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`EXHIBIT K
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`Case 2:21-cv-00072-JRG-RSP Document 144-11 Filed 09/07/21 Page 2 of 30 PageID #:
`4579
`Trials@uspto.gov
`Paper No. 10
`Tel: 571-272-7822
`Entered: February 27, 2019
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`
`AGIS SOFTWARE DEVELOPMENT, LLC,
`Patent Owner.
`____________
`
`Case IPR2018–01471
`Patent 9,749,829 B2
`____________
`
`
`Before TREVOR M. JEFFERSON, CHRISTA P. ZADO, and
`FREDERICK C. LANEY, Administrative Patent Judges.
`
`LANEY, Administrative Patent Judge.
`
`
`
`
`DECISION
`Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
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`
`I. INTRODUCTION
`
`Apple, Inc. (“Petitioner”) filed a request for inter partes review of
`claims 1–68 (the “challenged claims”) of U.S. Patent No. 9,749,829 B2
`(Ex. 1001, “the ’829 patent”). Paper 1 (“Pet.”). AGIS Software
`Development, LLC (“Patent Owner”) filed a Preliminary Response. Paper 6
`(“Prelim. Resp.”). Petitioner filed a Reply to the Preliminary Response.
`Paper 8. Finally, Patent Owner filed a Sur-Reply. Paper 9.
`Under 35 U.S.C. § 314, an inter partes review must not be instituted
`“unless . . . the information presented 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.” 35 U.S.C. § 314(a). Upon
`considering the evidence presented and the arguments made, we determine
`Petitioner has demonstrated a reasonable likelihood that it would prevail in
`showing the unpatentability of at least one of the challenged claims.
`Accordingly, we institute an inter partes review as to all challenged claims
`and all grounds raised in the Petition. See SAS Institute Inc. v. Iancu, 138 S.
`Ct. 1348, 1359–60 (2018) (holding that a decision to institute under
`35 U.S.C. § 314 may not institute on fewer than all claims challenged in the
`petition).
`
`A. Related Proceedings
`Petitioner advises that the ’829 patent is asserted against Petitioner in
`AGIS Software Development LLC v. Apple Inc., No. 2:17-cv-00516-JRG
`(E.D. Tex.). Pet. 2. Petitioner also advises that the ’829 patent is asserted
`against third parties in four other cases: AGIS Software Development LLC v.
`Huawei Device USA Inc., No. 2:17-cv-00513 (E.D. Tex.); AGIS Software
`Development LLC v. LG Electronics, Inc., No. 2:17-cv-00515 (E.D. Tex.);
`
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`AGIS Software Development LLC v. ZTE Corporation, No. 2:17-cv-00517
`(E.D. Tex.); AGIS Software Development LLC v. HTC Corporation, No.
`2:17-cv-00514 (E.D. Tex.). Id. Petitioner further advises that it has filed
`petitions for inter partes review challenging U.S. Patent Nos. 9,408,055,
`9,455,251, 9,467,838, and 8,213,970, which were also asserted in the above
`district court cases. Id.1 Lastly, Petitioner advises that Google also has filed
`additional petitions for inter partes review challenging these patents. Id.2
`Patent Owner identifies the same related proceedings. Paper 4, 1–3.
`
`B. The ’829 Patent
`The ’829 patent generally discloses a method and communication
`system to quickly set up and provide ad hoc, password protected, digital and
`voice networks among users of integrated handheld cellular/PDA/GPS
`phones (“integrated device” or “device”). Ex. 1001 1:33–51. The
`specification of the ’829 patent (“Specification”) discloses that there is a
`need to be able to set up ad hoc digital and voice networks easily and rapidly
`across different groups of users, such as military, first responder, and other
`public and private emergency groups. Id. at 2:11–19. According to the
`Specification, users’ integrated devices need to be able to rapidly coordinate
`activities across groups, for example, to be able to communicate with each
`other without having to identify each other by name, e-mail address, or
`phone number. Id. at 3:48–51.
`
`
`1 The petitions for inter partes review are in cases IPR2018-00817,
`IPR2018-00818, IPR2018-00819, and IPR2018-00821.
`2 The petitions for inter partes review are in cases IPR2018-01080,
`IPR2018-01082, IPR2018-01083, IPR2018-01084, IPR2018-01085,
`IPR2018-01086, IPR2018-01087, and IPR2018-01088.
`
`3
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`The disclosed system includes a plurality of Internet Protocol (“IP”)
`capable integrated devices, each having an Advanced Communication
`Software (“ACS”) application program. Id. at 2:57–60. The plurality of
`integrated devices, in conjunction with a remote Server, provides the ability
`to establish an ad hoc network of devices so that the devices can either
`broadcast to a group or selectively transmit to each other. Id. at 2:60–63. A
`user of an integrated device establishes the ad hoc network or joins an
`existing ad hoc network by entering the remote Server’s IP address, an ad
`hoc event name such as “Katrina,” and a password in an appropriate prompt
`on the user’s device. Id. at 3:52–55, 10:46–60. The user also enters the
`user’s name and phone number. Id.
`Upon establishing or joining the network, the user’s device
`commences reporting information to the remote server, including the user’s
`IP address and GPS derived location. Id. at 10:53–61. Initially, when only
`one device has joined the network, the remote server retains the information
`reported by the device. Id. at 10:63–11:4. When additional devices join the
`network by using the same ad hoc event name and password and report their
`information to the remote server, the remote server can use the network
`participant devices’ IP addresses to pass location information automatically
`between the devices. Id. at 11:4–10.
`According to the Specification, the ACS application program also
`provides for a geographical map that displays georeferenced entities on a
`user’s device display. Id. at 6:18–23. The map is displayed on a touch
`screen that the device user may interact with using his/her finger or a stylus.
`Id. at 5:39–52, 6:61. The map may display symbols depicting permanent
`geographical locations and buildings. Id. at 6:41–45. The map may also
`display symbols, such as a triangle or square, that represent participants of
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`the communication network. Id. at 6:59–66. The latitude and longitude of
`the device corresponding to a particular symbol displayed on the map are
`related by software to x and y coordinates on the map. Id. at 6:66–7:8.
`Accordingly, the location of the symbol on the map corresponds to the
`device’s physical location provided by the device’s GPS location data. Id. at
`5:48–52, 6:66–7:8. In addition, a database may associate the latitude and
`longitude of a particular symbol displayed on the map with a specific cell
`phone number, IP address, and e-mail address. Id. at 6:66–7:2.
`One feature of the disclosed system is that a user may initiate contact
`with another user by selecting with a stylus the symbol on the user’s map
`corresponding to the user to be contacted. Id. at 8:64–9:13. The device of
`the initiator detects the x and y coordinates of where the stylus touched the
`display screen, and software translates the x and y coordinates to latitude
`and longitude. Id. The software then searches the device database of the
`initiator device for information corresponding to the latitude and longitude,
`such as an associated phone number or IP address. Id. The software then
`initiates appropriate contact, for example, by initiating a phone or Voice
`over IP (“VoIP”) call to the device of the user to be contacted. Id.
`Another feature of the disclosed system allows coordination of voice
`communications over a particular Radio Channel. Id. at 12:4–11. To
`accomplish this coordination, a “Group leader” may issue a command,
`which is sent to the server to cause the PDAs/PCs that are in the network
`group to automatically shift their radio or cellular device to the desired
`channel or frequency. Id. at 12:15–41. A user of the network group, thus, is
`able to control remotely another participant’s device by sending a command
`via the server that will cause the participant’s device to shift to the identified
`channel or frequency.
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`C. Challenged Claims
`Petitioner challenges all claims, claims 1–68, of the ’829 patent.
`Claims 1, 34, 35, and 68 are independent, and are substantially similar.
`Claim 1 is illustrative.
`1. A computer-implemented method comprising:
`performing, by one or more server devices:
`[a] forwarding, to a first device, a request to join a
`group, wherein the request is received from a
`second device and the group includes the
`second device;
`[b] based on acceptance of the request by the first
`device, joining the first device to the group,
`wherein joining the first device to the group
`comprises authorizing the first device to
`repeatedly share device location information
`and repeatedly engage in remote control
`operations with each device included in the
`group;
`[c] receiving a first message comprising a request
`for a first updated location of the first device,
`wherein the first message is sent by the
`second device and includes data identifying
`the first device;
`[d] in response to receiving the first message,
`sending, to the first device, a second message
`comprising a request for the first updated
`location of the first device;
`[e] after sending the second message, receiving a
`response to the second message, the response
`including
`first
`location
`information
`comprising the first updated location of the
`first device;
`[f] sending, to the second device, the first location
`information and georeferenced map data,
`wherein the second device is configured to
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`present, via a display of the second device, a
`georeferenced map
`based
`on
`the
`georeferenced map data and a symbol
`corresponding to the first device, wherein the
`symbol is positioned on the georeferenced
`map at a first position corresponding to the
`first updated location of the first device, and
`wherein the georeferenced map data relate
`positions on the georeferenced map to spatial
`coordinates;
`[g] after sending the first location information and
`the georeferenced map data to the second
`device,
`receiving
`second
`location
`information comprising a second updated
`location of the first device and sending the
`second location information to the second
`device, wherein
`the second device
`is
`configured
`to use
`the server-provided
`georeferenced map data and the second
`location information to reposition the symbol
`on the georeferenced map at a second
`position corresponding to the second updated
`location of the first device;
`[h] receiving a third message related to remotely
`controlling the first device to perform an
`action, wherein the third message is sent by
`the second device; and
`[i] after receiving the third message, sending, to the
`first device, a fourth message related to
`remotely controlling the first device to
`perform the action, wherein the first device is
`configured to perform the action based on
`receiving the fourth message.
`Ex. 1001, 14:59–15:41 (brackets added).
`
`D. Relevant References
`Petitioner relies on the following references:
`(1) U.S. Patent No. 7,630,724 B2, issued Dec. 8, 2009 (“the
`7
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`’724 patent”) (Ex. 1008); and
`(2) U.S. Patent Application Publication No. 2012/0008526 A1,
`published Jan. 12, 2012 (“Borghei”) (Ex. 1027).
`
`E. Asserted Ground of Unpatentability
`Petitioner contends that claims 1–68 of the ’829 patent are
`unpatentable under 35 U.S.C. § 103 over the ’724 patent alone or in
`combination with Borghei. Pet. 4, 39–58.
`
`II. DISCUSSION
`A. Level of Ordinary Skill
`In determining whether an invention would have been obvious at the
`time it was made, we consider the level of ordinary skill in the pertinent art
`at the time of the invention. Graham v. John Deere Co. of Kansas City, 383
`U.S. 1, 17 (1966). “The importance of resolving the level of ordinary skill
`in the art lies in the necessity of maintaining objectivity in the obviousness
`inquiry.” Ryko Mfg. Co. v. Nu-Star, Inc., 950 F.2d 714, 718 (Fed. Cir.
`1991).
`Petitioner argues that a person of ordinary skill in the art in the field of
`the ’829 patent would have a bachelor’s degree in computer science,
`electrical or computer engineering, or a related field, and at least two to three
`years’ experience in mobile development, including designing and
`implementing software applications for mobile communications systems.
`Pet. 8. Such a person of ordinary skill, Petitioner asserts, would have been
`capable of implementing mobile applications, including those that display
`maps. Id. Petitioner asserts further that this description is approximate, and
`a higher level of education or skill may make up for less experience, and
`vice versa. Id.
`
`8
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`Patent Owner neither provides an assessment of the appropriate level
`of skill in the art nor suggests that Petitioner’s characterization of the
`ordinary skill level would lead to an improper understanding of the claimed
`technology or about what the prior art demonstrates was known. See
`generally Prelim. Resp. 1–17.
`On this record, other than the descriptor “at least,” we adopt
`Petitioner’s uncontested representation of the level of ordinary skill in the
`art. We further note that the prior art itself demonstrates a level of skill in
`the art at the time of the invention that is consistent with Petitioner’s
`position. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001)
`(explaining that specific findings regarding ordinary skill level are not
`required “where the prior art itself reflects an appropriate level and a need
`for testimony is not shown” (quoting Litton Indus. Prods., Inc. v. Solid State
`Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985))).
`
`B. Claim Construction
`In an inter partes review claim terms in an unexpired patent are given
`their broadest reasonable construction in light of the specification of the
`patent. 37 C.F.R. § 42.100(b) (2018).3 Consistent with this standard, we
`assign claim terms their ordinary and customary meaning, as would be
`understood by one of ordinary skill in the art at the time of the invention, in
`the context of the entire patent disclosure. See In re Translogic Tech., Inc.,
`504 F.3d 1249, 1257 (Fed. Cir. 2007). Only those terms that are in
`
`
`3 This standard applies to inter parties reviews filed before November 13,
`2018. 77 Fed. Reg. 48,727 (Aug. 14, 2012) (codified at 37 C.F.R.
`§ 42.100(b)), as amended at 81 Fed. Reg. 18,766 (Apr. 1, 2016); see also
`83 Fed. Reg. 51,340 (Oct. 11, 2018) (changing the standard for interpreting
`claims in inter partes reviews filed on or after November 13, 2018).
`
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`controversy need be construed, and only to the extent necessary to resolve
`the controversy. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor
`Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs., Inc. v. Am.
`Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).
`Petitioner proposes constructions for the terms “georeferenced map
`data” and “georeferenced map.” Pet. 9–12. Patent Owner does not propose
`constructions for any claim terms. See generally Prelim. Resp. 1–17.
`We determine, for purposes of this Decision, that no claim terms
`require express construction.
`
`C. Priority Date of the ’829 Patent
`The ’829 patent claims priority through a series of applications that
`begins with U.S. Patent Application No. 10/711,490 (“the
`’490 application”), which was filed on September 21, 2004, and ultimately
`issued as U.S. Patent No. 7,031,728 on April 18, 2006 (Ex. 1007). Ex. 1001,
`1:8–26. Several of the earlier-filed applications are continuation-in-part
`applications (“CIP”), which may add or remove subject matter. Petitioner
`provides a chart (set out below with annotations redacted) identifying the
`earlier-filed applications listed in the ’829 patent. Pet. 17.
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`
`Petitioner’s chart (annotations redacted), shown above, illustrates the
`sequence of the related applications listed in the ’829 patent. Id. As
`depicted in Petitioner’s chart, the ’829 patent claims priority to the
`’724 patent, the main asserted prior art reference in this proceeding. See id.;
`Ex. 1001, 1:20–23.
`Even though the ’829 patent claims priority, through a series of
`applications, to the ’490 application, the ’829 patent does not automatically
`receive the benefit of the ’490 application’s filing date. “[T]o gain the
`benefit of the filing date of an earlier application under 35 U.S.C. § 120,
`each application in the chain leading back to the earlier application must
`comply with the written description requirement of 35 U.S.C. § 112.”
`
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`Zenon Envtl., Inc. v. U.S. Filter Corp., 506 F.3d 1370, 1378 (Fed. Cir. 2007)
`(quoting Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1571 (Fed. Cir.
`1997)); see also In re Hogan, 559 F.2d 595, 609 (CCPA 1977) (“[T]here has
`to be a continuous chain of copending applications each of which satisfies
`the requirements of § 112 with respect to the subject matter presently
`claimed.” (quoting In re Schneider, 481 F.2d 1350, 1356 (CCPA 1973)
`(alteration in original)). Thus, if any application in the priority chain fails to
`make the requisite disclosure of subject matter, the later-filed application is
`not entitled to the benefit of the filing date of applications preceding the
`break in the priority chain.
`Petitioner contends that “[a]ll claims of the ’829 patent are entitled to
`an effective filing date no earlier than October 31, 2014, the filing date of its
`immediate parent,” U.S. Patent No. 9,467,838 (“the ’838 patent”), from
`which the ’829 patent is a continuation. Pet. 12. This is so, according to
`Petitioner, because “the ’829 patent’s grandparent, [U.S. Patent Application
`14/027,410 (“the ’410 application”)], fails to provide sufficient written
`description to support [for] the ’829 patent claims.” Id. at 13. As a result,
`Petitioner asserts, “[T]he ’829 patent claims lack the requisite continuity of
`disclosure and AGIS’s earlier patents that issued before October 31, 2013,
`are prior art under 35 U.S.C. § 102(a)(1) (post-AIA), including the primary
`reference here, the ’724 patent.” Id.
`The petitioner bears the ultimate burden of persuasion to demonstrate
`unpatentability of the challenged claims; however, a different burden, the
`burden of production, shifts to the patent owner once a petitioner provides
`allegedly invalidating art that predates the filing date of the challenged
`patent, where the patent-at-issue claims an earlier priority date through
`continuations-in-part and the Examiner did not expressly address the priority
`
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`issue. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375,
`1379–80 (Fed. Cir. 2015) (citing PowerOasis, Inc. v. T-Mobile USA, Inc.,
`522 F.3d 1299, 1305–06 (Fed. Cir. 2008)); see also Research Corp. Techs.
`v. Microsoft Corp., 627 F.3d 859, 871 (Fed. Cir. 2010). Petitioner has
`presented allegedly invalidating art, i.e., the ’724 patent, that predates the
`filing date of the ’838 patent. Therefore, on the issue of whether the ’724
`patent is prior art to the ’829 patent, the burden of production has shifted to
`Patent Owner to argue or produce evidence that the challenged claims of the
`’829 patent are entitled to a filing date before the filing date of the ’724
`patent, which includes showing not only the existence of the earlier
`applications through which Patent Owner seeks to claim priority, but also
`how the written description in the earlier applications supports the
`challenged claims. Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316,
`1327 (Fed. Cir. 2008).
`The relevant inquiry is whether the disclosure in the earlier
`applications “describe[s] an invention understandable to [the] skilled artisan
`and show[s] that the inventor actually invented the invention claimed” in the
`challenged patent. Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336,
`1351 (Fed. Cir. 2010) (en banc). In order to claim priority back to the filing
`date of the ’724 patent, Patent Owner must show the chain is continuous and
`therefore must show not only that the earliest application in the chain
`provides written description support for the challenged claims, but also that
`all intervening applications in the chain provide support. In re Schneider,
`481 F.2d 1350, 1356 (CCPA 1973).
`Thus, the burden of production falls on Patent Owner, not Petitioner,
`to demonstrate that ’724 patent is not prior art to the challenged claims of
`the ’829 patent, including showing that the ’410 application and other
`
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`intermediate applications in the priority chain provide written description
`support for the challenged claims. Patent Owner, however, does not attempt
`to show that the ’410 application, and intervening applications, support the
`challenged claims of the ’829 patent. See generally Prelim. Resp. We need
`not reach Petitioner’s arguments in support of its contention that the
`’410 application fails to provide written description support, under 35 U.S.C.
`§ 112, for the challenged claims because Patent Owner, not Petitioner, bears
`the burden of production on the issue at this stage.
`Therefore, because Patent Owner has not satisfied its burden of
`production to show that the ’410 application and earlier intervening
`applications provide written description support for the challenged claims of
`the ’829 patent, Patent Owner has not established that the challenged claims
`are entitled to a filing date earlier than October 31, 2014, which is the filing
`date of the ’838 patent. Accordingly, on the present preliminary record, the
`’724 patent, which issued on December 8, 2009, qualifies as prior art to the
`challenged claims of the ’829 patent under 35 U.S.C. 102(a)(1).
`
`D. The ’724 patent (Ex. 1008)
`The ’724 patent discloses a cellular, PDA communication device and
`communication system for allowing a plurality of cellular phone users to
`monitor each other’s locations and status, and to initiate cellular phone calls,
`including point to call conference calls, by touching a symbol on a touch
`screen display with a stylus. Ex. 1008, [57]. Each participant’s cellular
`phone PDA device includes a GPS navigation receiver with application
`software for point to call cellular phone initiation to participants and
`geographical entities. Id.
`According to the ’724 patent, “[t]he heart of [its] invention lies in the
`AGIS software applications provided in the device.” Id. at 5:9–10.
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`Mounted within the housing as part of the PDA is a display and a CPU. Id.
`at 5:10–11. The internal CPU includes databases that provide for a
`geographical map and georeferenced entities that are shown on the display,
`which includes various areas of interest in a particular local map section. Id.
`at 5:11–15. The software has an algorithm that relates the x and y
`coordinates to latitude and longitude and can access a participant’s symbol
`or a fixed or movable entity’s symbol as being the one closest to that point.
`Id. at 5:63–67.
`One feature of the device allows an operator to enter on the cellular
`phone device’s georeferenced map a new entity or event that can include an
`observed object, person, fire, accident or other event occurring at a specific
`geographical location. Id. at 10:23–27. The device’s map display, in
`accordance with the map software program, provides a geophysical display
`using a georeferenced map, chart, satellite image or aerial photograph of a
`given area or location. Id. at 18:57–60. The device application software can
`also provide a user with the ability to request a specific geo-referenced map
`or chart, aerial photograph or satellite image from a remote image server.
`Id. at 18:63–66. Activation of a request soft switch causes a message to be
`sent to a remote server that causes a georeferenced chart, map, aerial
`photograph or satellite image to be sent to the requestor’s cell phone/PDA
`device where the image is georeferenced and displayed. Id. at 19:2–7.
`
`E. Borghei (Ex. 1027)
`Borghei generally relates to location-sharing for mobile devices. Ex.
`1027, ¶ 1. The system of Borghei detects the formation of a location-sharing
`group of multiple devices and defines a geofence around the location-
`sharing group. Id. ¶ 5. The “geofence can be defined based on the
`respective current location and the respective coverage radius of each
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`participating mobile device of the ad hoc location-sharing group.” Id. ¶ 30.
`As a result, the group location is not based on any particular mobile device,
`but on the group as a whole. Id. In addition, the system of Borghei uses the
`geofence to detect events of interest, such as points of interest convenient for
`the group, a particular device enter/leaving the ad hoc location-sharing
`group, and/or detecting unauthorized users near the group. Id. ¶¶ 31–33.
`
`F. Principles of Law on Obviousness
`Section 103 forbids issuance of a patent when “the differences
`between the claimed invention and the prior art are such that the claimed
`invention as a whole would have been obvious before the effective filing
`date of the claimed invention to a person having ordinary skill in the art to
`which the claimed invention pertains.” In Graham v. John Deere Co., 383
`U.S. 1 (1966), the Supreme Court set out a framework for applying the
`statutory language of § 103: under § 103, the scope and content of the prior
`art are to be determined; differences between the prior art and the claims at
`issue are to be ascertained; and the level of ordinary skill in the pertinent art
`resolved.
`The Supreme Court has made clear that we apply “an expansive and
`flexible approach” to the question of obviousness. KSR Int’l Co. v. Teleflex,
`Inc., 550 U.S. 398, 415 (2007). Whether a patent claiming the combination
`of prior art elements would have been obvious is determined by whether the
`improvement is more than the predictable use of prior art elements according
`to their established functions. KSR Int’l Co., 550 U.S. at 417. Reaching this
`conclusion, however, requires more than a mere showing that the prior art
`includes separate references covering each separate limitation in a claim
`under examination. Unigene Labs., Inc. v. Apotex, Inc., 655 F.3d 1352,
`1360 (Fed. Cir. 2011). Rather, obviousness requires the additional showing
`16
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`that a person of ordinary skill at the time of the invention would have
`selected and combined those prior art elements in the normal course of
`research and development to yield the claimed invention. Id.
`
`G. Patentability Analysis
`Petitioner contends claims 1–68 of the ’829 patent are unpatentable
`under 35 U.S.C. §103 as obvious over the ’724 patent alone or in
`combination with Borghei. Pet. 4. Petitioner relies on the declaration of Dr.
`Bederson to support its contentions. Ex. 1002 (“Bederson declaration”).
`Patent Owner does not dispute that the ’724 patent and Borghei
`qualify as prior art. Although Patent Owner disputes the clarity of
`Petitioner’s mapping of the claimed operations to the recited “first device,”
`“second device,” and “server,” Patent Owner does not argue that the ’724
`patent is missing any of the combination of operations that the challenged
`claims recite. See Prelim. Resp. 5–15. We address Patent Owner’s
`arguments below.
`Petitioner relies heavily on Patent Owner’s admissions during
`prosecution of the ’829 patent, namely Patent Owner’s assertion that the
`’724 patent provides written description support for the claims challenged in
`this case. See generally Pet. 40–58 (citing Ex. 1026, 125–216). Although
`Patent Owner’s admissions make it difficult for Patent Owner to refute that
`the ’724 patent renders obvious the claims of the ’829 patent, these
`admissions do not absolve Petitioner of its burden to demonstrate
`unpatentability. The Petition must specify with particularity where each
`element of a challenged claim is found in the prior art, and include a detailed
`explanation of the relevance of the prior art to the claim.
`37 C.F.R. § 42.104(b)(4) (“The petition must specify where each element of
`the claim is found in the prior art patents or printed publications relied upon .
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`. . .”); id. § 42.22(a)(2) (“Each petition . . . must include . . . a detailed
`explanation of the significance of the evidence including material facts . . .
`.”); id. § 42.104(b)(5) (“[T]he petition must set forth . . . the relevance of the
`evidence to the challenge raised, including identifying specific portions of
`the evidence that support the challenge.”). As the Federal Circuit has
`explained, “[i]n an IPR, the petitioner has the burden from the onset to show
`with particularity why the patent it challenges is unpatentable.” Harmonic
`Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016).
`For the reasons discussed below, we determine that Petitioner has
`demonstrated a reasonable likelihood it would prevail in establishing the
`unpatentability of at least one claim of the ’829 patent.
`1. Argument
`Independent claims 1 and 35 are directed to a “computer-implemented
`method” that recite steps performed by either “one or more server devices”
`(claim 1) or by “a second device” (claim 35). Ex. 1001, 14:59–60, 18:15–
`16. Independent claims 34 and 68 are directed to a “system” that has either
`“one or more server devices programmed to perform [the recited]
`operations” (claim 24) or “a second device programmed to perform [the
`recited] operations” (claim 68). Id. at 17:31–33, 20:65–67. Each of these
`claims recite substantially similar limitations, albeit as steps of a method or
`operations of a device. Petitioner addresses claims 1, 34, 35, and 68
`collectively and relies on the same evidence to establish each of the recited
`steps/operations. See Pet. 43–51.
`In the Preliminary Response, Patent Owner contests Petitioner’s
`unpatentability assertions with respect to independent claim 1 and alleges
`that, in light of “Petitioner’s treatment of the claims in the Petition,” the
`alleged deficiencies also apply to the other challenged claims of the ’829