Trials@uspto.gov
`Tel: 571-272-7822
`
`
`Paper 7
`Entered: April 28, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`ARISTOCRAT TECHNOLOGIES, INC.,
`Petitioner,
`
`v.
`
`IGT,
`Patent Owner.
`_______________
`
`Case IPR2016-00252
`Patent 7,303,469 B2
`_______________
`
`
`Before JOSIAH C. COCKS, MICHAEL W. KIM, and RICHARD E. RICE,
`Administrative Patent Judges.
`
`KIM, Administrative Patent Judge.
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`Tel: 571-272-7822
`
`
`Paper 7
`Entered: April 28, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`ARISTOCRAT TECHNOLOGIES, INC.,
`Petitioner,
`
`v.
`
`IGT,
`Patent Owner.
`_______________
`
`Case IPR2016-00252
`Patent 7,303,469 B2
`_______________
`
`
`Before JOSIAH C. COCKS, MICHAEL W. KIM, and RICHARD E. RICE,
`Administrative Patent Judges.
`
`KIM, Administrative Patent Judge.
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`
`IPR2016-00252
`Patent 7,303,469 B2
`
`
`I.
`
`INTRODUCTION
`Background
`A.
`Aristocrat Technologies, Inc. (“Petitioner”) filed a Petition to institute
`an inter partes review of claims 1–5 and 7–35 of U.S. Patent No. 7,303,469
`B2 (Ex. 1001, “the ’469 patent”). Paper 1 (“Pet.”). IGT (“Patent Owner”)
`filed a Preliminary Response (Paper 5; “Prelim. Resp.”).
`We have jurisdiction under 35 U.S.C. § 314(a), which provides that an
`inter partes review may not be instituted unless the information presented in
`the Petition shows “there is a reasonable likelihood that the petitioner would
`prevail with respect to at least 1 of the claims challenged in the petition.”
`Upon consideration of the Petition and Preliminary Response, we determine
`that the information presented in the Petition demonstrates a reasonable
`likelihood that Petitioner would prevail in showing that claims 1–5 and 7–35
`are unpatentable.
`
`Related Proceedings
`B.
`Petitioner and Patent Owner identify the following district court
`proceedings concerning the ’469 patent: IGT v. Aristocrat Technologies,
`Inc., 2:15-cv-00473 GMN-GWF, 2015 WL 5554135 (D. Nev. Sept. 18,
`2015). Pet. 1; Paper 4, 2; Prelim. Resp. 6.
`
`The ’469 Patent
`C.
`According to the ’469 patent, gaming machines currently exist with
`bonus rounds in which a player has one or more opportunities to choose
`bonus awards that are initially masked from a group of symbols arranged in
`a pattern displayed to a player. Ex. 1001, 1:29–32. The ’469 patent
`discloses that, to increase player enjoyment and excitement, it is desirable to
`provide players with new bonus rounds where the players have multiple
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`opportunities to receive winning payments, for example, from multiple
`levels of bonus rounds. Ex. 1001, 1:51–58.
`The bonus round begins when the player having credits has achieved a
`qualifying condition. Ex. 1001, 5:6–9. Figure 1, as shown below, is a front
`plan view of a gaming device that shows a qualifying condition, such as the
`text “BONUS!” appearing in the same location on three adjacent reels.
`Ex. 1001, 5:16–18.
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`Once a condition, such as the qualifying condition above, is reached,
`the bonus round begins by successively displaying multiple groups to the
`player. In an exemplary embodiment, each of Figures 5A–5D, as shown
`below, represent those successive screens where each screen displays a
`separate selection group containing multiple selections. Ex. 1001, 3:12–13.
`Each screen also shows credit meter 16 and bonus meter 60, and, in this
`scenario, the player has started the bonus round with “10 CREDITS.”
`Ex. 1001, 8:60–63, 9:1–3.
`
`As shown above in Figures 5A–5D, each selection in each group has an
`award associated with it. For example, Figure 5A has four selections 132b,
`232b, 332b, 432b. In turn, each of these selections has the following and
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`respective awards: “150 CREDITS,” “500 CREDITS,” “5 CREDITS” and
`“10 CREDITS.” When displayed initially, the award amount associated
`with each selection is hidden by the selection button. Ex. 1001, 1:29–32.
`In the bonus round, the player is allowed to make at least one pick
`from the selections offered in each group. For example, Figure 5A shows
`that the player has picked two selections from the four selection options,
`where the player-picked selections are shown as non-cross-hatched
`selections 132b, 432b. Ex. 1001, 8:63–67. The award associated with each
`picked selection (and/or unpicked selection) is then revealed, the amounts
`revealed for each picked selection are accumulated and shown in bonus
`meter 60, in this case as the amount of “160 CREDITS,” and then that
`amount is aggregated with the initial “10 CREDITS” to arrive at the “170
`CREDITS” shown in credit meter 16. Ex. 1001, 9:1–10.
`The bonus round then proceeds to Figure 5B, which shows a different
`group having two selections 132c and 232c. This figure shows that selection
`132c, with an award of “20 CREDITS,” was picked. This award is then
`accumulated with awards of picked selections from the previous group and
`shown in bonus meter 60 of Figure 5B as the amount of “180 CREDITS.”
`Next are groups shown in Figures 5C and 5D, where the player picks
`selections from each group and where, eventually, the accumulated award in
`the amount of “350 CREDITS” is shown in bonus meter 60 of Figure 5D.
`Ex. 1001, 9:11–24.
`
`Illustrative Claim
`D.
`Independent claim 1 is reproduced below:
`1. A gaming device comprising:
`a wagering game operable upon a wager by a player;
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`a secondary game operable upon an occurrence of a
`triggering event in the wagering game;
`a plurality of selection groups in the secondary game;
`a plurality of selections in each of said selection groups;
`a guaranteed number of picks associated with each
`selection group, wherein each guaranteed number of picks
`includes at least one pick, and wherein said guaranteed number
`of picks of at least one of the selection groups is less than said
`number of selections in said selection group;
`a plurality of awards, each of said plurality of awards
`having a value greater than zero, wherein each said award is
`individually associated with at least one of the selections, and
`wherein each selection has one of said awards individually
`associated with said selection;
`a display device;
`an input device; and
`a processor programmed to operate with the display device
`and the input device, for each play of the secondary game, to
`sequentially display each of the selection groups to the player in
`said play of the secondary game, and when each of the selection
`groups is being displayed in said play of the secondary game:
`(a) simultaneously display to the player each of the
`selections in said selection group,
`(b) enable the player to make the associated guaranteed
`number of picks of the selections in said selection group, without
`regard to any of the selections picked in any of the other selection
`groups,
`(c) evaluate each of the picked selections to determine the
`award associated with each of the picked selections, and
`(d) display and provide to the player the determined
`awards, wherein the player is provided a number of determined
`awards which is at least equal to the number of selections picked
`in said selection group.
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`
`Asserted Grounds of Unpatentability
`E.
`Petitioner challenges claims 1–5, 7–35 on the following grounds.
`
`Reference(s)
`
`Basis
`
`Challenged Claims
`
`LMAD1
`
`§ 103(a)
`
`1–5, 7–15, 18–22, 28–
`32, and 35
`
`LMAD in view of Thomas2
`
`§ 103(a) 23–27
`
`LMAD in view of Walker3
`
`§ 103(a) 16–17 and 33–34
`
`
`II. ANALYSIS
`A. Claim Construction
`In an inter partes review, a claim in an unexpired patent shall be given
`its broadest reasonable construction in light of the specification of the patent
`in which it appears. 37 C.F.R. § 42.100(b); see also In re Cuozzo Speed
`Techs., LLC, 793 F.3d 1268, 1278 (Fed. Cir. 2015) (“We conclude that
`Congress implicitly approved the broadest reasonable interpretation standard
`in enacting the AIA.”), cert. granted sub nom. Cuozzo Speed Techs. LLC v.
`Lee, 136 S.Ct. 890 (mem.) (2016). Under the broadest reasonable
`construction standard, claim terms are given their ordinary and customary
`
`
`1 “Let’s Make a Deal” magazine article, dated June 1999 (Ex. 1003;
`hereinafter “LMAD”).
`2 U.S. Patent No. 6,190,255 B1 issued February 20, 2001 (Ex. 1009).
`3 U.S. Patent No. 6,174,235 B1 issued January 16, 2001 (Ex. 1004).
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`meaning, as would be understood by one of ordinary skill in the art in the
`context of the entire disclosure. In re Translogic Tech., Inc., 504 F.3d 1249,
`1257 (Fed. Cir. 2007). Any special definition for a claim term must be set
`forth in the specification with reasonable clarity, deliberateness, and
`precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). We must be
`careful not to read a particular embodiment appearing in the written
`description into the claim if the claim language is broader than the
`embodiment. In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993).4
`We determine that no express construction of any claim terms is
`necessary at this time.
`
`B.
`
`Claims 1–5, 7–15, 18–22, 28–32, and 35 as
`Unpatentable over LMAD
`Petitioner contends that claims 1–5, 7–15, 18–22, 28–32, and 35 are
`unpatentable over LMAD. Pet. 16–52 (citing Exs. 1001–1003, 1005, 1010,
`1012, 1015, 1020). Patent Owner disagrees. Prelim. Resp. 23–53 (citing
`Exs. 1001–1003, 1020). Claims 1, 15, 20, 28, and 31 are independent.
`1.
`LMAD
`LMAD is a magazine article describing a multimedia video product
`game called “Let’s Make a Deal.” Ex. 1003, 48. Specifically, LMAD
`describes a five-reel, five-line video-slot machine game. Ex. 1003, 48. In
`the game, a player bets money, initiates the reels, and depending on the
`combination of symbols set forth on a particular line, wins a payout.
`
`
`4 We note that the claim construction section of the Petition refers to
`independent claim 36. Pet. 7. Independent claim 36, however, is not
`challenged in this Petition. Insofar as independent claim 36 is referenced for
`claim construction purposes only, it has been taken into account.
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`Ex. 1003, 48. LMAD further describes two separate bonus games.
`Ex. 1003, 50. One of the bonus games is triggered when three gift packages
`are scattered anywhere on the screen, triggering a first bonus round called
`“Deal Feature.” Ex. 1003, 50. In “Deal Feature,” the player is shown three
`packages and picks one of them for a hidden bonus first prize. Ex. 1003, 50.
`The first prize is anywhere from two to eight times the total bet. Ex. 1003,
`50. At that point, the player can either take the package bonus amount based
`on the first prize, or trade the package bonus amount in for a chance at a
`“Big Deal of the Day” in a second bonus round. Ex. 1003, 50. The “Big
`Deal of the Day” involves three doors, where one door hides a “Big Deal of
`the Day,” a second bonus for six to ten times the package bonus amount,
`another door hides a medium-size bonus, and a third door hides either a
`small bonus amount or a “Zonk,” a substantial reduction or the complete
`elimination of any bonus prize. Ex. 1003, 50.
`2.
`Analysis
`Petitioner asserts that LMAD discloses or suggests every limitation
`recited in claims 1–5, 7–15, 18–22, 28–32, and 35. Pet. 16–52. For
`example, Petitioner asserts that when the first and second bonus rounds in
`LMAD are correlated with the “plurality of selection groups in the
`secondary game,” LMAD discloses every limitation of independent claim 1,
`except “a plurality of awards, each of said plurality of awards having a value
`greater than zero, wherein each said award is individually associated with at
`least one of the selections, and wherein each selection has one of said
`awards individually associated with said selection.” For that limitation,
`Petitioner admits that one of the awards in the second bonus round of
`LMAD is a “Zonk,” which may have a value of zero, but then asserts that
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`one of ordinary skill would have had reason to modify the “Zonk” into a
`non-zero amount for various reasons. Pet. 19. Among those reasons,
`LMAD discloses that “Zonk” only occurs 3% of the time, and that the third
`door may hide a small bonus amount, as opposed to a “Zonk.” LMAD
`discloses further that “Zonk” may be a substantial reduction of the bonus
`amount, as opposed to zero. In light of those disclosures, Petitioner
`contends that a “POSA would readily appreciate that players prefer games
`with higher payouts and enjoy games more when they ‘win,’ even if only by
`a small amount, as opposed to experiencing the disappointment of winning a
`play of the bonus game only to receive no award,” and that “creating a bonus
`game with a second selection group having all nonzero awards was well
`within the knowledge and skill of the POSA, and would have been an
`obvious design choice.” Pet. 19–24 (citing Exs. 1003, 1010). Petitioner
`provides similar analyses for claims 2–5, 7–15, 18–22, 28–32, and 35.
`Patent Owner asserts that Petitioner’s analysis is flawed, because in
`LMAD, the player never takes the package bonus amount from the first
`bonus round into the second, as required by independent claim 1, as the
`player must “trade-in” or “forfeit” the package bonus amount in order play
`the second bonus round. Patent Owner’s assertions are misplaced, as
`LMAD discloses that the “Big Deal of the Day” is a second bonus for six to
`ten times the package bonus amount from the first bonus round, indicating
`that the package bonus amount is taken into the second round. Insofar as
`Patent Owner may be asserting that, technically, the player forfeits the
`package bonus amount when entering the second round of LMAD, even if
`the bonus determined in the second bonus round may be based on the
`package bonus amount, that assertion is misplaced, as independent claim 1
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`does not preclude such forfeiture between bonus rounds. In other words,
`Patent Owner seeks to distinguish between the following two scenarios
`based on forfeiture:
`first award second award (multiplier of first award)
`total award (first award times multiplier)
`first award forfeiture of first award to get second
`award second award (multiplier of first award) total
`award (first award times multiplier).
`We disagree that the relative distinction between the two scenarios identified
`by Patent Owner is relevant, as we are unable to identify any claim language
`in independent claim 1 that would support Patent Owner’s assertion that the
`former scenario would meet the claim language, but the latter scenario
`would not. Indeed, independent claim 1 does not even recite anything
`corresponding to the total reward.
`Patent Owner asserts further that in the scenario where the player
`elects not to proceed to the second bonus round in LMAD, independent
`claim 1 is no longer met because there are no longer “a plurality of selection
`groups in the secondary game” where there are “a guaranteed number of
`picks associated with each selection group.” Patent Owner’s assertions are
`misplaced, as independent claim 1 does not require that every permutation of
`the gaming device results in a player playing two bonus rounds and making
`one selection in each round; independent claim 1 only requires that every
`player is guaranteed having those options available. To that end, LMAD
`discloses that every player who triggers the relevant bonus game is
`guaranteed the option to play both rounds.
`Patent Owner asserts additionally that LMAD teaches away from
`making the proffered modification of eliminating the zero payout feature of
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`“Zonk,” because that aspect of the “Zonk” is a key feature of both the “Let’s
`Make a Deal” television show, and, hence, the LMAD slot machine. Prelim.
`Resp. 26–28. As an initial matter, Patent Owner’s assertions are misplaced,
`as LMAD discloses that “Zonk” may be a substantial reduction of any bonus
`prize, which is greater than zero. Moreover, on this record, we are
`unpersuaded that Patent Owner has shown sufficiently that the zero payout
`feature was so integral to LMAD as to teach away from its elimination,
`especially when weighed against Petitioner’s evidence and reasoning, as set
`forth on pages 19 to 25 of the Petition. Of course, upon institution of trial,
`Patent Owner will have the opportunity to challenge Petitioner’s evidence
`and present its own counter evidence on this issue.
`Similarly, Patent Owner asserts that making the proffered
`modification of eliminating the zero payout feature of “Zonk” impermissibly
`changes the principle of operation of the LMAD and results in LMAD being
`unsatisfactory for its intended purpose. Largely, we are unpersuaded for the
`same reasons as set forth above concerning Patent Owner’s “teaching away”
`argument. Moreover, we note that LMAD discloses a gaming machine, and
`even with the proffered modification, it would remain a gaming machine.
`Patent Owner asserts further that, in LMAD, the package bonus
`amount from the first bonus round is never incremented individually into the
`credit meter if the second bonus round is played, as required by “display and
`provide to the player the determined awards, wherein the player is provided
`a number of determined awards which is at least equal to the number of
`selections picked in said selection group,” as recited in independent claim 1.
`Patent Owner’s assertions are misplaced, as even if the package bonus
`amount from the first bonus round is never incremented into the credit
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`meter, LMAD displays the package bonus amount separately, which is all
`that is required to meet the aforementioned claim limitation.
`Dependent claim 7 recites, “the awards associated with each of the
`selections picked by the player are accumulated before revealing an
`accumulated award.” Claims 8, 9, and 23 recite limitations that are similar
`in scope.
`Patent Owner asserts that there is no “accumulation” when in order to
`play a second bonus round, the player is required to forfeit their award from
`a first bonus round. We disagree, largely for the reasons set forth above
`concerning “trade-in” and “forfeit.” Again, Patent Owner seeks to
`distinguish between the following two scenarios based on forfeiture:
`first award second award (multiplier of first award)
`total award (first award times multiplier)
`first award forfeiture of first award to get second
`award second award (multiplier of first award) total
`award (first award times multiplier).
`We disagree that the relative distinction between the two scenarios identified
`by Patent Owner is relevant, as the aforementioned claim language requires
`an accounting of an accumulated award based on previous award amounts,
`which is met by both scenarios. On this record, the fact that the first award
`in LMAD may be forfeit is immaterial, as long as that first award is
`nevertheless a factor used in calculating the accumulated award.
`Patent Owner requests further that the Board exercise its discretion
`under 35 U.S.C. § 325(d) and deny the Petition because the main basis for
`Petitioner’s proffered modification is the same feature on which the ’469
`patent distinguishes itself from the prior art, and was the basis on which the
`Examiner allowed the ’469 patent. Prelim. Resp. 54. We decline to exercise
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`our discretion under Section 325(d) for several reasons, most prominently,
`because LMAD was not cited to or by the Examiner, and the “Zonk” feature
`of LMAD contemplates expressly non-zero awards.
`Patent Owner asserts additionally that LMAD teaches away from
`being modified to meet “wherein at least one of the selection groups
`includes a different number of selections,” as recited in dependent claim 10,
`because to do so would deviate from a key feature of the TV show. We are
`unpersuaded for the reasons set forth supra concerning teaching away and
`eliminating the zero payout feature of “Zonk.” A similar analysis is
`applicable to Patent Owner’s assertions concerning “wherein the guaranteed
`number of picks for each selection group is related to the number of
`selections in each of said selection group,” as recited in dependent claim 11.
`Patent Owner asserts further that LMAD “teaches away” from being
`modified to meet “wherein each of the plurality of selection groups is
`simultaneously displayed,” as recited in dependent claim 13, because “this is
`contrary to the premise of LMAD’s Deal Feature, which requires the player
`to trade in or forgo the award from the first round before proceeding to the
`second round.” Prelim. Resp. 43–44. We are unpersuaded that, essentially,
`showing three hidden packages and three hidden doors shown
`simultaneously would affect materially the player’s choice to either trade-in
`or forgo the second bonus round.
`Conclusion
`3.
`On this record, we are persuaded that Petitioner has shown a
`reasonable likelihood that claims 1–5, 7–15, 18–22, 28–32, and 35 are
`unpatentable over LMAD.
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`C. Dependent Claims 16, 17, 23–27, 33, and 34 as
`Unpatentable over LMAD, Thomas, and Walker
`Petitioner contends that dependent claims 23–27 are unpatentable over
`LMAD and Thomas, and that dependent claims 16, 17, 33, and 34 are
`unpatentable over LMAD and Walker. Pet. 52–57 (citing Exs. 1003, 1004,
`1009, 1010). Patent Owner disagrees. PO Resp. 54–59 (citing Exs. 1003,
`1004, 1009). Specifically, Patent Owner asserts that neither Thomas nor
`Walker remedies the deficiencies of LMAD with respect to the independent
`claims from which claims 16, 17, 23–27, 33, and 34 depend ultimately.
`Patent Owner’s assertions are misplaced, as we are not persuaded that
`LMAD is deficient concerning those independent claims.
`On this record, we are persuaded that Petitioner has shown a
`reasonable likelihood that dependent claims 23–27 are unpatentable over
`LMAD and Thomas, and that dependent claims 16, 17, 33, and 34 are
`unpatentable over LMAD and Walker.
`
`Assignor Estoppel and Judicial Estoppel
`D.
`Patent Owner asserts that the equitable doctrines of judicial estoppel
`and assignor estoppel apply to Petitioner, and, thus, on that basis, the instant
`proceedings should be denied. Prelim. Resp. 7–15.
`
`Assignor Estoppel
`1.
`Turning first to assignor estoppel, while Patent Owner acknowledges
`that other panels of the Board have declined to apply assignor estoppel,
`Patent Owner asserts that those panels were in error, and requests that this
`panel apply assignor estoppel in the instant proceeding. We decline to do so
`based on our agreement with the reasoning set forth in other Board
`decisions. See B/E Aerospace, Inc. v. MAG Aerospace Indus., LLC, Case
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`IPR2014-01513, slip. op. at 20–21 (PTAB Mar. 18. 2016) (Paper 104);
`Arista Networks, Inc. v. Cisco Sys., Inc., Case IPR2015-00978, slip. op. at 7–
`8 (PTAB Oct. 6, 2015) (Paper 7).
`Patent Owner further cites to American Fence Co. v. MRM Security
`Systems, Inc., 710 F. Supp. 37 (D. Conn. 1989) for the proposition that
`assignor estoppel prevents Petitioner from benefiting from any putative
`claim cancellation it may be able to obtain from the Office concerning the
`patent at issue. Prelim. Resp. 14. Patent Owner’s assertions are misplaced.
`In American Fence Co., the district court determined the manner in which
`assignor estoppel would be applied in the district court proceeding. Indeed,
`we note that in that proceeding, the district court did not opine on the ability
`of the Office to apply assignor estoppel, nor did the district court prevent the
`continuation of the reexamination proceeding.
`2.
`Judicial Estoppel
`Our analysis concerning judicial estoppel is similar to that concerning
`assignor estoppel, namely, that absent express statutory authority, we are
`unpersuaded that judicial estoppel is applicable in inter partes review
`proceedings. See Ceramtec GMBH v. Ceramedic LLC, Case IPR2015-
`01328, slip. op. at 15 (PTAB Dec. 16, 2015) (Paper 23).
`Moreover, even if it were applicable, we are unpersuaded that the
`underlying facts support a determination that judicial estoppel would be
`appropriate in this case. Specifically, Patent Owner evidently asserts that the
`following two positions taken by Petitioner are in conflict: (1) that in
`arguing there was no need for an injunction to prevent Petitioner from filing
`an IPR petition on the ’469 patent, and other related patents, Petitioner told
`Article III courts that the likelihood of cancellation of IGT’s patents in the
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`IPR were “remote and speculative”; (2) that in the Petition, Petitioner
`certified that there is a “reasonable likelihood” that Petitioner will succeed in
`having one or more claims of the ’469 patent cancelled as unpatentable.
`Prelim. Resp. 12. As an initial matter, we are unclear as to the exact theory
`under which Patent Owner asserts judicial estoppel is applicable. Under any
`theory, however, we are unpersuaded that it is appropriate.
`For example, Patent Owner may be asserting that Petitioner cannot
`simultaneously represent that the likelihood of the cancellation of the
`challenged claims is only “remote and speculative” before Article III courts,
`but “reasonably likely” before the Board. Patent Owner’s assertions are
`misplaced, as Patent Owner conflates Petitioner’s observations before the
`Article III courts concerning actions out of their control, and positions
`advocated before the Board. Specifically, before the Article III courts,
`Petitioner asserted that whether or not the Board will cancel any claims from
`the ’469 patent is “remote and speculative,” because even if Petitioner files
`an IPR petition, there are too many additional steps outside of Petitioner’s
`control, such as whether the Board will institute a trial and whether
`Petitioner will prevail in that trial. See Ex. 2002, 24 (“[a]s numerous other
`courts have concluded, harm that is contingent on the outcome of a legal
`proceeding that has not yet concluded is generally too remote or speculative
`to constitute a likelihood of irreparable harm”). We discern that it is on this
`basis that the district court agreed with Petitioner that the prospect of
`irreparable harm was too “remote or speculative” to weigh in favor of a
`preliminary injunction. See Ex. 2007, 7 (“Since, at this time, the Court
`cannot predict whether the Patent Office will decide to institute inter partes
`review, the circumstances Plaintiff offers show a possibility of injury, but
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`are too contingent to satisfy the likelihood of irreparable harm standard.”).
`We see no conflict between this observation, and Petitioner’s position
`advocated in the Petition that there is a “reasonable likelihood” the
`challenged claims are unpatentable.
`
`Conclusion
`E.
`For the foregoing reasons, we are persuaded that Petitioner has met its
`burden of showing a reasonable likelihood that claims 1–5 and 7–35 are
`unpatentable.
`
`III. ORDER
`After due consideration of the record before us, and for the foregoing
`reasons, it is:
`ORDERED that pursuant to 35 U.S.C. § 314, an inter partes review is
`hereby instituted as to claims 1–5 and 7–35 of the ’469 patent on the
`following grounds:
`• claims 1–5, 7–15, 18–22, 28–32, and 35 as unpatentable under 35
`U.S.C. § 103(a) over LMAD; and
`• claims 23–27 as unpatentable under 35 U.S.C. § 103(a) over a
`combination of LMAD and Thomas; and
`• claims 16, 17, 33, and 34 as unpatentable under 35 U.S.C. § 103(a)
`over a combination of LMAD and Walker;
`FURTHER ORDERED that no other grounds are instituted; and
`FURTHER ORDERED that pursuant to 35 U.S.C. § 314(a), inter
`partes review of the ʼ469 patent is hereby instituted commencing on the
`entry date of this Order, and pursuant to 35 U.S.C. § 314(c) and 37 C.F.R.
`§ 42.4, notice is hereby given of the institution of a trial.
`
`
`
`18
`
`
`
`19
`
`IPR2016-00252
`Patent 7,303,469 B2
`
`For PETITIONER:
`Andrea G. Reister
`areister@cov.com
`
`Jay I. Alexander
`jalexander@cov.com
`
`For PATENT OWNER:
`Adam H. Masia
`amasia@ngelaw.com
`
`Holby Abern
`habern@ngelaw.com
`
`Kevin Cukierski
`kcukierski@ngelaw.com
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