IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`___________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`___________________
`
`
`AKAMAI TECHNOLOGIES, INC.,
`Petitioner
`v.
`EQUIL IP HOLDINGS LLC,
`Patent Owner
`
`___________________
`
`Case IPR2023-00330
`U.S. Patent No. 8,495,242
`___________________
`
`PATENT OWNER PRELIMINARY RESPONSE
`UNDER 37 C.F.R. § 42.107(a)
`
`
`
`
`
`
`
`
`
`
`
`
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`

`

`Case IPR2023-00330
`U.S. Patent No. 8,495,242
`TABLE OF CONTENTS
`
`III.
`
`B.
`
`B.
`
`I.
`II.
`
`INTRODUCTION ....................................................................................... 1
`THE ’242 PATENT ..................................................................................... 3
`A.
`Background........................................................................................ 3
`B.
`Overview ........................................................................................... 5
`C.
`Person of Ordinary Skill in the Art (POSITA) ................................... 8
`D.
`Claim Construction ............................................................................ 8
`SAMANIEGO, THE PRIMARY REFERENCE IN THREE OF FOUR
`GROUNDS, IS NOT PRIOR ART TO CHALLENGED CLAIM 9............. 8
`A.
`Patent Owner filed a petition to correct inventorship of the ’009
`patent, and as corrected the ’242 patent “share[s] at least one
`common inventor” with Samaniego’s application. ............................10
`Claim 9 of the ’242 patent is supported by the ’904 application
`and all intervening applications. ........................................................13
`The other requirements of § 120 are also met. ...................................17
`C.
`Conclusion: Samaniego is not prior art. ............................................17
`D.
`IV. THE BOARD SHOULD EXERCISE ITS DISCRETION TO DENY
`INSTITUTION. ......................................................................................... 18
`A. Applying Chevron and Deeper favors denying institution
`because three of the four Grounds rely on Samaniego, which is
`not prior art. ......................................................................................19
`Applying Advanced Bionics favors denying institution of Ground
`1 because the Examiner considered the teachings of the asserted
`references during prosecution. ..........................................................21
`1.
`Part 1: Petitioner advances the same or substantially the
`same art that was previously presented to the Office. ............. 24
`Part 2: Petitioner fails to identify material error in the
`Office’s previous evaluation of the art and arguments............ 27
`PETITIONER FAILS TO DEMONSTRATE A REASONABLE
`LIKELIHOOD CLAIM 9 WOULD HAVE BEEN OBVIOUS OVER
`TSO AND HUANG (GROUND 1). ........................................................... 29
`A. Overview of Tso ...............................................................................31
`
`2.
`
`V.
`
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`Case IPR2023-00330
`U.S. Patent No. 8,495,242
`B.
`Petitioner fails to demonstrate that Tso discloses Element [9.b]. .......32
`Petitioner fails to demonstrate that Tso discloses Element [9.c]. .......36
`C.
`VI. CONCLUSION ......................................................................................... 39
`
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`Case IPR2023-00330
`U.S. Patent No. 8,495,242
`PATENT OWNER’S EXHIBIT LIST
`
`Exhibit No.
`2001
`
`Description
`Declaration of Dr. Mark T. Jones in Support of Patent Owner’s
`Preliminary Response
`
`2002
`
`2003
`
`2004
`
`2005
`
`2006
`
`2007
`
`2008
`
`2009
`
`2010
`
`Curriculum Vitae of Dr. Mark T. Jones
`
`Petition Under 37 C.F.R. § 1.324(a) to Correct Inventorship in a
`Patent
`
`Intentionally Left Blank
`
`U.S. Patent No. 8,656,046 to Barger et al.
`
`U.S. Patent No. 6,964,009 to Samaniego et al.
`
`WO 98/43177 (International Publication of PCT/US98/05304) to
`Tso et al.
`
`Redline comparison of specifications of PCT/US98/05304 (Tso
`PCT) and U.S. Patent No. 6,421,733 (Tso)
`
`U.S. Patent No. 5,902,846 to Feret et al.
`
`First Amended Complaint for Patent Infringement, 22-677-RGA,
`Equil IP Holdings LLC v. Akamai Technologies, Inc.
`
`2011
`
`U.S. Patent No. 6,483,851 to Neogi
`
`
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`Case IPR2023-00330
`U.S. Patent No. 8,495,242
`
`I.
`
`INTRODUCTION
`The Board should deny institution of inter partes review of claim 9 of U.S.
`
`Patent No. 8,495,242 (“the ’242 patent”) because (1) Petitioner’s primary reference
`
`in three of the four asserted grounds is not prior art and (2) combined discretionary
`
`considerations under Sections 314(a) and 325(d) strongly favor denying institution.
`
`Instituting review when three of Petitioner’s four asserted grounds are facially
`
`deficient is a waste of the Board’s and the parties’ resources.
`
`Petitioner’s primary reference in three of its four grounds, Samaniego, is not
`
`prior art. Samaniego is the pre-issuance publication of an earlier application in the
`
`’242 patent’s priority chain. Petitioner’s argument that the ’242 patent is not
`
`entitled to the earlier priority date is premised on a lack of overlapping inventors.
`
`Patent Owner, however, has petitioned for correction of inventorship of the priority
`
`application, which eliminates Petitioner’s argument. Further, Patent Owner
`
`demonstrates herein that the requirements of 35 U.S.C. § 120, including that the
`
`priority applications provide the required § 112 support for the claim, are met.
`
`Under Section 314(a), the Board should apply its informative
`
`Chevron/Deeper decisions and deny institution because three of Petitioner’s four
`
`grounds are facially deficient, and Board precedent disfavors instituting review
`
`when the majority of the challenges fail to satisfy the threshold for institution.
`
`Section 325(d) and the precedential Advanced Bionics decision compound the case
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`Case IPR2023-00330
`U.S. Patent No. 8,495,242
`for discretionary denial because the Office previously considered the primary
`
`reference, Tso, asserted in the only remaining ground. The Examiner also
`
`considered art with substantially the same teachings as the relevant teachings of
`
`Huang. The PCT Publication of Tso, which has the identical specification as Tso,
`
`was considered by the Examiner during prosecution. Petitioner does not address
`
`the PCT Publication in the Petition at all, let alone show material error in the
`
`Office’s prior consideration thereof, as required by Advance Bionics. Thus, the
`
`Board’s discretionary considerations strongly favor denial, and the Board should
`
`deny institution.
`
`On the merits, the Petition fails to meet the reasonable likelihood threshold
`
`required for institution. First, Petitioner fails to demonstrate that Tso’s transcode
`
`service providers 24 satisfy the claimed “transcoding parameters,” as recited in
`
`Element [9.b]. Second, Petitioner fails to demonstrate that a “same hypertext
`
`object” disclosed by Tso satisfies the claimed “same . . . transcoding parameters”
`
`recited in Element [9.c]. The Petition’s deficiencies on these claim elements are
`
`not saved by Dr. Madisetti’s testimony, whose opinions for Elements [9.b] and
`
`[9.c] are largely cut-and-paste copies of Petitioner’s arguments, and thus are not
`
`entitled to weight.
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`Case IPR2023-00330
`U.S. Patent No. 8,495,242
`
`II. THE ’242 PATENT
`A. Background
`The technology at issue in the ’242 patent traces its roots to the early 1990s
`
`when Sean Barger—an inventor on the ’242 patent—founded Equilibrium. Equil
`
`IP is the successor-in-interest to Automated Media Processing Solutions, Inc. d/b/a
`
`Equilibrium, an industry pioneer and leader in developing patented automated
`
`media processing solutions to help its customers manage, modify, and efficiently
`
`deploy media-rich content such as images, video, and sound optimized for delivery
`
`over the Internet and customized for use on Internet-connected end-user devices
`
`such as desktop and laptop computers and mobile phones.
`
`With the growth of the web in the late 1990s, Equilibrium set out to develop
`
`a new kind of Internet-based service that web developers could use to simplify the
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`process of optimizing and maintaining rich media content automatically on
`
`websites. Equilibrium envisioned a system that would enable next-generation e-
`
`commerce and other applications. The ’242 patent is a result of that vision.
`
`The technology disclosed and claimed in the ’242 patent was released by
`
`Equilibrium in 2000 as the “MediaRich Server.” Since that time, Equilibrium has
`
`continuously offered MediaRich Server services in the business-to-business
`
`market. MediaRich solves technical problems associated with, for example,
`
`delivering rich media content over the Internet that arise from the fact that each
`
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`Case IPR2023-00330
`U.S. Patent No. 8,495,242
`type of user device has different parameters that can be used to optimize media for
`
`viewing.
`
`Equilibrium has partnered with Internet companies to enhance their services
`
`with Equilibrium technology—among them Akamai. In fact, Akamai stated on its
`
`website that Equilibrium was a “recognized leader in automated imaging
`
`solutions” and that “Equilibrium’s MediaRich is server-based software that
`
`automates image production and enables dynamic delivery of images anywhere.
`
`MediaRich brings true state-of-the-art automation tools to the Enterprise, allowing
`
`companies to create more engaging customer experiences while reducing
`
`production time and costs.” EX2010, First Amended Complaint, 11-12 (emphasis
`
`added) (citing December 9, 2004 Internet Archive captures, shown below).
`
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`Case IPR2023-00330
`U.S. Patent No. 8,495,242
`
`
`
`Over the years, Akamai resisted Equilibrium’s offers to establish a more
`
`extensive partnership or more complete integration of Equilibrium’s technology
`
`into Akamai’s edge network. Instead, Akamai released an image management
`
`service that it called “Image Manager” (today called “Image and Video Manager”
`
`or “IVM”) at issue in the related district court action. See generally EX2010.
`
`B. Overview
`The ’242 patent describes an automatic graphics delivery method that
`
`“automat[es] the production of media through content generation procedures
`
`controlled by proprietary tags placed within URLs embedded within Web
`
`documents.” EX1001, 7:6-11; EX2001, Jones Declaration, ¶¶17-19. The method
`
`“automatically processes the URL encoded tags and automatically produces
`
`derivative media for the web site from the original media.” EX1001, 7:13-16.
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`Case IPR2023-00330
`U.S. Patent No. 8,495,242
`By way of example, Figure 22, reproduced below, is “a flowchart of the
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`content generation procedure according to a preferred embodiment” of the ’242
`
`patent. Id., 19:54-55. A URL with proprietary tags 2200 is parsed at step 2210 to
`
`“determine the content generation procedure to execute, any dynamic
`
`modifications to the media, user profile characteristics, and proxy-cache control.”
`
`Id., 19:56-59. At step 2220, a unique final lookup key is generated for the media.
`
`Id., 19:59-61. The media cache is checked at step 2230. Id. If the indicated media
`
`exists, the media is delivered to the browser at step 2295. Id., 19:61-63.
`
`
`
`EX1001, FIG. 22.
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`Case IPR2023-00330
`U.S. Patent No. 8,495,242
`If the media does not exist, dynamic media system tags are separated from
`
`content generation control tags at step 2240. Id., 19:63-65. A unique intermediate
`
`image lookup key is generated at step 2250. Id. The cache is checked for this
`
`intermediate media at step 2251.1 Id., 19:66-67. If the intermediate media is found,
`
`it is retrieved at step 2260 and used directly for dynamic processing, if required.
`
`Id., 19:67-20:1, FIG. 22. If the intermediate media is not found, content is
`
`generated at step 22622 and cached at step 2263. Id., 20:1-3. The intermediate
`
`media is evaluated for dynamic processing at step 2270. Id. If dynamic processing
`
`is required, the dynamic content generator operates on the media at step 2271. Id.,
`
`20:3-6. The image is then customized by the user profiling system at step 2280 for
`
`specified browser or client attributes. Id., 20:7-9. Any cache-control directives
`
`specified are attached to the response at step 2290. Id., 20:9-11. The media is
`
`delivered to the browser at step 2295. Id.
`
`
`1 The specification includes a typographical error. As seen in Figure 22, the
`
`cache checking step is 2251.
`
`2 There is a typographical error in Figure 22, where the “Content
`
`Generation” block is labeled as 2260 rather than 2262.
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`Case IPR2023-00330
`U.S. Patent No. 8,495,242
`Person of Ordinary Skill in the Art (POSITA)
`C.
`Patent Owner applies Akamai’s definition of a POSITA for purposes of this
`
`Preliminary Response.
`
`D. Claim Construction
`For purposes of this Preliminary Response, Patent Owner construes the
`
`claims according to their plain and ordinary meaning in light of the specification,
`
`consistent with the standard established in Phillips v. AWH Corp., 415 F.3d 1303
`
`(Fed. Cir. 2005) (en banc) (“Phillips”). See Pet., 10-11 (proposing the same).
`
`III. SAMANIEGO, THE PRIMARY REFERENCE IN THREE OF FOUR
`GROUNDS, IS NOT PRIOR ART TO CHALLENGED CLAIM 9.
`The ’242 patent is entitled to priority to at least August 14, 2001—the filing
`
`date of the earlier-filed 09/929,904 application (“the ’904 application,” EX1035) in
`
`the priority chain. Petitioner’s primary reference in three of its four grounds,
`
`Samaniego—the pre-issuance publication of the ’904 application—is, therefore,
`
`not prior art.
`
`Under § 120, a patent is entitled to the priority date of an earlier filed
`
`application if (1) the written description of the earlier filed application discloses
`
`the invention claimed in the later filed application sufficient to satisfy the
`
`requirements of § 112; (2) the applications have at least one common inventor;
`
`(3) the later application is filed before the issuance or abandonment of the earlier
`
`filed application; and (4) the later application contains a reference to the earlier
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`Case IPR2023-00330
`U.S. Patent No. 8,495,242
`filed application. In re NTP, Inc., 654 F.3d 1268, 1277 (Fed. Cir. 2011). Each of
`
`these requirements is met here.
`
`Indeed, regarding (1), Petitioner acknowledges that “Samaniego’s
`
`specification is substantively identical to the ’242 specification,” Pet., 2-3, and
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`admits there is written description support for the ’242 patent claim 9: “PO cannot
`
`dispute Samaniego fully discloses ’242 Claim 9. There is no substantive difference
`
`between the ’242’s and Samaniego’s specifications.” Id., 42. The Declaration of
`
`Dr. Mark T. Jones confirms that all elements of claim 9 of the ’242 patent are
`
`supported by the ’904 application, and all intervening applications, such that the
`
`requirements of § 112 are satisfied. EX2001. And as shown in Section III.Cbelow,
`
`filing chain and reference requirements of (3) and (4) are also met. Petitioner’s
`
`only argument relates to (2)—that “[t]he ’242 cannot claim priority to the earlier-
`
`filed purported priority applications,” including the ’904 application, “because
`
`none of the ’242’s named inventors is ‘name[d] … in the previously filed
`
`application[s].’” Pet., 6, 41 (citing 35 U.S.C. § 120). But that argument is moot
`
`because Patent Owner filed a petition to correct the inventorship of U.S. Patent No.
`
`6,964,009 (“the ’009 patent,” which issued from the ’904 application), adding Sean
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`Case IPR2023-00330
`U.S. Patent No. 8,495,242
`Barger.3 EX2003. Thus, Sean Barger is an inventor of the ’904 application, the
`
`’242 patent, and each intervening application in the priority chain, satisfying (2).
`
`Accordingly, Petitioner’s argument is eliminated.
`
`As explained below, the requirements of 35 U.S.C. § 120, including that the
`
`priority applications provide the required § 112 support for the claim, are met. The
`
`challenged claim is, thus, entitled at least to the filing date of the ’904 application,
`
`and Samaniego is not prior art.
`
`A.
`
`Patent Owner filed a petition to correct inventorship of the ’009
`patent, and as corrected the ’242 patent “share[s] at least one
`common inventor” with Samaniego’s application.
`Petitioner’s contention that Samaniego is available as prior art is based on
`
`the assertion that “Samaniego has no common inventors with the ’242 [patent].”
`
`Pet., 2-3, 6, 41-42. Patent Owner filed a petition under 37 C.F.R. § 1.324(a) to
`
`
`3 Correction of inventorship under Rule 1.324 is “pursuant to 35 U.S.C.
`
`256.” The Federal Circuit has recognized that inventorship corrections under § 256
`
`are “a matter of formality.” Egenera, Inc. v. Cisco Systems, Inc., 972 F.3d 1367,
`
`1379 (Fed. Cir. 2020). “[T]he PTO examines a request only for the presence of
`
`supporting statements and the required fee.” Id. at 1380.
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`Case IPR2023-00330
`U.S. Patent No. 8,495,242
`correct inventorship of the ’009 patent.4 EX2003. In particular, the petition and
`
`supporting documents, request a correction to include Sean Barger as an inventor
`
`of the ’009 patent. EX2003, 1-3. Every single inventor that was already named on
`
`the ’009 patent executed a declaration that they “agree and/or have no
`
`disagreement to the change of inventorship to add Sean Barger as a co-inventor” of
`
`the ’009 patent. Id., 6-11. Upon correction, Sean Barger is an inventor named on
`
`the ’904 application, the ’242 patent, and each intervening application in the
`
`priority chain. See EX2003; EX1010, 1090; EX1026, 914; EX1002, 877. This
`
`meets the requirement of 35 U.S.C. § 120 that the later-filed application must
`
`“name[] an inventor or joint inventor in the previously filed application.”5
`
`
`4 Petitioner contends that “[t]he Board and the Office should not permit PO
`
`to change the inventorship of either Samaniego or the ’242 patent.” Pet., 44, n.5.
`
`Petitioner identifies no authority supporting this request. The Federal Circuit, on
`
`the other hand, has recognized that inventorship corrections under § 256 are “a
`
`matter of formality.” Egenera, Inc., 972 F.3d at 1379.
`
`5 As noted, inventorship corrections under § 256 are “a matter of formality.”
`
`Egenera, Inc., 972 F.3d at 1379. If the Office has not issued a correction prior to
`
`institution, the Board should exercise its discretion under § 314(a) and decline
`
`institution of the Samaniego grounds. To institute on these grounds pending a
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`Case IPR2023-00330
`U.S. Patent No. 8,495,242
`Pointing to changes of inventorship during prosecution of the various
`
`applications in the priority chain, Petitioner emphasizes that “Equilibrium …
`
`intentionally identified different inventors in Samaniego and the ’242 [patent]”
`
`“despite maintaining the same specification.” Pet., 43-44. However, proper
`
`inventorship is not determined by the specification of a patent, but by the claims.
`
`Egenera, Inc., 972 F.3d at 1376 (“[I]nventorship is a claim-by-claim question.”
`
`(citing Trovan, Ltd. v. Sokymat SA, Irori, 299 F.3d 1292, 1302 (Fed. Cir. 2002))).
`
`Thus, it is entirely proper for inventorship to differ among patents with the same
`
`specification, based on each patent’s respective claims. This is consistent with the
`
`requirements necessary to claim the benefit of an earlier filing date, which include
`
`that the later-filed application must “name[] an inventor or joint inventor in the
`
`previously filed application,” and not that all inventors must be the same.
`
`35 U.S.C. § 120 (emphasis added). Additionally, Sean Barger’s declaration
`
`accompanying the request to correct inventorship states that “[t]he inventorship
`
`
`ministerial order from the Office that will render them facially deficient would be a
`
`waste of Board and party resources. See 37 C.F.R. § 42.1(b) (instructing that the
`
`rules “shall be construed to secure the just, speed, and inexpensive resolution of
`
`every proceeding”).
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`Case IPR2023-00330
`U.S. Patent No. 8,495,242
`error of failing to include [himself]” as an inventor on the ’009 patent “occurred
`
`without any deceptive intent on [his] part.” EX2003, 4.
`
`As noted, correction of the inventorship on the ’009 patent means the
`
`inventorship requirement of § 120 is met here.
`
`B. Claim 9 of the ’242 patent is supported by the ’904 application and
`all intervening applications.
`The applications included in the priority chain of the ’242 patent back to the
`
`’904 application are shown below.
`
`Appl. No.
`
`Filing Date
`
`February 26, 2010
`July 15, 2008
`November 7, 2005
`August 14, 2001
`
`12/713,637
`12/173,747
`11/269,916
`09/929,904
`
`As evidenced by Petitioner’s redline comparisons, the specification of each
`
`Corresponding US
`Patent/Pub. No.
`8,495,242
`8,656,046
`2006/0265476
`6,964,009
`
`File History:
`
`EX1002
`EX1026
`EX1010
`EX1035
`
`application in the priority chain is the same. See EX1013, EX1021, EX1028. Also,
`
`each subsequent application incorporates the ’904 application (and all intervening
`
`applications) by reference. EX1002, 2; EX1026, 2; EX1010, 4.
`
`As detailed in the expert Declaration of Dr. Mark T. Jones, all elements of
`
`claim 9 of the ’242 patent are supported by the ’904 application, and all
`
`intervening applications, such that the requirements of § 112 are satisfied. EX2001.
`
`Dr. Jones, in particular, provided a chart demonstrating support for each limitation
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`Case IPR2023-00330
`U.S. Patent No. 8,495,242
`of claim 9 in the ’904 application, and in all intervening applications, including the
`
`’637 application that issued as the ’242 patent. Id., ¶25, Appendix A. The Federal
`
`Circuit has recognized that “written description and enablement often rise and fall
`
`together.” Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1352 (Fed. Cir.
`
`2010). That is the case here. As Dr. Jones testified, “[t]he cited portions
`
`demonstrate that the inventors had possession of the claimed subject matter and
`
`also enable a POSITA to make and use the invention without undue
`
`experimentation.” EX2001, ¶25; see also id., Appendix A.
`
`Citations pointing to the § 112 support for challenged claim 9 in each of the
`
`priority applications is included in the chart below. See also EX2001, Appendix A.
`
`Support6 for Claim Features in:
`Claim
`Element
`637 Appl.
`747 Appl.
`906 Appl.
`[9.P]/[9.pre] 1:19-21,
`1:18-20,
`1:17-18,
`10:5-7 (12:31-
`10:5-7 (12:31-
`10:5-7 (12:31-
`33, 27:27-29),
`33, 27:27-29)
`33, 27:13-15),
`12:10-11,
`12:10-11,
`12:10-11,
`12:13-14,
`12:13-14,
`12:13-14,
`26:24,
`26:10,
`26:23,
`30:28-34,
`30:14-20,
`30:28-34,
`31:19-21,
`31:5-7,
`31:19-21,
`FIG. 21,
`FIG. 21,
`FIG. 21,
`FIG. 22
`FIG. 22
`FIG. 22
`12:26-29,
`12:26-29,
`12:26-29,
`14:22-24,
`14:22-24,
`14:22-24,
`
`6 The quotations corresponding to the citations in this chart are included in
`
`904 Appl.
`1:7-9,
`8:20-22 (10:35-
`37, 23:32-34),
`10:15-16,
`10:18-19,
`22:34,
`26:19-24,
`27:4-6,
`FIG. 21,
`FIG. 22
`10:30-33,
`12:16-18,
`
`[9.1]/[9.a]
`
`Appendix A of Dr. Jones’ declaration.
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`

`Claim
`Element
`
`[9.2]/[9.b]
`
`[9.3]/[9.c]
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`Case IPR2023-00330
`U.S. Patent No. 8,495,242
`
`Support6 for Claim Features in:
`637 Appl.
`747 Appl.
`906 Appl.
`15:12-19,
`15:12-19,
`15:9-16,
`15:21-25,
`15:21-25,
`15:18-22,
`15:30-34,
`15:30-34,
`15:27-31,
`16:1-3,
`16:1-3,
`16:1-3,
`16:27-31,
`16:27-31,
`16:26-30,
`28:14-21,
`28:14-21,
`27:33-28:6,
`28:34-29:6,
`28:34-29:6,
`28:19-25,
`29:12-16,
`29:12-16,
`28:31-35,
`29:23-25,
`29:23-25,
`29:8-10,
`30:26-34,
`30:26-34,
`30:12-20,
`31:1-9,
`31:1-9,
`30:22-29,
`32:3-5
`32:3-5
`31:23-25
`8:20-22,
`8:20-22,
`8:20-22,
`8:34-35,
`8:34-35,
`8:34-35,
`9:30-32,
`9:30-32,
`9:30-32,
`10:5-7 (12:31-
`10:5-7 (12:31-
`10:5-7 (12:31-
`33, 27:27-29),
`33, 27:13-15),
`33, 27:27-29),
`24:19-25:9
`24:14-35
`24:19-25:9
`(Table C),
`(Table C),
`(Table C),
`35:26-36:15
`35:13-35
`35:26-36:15
`(Table F),
`(Table F),
`(Table F),
`29:12-16,
`28:31-29:1,
`29:12-16,
`29:23-25,
`29:8-10,
`29:23-25,
`29:35-30:2,
`29:19-21,
`29:35-30:2,
`30:13-15,
`29:32-30:1,
`30:13-15,
`30:22-35,
`30:8-20,
`30:22-35,
`31:23-27,
`31:9-13,
`31:23-27,
`31:30-34,
`31:16-19,
`31:30-34,
`32:10-11,
`31:30-31,
`32:10-11,
`32:30-31,
`32:16-17,
`32:30-31,
`33:5-30
`33:5-30
`32:23-33:16
`(Table D)
`(Table D)
`(Table D)
`28:10-11,
`28:10-11,
`27:29-30,
`29:12-17,
`29:12-17,
`28:31-29:2,
`29:23-27,
`29:23-27,
`29:8-12,
`31:1-17,
`31:1-17,
`30:22-31:3,
`31:34-32:5
`31:34-32:5
`31:19-25
`
`904 Appl.
`12:37-13:6,
`13:8-12,
`13:17-21,
`13:23-25,
`14:9-13,
`24:14-21,
`24:34-25:2,
`25:8-12,
`25:18-20,
`26:17-25,
`26:26-33,
`27:22-24
`7:8-10,
`7:21-22,
`8:13-15,
`8:20-22 (10:35-
`37, 23-32-34),
`21:5-26
`(Table C),
`30:32-31:24
`(Table F),
`25:8-12,
`25:18-20,
`25:29-31,
`26:4-5,
`26:13-24,
`27:8-12,
`27:15-17,
`27:28-29,
`28:9-10,
`28:16-29:8
`(Table D)
`24:10-11,
`25:8-13,
`25:18-22,
`26:26-27:2,
`27:17-24
`
`- 15 -
`
`

`

`Case IPR2023-00330
`U.S. Patent No. 8,495,242
`
`904 Appl.
`25:27-29,
`25:35-26:2,
`26:4-5,
`27:8-12,
`27:23-29,
`28:16-29:8
`(Table D)
`25:35-26:1,
`26:31-34,
`27:22-24,
`27:25-29,
`7:5-6,
`11:14-16,
`24:15-19,
`24:34-35,
`25:31-33,
`25:31:33,
`27:30-31
`
`Claim
`Element
`[9.4]/[9.d]
`
`[9.6]/[9.g]
`
`Support6 for Claim Features in:
`637 Appl.
`747 Appl.
`906 Appl.
`29:32-34,
`29:32-34,
`29:17-19,
`30:7-11,
`30:7-11,
`29:26-30,
`30:13-15,
`30:13-15,
`29:32-30:1,
`31:23-27,
`31:23-27,
`31:9-13,
`32:4-11,
`32:4-11,
`31:24-31,
`33:5-30
`33:5-30
`32:23-33:16
`(Table D)
`(Table D)
`(Table D)
`[9.5]/[9.e-f] 30:7-10,
`30:7-10 ,
`29:26-29,
`31:7-11,
`31:7-11,
`30:27-31,
`32:3-5,
`32:3-5,
`31:23-25,
`32:7-11
`32:7-11
`31:27-31
`8:16-17,
`8:16-17,
`8:16-18,
`13:15-17,
`13:15-17,
`13:15-17,
`28:15-19,
`28:15-19,
`27:34-28:4,
`28:34-29:1,
`28:34-29:1,
`28:19-20,
`30:2-5,
`30:2-5,
`29:21-24,
`31:26-27,
`31:26-27,
`31:12-13,
`32:11-13
`32:11-13
`31:31-33
`
`
`Moreover, Petitioner does not dispute that the ’904 application provides
`
`support for the ’242 patent claim 9. In fact, Petitioner admits that there “is no
`
`substantive difference between the ’242 [patent]’s and Samaniego’s
`
`specifications.” Pet., 42; EX1013. Petitioner’s priority dispute is based solely on
`
`inventorship. Pet. 6, 41-42. But this issue is now moot. See Section III.A.
`
`Thus, Petitioner, the Examiner, and Patent Owner’s expert all agree that, as
`
`required by § 120, the written descriptions of the earlier filed applications disclose
`
`claim 9 of the ’242 patent sufficient to satisfy the requirements of § 112.
`
`- 16 -
`
`

`

`Case IPR2023-00330
`U.S. Patent No. 8,495,242
`C. The other requirements of § 120 are also met.
`As shown below, each application in the priority chain was filed before the
`
`issuance or abandonment of the earlier filed application.
`
`Issue Date/
`Abandonment
`Date
`July 23, 2013
`
`Exhibit No.
`(Issued Patent)
`
`EX1001
`
`February 18, 2014 EX2005
`October 15, 20097
`(abandoned)
`
`Appl. No.
`
`Filing Date
`
`12/713,637
`
`12/173,747
`11/269,916
`
`February 26,
`2010
`July 15, 2008
`November 7,
`2005
`August 14, 2001 November 8, 2005 EX2006
`
`09/929,904
`
`Finally, each subsequent application “contains … a specific reference to the
`
`earlier filed application[s],” as required by § 120. See EX1002, 2; EX1026, 2;
`
`EX1010, 4.
`
`D. Conclusion: Samaniego is not prior art.
`The ’242 patent properly claims priority to the ’904 application and all of the
`
`requirements of § 120 are met. Samaniego, therefore, is not prior art to challenged
`
`claim 9. Accordingly, Petitioner cannot show a reasonable likelihood of prevailing
`
`on Grounds 2-4, which rely on Samaniego as the primary reference.
`
`
`7 Notice of Abandonment. EX1010, 1091-92.
`
`- 17 -
`
`

`

`Case IPR2023-00330
`U.S. Patent No. 8,495,242
`IV. THE BOARD SHOULD EXERCISE ITS DISCRETION TO DENY
`INSTITUTION.
`The combined discretionary considerations under Sections 314(a) and
`
`325(d) strongly favor denying institution. Under Section 314(a), the Board should
`
`apply its informative Chevron/Deeper decisions because three of Petitioner’s four
`
`grounds are facially deficient: Grounds 2-4 rely on Samaniego, which is not prior
`
`art. Section III. This means only Ground 1 is eligible for consideration on the
`
`merits, but Board precedent disfavors instituting review when the majority of the
`
`challenges fail to satisfy the threshold for institution.
`
`Section 325(d) and the precedential Advanced Bionics decision compound
`
`the case for discretionary denial because the Office previously considered the
`
`primary reference asserted in Ground 1. A PCT Publication (“Tso PCT”) that is
`
`substantively the same as the asserted primary reference—Tso—was considered by
`
`the Examiner during prosecution of the ’242 patent. In its § 325(d) discussion,
`
`Petitioner overlooks the Tso PCT and contends that “[n]one of the cited references
`
`was considered as art during prosecution.” Pet., 8. But this is not the proper
`
`analysis set forth in § 325(d) or in the Board’s Advanced Bionics framework.
`
`Rather, § 325(d) and Advanced Bionics instruct the Board to consider whether “the
`
`same or substantially the same prior art or arguments previously were presented to
`
`the Office.” The Tso PCT is plainly the same or substantially the same as the
`
`asserted Tso reference, which Petitioner fails to address. The Examiner also
`
`- 18 -
`
`

`

`Case IPR2023-00330
`U.S. Patent No. 8,495,242
`considered art with substantially the same teachings as the relevant teachings of
`
`Huang. Moreover, Petitioner’s superficial allegations of error fall well short of
`
`establishing material error, as required by Part 2 of the Advanced Bionics
`
`framework.
`
`Considerations under Section 314(a) and Section 325(d) individually support
`
`discretionary denial. Combined, the case for discretionary denial is very strong.
`
`A. Applying Chevron and Deeper favors denying institution because
`three of the four Grounds rely on Samaniego, which is not prior
`art.
`Petitioner asserts four grounds against challenged claim 9. See Pet., 6. Yet
`
`three of them—Grounds 2-4—require Samaniego. Id. But as discussed above in
`
`Section III, Samaniego is not prior art to the challenged claims. Accordingly, the
`
`three Samaniego grounds must fail, leaving only one ground remaining.
`
`Even if Petitioner demonstrates a reasonable likelihood of prevailing with
`
`respect to one or more claims—here, Petitioner does not, see infra Section V—
`
`institution of review remains discretionary. SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348,
`
`1356 (2018) (“[Section] 314(a) invests the Director with discretion on the question
`
`whether to institute review . . . .” (emphasis omitted)); Harmonic Inc. v. Avid
`
`Tech., Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016) (“[T]he PTO is permitted, but
`
`never compelled, to institute an IPR proceeding.”). Under the circumstances
`
`here—where instituting review would require reviewing all grounds even though
`
`- 19 -
`
`

`

`Case IPR2023-00330
`U.S. Patent No. 8,495,242
`three of four grounds are deficient from the start—it would not be an efficient use
`
`of the Board’s time and resources to institute trial. See Chevron Oronite Co. v.
`
`Infineum USA L.P., IPR2018-00923, Paper 9, 10–11 (P.T.A.B. Nov. 7, 2018)
`
`(informative) (explaining that “the Board may consider the number of claims and
`
`grounds that meet the reasonable likelihood standard when deciding whether to
`
`institute inter partes review under 35 U.S.C. § 314(a)”); Deeper, UAB v. Vexilar,
`
`Inc., IPR2018-01310, Paper 7, 41–43 (P.T.A.B. Jan. 24, 2019) (informative)
`
`(explaining the same); see also BJ’s Wholesale Club Holdings, Inc. v. Walmart
`
`Apollo, LLC, IPR2022-01561, Paper 11, 28-29 (P.T.A.B. Apr. 12, 2023)
`
`(exercising discretion to deny institution where Petitioner showed a reasonable
`
`likelihood of success only for 1 of 14 challenged claims on 2 of 4 asserted
`
`grounds).
`
`Furthermore, as discussed below, the case for discretionary denial is
`
`particularly compelling where, as here, the Office previously considered the
`
`primary reference, and teachings cumulative to the other reference, in the
`
`remaining ground. See Section IV.B. Pharmacosmos A/S v. American Regent, Inc.,
`
`PGR2020-00009, Paper 17 (P.T.A.B. Aug. 14, 2020) is instructive. In
`
`Pharmacosmos, the Board declined to institute all but one of Petitioner’s asserted
`
`grounds based on §