`571-272-7822
`
`Paper 16
`Date Entered: April 7, 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 IPR2014-01524
`
`Patent 6,947,748 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 1010
`
`
`
`lPR2014-01524
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`Patent 6,947,748 B2
`
`lnc., Sony Corp. of America, and Sony Corp. (collectively, “Petitioner”)
`
`filed a request for an inter partes review of claims 6, 8, 9, 11, and 19-22 of
`
`U.S. Patent No. 6,947,748 B2 (Ex. 1001, “the ’748 patent”) under 35 U.S.C.
`
`§§ 311-319. See Paper 6 (“Petition” or “Pet.”). Patent Owner Adaptix, Inc.
`
`filed a preliminary response. See Paper 12 (“Prelim. Resp.”). We have
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`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 6, 8, 9, and 19-22 of the ’748 patent.
`
`A. Related Proceedings
`
`According to Petitioner, the ’748 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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`
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`IPR2014-01524
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`Patent 6,947,748 B2
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`No. 5:13-cv-01778 (N.D. Cal.); Adaptix, Inc. v. Cellco Partnership, No.
`
`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
`
`(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 ’748 patent is also involved in Case IPR2015-00319 (PTAB Nov.
`
`26, 2014) and was involved in Case IPR2014-01406 (PTAB Aug. 28, 2014),
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`which was terminated by the Board on January 29, 2015.
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`B. The ’748 Patent
`
`The ’748 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
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`multiplexing (OFDM) is an efficient modulation scheme for signal
`
`transmission over frequency-selective channels. Id. at col. 1, 11. 13-15. 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. 26-41; see generally id. at
`
`col. 1, l. 5 — col. 2, l. 19, col. 2, ll. 59-66.
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`
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`IPR2014-01524
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`Patent 6,947,748 B2
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`C. Illustrative Claim
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`Claim 8, reproduced below, is illustrative.
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`8. A method for subcarrier selection for a system
`employing orthogonal frequency division multiple access
`(OFDMA) comprising:
`
`a subscriber measuring channel and interference
`information for a plurality of subcarriers based on pilot symbols
`received from a base station;
`
`the subscriber selecting a set of candidate subcarriers;
`
`the subscriber providing feedback information on the set
`of candidate subcarriers to the base station;
`
`the subscriber sending an indication of coding and
`modulation rates that the subscriber desires to employ for each
`cluster; and
`
`the subscriber receiving an indication of subcarriers of
`the set of subcarriers selected by the base station for use by the
`subscriber.
`
`D. Asserted Prior Art
`
`Ritter
`Hasheml
`Hashem 11
`
`Frodigh
`
`July 29, 1999
`DE 19800953 Cl
`US 6,721,569 B1 Apr. 13, 2004
`US 6,701,129 B1 Mar. 2,2004
`
`Ex. 10021
`Ex. 1003
`Ex. 1004
`
`US 5,726,978
`
`Mar. 10. 1998
`
`Ex. 1005
`
`IEEE Communications Magazine, vol. 38, no. 7, July 2000 (excerpts) (Ex.
`1006) (“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 1023.
`
`4
`
`
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`1PR2014-01524
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`Patent 6,947,748 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. § 103(a) against claims 6, 8, 9, 11, and 19-22 (Pet. 4):
`
`Ritter, Hashem I, and Hashem II
`
`6, 8, 9, and 19-22
`
`
`
`IEEE and Chuang
`
`IEEE and Cimini
`
`6, 8, 9, 11, and 19-22
`
`6, 8, 9, 11, and 19-22
`
`11. 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. 8-
`
`12), 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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`
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`IPR2014-01524
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`Patent 6,947,748 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.
`
`7-9 .
`
`B. Disclaimer — Claim I I
`
`On the day Patent Owner filed the Preliminary Response (January 12,
`
`2015), Patent Owner filed a statutory disclaimer for claim 11. Prelim. Resp.
`
`2 n.1; Ex. 2003. Accordingly, claim 11 is not subject to any ground of
`
`unpatentability in this proceeding. See 37 C.F.R. § 42.107 (e) (“No inter
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`partes review will be instituted based on disclaimed claims”).
`
`C. Proposed Grounds of Unpatentability
`
`I. Section I 03 (a) — Ritter, Hashem I, and Hashem II
`
`Petitioner submits that the subject matter of claims 6, 8, 9, and 19- 22
`
`would have been obvious over the combination of Ritter, Hashem I, and
`
`Hashem II. Petitioner submits a detailed analysis of each of the claims,
`
`applies the prior art, and relies on the testimony of Professor Robert Akl.
`
`Pet. 18-27; Exhibit 1009.
`
`Patent Owner argues that because Hashem I and Hashem II are
`
`directed to a “single-user” OFDM system, as opposed to a multiple-user
`
`OFDMA system (as in Ritter), one of ordinary skill in the art would not
`
`combine the teachings of Ritter and the Hashem references because OFDM
`
`can be used to support multiple users without using OFDMA. Prelim. Resp.
`
`15-20. Patent Owner’s argument, however, is not responsive to the ground
`
`proposed by Petitioner. Ritter teaches OFDMA. See, e.g., Pet. 21; Ex.
`
`1002, 4. The ground proposed does not rely on the Hashem references as
`
`6
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`IPR2014-01524
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`Patent 6,947,748 B2
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`teaching OFDMA, nor does it submit that those references should be
`
`modified in view of any of Ritter’s teachings. Moreover, Patent Owner’s
`
`allegation (Prelim. Resp. 20) that OFDM systems as taught by Hasheml and
`
`Hashem II are “entirely different” from, “if not contrary” to, the claimed
`
`invention is not consistent with the intrinsic evidence. According to the ’748
`
`patent, OFDMA was known as “another method for multiple access, using
`
`the basicformat of OFDM.” Ex. 1001, col. 1, 11. 29-31 (emphasis added).
`
`Patent Owner also employs a patent law term of art in alleging that the
`
`Hashem references “teach away” from OFDMA and combination with
`
`Ritter, although the arguments are not consistent with what may constitute a
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`“teaching away.” See Pet. 17-20. “A reference may be said to teach away
`
`when a person of ordinary skill, upon [examining] the reference, would be
`
`discouraged from following the path set out in the reference, or would be led
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`in a direction divergent from the path that was taken by the applicant.”
`
`Para—Ordnance Mfg. v. SGS Importers Int’l, Inc., 73 F.3d 1085, 1090 (Fed.
`
`Cir. 1995) (alteration in original) (quoting In re Gurley, 27 F.3d 551, 553
`
`(Fed. Cir. 1994)). Patent Owner’s allegations of “teaching away” are based
`
`on the view that the Hashem references describe OFDM systems. However,
`
`the prior art’s mere disclosure of more than one alternative does not
`
`constitute a teaching away from any of the alternatives when the disclosure
`
`does not criticize, discredit, or otherwise discourage the solution claimed. In
`
`re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (quoting In re Gurley, 27
`
`F.3d. at 553). Patent Owner does not point to any disclosure in Hashem I or
`
`Hashem II that criticizes, discredits, or otherwise discourages use of
`
`OFDMA as taught by Ritter,
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`IPR2014-01524
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`Patent 6,947,748 B2
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`Patent Owner argues, further, that it would not have been obvious to
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`combine an “overhead-consuming” pilot-symbol approach that Ritter
`
`avoided, such that the combination would “defeat the purpose of Ritter
`
`avoiding pilots and increase system overhead.” Prelim. Resp. 22; see also
`
`id. at 26. As evidentiary support, Patent Owner refers to paragraphs 50 and
`
`51 of Exhibit 2002. Id. at 22, 26. 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,
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`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 paragraphs,
`
`establishes that Ritter “avoided” the “pilot-symbol approach” in the interest
`
`of not consuming “overhead,” or for any other reason.
`
`Patent Owner submits that Ritter teaches neither an index indication
`
`of a candidate cluster with its SINR (signal-to-interference-plus-noise ratio)
`
`value nor an indication of coding and modulation rates. Prelim. Resp. 24.
`
`Yet, Patent Owner acknowledges that Petitioner does not rely on Ritter for
`
`those teachings. Id. at 23; see, e.g., Ex. 1009 1] 144 (relying on Hashem
`
`references), 1] 150 (pp. 66-67) (claim chart referring to Hashem references).
`
`We are, therefore, not persuaded that Ritter’s deficiencies are fatal to the
`
`proposed ground of rejection.
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`IPR20l4-01524
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`Patent 6,947,748 B2
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`2. Secondary Considerations
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`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.
`
`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.
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`According to Patent Owner, the document “explains three OFDMA based
`
`approaches referred to collectively as ‘Concept B7” Id. Patent Owner
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`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
`
`“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
`
`9
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`IPR2014-01524
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`Patent 6,947,748 B2
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`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. 26 — col. 2, l. 5.
`
`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.
`
`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
`
`of invention. Ex. 1001, col. 1, l. 26 — col. 2, l. 5.
`
`Patent Owner also refers to the Caloyannides Report as demonstrating
`
`commercial success of “4G/LTE based products.” Prelim. Resp. 59-60.
`
`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 8,
`
`which are reproduced in the Caloyannides Report, were responsible for any
`
`“commercial success.” See Ex. 2002 1] 344 (“Further information and
`
`evidence about the commercial success that has followed the use of these
`
`aspects of the [’748 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
`
`2 On this record, the date of invention is the filing date of the ’748 patent
`application, December 15, 2000, or nearly three years after the second ETSI
`meeting.
`
`10
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`lPR2014-01524
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`Patent 6,947,748 B2
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`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 LangsdoiflLicensing 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.
`
`)7
`
`Ormco Corp. v. Align Tech., Inc., 463 F.3d 1299, 1312 (Fed. Cir. 2006).
`
`The Caloyannides Report (11 344) alleges that limitations of claim 8
`
`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. 26 — col. 2, l. 5.
`
`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
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`11
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`IPR2014-01524
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`Patent 6,947,748 B2
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`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, Hashem I, and Hashem II —
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`Conclusion
`
`Upon consideration of the Petition and weighing the evidence in this
`
`record, we determine that Petitioner has demonstrated a reasonable
`
`likelihood that claims 6, 8, 9, and 19-22 would have been obvious over the
`
`combination of Ritter, Hashem I, and Hashem II.
`
`4. Section I 03 (a) — Other Asserted Grounds
`
`In view of the ground on which we institute inter partes review of
`
`claims 6, 8, 9, and 19-22, 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, Hashem I, and Hashem II as to claims 6,
`
`8, 9, and 19-22.
`
`The Board has not made a final determination on the patentability of
`
`any challenged claim.
`
`12
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`IPR20l4-01524
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`Patent 6,947,748 B2
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`IV. ORDER
`
`In consideration of the foregoing, it is
`
`ORDERED that an interpartes review is instituted as to claims 6, 8,
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`9, and 19-22 of the ’748 patent on the ground of obviousness under 35
`
`U.S.C. § l03(a) based on Ritter, Hashem I, and Hashem II;
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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 ’748 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.
`
`§ 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 ’748
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`patent claims.
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`IPR2014-01524
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`Patent 6,947,748 B2
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`For Petitioner:
`
`Scott Bloebaum
`
`ANDREWS KURTH LLP
`
`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