An obviousness analysis “need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007); accord In re Translogic Tech., Inc., 504 F.3d 1249, 1259 (Fed. Cir. 2007).

Petitioner states that the “ordinary and customary meaning,” as understood by a person of ordinary skill in the art at the time of the invention, applies in this case and identifies in the Petition no claim term that requires express construction.

In this regard, Dr. Wolfe explains that Morrow ’952 states that “[f]or faster access, the processor 60 may move the contents of the file allocation structure 99 into a RAM 76,” suggesting to a person of ordinary skill in the art that “the CPU 60 is configured to execute the game

Dr. Wolfe’s opinion is supported, as he explains, by the express disclosure in Diamant that a verification program (integrity checking algorithm 22) may be loaded from memory device 16 into RAM 15 to be executed by processor 12, which we view as evidence of what a person of ordinary skill in the art would have known.

Patent Owner further argues that we should “ignore Petitioner’s new, unsupported, and technically inaccurate attorney argument that ‘Morrow teaches that verification can be accomplished by verifying abbreviated bit strings rather than actual files, which also avoids the need to load the program itself into RAM.’” PO Sur-reply 22 (citing Pet.

The Request for Rehearing seeks reconsideration of our Decision Denying Institution of inter partes review of claims 1–11 of U.S. Patent No. 7,845,228 B1 (Ex. 1001, “’228 patent”), in which we determined that the particular circumstances in this case warranted us exercising our discretion under 35 U.S.C. § 314(a) to deny the Petition based on NHK Spring Co. v. Intri-Plex Techs, Inc., IPR2018- 00752, Paper 8 (PTAB Sept. 12, 2018) (precedential) and the factors set forth in Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (precedential) (“Fintiv”).

In its Reply, Petitioner contended that “[i]f an exclusion order is issued by the ITC, the Parties will move to litigation at U.S. Customs and Border Protection (‘CBP’) and its Intellectual Property Rights Branch (‘IPRB’).

Petitioner did not provide persuasive argument that we should consider these possible future proceedings as part of our analysis regarding the “proximity of the court’s trial date to the Board’s projected statutory deadline for a final written decision.” See Fintiv, Paper 11 at 6.

Thus, Fintiv identifies the ITC trial dates as one fact to be considered as part of the holistic analysis that we perform to determine whether discretion should be exercised.

The Federal Circuit has stated that “the PTO is permitted, but never compelled, to institute an IPR proceeding.” Harmonic Inc. v. Avid Tech, Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016) (cited at page 7 of the Decision).