Trials@uspto.gov
`571-272-7822
`
`Paper 10
`Date: October 23, 2023
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`SAMSUNG ELECTRONICS CO., LTD.,
`Petitioner,
`v.
`DODOTS LICENSING SOLUTIONS LLC,
`Patent Owner.
`
`IPR2023-00701
`Patent 8,510,407 B1
`
`
`
`
`
`
`
`
`
`Before HUBERT C. LORIN, AMBER L. HAGY, and SHARON FENICK,
`Administrative Patent Judges.
`FENICK, Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`
`571-272-7822
`
`Paper 10
`Date: October 23, 2023
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`SAMSUNG ELECTRONICS CO., LTD.,
`Petitioner,
`v.
`DODOTS LICENSING SOLUTIONS LLC,
`Patent Owner.
`
`IPR2023-00701
`Patent 8,510,407 B1
`
`
`
`
`
`
`
`
`
`Before HUBERT C. LORIN, AMBER L. HAGY, and SHARON FENICK,
`Administrative Patent Judges.
`FENICK, Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`
`
`IPR2023-00701
`Patent 8,510,407 B1
`
`I.
`
`INTRODUCTION
`Background and Summary
`A.
`Samsung Electronics Co., Ltd. (“Petitioner”) filed a petition for inter
`partes review challenging claims 1–24 (“challenged claims”) of U.S. Patent
`8,510,407 B1 (Ex. 1001 (“the ’407 patent”)). Paper 2 (“Pet.” or “Petition”).
`DoDots Licensing Solutions LLC (“Patent Owner”) timely filed a
`Preliminary Response. Paper 6 (“Prelim. Resp.”). With the Board’s
`authorization (Paper 7), Petitioner filed a Preliminary Reply (Paper 8,
`“Prelim. Reply”) and Patent Owner filed a Preliminary Sur-reply (Paper 9,
`“Prelim. Sur-reply”). The Board has authority to determine whether to
`institute an inter partes review. See 35 U.S.C. § 314(b); 37 C.F.R.
`§ 42.4(a).
`Under 35 U.S.C. § 314(a), we may not authorize an inter partes
`review unless the information in the Petition “shows that there is a
`reasonable likelihood that the petitioner would prevail with respect to at least
`1 of the claims challenged in the petition.” For the reasons that follow, we
`institute an inter partes review as to the challenged claims of the ’407 patent
`on all grounds of unpatentability presented.
`Real Parties in Interest
`B.
`Petitioner identifies Samsung Electronics Co., Ltd., and Samsung
`Electronics America, Inc., as the real parties in interest. Pet. 105.
`Patent Owner identifies only itself as the real party in interest. Paper
`3 (Patent Owner’s Mandatory Notices), 1.
`Related Matters
`C.
`Petitioner identifies the following proceeding as a related matter:
`DoDots Licensing Solutions LLC v. Samsung Electronics Co., Ltd.,
`6:22-cv-00535 (W.D. Tex.) (“the related district court litigation”). Pet. 105–
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`Patent 8,510,407 B1
`106. Petitioner additionally notes that the patent was the subject of inter
`partes review proceeding IPR2019-01279. Id. at 106.
`Patent Owner also cites Western District of Texas case 6:22-cv-00535
`as related and additionally identifies as related DoDots Licensing Solutions
`LLC v. Apple Inc., CA No. 6:22-cv-00533 (W.D. Tex. May 24, 2022).
`Paper 3, 1–2.
`
`The ’407 Patent
`D.
`The title of the ʼ407 patent is “Displaying Time-Varying Internet
`Based Data Using Application Media Packages.” Ex. 1001, code (54). The
`’407 patent discloses, in part, a software component for accessing and
`displaying network content. Id. at code (57). This component, termed a
`Networked Information Monitor (NIM) is a “fully configurable frame with
`one or more controls” with content optionally presented through the frame.
`Id. at 2:61–63, 5:21–24. When a NIM is opened by a user, the frame is
`presented in the user’s display and network content is retrieved and
`presented in a viewer enclosed by the frame. Id. at 19:63–20:30. The
`network content may be identified via URLs (uniform resource locators)
`included in the NIM definition. Id. at code (57), 20:24–27. The network
`content is time-varying, e.g., as in an image that varies over time. Id. at code
`(57). The Specification describes that the frame according to the invention
`“stands in contrast to present web browsers, which are branded by the
`browser vendor and which have limited means by which to alter the controls
`associated with the browser.” Id. at 5:24–28.
`
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`Patent 8,510,407 B1
`Figure 9B, reproduced immediately below, illustrates a pack, that is a
`customized arrangement of NIMs created by a user. Id. at 3:50–51, 16:10–
`29,
`
`Figure 9B illustrates pack 139, which includes five NIMs 133-1 through
`133-5. Id. at 16:65–66. Each NIM 133 includes viewer 135 for viewing
`
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`Patent 8,510,407 B1
`content and frame 137 for providing user functionality. Id. at 16:66–17:1.
`Frame 137 for each NIM 133 provides functions and controls for
`manipulating the visual manifestation of NIM 133, for example dismiss
`button 141 that can be used to dismiss the NIM, menu button 143 that causes
`a menu to appear, control button 145 that can resize the NIM, and forward
`and backward controls. Id. at 17:16–43, 22:24–61. Content may be
`retrieved from content servers via URLs identified in the NIM definition for
`placement in the NIM frame. Id. at 21:21–31.
`
`Figure 11, reproduced immediately below, is a flow chart of steps
`taken to present a NIM to a user. Id. at 3:56–58, 20:7–8.
`
`Figure 11 depicts a user’s client device making requests to an applications
`server and a content server, leading to the display of a NIM. Id. at 20:7–30.
`
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`Patent 8,510,407 B1
`The applications server responds to a request by the user’s client for a NIM
`definition and transmits it to the client. Id. at 20:18–23. The client requests
`the necessary content elements from the URLs in the NIM definition from
`the corresponding content server that supplies them to the client. Id. at
`20:24–30. The client creates the NIM frame and places the content in a
`viewer within the frame. Id. at 20:23–24, 20:28–32. This allows the user to
`preview the NIM or to “collect” it (add it to their user profile), and to
`interact with the NIM as displayed. Id. at 14:20–35, 19:51–60, 20:30–46,
`20:66–21:4.
`
`Illustrative Claim
`E.
`Claims 1 and 13 are the two independent claims among the challenged
`claims. Claim 1 is reproduced below with Petitioner’s limitation
`designations added in brackets for ease of reference:
`1. A client computing device configured to access content over a
`network, the client computing device comprising:
`[1.1] electronic storage configured to store networked
`information monitor template associated with a
`networked
`information monitor,
`the networked
`information monitor template having therein a
`definition of a viewer graphical user interface having a
`frame within which time-varying content in a web
`browser-readable language may be presented on a
`display associated with the client computing device,
`wherein the frame of the viewer graphical user
`interface lacks controls for enabling a user to specify a
`network location at which content for the networked
`information monitor is available; and
`[1.2] one or more processors configured to execute one or
`more computer program modules, the one or more
`computer program modules being configured to access
`the networked information monitor defined by the
`networked information monitor template, wherein
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`IPR2023-00701
`Patent 8,510,407 B1
`accessing the networked information monitor defined
`by the networked information monitor template results
`in:
`[1.3] transmission, over a network to a web server
`at a network location, of a content request for
`content to be displayed within the frame of the
`viewer graphical user interface defined by the
`networked information monitor template;
`[1.4] reception, over the network from the web
`server at the network location, of content
`transmitted from the web server in response to
`the content request, the content being time-
`varying;
`[1.5] presentation, on the display, of the viewer
`graphical user
`interface defined by
`the
`networked information monitor template outside
`of and separate from any graphical user interface
`of any other application; and
`[1.6] presentation, on the display within the frame
`of the viewer graphical user interface defined by
`the networked information monitor, of the time-
`varying content received from the web server.
`
`Ex. 1001, 42:28–64.
`
`Evidence
`F.
`Petitioner relies on the following references:
`Reference
`Description
`US 5,793,368
`US 6,088,340
`US 6,278,448 B1
`US 6,449,638 B1
`US 6,789,263 B1
`
`Beer
`Buchholz et al. (“Buchholz”)
`Brown et al. (“Brown”)
`Wecker et al. (“Wecker”)
`Shimada et al. (“Shimada”)
`
`Petitioner additionally relies on a declaration of Douglas C. Schmidt
`(Ex. 1003).
`
`Exhibit
`Ex. 1007
`Ex. 1009
`Ex. 1005
`Ex. 1006
`Ex. 1008
`
`7
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`
`Asserted Grounds
`G.
`Petitioner asserts that claims 1–24 would have been unpatentable on
`the following grounds:
`35 U.S.C. §1
`Claim(s) Challenged
`1–4, 7–11, 13–16, 19–23 103
`1–4, 7–16, 19–23
`103
`5, 6, 17, 18
`103
`5, 6, 17, 18
`103
`1–24
`103
`
`Reference(s)/Basis
`Brown
`Brown, Wecker
`Brown, Beer
`Brown, Wecker, Beer
`Shimada, Buchholz
`
`
`
`II. DISCRETIONARY DENIAL UNDER 35 U.S.C. § 314(a)
`Patent Owner argues that we should exercise discretion to deny
`institution under 35 U.S.C. § 314(a) because the factors identified in Apple
`Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020)
`(precedential) (“Fintiv”), weigh in favor of denying institution. Prelim.
`Resp. 26–32; Prelim. Sur-reply 7. Petitioner argues we should not
`discretionarily deny institution under Fintiv. Pet. 103–104; Prelim. Reply 6–
`7.
`
`The precedential decision in Fintiv identifies a non-exclusive list of
`factors parties may consider addressing where there is a related, parallel
`district court action to determine whether such action provides any basis for
`discretionary denial. Fintiv, 5–16. Those factors include:
`1. whether the court granted a stay or evidence exists that one may be
`granted if a proceeding is instituted;
`
`1 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125
`Stat. 284, 287–88 (2011), amended 35 U.S.C. § 103. Because the claims at
`issue have an effective filing date prior to the effective date of the AIA’s
`amendments to 35 U.S.C. § 103, we apply the pre-AIA version of § 103 in
`this Decision. See Ex. 1001, codes (22), (63).
`
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`IPR2023-00701
`Patent 8,510,407 B1
`2. proximity of the court’s trial date to the Board’s projected statutory
`deadline for a final written decision;
`3. investment in the parallel proceeding by the court and the parties;
`4. overlap between issues raised in the petition and in the parallel
`proceeding;
`5. whether the petitioner and the defendant in the parallel proceeding
`are the same party; and
`6. other circumstances that impact the Board’s exercise of discretion,
`including the merits.
`Id. at 5–6.
`In evaluating the factors, we take a holistic view of whether efficiency
`and integrity of the system are best served by denying or instituting review.
`Id. at 6. The Director has issued additional guidance on the application of
`Fintiv. See Katherine K. Vidal, Interim Procedure for Discretionary Denials
`in AIA Post-Grant Proceedings with Parallel District Court Litigation (June
`21, 2022) (“Fintiv Memo”). Additionally, we are guided by the precedential
`decisions of the Director in OpenSky Indus., LLC v. VLSI Tech. LLC,
`IPR2021-01064, Paper 102, 49–50 (Oct. 4, 2022) (precedential), and
`CommScope Techs. LLC v. Dali Wireless, Inc., IPR2022-01242, Paper 23
`(Feb. 27, 2023) (precedential) (“CommScope”).
`We are instructed to consider compelling merits under Fintiv factor
`six only after a determination that the first five Fintiv factors favor
`discretionary denial. CommScope, 4–5. Thus, we begin by considering the
`first five Fintiv factors. 2
`
`
`2 While Fintiv factor six encompasses considerations other than compelling
`merits, neither party has argued such considerations exist in this case.
`
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`IPR2023-00701
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`
`First Five Fintiv Factors
`A.
`1. Whether a Stay Exists or Is Likely to Be Granted if a Proceeding Is
`Instituted
`“A district court stay of the litigation pending resolution of the PTAB
`trial allays concerns about inefficiency and duplication of efforts.” Fintiv, 6.
`Fintiv indicated that, in previous Board decisions, the existence of a district
`court stay pending Board resolution of an inter partes review has weighed
`strongly against discretionary denial, while a denial of such a stay request
`sometimes weighs in favor of discretionary denial. Id. at 6–8.
`Petitioner argues that this factor “is neutral because neither party has
`requested a stay.” Pet. 103. Petitioner further contends that the Board
`generally declines to predict outcomes of possible future stay requests.
`Prelim. Reply 6.
`Patent Owner argues that this factor weighs against institution,
`because Petitioner “has not sought to stay the district court litigation” and
`because “there is no indication that the court will grant any stay, if one is
`sought.” Prelim. Resp. 28.
`Because, “[i]n the absence of specific evidence, we will not attempt to
`predict” whether a district court would stay “based on a variety of
`circumstances and facts beyond our control and to which the Board is not
`privy,” we find this factor to be neutral. See Sand Revolution II, LLC v.
`Cont’l Intermodal Group – Trucking LLC, IPR2019-01393, Paper 24 at 7
`(PTAB June 16, 2020) (informative) (“Sand Revolution”).
`2.
`Proximity of the Court’s Trial Date to the Board’s Projected Statutory
`Deadline
`The proximity factor in Fintiv asks us to evaluate our discretion in
`light of a trial date that has been set in a parallel litigation. See Fintiv, 3, 5
`
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`IPR2023-00701
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`(“NHK applies to the situation where the district court has set a trial date to
`occur earlier than the Board’s deadline to issue a final written decision in an
`instituted proceeding.”; “When the patent owner raises an argument for
`discretionary denial under NHK due to an earlier trial date, the Board’s
`decisions have balanced the following factors . . . .”) (citing NHK Spring
`Co., Ltd. v. Intri-Plex Techs., Inc., IPR2018-00752, Paper 8 at 20 (PTAB
`Sept. 12, 2018) (precedential) (“NHK”)).
`As noted above in the discussion of the first factor, Fintiv cites
`concern regarding “inefficiency and duplication of efforts.” Id. at 6. In its
`analysis of the proximity factor, Fintiv echoes that concern in its guidance
`that “[i]f the court’s trial date is at or around the same time as the projected
`statutory deadline or even significantly after the projected statutory deadline,
`the decision whether to institute will likely implicate other factors discussed
`herein, such as the resources that have been invested in the parallel
`proceeding.” Id. at 9. Similarly, in NHK, the Board expressed concern that
`a trial before the deadline for a final written decision addressing the same
`prior art and arguments would have undermined the Board’s objectives of
`providing an effective and efficient alternative to district court litigation.
`See NHK, 20 (citing General Plastic Indus. Co., Ltd. v. Canon Kabushiki
`Kaisha, IPR2016-01357, Paper 19 at 16–17 (PTAB Sept. 6, 2017)
`(precedential)).
`We are instructed that
`when analyzing the proximity of the court’s trial date
`under factor two of Fintiv, when other relevant factors weigh
`against exercising discretion to deny institution or are neutral, the
`proximity to trial should not alone outweigh all of those other
`factors. Parties may present evidence regarding the most recent
`statistics on median time-to-trial for civil actions in the district
`court in which the parallel litigation resides for the PTAB’s
`
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`IPR2023-00701
`Patent 8,510,407 B1
`consideration. Where the parties rely on time-to-trial statistics,
`the PTAB will also consider additional supporting factors such
`as the number of cases before the judge in the parallel litigation
`and the speed and availability of other case dispositions.
`Fintiv Memo, 8–9 (internal citations and footnote deleted).
`Petitioner argues this factor
`weighs against discretionary denial. The projected statutory
`deadline for the PTAB’s Final Written Decision (FWD) is
`September 2024. The trial date in the co-pending litigation is
`currently set for June 24, 2024. . . . [T]he District Court’s median
`time from filing to trial was recently calculated as 28.9 months,
`yielding an estimated trial date in October 2024, which falls after
`the expected FWD date of September 2024. . . . Samsung’s
`Motion to Transfer Venue that was recently filed in W.D. Tex.,
`if successful, will further ensure that the FWD far outpaces any
`trial date.
`Pet. 103–104.
`
`Patent Owner argues:
`The Western District of Texas issued its scheduling order on
`December 29, 2022 setting trial for in June 24, 2024. . . . [T]he
`projected statutory deadline for a final written decision is in at
`least August or September 2024, two-three months later.
`Because the district court trial will proceed well before the
`expected final written decision date, this factor favors denial of
`institution.
`Prelim. Resp. 28–29. Patent Owner additionally asserts that the motion to
`transfer was denied, and additionally “a Markman Order has been issued and
`fact discovery has commenced in earnest.” Prelim. Sur-reply 7.
`Additionally Patent Owner contends “in a July 27, 2023 Order, the Court
`reiterated that, while some discovery dates will be moved, the June 24, 2024
`trial date will not change.” Id. (citing Ex. 2008).
`
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`The trial date set by the court in the related district court litigation is
`approximately four months before an anticipated final written decision in
`this case. However, we are instructed to consider the median-time-to-trial
`data. In this case, we determine that this factor should be considered to be
`neutral.
`3.
`
`Investment in the Parallel Proceeding by the Court and Parties
`If, at the time of the institution decision, the district court has issued
`substantive orders related to the challenged patent, such as a claim
`construction order, this fact weighs in favor of denial. See Fintiv, 9–10. On
`the other hand, if the district court has not issued such orders, this fact
`weighs against discretionary denial. Id. at 10. Fintiv also directs us to
`consider whether “the petitioner filed the petition expeditiously.” Id. at 11.
`In the Petition, Petitioner argues this factor
`weighs against discretionary denial because co-pending
`litigation is in its early stages and investment in the case has been
`minimal. Moreover, the institution decision will likely issue
`before fact discovery, expert discovery, and expert reports are
`complete. If an IPR is instituted, subsequent investments in the
`district court proceeding can further be minimized (e.g., through
`a motion to stay pending IPR and [Petitioner’s] stipulation).
`Pet. 104. Petitioner additionally argues that the resources expended at the
`time of its Preliminary Reply “remain[] low” and “mostly relate[] to claim
`construction.” Prelim. Reply 7. Petitioner additionally argues its diligence
`in filing the Petition provides further weight against discretionary denial in
`considering this factor. Id.
`
`Patent Owner argues in its Preliminary Response:
`Patent [O]wner, [P]etitioner, co-defendant Apple, and the
`WDTX Court have all spent significant resources on the asserted
`patents including the ’407 patent. Fact discovery is ongoing in
`
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`Patent 8,510,407 B1
`WDTX, with both parties having already exchanged their initial
`disclosures,. . . first set of document requests and interrogatories,
`and entered into a protective order. [Petitioner] has also
`produced a portion of its relevant source code, which [Patent
`Owner] has already started reviewing. The parties have also
`fully briefed a motion to transfer venue from WDTX to NDCA
`(which the court denied) and claim construction arguments were
`heard on July 27, 2023. In fact, the Court has already issued its
`claim construction ruling. Indeed, the parties have been
`litigating this case for approximately fourteen months.
`The parties’ and the district court’s substantial investment in the
`district court litigation favors denial of institution. Prelim. Resp. 29–30. In
`its Preliminary Sur-reply, Patent Owner asserts that after the Markman order
`issued, “both parties pushed forward with discovery” and that “[b]ased on
`the current posture of the litigation, [Patent Owner] has started expending
`significant resources, including reviewing [Petitioner’s] source code over the
`last three weeks. Both parties have also collected and intend to produce
`extensive documents as part of fact discovery.” Prelim. Sur-reply 7.
`We are mindful of the investment of the district court, and of the
`parties, to date, especially the holding of a Markman hearing and the
`issuance of a Markman order. On the other hand, on the record before us,
`the filing of the Petition was expeditious. Based on the information
`presented, moreover, discovery is in its early stages, as even Patent Owner
`acknowledges in arguing that a “first set of document requests and
`interrogatories” have been exchanged and documents have been collected
`and are “intended” to be produced. Prelim. Resp. 29; Prelim. Sur-reply 7.
`We determine this factor weighs slightly against exercising discretion
`to deny institution.
`
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`4.
`Overlap Between Issues Raised in the Petition
`and in the Parallel Proceeding
`“[I]f the petition includes the same or substantially the same claims,
`grounds, arguments, and evidence as presented in the parallel proceeding,
`this fact has favored denial.” Fintiv, 12. “Conversely, if the petition
`includes materially different grounds, arguments, and/or evidence than those
`presented in the district court, this fact has tended to weigh against
`exercising discretion to deny institution under NHK.” Id. at 12–13. A
`stipulation as in Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019,
`Paper 12 at 18–19 (PTAB Dec. 1, 2020) (precedential as to § II.A), if one is
`entered, would be highly relevant. “Consistent with Sotera Wireless, Inc.,
`the PTAB will not discretionarily deny institution in view of parallel district
`court litigation where a petitioner presents a stipulation not to pursue in a
`parallel proceeding the same grounds or any grounds that could have
`reasonably been raised before the PTAB.” Fintiv Memo 3 (footnote
`omitted).
`Petitioner argues this factor “weighs against discretionary denial. If
`this Petition is instituted, Petitioner stipulates not to pursue primary
`references asserted in this Petition (i.e., Brown and Shimada) in the co-
`pending litigation.” Pet. 104.
`Patent Owner argues, without citation to the record, that
`[i]nvalidity issues related to the ’407 patent are already being
`litigated in WDTX. [Petitioner]’s invalidity contentions already
`set forth the grounds raised in this petition.
`Prelim. Resp. 30. Patent Owner additionally argues that Petitioner has
`“fail[ed] to submit a Sotera stipulation” and thus “has done nothing to
`mitigate concerns of potentially conflicting decisions and duplicative efforts
`between the district court and the Board.” Id. at 30.
`
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`While not a Sotera stipulation, Petitioner’s stipulation appears to be
`similar to that in Sand Revolution. See Sand Revolution, 11–12 (finding that
`a stipulation not to pursue the same grounds in the parallel litigation
`“mitigates to some degree the concerns of duplicative efforts”). We
`recognize that this stipulation is narrower in scope than a Sotera-type
`stipulation. However, Petitioner’s stipulation still reduces potential overlap
`with the district court litigation. In Sand Revolution, such a stipulation
`weighed marginally against exercising discretion to deny institution. Id. at
`12.
`
`We determine this factor weighs slightly against exercising discretion
`to deny institution.
`5. Whether the Petitioner and the Defendant in the Parallel Proceeding
`Are the Same Party
`If the petitioner is unrelated to the defendant in the parallel
`proceeding, that might weigh against discretionary denial. See Fintiv, 13–
`14.
`
`Petitioner and Patent Owner each agree that Petitioner is a defendant
`in the co-pending litigation. Pet. 104; Prelim. Resp. 31.
`As with Fintiv factor 2, therefore, this factor is neutral with respect to
`our exercise of discretion to deny the Petition.
`Conclusion
`B.
`We have considered the circumstances and facts before us in view of
`the first five Fintiv factors. Because our analysis is fact-driven, no single
`factor is determinative of our conclusion. Considering these five Fintiv
`factors together, we determine that they do not favor a discretionary denial.
`As we do not find that the first five Fintiv factors favor discretionary
`denial, we therefore do not make a determination regarding compelling
`
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`merits under Fintiv factor 6, and our consideration ends with this
`conclusion. CommScope, 4–5.
`III. DISCRETIONARY DENIAL UNDER 35 U.S.C. § 325(d)
`Patent Owner contends that Petitioner does not explain a “defect in
`[the] prior consideration of Brown” and argues as follows
`First, it is important to recognize that Brown was expressly
`considered by the Patent Examiner during prosecution of the
`application that resulted in the ‘407 Patent. Ex. 2004 pages 1 and
`2. Each IDS disclosing these references has a sentence added by
`Examiner, which he initialed, that “All references considered
`except where lined through.” Ex. 2004 pages 1 and 2. Petitioner
`tries to minimize this critical fact by arguing that “[i]ndeed,
`during prosecution, the examiner did not consider Brown” and
`that the Brown reference was “not utilized by the Examiner.”
`Petition at 7 and 104. But the references only would have been
`“utilized by the Examiner,” if Examiner concluded after his
`consideration that the references invalidated the claims. Petition
`at 7 and 104. The fact that Examiner did not reject the claims in
`light of these references strongly bolsters the validity of the
`claims, rather than undermining it.
`Second, the Petitioner has made no argument as to why the
`Examiner made an error. See Advanced Bionics, LLC v. Med-El
`Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at
`7-9 (PTAB Feb. 13, 2020) (precedential) (holding “[i]f the
`petitioner fails to make a showing of material error, the Director
`generally will exercise discretion not to institute inter partes
`review.”).
`Prelim. Resp. 20–21. We interpret Patent Owner’s argument as a request
`that the Board exercise its discretion to deny institution under § 325(d).
`Legal Standards
`A.
`35 U.S.C. § 325(d) states, in pertinent part, that “[i]n determining
`whether to institute or order a proceeding under this chapter, chapter 30, or
`chapter 31, the Director may take into account whether, and reject the
`
`17
`
`
`
`IPR2023-00701
`Patent 8,510,407 B1
`petition or request because, the same or substantially the same prior art or
`arguments previously were presented to the Office.”
`The Board uses a two-part framework for evaluating arguments under
`§ 325(d):
`(1) whether the same or substantially the same art previously was
`presented to the Office or whether the same or substantially the
`same arguments previously were presented to the Office; and
`(2) if either condition of first part of the framework is satisfied,
`whether the petitioner has demonstrated that the Office erred in
`a manner material to the patentability of challenged claims.
`Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH,
`IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential)
`(“Advanced Bionics”). “[T]he Becton, Dickinson factors provide useful
`insight into how to apply the framework under 35 U.S.C. § 325(d).” Id. at 9
`(footnote omitted). The non-exclusive Becton, Dickinson factors are:
`(a) the similarities and material differences between the asserted
`art and the prior art involved during examination;
`(b) the cumulative nature of the asserted art and the prior art
`evaluated during examination;
`(c) the extent to which the asserted art was evaluated during
`examination, including whether the prior art was the basis for
`rejection;
`(d) the extent of the overlap between the arguments made during
`examination and the manner in which Petitioner relies on the
`prior art or Patent Owner distinguishes the prior art;
`(e) whether Petitioner has pointed out sufficiently how the
`Examiner erred in its evaluation of the asserted prior art; and
`(f) the extent to which additional evidence and facts presented in
`the Petition warrant reconsideration of the prior art or arguments.
`
`18
`
`
`
`IPR2023-00701
`Patent 8,510,407 B1
`Becton, Dickinson & Co. v. B. Braun Melsungen AG, IPR2017-01586, Paper
`8 at 17–18 (PTAB Dec. 15, 2017) (precedential as to § III.C.5, first
`paragraph) (“Becton, Dickinson”). Becton, Dickinson factors (a), (b), and
`(d) relate to the first part of the Advanced Bionics framework (whether the
`same or substantially the same art or arguments previously were presented to
`the Office), and Becton, Dickinson factors (c), (e), and (f) relate to the
`second part of that framework (previous Office error). Advanced Bionics, 9–
`11. Only if the same or substantially the same art or arguments were
`previously presented to the Office do we then consider whether the
`petitioner has demonstrated a material error by the Office. Id.
`Under § 325(d), the art or arguments must have been previously
`presented to the Office during proceedings, such as examination of the
`underlying patent application, pertaining to the challenged patent. Advanced
`Bionics, 7. Previously presented art includes art made of record by the
`Examiner, and art provided to the Office by an applicant, such as on an
`Information Disclosure Statement (“IDS”), in the prosecution history of the
`challenged patent. Id. at 7–8.
`
`Analysis
`B.
`Patent Owner contends that Brown was “expressly considered by the
`Patent Examiner during prosecution of the application that resulted in the
`‘407 Patent.” Prelim. Resp. 20.
`The only evidence provided showing Brown was “expressly
`considered” is in an IDS. Ex. 20043 (cited at Prelim Resp. 20). This IDS
`
`
`3 Exhibit 2004 consists of three excerpts from the file history of the
`application that issued as the ’407 patent. That file history was submitted as
`Exhibit 1002. Page 1 of Exhibit 2004 can be found on page 90 of Exhibit
`1002. Page 2 of Exhibit 2004 can be found on page 94 of Exhibit 1002.
`
`19
`
`
`
`IPR2023-00701
`Patent 8,510,407 B1
`has been initialed as an indication that the references were considered.
`Ex. 1002, 90. It also appears that, in this IDS, the applicant described
`Brown as having been cited in a co-pending application. Id. at 100. Patent
`Owner does not assert, nor can we discern in the record, that the substance
`of Brown was discussed by the Office or the Patent Owner. See Pet. 105.
`Although Brown was not the basis of any rejection of the claims, its
`listing in an initialed IDS supports a conclusion that this reference was
`previously presented and considered during prosecution. See Advanced
`Bionics, 7–8 (noting that art made of record includes prior art identified in
`an IDS).
`However, the Petition includes grounds that include other art along
`with Brown, which was not before the Examiner, asserting obviousness of
`certain claims over a combination of Brown and Wecker, Brown and Beer,
`and Brown, Wecker, and Beer. Pet. 1, 8–65. While Wecker is apparently
`included in combination with Brown for a “single feature” and in the
`alternative for claims 1–4, 7–11, 13–16 and 19–23, Petitioner does not assert
`that any of claims 5, 6, 12, 16, or 17 would have been obvious over Brown
`on its own. Id. at 8, 52–57, 58–65. Additionally, Petitioner includes a
`ground based on a combination not including Brown, that of Shimada and
`Buchholz. Id. at 1, 65–100. Patent Owner does not argue, nor do we
`apprehend that Wecker, Beer, Shimada, or Buchholz are cumulative of any
`reference cited to or by the Office.
`
`
`Pages 3–5 can be found on pages 99–101 of Exhibit 1002. A second IDS,
`disclosing more than one hundred more references, is found on pages 144
`through 147 of Exhibit 1002.
`
`20
`
`
`
`IPR2023-00701
`Patent 8,510,407 B1
`Patent Owner’s arguments, therefore, do not implicate any grounds
`presented in the Petition with the exception of the first ground, and do not
`implicate any ground asserted against claims 5, 6, 12, 17, and 18.
`As discussed below, Section IV.F, we analyze Petitioner’s contentions
`regarding obviousness over Shimada and Buchholz and find that Petitioner
`has sufficiently shown, f
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