`challenging claims of the ’447 patent. See IPR2022-01333, IPR2022-01334.
`2 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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`IPR2022-01335
`Patent 10,984,447 B2
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`on behalf of the Director.”). Under 35 U.S.C. § 314(a), an inter partes
`review may not be instituted unless the information presented in the Petition
`shows “there is a reasonable likelihood that the petitioner would prevail with
`respect to at least 1 of the claims challenged in the petition.” Considering
`the Petition, the arguments presented in the Preliminary Response, as well as
`all supporting evidence, we conclude that the information presented in the
`Petition establishes that there is a reasonable likelihood that Petitioner would
`prevail in its challenge of at least one claim of the ’447 patent as
`unpatentable. Pursuant to 35 U.S.C. § 314, we hereby institute an inter
`partes review of all Challenged Claims of the ’447 patent on the ground
`stated in the Petition.
`Our factual findings, claim construction, and legal conclusions at this
`stage of the proceeding are based on the evidentiary record developed thus
`far. This decision to institute trial is not a final decision as to the
`unpatentability of the claims for which inter partes review is instituted. Our
`final decision will be based on the full record developed during trial.
`A. Related Matters
`The parties identify the ’447 patent as a subject of Hardin et al. v.
`Samsung Electronics Co., Ltd. and Samsung Electronics America, Inc., C.A.
`No. 2:21-CV-00290-JRG (E.D. Tex.). Pet. 73–74; Paper 8, 1.
`The parties state that Petitioner has also filed two other petitions
`against the ’447 patent, IPR2022-01333 and IPR2022-01334. Pet. 74;
`Paper 8, 1.
`The parties also state that Petitioner has filed petitions for the
`following related patents: U.S. Patent No. 9,779,418 (IPR2022-01330,
`
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`Patent 10,984,447 B2
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`IPR2022-01331, IPR2022-01332) and U.S. Patent No. 10,049,387
`(IPR2022-01327, IPR2022-01328, IPR2022-01329). Pet. 74; Paper 8, 1
`B. Real Parties in Interest
`Petitioner and Patent Owner each identifies itself and no others as a
`real party in interest. Pet. 73; Paper 8, 1.
`C. Prior Art and Asserted Ground
`Petitioner asserts that claims 19, 20 and 37–52 would have been
`unpatentable on the following ground (Pet. 3):
`Claim(s) Challenged
`35 U.S.C. §3
`19, 20, 37–52
`103
`D. The ’447 Patent
`The ’447 patent is titled “Exclusive Delivery of Content within
`Geographic Areas.” Ex. 1001, code (54). The ’447 patent issued on
`April 20, 2021, from Application No. 16/019,285, which was filed on
`
`Reference(s)/Basis
`Hardin,4 Salmre5
`
`
`3 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 ’447 patent application was filed on June 26, 2018 (Ex. 1001,
`code (22)), and claims priority to an application filed May 1, 2009 (id. at
`code (63)). Petitioner contests the ’447 patent’s priority claim, asserting that
`the earliest priority date of the Challenged Claims is January 29, 2015.
`Pet. 24. 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”).
`4 U.S. Patent Application Publication No. 2010/0279665 A1 (published Nov.
`4, 2010) (Ex. 1005, “Hardin”).
`5 U.S. Patent Application Publication No. 2006/0116817 A1, published June
`1, 2006 (Ex. 1006, “Salmre”).
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`4
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`Patent 10,984,447 B2
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`June 26, 2018 and claims priority through a series of continuation
`applications to Application No. 12/434,094, filed May 1, 2009, “the ’094
`application.” Id. at code (63).6 The ’094 application was published as U.S.
`Publication No. 2010/0279665 (Ex. 1005, code (10)) and issued as US
`Patent 8,433,296. Id.
`As background, the ’447 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.” Ex. 1001, 1:50–57. According to the ’447
`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 2:3–7. An exemplary content delivery
`system is depicted in Figure 1, reproduced below.
`
`
`6 The ’094 application was published as U.S. Publication US 2010/0279665
`(Ex. 1005, (code 10)). Ex. 1001, code (63). Petitioner refers to the ’094
`application as “Hardin ’665.” Pet. 3.
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`Patent 10,984,447 B2
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`Figure 1 is an abstract representation of exclusive content delivery to
`particular reserved areas. Ex. 1001, 2:52–53. System 100 depicted 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 3:20–24. 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 3:24–28. The
`’447 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: 28–32. According to
`the ’447 patent, “a registered application program is provided to mobile
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`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 3:33–37.
`The ’447 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.” Id. at 3:43–45.
`The ’447 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 3:46–50.
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`
`Figure 2 of the ’447 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, 2:55–58.
`The ’447 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 207.
`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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`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 5:54–6:35.
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`Patent 10,984,447 B2
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`
`Figure 4 of the ’447 patent is reproduced below.
`
`
`Figure 4 “is a flowchart illustrating a method of reserving a geographic
`area.” Ex. 1001, 2:62–63. In particular, the ’447 patent states that
`method 400 “allow[s] sponsors to reserve particular geographic areas.” Id.
`at 9:4–6. The ’447 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
`request for sponsor registration . . . . As illustrated by
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`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 9:7–55.
`
`1. Illustrative Claim
`Claim 19 is the sole independent claim, is illustrative of the claimed
`subject matter, and is reproduced below:
`[19.pre]7 A method comprising:
`[19.a] sending, via a particular application program
`executing in a mobile device, to at least one program of computer
`executable instructions operating in the mobile device:
`[19.b] a request for having at least a particular identifier
`being associated with a particular designated geographic area of
`interest provided to the particular application program
`[19.c] 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
`
`
`7 We use Petitioner’s limitation labels and paragraphing for ease of
`reference.
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`mobile device, that the mobile device has at least entered the
`particular designated geographic area of interest;
`[19.d] a particular data string comprising the particular
`identifier to be associated with the particular designated
`geographic area of interest; and particular geographic data to be
`used for defining the particular designated geographic area of
`interest and to be used with the particular identifier to establish,
`in a memory tangibly embodied by the mobile device, the
`particular designated geographic area of interest as an area
`specifically reserved for delivery of the particular identifier
`related to the particular application program, wherein:
`[19.e] the particular geographic data from the particular
`application program comprises at least one particular geometric
`construct that establishes at least one particular perimeter for
`defining the particular designated geographic area of interest;
`and
`
`[19.f] the at least one program of computer executable
`instructions comprises at least one instruction for: in response to
`receiving, in the mobile device, from an application program
`during its execution in the mobile device, a request for having at
`least a first identifier being associated with a first designated
`geographic area of interest provided to the application program
`[19.g] 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 first designated geographic
`area of interest and has remained therein for at least a
`predetermined length of time,
`[19.h] after receiving, from the application program, both
`a first data string comprising the first identifier to be associated
`with the first designated geographic area of interest and first
`geographic data to be used for defining the first designated
`geographic area of interest and to be used with the first identifier
`to establish, in the memory tangibly embodied by the mobile
`device, the first designated geographic area of interest as a first
`area specifically reserved for delivery of the first identifier
`related to the application program,
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`[19.i] after establishing, in the memory, the first
`designated geographic area of interest as the first area
`specifically reserved for delivery of the first identifier related to
`the application program,
`[19.j] after storing, in the memory, a first record
`comprising the first identifier, and
`[19.k] after determining, by at least use of the at least one
`processor and of the location information, that the mobile device
`has at least entered the first area specifically reserved for delivery
`of the first identifier related to the application program and has
`remained therein for at least the predetermined length of time,
`[19.l] delivering, from the first record stored in the
`memory and to the application program, at least first datum
`comprising at least the first identifier.
`Ex. 1001, 19:39–20:43.
`E. Level of Ordinary Skill in the Art
`Petitioner contends that a person of ordinary skill in the art “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. 22
`(citing Ex. 1003 ¶¶ 38–41). Patent Owner, at this stage of the proceeding,
`does not dispute Petitioner’s definition of the person of ordinary skill in the
`art. 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.
`For the purposes of this Decision, we apply Petitioner’s level of skill
`in the art because it appears consistent with the problems addressed in the
`’447 patent and the prior art.
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`
`F. Claim Construction
`We apply the same claim construction standard used by Article III
`federal courts and the International Trade Commission, both of which follow
`Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc), and its
`progeny. 37 C.F.R. § 42.100(b) (2019). The claim construction standard
`includes construing claims 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.” Id.
`Petitioner contends that “no express claim constructions are
`necessary, and the claims should be given their plain and ordinary meaning
`in this proceeding.’” Pet. 22–23.
`Patent Owner does not contest Petitioner’s proposed position. Prelim.
`Resp. 33.
`We determine that an express construction of any claim term is not
`necessary for purposes of this Decision. See Wellman, Inc. v. Eastman
`Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (“[C]laim terms need only
`be construed ‘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)).
`
`II. ANALYSIS
`As noted above, Petitioner filed three petitions challenging claims of
`the ’447 patent. Recently, we instituted inter partes review in IPR2022-
`01333, one of the cases in which Petitioner challenges claims of the
`’447 patent. See Samsung Elecs. Co. v. Hardin, IPR2022-01333, Paper 13
`(PTAB Feb. 7, 2023) (institution decision). The parties acknowledge that
`the issues raised in this proceeding are substantially identical to those raised
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`Patent 10,984,447 B2
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`in IPR2022-01333. Not. 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 IPR2022-01333 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 IPR2022-01333:
`(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. 23–29,
`with IPR2022-01333, Paper 4 (petition) at 23–28);
`(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, 28–29,
`with IPR2022-01333, Paper 4 at 1, 2, 28–29);
`(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. 29–64, with IPR2022-01333,
`Paper 4 at 29–66);
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`(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. 65–71, with IPR2022-01333, Paper 4
`at 66–71);
`(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 are entitled to the priority date of the ’094 application
`(see generally Prelim. Resp.; IPR2022-01333, 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
`IPR2022-01333, 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 and the petition asserted in IPR2022-
`01334 (i.e., Petitioner’s second- and third-ranked petitions challenging
`claims of the ’447 patent) pursuant to 35 U.S.C. § 314(a) because Petitioner
`should have challenged all of the claims of the ’447 patent in a single
`petition (compare Notice Resp., with IPR2022-01333, 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
`
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`35 U.S.C. § 325(d) (compare Prelim. Resp. 34–44, with IPR2022-01333,
`Paper 9 at 34–44).
`With the exception of issue (7), which we address further below,8 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 in IPR2022-01333 (Paper 13). 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 IPR2022-01333, Paper 13,
`we: (1) determine, based on the present record, that the Challenged Claims
`of the ’447 patent are not entitled to the priority date of the ’094 application,
`and, therefore, Hardin ’665 is available as prior art to the ’447 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 19,20 and 37–52 of the ’447 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).
`III. DISCRETION UNDER 35 U.S.C. § 314(A) –
`MULTIPLE PETITIONS
`As noted above, Petitioner filed three petitions on the same day in
`IPR2022-01333, IPR2022-01334, and IPR2022-01335, challenging different
`
`
`8 We discuss issue (7) further below because our consideration of that issue
`here is different than our consideration of that issue in IPR2022-01333.
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`claim sets of the ’447 patent. Pet. 70–71; Not. 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 IPR2022-01333),
`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”), which 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 Practice Guide, 59–60 (Nov. 2019) (“CTPG”).9 In
`IPR2022-01333, Petitioner challenges claims 1–17 and ranks the petition as
`“A.” Not. 1. In this proceeding, Petitioner challenges claims 18 and 21–36,
`and ranks the instant Petition as “B.” Id. And, in IPR2022-01335,
`Petitioner challenges claims 19–20 and 37–52 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. Not. 1. Petitioner asserts that claims 1, 18, 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 18 is a
`Beauregard claim,10 and claim 19 is a method claim. Id. Petitioner further
`
`
`9 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
`10 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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`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.” Not. 2.
`As support, Petitioner asserts that (1) the claims of the ’447 patent are “very
`long,” comprising 8,263 words; (2) Patent Owner has asserted forty-nine
`claims of the ’447 patent in the co-pending district court case; and
`(3) “demonstrating the ’447 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. at 3. 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.
`According to Petitioner, denying institution of any of the petitions
`would be unfair. Not. 4. Petitioner asserts that it “neither drafted the
`lengthy claims of the ’447 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.
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`Patent 10,984,447 B2
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`Patent Owner counters that “at most only one petition should be
`instituted . . . and the rest denied.” Not. 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 ’447 patent are very long is without merit. Not. Resp. 4.
`According to Patent Owner, “[e]ven if the claims total 8,236 words, that still
`leaves nearly 5,800 words for analysis (and nearly 19,800 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
`Not. 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.
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`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
`challenging the same patent “is prima facie unreasonable and unnecessary.”
`See Not. 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 dispute.” Id. at 61. The
`patent owner may, for example, “seek to avoid additional petitions by
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`Patent 10,984,447 B2
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`proffering a stipulation that certain claim limitations are not disputed or that
`certain references qualify as prior art.” Id.
`In light of the particular facts before us, we decline to exercise our
`discretion to deny the Petition pursuant to 35 U.S.C. § 314(a). In particular,
`we recognize that the claims a