`571-272-7822
`
`Paper 15
`Date Entered: April 8, 2015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`SONY MOBILE COMMUNICATIONS (USA) INC., SONY MOBILE
`COMMUNICATIONS AB, SONY MOBILE COMMUNICATIONS, INC.,
`
`SONY ELECTRONICS, INC., SONY CORP. OF AMERICA, and
`
`SONY CORP.,
`
`Petitioner,
`
`V.
`
`ADAPTIX, INC.,
`Patent Owner.
`
`Case IPR2014-01525
`
`Patent 7,454,212 B2
`
`Before HOWARD B. BLANKENSHIP, TREVOR M. JEFFERSON, and
`JUSTIN BUSCH, Administrative Patent Judges.
`
`BLANKENSHIP, Administrative Patent Judge.
`
`DECISION
`
`Institution of Inter Partes Review
`
`37 C.F.R. § 42.108
`
`1. BACKGROUND
`
`Sony Mobile Communications (USA) Inc., Sony Mobile
`
`Communications AB, Sony Mobile Communications, Inc., Sony Electronics,
`
`SPRINT 1009
`
`
`
`lPR2014-01525
`
`Patent 7,454,212 B2
`
`lnc., Sony Corp. of America, and Sony Corp. (collectively, “Petitioner”)
`
`filed a request for an inter partes review of claims 1, 8-13, 15, 16, 18-21,
`
`and 23-30 of U.S. Patent No. 7,454,212 B2 (Ex. 1001, “the ’212 patent”)
`
`under 35 U.S.C. §§ 311-319. See Paper 5 (“Petition” or “Pet.”). Patent
`
`Owner Adaptix, Inc. filed a preliminary response. See Paper 11 (“Prelim.
`
`Resp.”). We have jurisdiction under 35 U.S.C. § 314. Section 314 provides
`
`that an inter partes review may 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.”
`
`For the reasons that follow, we institute an inter partes review as to
`
`claims 1, 8-13, 15, 16, 18-21, and 23-30 ofthe ’212 patent.
`
`A. Related Proceedings
`
`According to Petitioner, the ’212 patent is involved in the following
`
`lawsuits: Adaptix, Inc. v. AT&T, Inc., No. 6:12-cv-00017 (E.D. Tex.);
`
`Adaptix, Inc. v. Pantech Wireless, Inc., No. 6:12-cv-00020 (E.D. Tex.);
`
`Adaptix, Inc. v. Cellco Partnership, No. 6:12-cv-00120 (E.D. Tex.); Adaptix,
`
`Inc. v. Huawei Techs. Co., Ltd., Nos. 6:13-cv-00438, ’439, ’440, and ’441
`
`(E.D. Tex.); Adaptix, Inc. v. ZTE C0rp., Nos. 6:13-cv-00443, ’444, ’445, and
`
`’446 (E.D. Tex.); Adaptix, Inc. v. NEC CASIO Mobile Commc ’ns, Ltd., Nos.
`
`6:13-cv-00585 and ’922 (E.D. Tex.); Adaptix, Inc. v. Pantech Wireless, Inc.,
`
`No. 6:13-cv-00778 (E.D. Tex.); Adaptix, Inc. v. Blackberry Limited, Nos.
`
`5:14-cv-01380, ’386 and ’387 (N.D. Cal.); Adaptix, Inc. v. Kyocera C0rp.,
`
`Nos. 3:14-cv-02894 and ’895 (ND. Cal.); Adaptix, Inc. v. Apple, Inc., Nos.
`
`5:13-cv-01776, ’1777, and ’2023 (ND. Cal.); Adaptix, Inc. v. AT&T, Inc.,
`
`2
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`IPR2014-01525
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`Patent 7,454,212 B2
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`No. 5:13-cv-01778 (N.D. Cal.); Adaptix, Inc. v. Cellco Partnership, No.
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`5:13-cv-01844 (ND. Cal.); Adaptix, Inc. v. Dell, Inc., No. 5:14-cv-01259
`
`(ND. Cal.); Adaptix, Inc. v. Amazon.com, Inc., No. 5:14-cv-01379 (ND.
`
`Cal.); Adaptix, Inc. v. Sony Mobile C0mmc’ns, Inc., No. 5:14-cv-01385
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`(ND. Cal.); Adaptix, Inc. v. ASUSTek, No. 5:14-cv-03112 (ND. Cal.); and
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`Adaptix, Inc. v. HTC C0rp., Nos. 5:14-cv-02359 and ’360 (ND. Cal.). Pet.
`
`1-2. The ’212 patent is also involved in Case IPR2015-00318 (PTAB Nov.
`
`26, 2014) and was involved in Case IPR2014-01408 (PTAB Aug. 28, 2014),
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`which was terminated by the Board on January 29, 2015.
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`B. The ’2I2 Patent
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`The ’212 patent relates to subcarrier selection for each of multiple
`
`subscribers (e.g., mobile phones) that includes measuring channel and
`
`interference information for subcarriers based on pilot symbols received
`
`from a base station. Ex. 1001, Abstract. Orthogonal frequency division
`
`multiplexing (OFDM) is an efficient modulation scheme for signal
`
`transmission over frequency-selective channels. Id. at col. 1, 11. 23-25. The
`
`invention employs orthogonal frequency division multiple access
`
`(OFDMA), which is a method for multiple access using the basic format of
`
`the OFDM modulation scheme. Id. at col. 1, ll. 36-51; see generally id. at
`
`col. 1, l. 14 — col. 2, l. 30, col. 3, ll. 4-11.
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`IPR2014-01525
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`Patent 7,454,212 B2
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`C. Illustrative Claim
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`Claim 1, reproduced below, is illustrative.
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`1. A method for subcarrier selection for a system
`employing orthogonal frequency division multiple access
`(OFDMA) comprising:
`
`a subscriber unit measuring channel and interference
`information for a plurality of subcarriers based on pilot symbols
`received from a base station;
`
`the subscriber unit selecting a set of candidate
`subcarriers;
`
`the subscriber unit providing feedback information on the
`set of candidate subcarriers to the base station;
`
`the subscriber unit receiving an indication of subcarriers
`of the set of subcarriers selected by the base station for use by
`the subscriber unit; and
`
`the subscriber unit submitting updated feedback
`information, after being allocated the set of subcarriers to be
`allocated an updated set of subcarriers, and thereafter the
`subscriber unit receiving another indication of the updated set
`of subcarriers.
`
`D. Asserted Prior Art
`
`Ritter
`Kapoor
`
`July 29, 1999
`DE 19800953 Cl
`US 6,795,424 B1 Sep. 21, 2004
`
`Ex. 10021
`Ex. 1003
`
`IEEE Communications Magazine, vol. 38, no. 7, July 2000 (excerpts) (Ex.
`1004) (“IEEE”).
`
`1 The parties refer to Exhibit 1002 as “Ritter,” which is an English
`translation of DE 19800953 C1. The German patent document has been
`entered as Exhibit 1021.
`
`4
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`Patent 7,454,212 B2
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`Chuang and Sollenberger, Spectrum Resource Allocation for Wireless
`Packet Access with Application to Advanced Cellular Internet Service, IEEE
`JOURNAL ON SELECTED AREAS IN COMMUNICATIONS, Vol. 16, no. 6 (Aug.
`1998) (Ex 1007) (“Chuang”).
`
`Cimini, et al., Advanced Cellular Internet Service (ACIS), IEEE
`Communications Magazine (Oct. 1998) (Ex. 1008) (“Cimini”).
`
`E. Asserted Grounds of Unpatentability
`
`Petitioner asserts the following grounds of unpatentability under 35
`
`U.S.C. § l03(a) against claims 1, 8-13, 15, 16, 18-21, and 23-30 (Pet. 4):
`
`and 23_30 IEEE and Chuang
`
`1, 8-13,15,16,18-21,
`and 23_30
`1’ 871;1(1152=31_63’018721’
`
`1,8—13,15,16,18—21,
`
`.
`Ritter and Kapoor
`
`IEEE and Cimini
`
`II. ANALYSIS
`
`A. Claim Interpretation
`
`In an inter partes review, the Board construes claim terms in an
`
`unexpired patent using their broadest reasonable construction in light of the
`
`specification of the patent in which they appear. 37 C.F.R. § 42.100(b);
`
`Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,764 (Aug. 14,
`
`2012).
`
`Although Petitioner submits constructions for several terms (Pet. 7-
`
`13), for purposes of this Decision we do not find construction of any terms
`
`necessary at this stage in the proceeding. Further, Patent Owner in its
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`5
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`Patent 7,454,212 B2
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`Preliminary Response does not contest Petitioner’s construction of any terms
`
`that affect the necessary determinations in this Decision. See Prelim. Resp.
`
`6-9 .
`
`B. Proposed Grounds of Unpatentability
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`I . Section I 03 (a) - Ritter and Kapoor
`
`Petitioner submits that the subject matter of claims 1, 8-13, 15, 16,
`
`18-21, and 23-30 would have been obvious over the combination of Ritter
`
`and Kapoor. Petitioner submits a detailed analysis of each of the claims,
`
`applies the prior art, and relies on the testimony of Professor Robert Akl.
`
`Pet. 18-30; Exhibit 1007.
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`Petitioner submits that Kapoor teaches the subscriber unit submitting
`
`updated feedback information, after being allocated the set of subcarriers to
`
`be allocated an updated set of subcarriers, and thereafter the subscriber unit
`
`receiving another indication of the updated set of subcarriers, as recited in
`
`claim 1. Pet. 23-24 (claim chart). Patent Owner argues, in response, that
`
`“[t]he portion of Kapoor emphasized by the Petitioner fails to disclose
`
`anything about a subscriber unit submitting updated feedback information
`
`after being allocated a set of subcarriers, and thereafter the subscriber unit
`
`receiving another indication of an updated set of subcarriers.” Prelim. Resp.
`
`17-18. “In Kapoor, requesting a change in the amount of allocated
`
`bandwidth is Q the same as submitting updated feedback information” as
`
`claimed. Id. at 18.
`
`Petitioner relies on more in Kapoor, however, than “requesting a
`
`change in the amount of allocated bandwidth.” The Petition points out that
`
`Kapoor teaches that “other items” that may be maintained in a table can be
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`updated in “an event driven mode” such as when a user requests a change in
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`the amount of allocated bandwidth. Pet. 24; Ex. 1003, col. 21, 11. 39-63.
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`Thus, “individual bins may be dynamically allocated and re-allocated on-
`
`the-fly.” Ex. 1003, col. 21, 58-59. These frequency bins are allocated to
`
`different users by taking spatial and other information into account. Id. at
`
`col. 3, 11. 60-65. The base station continuously monitors a number of
`
`parameters and uses them to compute the bin allocations for a given user.
`
`The allocations also can be changed dynamically in response to changes in
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`noise and interference conditions. Id. at col. 6, 11. 9-17. The composition of
`
`groupings of frequency bins may be changed if a trigger event, such as the
`
`advent of a new CCI (co-channel interference) source should arise. Id. at
`
`col. 6, 11. 60-66. CCI refers to any other undesired signal whose spectrum
`
`overlaps with the spectrum of the particular system, such as other
`
`communication or broadcast systems operating in the area and having the
`
`same or an adjacent frequency band. Id. at col. 2, 11. 11-17. For purposes of
`
`this Decision, we find that Petitioner has established sufficiently that Kapoor
`
`teaches the claim limitations that the Petition attributes to it.
`
`Patent Owner also submits that, contrary to the Petition, Ritter does
`
`not teach that “providing feedback information” as required by claim 1
`
`comprises “sequentially ordering candidate clusters” as recited in dependent
`
`claim 15. Prelim. Resp. 18-19. Patent Owner acknowledges that Petitioner
`(CL
`
`relies on Ritter’s disclosure that
`
`several segments (e.g., Sx, Sy, Sz) of the
`
`best quality are determined by the mobile station (MS) and are numbered in
`
`a priority list (e.g., PL1) corresponding to increasing amplitude
`
`modulation.”’ Id. at 18. According to Patent Owner, because claim 15
`
`recites “sequentially ordering” candidate clusters, “an indication or a list of
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`the clusters is not needed.” Id. “By expressly teaching a cluster list for
`
`purposes of identifying only a subset of segments, Ritter teaches away from
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`sequential[ly] ordering candidate clusters.” Id. at 19.
`
`Claim 15, however, is silent with respect to whether “subsets” or all
`
`“candidate clusters” are sequentially ordered. Moreover, Patent Owner’s
`
`argument is inconsistent with the intrinsic evidence. As noted by Petitioner
`
`(Ex. 1007 1] 49), the ’212 patent teaches that the “sequential ordering” may
`
`include a priority list. “[T]he selected clusters can also be ordered in the
`
`feedback to indicate priority. In one embodiment, the subscriber mayform a
`
`priority list of clusters and sends back the SINR (signal-to-interference-plus-
`
`noise ratio) information in a descending order of priority.” Ex. 1001 col. 11,
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`11. 141.
`
`Patent Owner argues, further, that combining Kapoor’s “overhead-
`
`consuming pilot-symbol approach” would “defeat the purpose of Ritter by
`
`increasing its overhead.” Prelim. Resp. 20-21. As evidentiary support,
`
`Patent Owner refers to paragraph 50 of Exhibit 2002. Id. Exhibit 2002
`
`purports to be an expert report of Michael Caloyannides, Ph.D. (“the
`
`Caloyannides Report”) filed in related U.S. District Court actions.
`
`The Caloyannides Report is, however, an expert report directed to
`
`rebuttal of another expert report. See Ex. 2002, 1. The Caloyannides Report
`
`merely refers to the other expert report, not of record in this proceeding,
`
`which is alleged to “note[] that Ritter proposed a novel measurement
`
`technique that specifically avoided the use of known, non-data-bearing pilot
`
`symbols from the base station so as to save ‘overhead.’” Id. 1] 50. Neither
`
`Patent Owner, nor the Caloyannides Report at the indicated paragraph,
`
`establishes that Ritter “avoided” the “pilot-symbol approach” in the interest
`
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`of not consuming “overhead,” or for any other reason. We are, therefore,
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`persuaded that Petitioner’s proposed combination of references is
`
`appropriate.
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`2. Secondary Considerations
`
`Patent Owner submits that there are “objective indicia” that
`
`demonstrate non-obviousness of the invention. We address first the
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`evidence that Patent Owner places under the category of “skepticism of the
`
`experts.” Prelim. Resp. 53, 54-57.
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`Patent Owner submits that Exhibit 2004 is a “[c]oncept evaluation”
`
`that discusses four proposed concepts to be pursued, at that time, as the next
`
`Universal Mobile Telecommunication System standard. Id. at 54.
`
`According to Patent Owner, the document “explains three OFDMA based
`
`approaches referred to collectively as ‘Concept B7” Id. Patent Owner
`
`continues that in the first meeting of the European Telecommunication
`
`Standards Institute (“ETSI”) delegates were asked to vote for one of the
`
`“four proposed concepts,” which included Concept B. Prelim. Resp. 55.
`
`Concept [3 received zero percent of the votes, while votes went to other
`
`“approaches” that did not include OFDM or OFDMA. Id. at 55-56. In the
`
`next ETSI meeting, again, Concept [3 received zero percent of the votes. Id.
`
`at 56. Patent Owner provides technical committee reports of the meetings as
`
`Exhibits 2005 and 2006.
`
`Patent Owner does not, however, point to evidence that establishes
`
`why Concept [3 was disfavored by the ETSI delegates. Nor does Patent
`
`Owner explain how any of the “three OFDMA based approaches” might
`
`relate to the claimed invention, other than the fact that the claims recite
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`“OFDMA.” Because Patent Owner characterizes the evidence as showing
`
`“skepticism of the experts,” the evidence is presented, presumably, to
`
`demonstrate that the Concept [3 “OFDMA based approaches” were thought
`
`to represent impossible or impractical technologies as late as the ETSI
`
`second meeting, January 1998 (Ex. 2006, 1). At the time of invention,2
`
`however, OFDMA was known to be a method that supports multiple access
`
`for multiple subscribers. Ex. 1001, col. 1, l. 36 — col. 2, l. 15.
`
`Referring to the Caloyannides Report, Patent Owner submits further
`
`that a long-felt but unmet need “to provide a new generation of wireless
`
`technology that would improve throughput” was met by “4G/LTE” mobile
`
`phones that “may” achieve data transmission rates that are “10 to 100 times
`
`faster than 3G mobile phones.” Prelim. Resp. 58-59; Ex. 2002 1] 340.
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`Patent Owner does not correlate the claimed invention to the asserted
`
`evidence of meeting a “long-felt need” beyond the claims reciting
`
`“OFDMA,” which was not an unmet need because it was known at the time
`
`ofinvention. Ex. 1001, col. 1, l. 36 — col. 2, l. 5.
`
`Patent Owner also refers to the Caloyannides Report as demonstrating
`
`commercial success of “4G/LTE based products.” Prelim. Resp. 58-59.
`
`The Caloyannides Report, however, does not refer to any evidence in this
`
`record of commercial success of “4G/LTE based products,” nor does it refer
`
`to any evidence in this record tending to show that limitations from claim 1,
`
`which are reproduced in the Caloyannides Report, were responsible for any
`
`“commercial success.” See Ex. 2002 1] 344 (“Further information and
`
`2 On this record, the date of invention is the filing date of the ’212 parent
`patent application, December 15, 2000, or nearly three years after the second
`ETSI meeting.
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`evidence about the commercial success that has followed the use of these
`
`aspects of the [’212 patent] is provided in my infringement report[]
`
`involving the same patent[]”). The “infringement report” referenced by
`
`Exhibit 2002 has not been provided as an exhibit in this proceeding. Expert
`
`testimony that does not disclose the underlying facts or data on which the
`
`opinion is based is entitled to little or no weight. 37 C.F.R. § 42.65(a).
`
`Moreover, even if commercial success were established, Patent Owner’s
`
`allegations would not support a prima facie case of nexus.
`
`A prima facie case of nexus is generally made out when
`the patentee shows both that there is commercial success, and
`that the thing (product or method) that is commercially
`successful is the invention disclosed and claimed in the patent.
`When the thing that is commercially successful is not
`coextensive with the patented invention—for example, if the
`patented invention is only a component of a commercially
`successful machine or process—the patentee must show prima
`facie a legally sufficient relationship between that which is
`patented and that which is sold.
`
`Demaco Corp. v. F. Van LangsdorflLicensing Ltd., 851 F.2d 1387, 1392
`
`(Fed. Cir. 1988). However, “if the commercial success is due to an
`
`unclaimed feature of the device” or “if the feature that creates the
`
`commercial success was known in the prior art, the success is not pertinent.”
`
`Ormco Corp. v. Align Tech, Inc., 463 F.3d 1299, 1312 (Fed. Cir. 2006).
`
`The Caloyannides Report (11 344) alleges that limitations of claim 1
`
`represent, at most, an “essential element” of only one part of “current LTE
`
`networks.” Further, to the extent that OFDMA might contribute to
`
`“commercial success,” OFDMA was known in the prior art and thus, not
`
`pertinent. See Ex. 1001, col. 1, l. 36 — col. 2, l. 15.
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`11
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`For the foregoing reasons, we find Patent’s Owner’s evidence of
`
`secondary considerations to be entitled to little weight in support of non-
`
`obviousness. We emphasize, however, that our weighing of the evidence in
`
`support of non-obviousness is for purposes of this Decision only, as we are
`
`limited to consideration of the record that exists at this preliminary stage of
`
`the proceeding.
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`3. Section I 03 (a) — Ritter and Kapoor — Conclusion
`
`Upon consideration of the Petition and weighing the evidence in this
`
`record, we determine that Petitioner has demonstrated a reasonable
`
`likelihood that claims 1, 8-13, 15, 16, 18-21, and 23-30 would have been
`
`obvious over the combination of Ritter and Kapoor.
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`4. Section I 03 (a) - Other Asserted Grounds
`
`In view of the ground on which we institute inter partes review of
`
`claims 1, 8-13, 15, 16, 18-21, and 23-30, we do not institute review based
`
`on the additional asserted grounds that these claims are unpatentable for
`
`obviousness over combinations of references that involve IEEE, Chuang, or
`
`Cimini. See 35 U.S.C. 314(a); 37 C.F.R. § 42.108(a).
`
`III. CONCLUSION
`
`The Petition demonstrates a reasonable likelihood of prevailing on the
`
`ground of obviousness over Ritter and Kapoor as to claims 1, 8-13, 15, 16,
`
`18-21, and 23-30.
`
`The Board has not made a final determination on the patentability of
`
`any challenged claim.
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`IV. ORDER
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`In consideration of the foregoing, it is
`
`ORDERED that an interpartes review is instituted as to claims 1, 8-
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`13, 15, 16, 18-21, and 23-30 ofthe ’2l2 patent on the ground of
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`obviousness under 35 U.S.C. § l03(a) based on Ritter and Kapoor;
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`FURTHER ORDERED that pursuant to 35 U.S.C. § 3 l4(a), inter
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`partes review of the ’2l2 patent is instituted with trial commencing on the
`
`entry date of this Order, and pursuant to 35 U.S.C. § 3l4(c) and 37 C.F.R.
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`§ 42.4, notice is given of the institution of the trial; and
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`FURTHER ORDERED that the trial is limited to the grounds
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`identified immediately above, and no other ground is authorized for the ’2l2
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`patent claims.
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`IPR2014-01525
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`Patent 7,454,212 B2
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`For Petitioner:
`
`Scott Bloebaum
`
`ANDREWS KURTH LLP
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`scottbloebaum@andrewskurth.com
`
`Scott McKeown
`
`OBLON SPIVAK
`
`CPdocketmckeown@ob1on.corn
`
`For Patent Owner:
`
`Amedeo Ferraro
`
`Wesley Meinerding
`MARTIN & FERRARO, LLP
`aferraro@martinferraro.com
`Wmeinerding@martinferraro.com