StratosAudio, Inc.

Patent Trials and Appeals Board

Oct 22, 2021

IPR2021-00719 (P.T.A.B. Oct. 22, 2021)

Trials@uspto.gov Paper 16
571-272-7822 Date: October 22, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

VOLKSWAGEN GROUP OF AMERICA, INC.,
Petitioner,
v.
STRATOSAUDIO, INC.,
Patent Owner.

IPR2021-00719
Patent 9,294,806 B2

Before JUSTIN T. ARBES, HYUN J. JUNG, and KEVIN C. TROCK,
Administrative Patent Judges.
JUNG, Administrative Patent Judge.
DECISION
Denying Institution of Inter Partes Review
35 U.S.C. § 314
I. INTRODUCTION
A. Background and Summary
Volkswagen Group of America, Inc. (“Petitioner”) filed a Petition
(Paper 1, “Pet.”) requesting institution of an inter partes review of claims
5–10 and 13 of U.S. Patent No. 9,294,806 B2 (Ex. 1001, “the ’806 patent”).
StratosAudio, Inc. (“Patent Owner”) filed a Preliminary Response (Paper 6,
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“Prelim. Resp.”). With our authorization (Paper 11), Petitioner filed a Reply
to Patent Owner’s Preliminary Response (Paper 12), and Patent Owner filed
a Sur-reply (Paper 14) directed solely to the issue of whether we should
exercise our discretion to deny the Petition under 35 U.S.C. § 314(a).
Under 35 U.S.C. § 314, an inter partes review may not be instituted
“unless . . . 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 and for the reasons
explained below, we do not institute an inter partes review of claims 5–10
and 13 of the ’806 patent.
B. Real Parties in Interest
Petitioner identifies Volkswagen Group of America, Inc. as a real
party in interest (Pet. 1), and Patent Owner identifies StratosAudio, Inc. as a
real party in interest (Paper 4, 1).
C. Related Matters
Petitioner indicates that the ’806 patent has been asserted in
StratosAudio, Inc. v. Volkswagen Group of America, Inc., 6:20-cv-1131
(W.D. Tex.). Pet. 1. Patent Owner identifies StratosAudio, Inc. v.
Volkswagen Group of America, Inc., 20-cv-01127-ADA (W.D. Tex.) as a
related matter. Paper 4, 1. The parties also identify several other litigations
with StratosAudio, Inc. as the plaintiff against other entities in the Western
District of Texas. Pet. 1; Paper 4, 1.
A related patent is challenged in IPR2021-00718. Petitions
challenging claims of other patents asserted in the related litigation have
been filed in IPR2021-00712, IPR2021-00716, IPR2021-00717, IPR2021-
00720, and IPR2021-00721. A different petitioner filed petitions
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challenging claims of other patents asserted in related litigation in
IPR2021-01267, IPR2021-01303, IPR2021-01305, and IPR2021-01371.
D. The ’806 Patent (Ex. 1001)
The ’806 patent issued on March 22, 2016 from an application filed
on September 9, 2014, that is a continuation of another application filed on
February 5, 2009 and claims priority to a provisional application filed on
February 5, 2008. Ex. 1001, codes (22), (45), (60), (63), 1:7–10.
The ’806 patent “relates generally to the field of broadcasting, and in
particular methods, systems, and devices for scanning broadcasts.”
Ex. 1001, 1:18–20. Figure 1 of the ’806 patent is reproduced below.

Figure 1 is “a high-level block diagram of one embodiment of a
broadcast system.” Ex. 1001, 3:24–25. Broadcast system 100 includes
broadcast source 120, broadcast receiving system 140, broadcast scanning
system 160, third party databases 143, and network 180. Id. at 5:67–6:2.
Broadcast source 120, broadcast receiving system 140, broadcast scanning
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system 160, and third party databases 143 communicate with each other
through network 180. Id. at 6:3–6.
Broadcast stream 121, broadcast receiver link 141, third party
database link 142 and/or broadcast scanning system link 161 represent the
data that flows through communication means 180. Ex. 1001, 7:37–41.
Broadcast source 120 transmits broadcast stream 121. Id. at 6:25–37.
Broadcast receiving system 140 receives broadcast stream 121 from
broadcast source 120 through link 141. Id. at 9:53–55. Broadcast scanning
system 160 scans broadcast stream 121 or a subcarrier data stream with
broadcast stream 121. Id. at 10:35–36, 10:47–49.
Figure 3 of the ’806 patent is reproduced below.

Figure 3 is “a block diagram of one embodiment of a broadcast
scanning system.” Ex. 1001, 3:30–31. Broadcast scanning system 160 can
capture the broadcast stream received by broadcast receiving system or
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device 140, so that broadcast scanning system 160 can track the specific
broadcast stream being received. Id. at 10:17–22. Broadcast receiving
system 140 can “receive a content identifier, a broadcaster media event
identifier, a unique event identifier and/or any combination of identifiers
from the broadcast scanning system 160.” Id. at 10:22–25. Broadcast
scanning system 160 can conduct an analysis of broadcast stream 121 to
determine the media content in broadcast stream 121, assign a unique event
identifier to a specific instance of the broadcast stream, and/or send the
unique event identifier along with any other relevant information to
broadcast receiving devices 140 that are receiving broadcast stream 121
from broadcast source 120. Id. at 10:26–34.
Figure 4 of the ’806 patent is reproduced below.

Figure 4 is “a flow-chart diagram of one embodiment of a method of
scanning broadcast streams.” Ex. 1001, 3:37–38. Scanning process 400
begins at 410 with broadcast scanning system 160 receiving broadcast
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stream 121. Id. at 20:62–64. At 420, broadcast scanning system 160 scans
broadcast stream 121. Id. at 21:3–4. At 440, the received and scanned
stream is analyzed. Id. at 21:13–15. Analyzing broadcast streams can
include identifying media content in broadcast stream 121. Id. at 21:18–20.
At 460, the results of the scanning analysis are stored in media storage
database 340. Id. at 21:35–37.
E. Illustrative Claim
The ’806 patent includes claims 1–16, of which Petitioner challenges
claims 5–10 and 13. Of the challenged claims, claim 5, reproduced below, is
the only independent claim.
5. A broadcast scanning method for uniquely identifying a
media segment associated with an electronic transmission of the
media segment through acquisition of third party encoded data,
the method comprising:
obtaining, using a stream scanner module, a data stream
associated with the electronic transmission of the media
segment;
determining, using at least one processor, data that
identifies a source of the data stream obtained through analysis
of said data stream;
extracting at least third party encoded data obtained from
the data stream;
analyzing, using a stream analysis module, the third party
encoded data extracted from the data stream, whereby the
analysis generates analysis data that includes at least an
identifying data that initiates identification of the media segment;
correlating the data that identifies the source of the data
stream, additional data associated with the transmission of the
media segment and at least part of the analysis data;
generating a unique identification of a specific instance of
extraction of the third party encoded data associated with the
electronic transmission of the media segment;
identifying using at least one processor the media segment
based on the correlation; and
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storing in a database the data that identifies the source of
the data stream, the unique identification of the specific instance
of extraction of third party encoded data associated with the
electronic transmission of the media segment and the
identification of the media segment based at least in part on the
correlation.
Ex. 1001, 34:47–35:11.
F. Asserted Prior Art and Proffered Testimonial Evidence
Petitioner identifies the following references as prior art in the
asserted grounds of unpatentability:
Name Reference Exhibit
Christensen US 8,200,203 B1, filed Oct. 4, 2010, issued June
12, 2012, continuation of application filed
Mar. 22, 2004
1004
Levy US 2003/0174861 A1, published Sept. 18, 2003 1005
Finley US 10,303,434 B2, filed May 22, 2015, issued
May 28, 2019, continuation of application filed
June 27, 2007
1006
Petitioner also provides a Declaration of Vijay Madisetti, Ph.D. in Support
of Petition for Inter Partes Review of U.S. Patent No. 9,294,806 (Ex. 1003).
G. Asserted Grounds
Petitioner asserts that claims 5–10 and 13 are unpatentable on the
following grounds:
Claims Challenged 35 U.S.C. § Reference(s)/Basis
5–10, 13 102(e)1 Christensen
5–10, 13 102(b) Levy
5–10, 13 103 Levy, Finley

1 The relevant sections of the Leahy-Smith America Invents Act (“AIA”),
Pub. L. No. 112–29, 125 Stat. 284 (Sept. 16, 2011), took effect on March 16,
2013. Because the ’806 patent claims priority to an application filed before
that date, our citations to 35 U.S.C. §§ 102 and 103 are to their pre-AIA
versions.
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II. ANALYSIS
A. Legal Standards
35 U.S.C § 312(a) identifies the required contents of a petition.
Among other requirements, it provides that the petition must identify with
particularity (1) the claims challenged, (2) the grounds on which that
challenge is based, and (3) the evidence supporting those grounds, including
the prior art patents and printed publications and affidavits or declarations of
supporting evidence and opinions, if the petitioner relies on expert opinions.
35 U.S.C. § 312(a)(3) (2020); see also 37 C.F.R. § 42.104 (setting forth the
required contents of a petition).
The Director may not authorize an inter partes review to be instituted
unless the Director determines that 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) (2020).
If an inter partes review is instituted, the petitioner bears the burden
of proving unpatentability of the challenged claims, and the burden of
persuasion never shifts to the patent owner. Dynamic Drinkware, LLC v.
Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). To prevail in an
inter partes review, the petitioner must support its challenges by a
preponderance of the evidence. 35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d)
(2020).
Petitioner contends that the challenged claims of the ’806 patent are
unpatentable under §§ 102(b), 102(e), and 103(a). A claim is anticipated
under § 102 “only if each and every element as set forth in the claim is
found, either expressly or inherently described, in a single prior art
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reference.” Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628,
631 (Fed. Cir. 1987).
A claim is unpatentable under § 103(a) if the differences between the
claimed subject matter and the prior art are such that the subject matter, as a
whole, would have been obvious at the time the invention was made to a
person having ordinary skill in the art to which said subject matter pertains.
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of
obviousness is resolved on the basis of underlying factual determinations,
including: (1) the scope and content of the prior art; (2) any differences
between the claimed subject matter and the prior art; (3) the level of skill in
the art; and (4) where in evidence, so-called secondary considerations.
Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). When evaluating a
combination of teachings, we must also “determine whether there was an
apparent reason to combine the known elements in the fashion claimed by
the patent at issue.” KSR, 550 U.S. at 418 (citing In re Kahn, 441 F.3d 977,
988 (Fed. Cir. 2006)). Whether a combination of elements produces a
predictable result weighs in the ultimate determination of obviousness. Id. at
416–417.
B. Level of Ordinary Skill in the Art
Petitioner asserts that one of ordinary skill in the art “would have had
a B.S. in computer science or electrical engineering (or a related field), and
approximately three years of experience working in the communications- or
Internet-related industries, or, alternatively, an advanced degree (such as a
master’s degree) in computer science or electrical engineering (or a related
field).” Pet. 5 (citing Ex. 1003 ¶ 36). Petitioner also argues that “more
education or skill might make up for less experience, and vice-versa.” Id.
(citing Ex. 1003 ¶ 36). Patent Owner neither addresses Petitioner’s
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proposed level of ordinary skill nor proposes its own. See generally Prelim.
Resp.
Based on the record at this stage, we adopt Petitioner’s asserted level
of ordinary skill to determine whether there is a reasonable likelihood that
Petitioner would prevail with respect to at least one of the claims challenged
in the Petition. This level of skill in the art is consistent with the disclosure
of the ’806 patent and the prior art of record. In re GPAC Inc., 57 F.3d
1573, 1579 (Fed. Cir. 1995).
C. Claim Construction
In an inter partes review based on a petition filed on or after
November 13, 2018, the claims are construed
using the same claim construction standard that would be used to
construe the claim in a civil action under 35 U.S.C. [§] 282(b),
including construing the claim in accordance with the ordinary
and customary meaning of such claim as understood by one of
ordinary skill in the art and the prosecution history pertaining to
the patent.
37 C.F.R. § 42.100(b) (2020); see Phillips v. AWH Corp., 415 F.3d 1303,
1312–13 (Fed. Cir. 2005) (en banc).
Petitioner proposes an interpretation for “media segment” with
citations to the record. Pet. 6 (citing Ex. 1001, 14:18–23; Ex. 1003 ¶¶ 42,
43). Patent Owner provides a response. Prelim. Resp. 53–54.
At this stage, because determining whether Petitioner shows a
reasonable likelihood of prevailing does not depend on a particular
interpretation for any claim term, we determine that no claim term requires
express interpretation. Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d
795, 803 (Fed. Cir. 1999) (construing explicitly only those claim terms in
controversy and only to the extent necessary to resolve the controversy);
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Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013,
1017 (Fed. Cir. 2017) (applying Vivid Techs. in the context of an inter partes
review).
D. Challenges Based on Levy
Petitioner argues that Levy’s system, “during the normal course of its
operation, necessarily performs each and every step of the methods
claimed.” Pet. 43; see also id. at 43–66 (arguing with support from Levy
and declarant testimony that Levy discloses all limitations of claims 5–10
and 13). Petitioner also argues that claims 5–10 and 13 are unpatentable
over Levy and Finley. Id. at 3, 66–70.
Patent Owner responds that Petitioner improperly relies on the same
disclosure for multiple claim elements and improperly relies on knowledge
in the art for anticipation arguments. Prelim. Resp. 23–24, 27–39, 51.
For the reasons below, Petitioner does not show that there is a
reasonable likelihood that it would prevail with respect to at least one of the
challenged claims in its challenges based on Levy.
1. Levy (Ex. 1005)
Levy “relates to linking audio and other multimedia data objects with
metadata and actions via a communication network.” Ex. 1005 ¶ 4.
Figure 1 of Levy is reproduced below.
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Figure 1 shows “examples of media object linking processes and
systems.” Ex. 1005 ¶ 8. “Media objects are transformed into active,
connected objects via identifiers embedded into them,” and “[t]hese
identifiers can be embedded by the owner or distributor of the media object,
or automatically created from the media object.” Id. ¶ 6. One “way to
associate the identifier is to embed it as auxiliary data in the audio signal
using steganographic methods, such as digital watermarking or other data
hiding techniques.” Id. ¶ 12.
The identifier can be an “object ID that identifies an audio object,”
“distributor ID that identifies the distributor of the audio object,” or
“broadcaster ID that identifiers the broadcaster of the audio object.”
Ex. 1005 ¶ 15; see also id. ¶ 56 (describing that a broadcaster ID can be a
“radio station ID”). “[M]ore than one identifier may be encoded into an
audio object.” Id. ¶ 15. If “a distributor or broadcaster identifier is encoded
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with the object, other context information, such as the time of play back or
distribution, location of distribution, etc. may be used to identify the audio
object as part of the linking process.” Id.; see also id. ¶ 56 (describing that
context information can be “play time captured at the tuner”).
“When the identifier is associated with metadata or actions, it
transforms the media object into a ‘linked’ object.” Ex. 1005 ¶ 13. “The
identifier travels with the object through distribution, including in some
cases, . . . through electronic distribution (broadcast or network
communication)” and “may travel within the same band as the audio object,
such as a watermark, or via a separate band, such as a file header or footer or
separate broadcast band.” Id.
“A decoding device or programmatic process extracts the identifier
from the object and uses it to retrieve related data or actions (‘metadata’).”
Ex. 1005 ¶ 13; see also id. ¶ 92 (describing that decoding devices include
“receivers”). “In the case of an audio object, like a song, the metadata
typically includes the title, artist, lyrics, copyright owner, sound recording
owner, information about buying or sampling opportunities and URLs to this
type of data as well as web sites and other programs and devices,” and
“[l]inked actions include device or programmatic processes for
electronically establishing a license, transferring content (either streaming or
download), sending an email, recording marketing data about a transaction,
etc.” Id. ¶ 13. “The decoding process may be implemented as a separate
program or device, or integrated into a player, tuner, or some other capture
device, such as listening devices that convert ambient audio waves to an
electronic signal and then extract the identifier from the signal.” Id. ¶ 21.
“An example is a radio station that marks its broadcasts with a station
ID and maintains a playlist database with the air times of each audio object,
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and “[a]t decoding time, the station ID is extracted and used along with
context information such as the air time of the audio object to look up the
audio object or its corresponding metadata and actions” so as “to provide
audio object specific metadata or actions even without requiring a unique
object identifier in every audio object.” Ex. 1005 ¶ 15; see also id. ¶ 6
(describing that “[i]n the context of a user’s playback experience, a decoding
process extracts the identifier from a media object and possibly additional
context information and forwards it to a server” that “in turn, maps the
identifier to an action, such as returning metadata, re-directing the request to
one or more other servers, requesting information from another server to
identify the media object, etc.”).
2. Independent Claim 5
Petitioner argues that Levy discloses and would have been understood
by one of ordinary skill in the art to describe the limitations of independent
claim 5 with citations to Levy and declarant testimony. Pet. 43–60.
Relevant to our analysis, for the claim steps of “determining, using at
least one processor, data that identifies a source of the data stream obtained
through analysis of said data stream” and “extracting at least third party
encoded data obtained from the data stream,” Petitioner addresses the steps
together and argues that Levy finds, extracts, and decodes “identifiers” that
include a “broadcaster ID” transmitted in a data stream with an audio
broadcast. Pet. 48–49 (citing Ex. 1003 ¶ 176). Petitioner also argues that
one of ordinary skill in the art would have understood that Levy’s
“broadcaster ID” is “third party encoded data” because “it originates from
outside of Levy’s user device” and “is embedded into the broadcast stream
in a manner that requires extraction.” Id. at 49 (citing Ex. 1003 ¶ 180;
Ex. 1005 ¶¶ 47–48, Fig. 1).
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For the claim step of “analyzing, using a stream analysis module, the
third party encoded data extracted from the data stream, whereby the
analysis generates analysis data that includes at least an identifying data that
initiates identification of the media segment,” Petitioner argues that Levy
forwards the “broadcaster ID” and “context information” to a server to
obtain an “object identifier,” that, in turn, is mapped to “metadata.” Pet. 51–
53 (citing Ex. 1003 ¶¶ 186, 188–191, 197; Ex. 1005 ¶¶ 13–15, 22, 26, 55,
56, 65, 68, Fig. 1). According to Petitioner, one of ordinary skill in the art
“would have understood that the server’s use of the ‘broadcaster ID’ (and
context data) to access a specific database (i.e., the radio station database
corresponding to the broadcast ID) would correspond to” this limitation.
Pet. 53 (citing Ex. 1003 ¶ 192).
For the claim step of “correlating the data that identifies the source of
the data stream, additional data associated with the transmission of the
media segment and at least part of the analysis data,” Petitioner contends
that the step requires three data elements to be correlated. Pet. 53 (citing
Ex. 1003 ¶ 194). Petitioner also contends that Levy’s (1) “broadcaster ID,”
(2) context information such as “air time,” and (3) object identifier generated
from a radio station database lookup correspond to the recited (1) “data that
identifies the source of the data stream,” (2) “additional data associated with
the transmission of the media segment,” and (3) “analysis data,”
respectively. Id. at 54 (citing Ex. 1003 ¶¶ 195–200; Ex. 1005 ¶¶ 15, 22).
For the claim step of “generating a unique identification of a specific
instance of extraction of the third party encoded data associated with the
electronic transmission of the media segment,” Petitioner contends that
Levy’s extracting of context information, such as “play time captured at the
user [device],” after receiving an audio object would be understood to
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identify a “specific instance of extraction” of the broadcaster ID, the asserted
“third party encoded data associated with the electronic transmission of the
media segment.” Pet. 55–56 (citing Ex. 1003 ¶¶ 201–205; Ex. 1005 ¶ 56).
a) Patent Owner’s Preliminary Response
Patent Owner responds, inter alia, that “Petitioner improperly maps
the same element in the prior art to multiple distinct components of the
claims, and has not rebutted the clear implication that the claimed
components are distinct.” Prelim. Resp. 23–24. Patent Owner argues that
“determining, using at least one processor, data that identifies a source of the
data stream obtained through analysis of said data stream” and “extracting at
least third party encoded data obtained from the data stream,” as recited by
independent claim 5, require “data that identifies a source of the data
stream” and “third party encoded data” to be distinct components. Id. at 27.
Patent Owner quotes from the Petition and argues that Petitioner improperly
maps Levy’s broadcaster ID to these distinct elements. Id. at 27–29 (quoting
Pet. 49).
Patent Owner also responds that “Petitioner’s anticipation grounds
lack particularity and are not sufficiently developed.” Prelim. Resp. 38.
Patent Owner argues that Petitioner “fails to allege, let alone demonstrate,
that [Levy] disclose[s] all of the claim limitations,” does not make it clear
that it is relying on common knowledge of a person of ordinary skill in the
art, does not provide “any factual evidence to support such reliance,”
“provides no evidence as to why or how a [person of ordinary skill in the art]
would have arrived at the claim limitations at issue, and merely relies on an
expert declaration that should be entitled to little to no weight.” Id. at 38–
39.
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b) Petitioner Fails to Show that Levy Discloses All the
Limitations of Claim 5
The method of claim 5 expressly requires several forms of data. For
example, claim 5 recites “data that identifies a source of the data stream,”
“third party encoded data,” “analysis data,” “identifying data,” and
“additional data.” Ex. 1001, 34:47–35:11. Petitioner relies on Levy’s
broadcaster ID as both (1) “data that identifies a source of the data stream”
because it identifies the broadcaster and (2) “third party encoded data”
because it originates from outside of Levy’s user device and is embedded
with the broadcast. See Pet. 49. Petitioner, however, does not explain
whether the Specification of the ’806 patent indicates that “data that
identifies a source of the data stream” and the “third party encoded data” can
refer to the same data. See id. at 48–49. Petitioner also does not explain
further if one of ordinary skill in the art would understand that the asserted
“data that identifies a source of the data stream” and the “third party encoded
data” can be the same data. See id.
Additionally, Petitioner argues that “Levy teaches finding, extracting,
and decoding ‘identifiers’—including a ‘broadcaster ID.’” Pet. 48–49.
Claim 5 requires “determining . . . data that identifies a source of the data
stream through analysis of said data stream” and “extracting at least third
party encoded data obtained from the data stream.” Ex. 1001, 34:47–35:11.
By reciting another step for another type of data, claim 5 indicates by its
own words that “third party data” has some difference with “data that
identifies a source of the data stream.” See id.; see also Pet. 5 (arguing that
“[t]erms not expressly construed should be given their plain and ordinary
meaning”).
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In view of the above, although Levy does disclose that its
“broadcaster ID” identifies the source, is encoded, and can originate from a
third party, the arguments presented in the Petition and the cited evidence do
not sufficiently persuade us that Levy’s finding, extracting, and decoding the
broadcaster ID discloses, or that one of ordinary skill in the art would
understand discloses, both the steps of “determining, using at least one
processor, data that identifies a source of the data stream obtained through
analysis of said data stream” and “extracting at least third party encoded data
obtained from the data stream.” See Pet. 48–49; Ex. 1001, 34:47–58. The
presented arguments and cited evidence may be sufficient for one step, but
not both.
Moreover, even if one of ordinary skill in the art understood that
Levy’s broadcaster ID could be both “data that identifies a source of the data
stream” and “third party encoded data,” Petitioner fails to explain
sufficiently how Levy analyzes the asserted third party code to generate
analysis data that includes at least an identifying data, as required by claim
5. The relied-upon portions of Levy do not disclose analyzing the
broadcaster ID (i.e., the alleged third party encoded data). Ex. 1005
¶¶ 13–15, 22, 26, 55, 56, 65, 68, Fig. 1. Petitioner does not explain why one
of ordinary skill in the art would understand forwarding broadcaster ID with
context information to a server discloses the step of “analyzing” third party
encoded data. See Pet. 50–53. Petitioner also does not provide an
interpretation of “analyzing” that supports the argument. See id. at 5–6,
50–53; see also Prelim. Resp. 38–39 (responding that Petitioner’s
anticipation challenges lack particularity).
The relevant paragraphs of Petitioner’s declarant testimony for the
limitations discussed above do not provide additional explanation or identify
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additional evidence beyond that provided in the Petition. See Ex. 1003
¶¶ 175–206.
Thus, for the reasons above, Petitioner fails to show that Levy
discloses all the limitations of independent claim 5.
3. Dependent Claims 6–10 and 13
Petitioner argues that Levy anticipates dependent claims 6–10 and 13
with citations to the record. Pet. 60–66. Petitioner’s arguments and relied
upon evidence for these claims do not remedy the deficiencies discussed
above for independent claim 5.
For the reasons discussed above for claim 5, Petitioner fails to show
that Levy discloses all the limitations of dependent claims 6–10 and 13 and,
therefore, fails to show that Levy anticipates these claims.
4. Asserted Obviousness in view of Levy and Finley
Petitioner argues that:
[t]o the extent . . . that Levy does not anticipate the Challenged
Claims because Levy does not disclose the complete details of
the claimed database (in other words, that the difference between
each claim as a whole and the prior art as a whole is the explicit
recitation of the claimed database), it would have been obvious
to store the object ID lookup information or purchase transaction
tracking information.
Pet. 66 (citing Ex. 1003 ¶ 251); see also id. (contending that Levy teaches
storing a transaction log in a log file of a database). Petitioner’s arguments
that Levy and Finley would have rendered obvious claims 5–10 and 13 do
not further address the limitations we discussed above for claim 5, and
Petitioner’s proposed modification of Levy in view of Finley does not
remedy the deficiencies of Petitioner’s arguments that Levy discloses all the
limitations of claim 5.
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Thus, for the reasons discussed above for claim 5, Petitioner fails to
show that Levy and Finley teach or suggest all the limitations of claims 5–10
and 13 and, therefore, fails to show that Levy and Finley would have
rendered obvious these claims.
5. Petitioner Fails to Show a Reasonable Likelihood of Prevailing
As discussed above, Petitioner’s arguments and evidence fail to show
that Levy anticipates claims 5–10 and 13 and fail to show that Levy and
Finley would have rendered obvious these claims. Petitioner, therefore, fails
to show a reasonable likelihood of prevailing in its challenges based on
Levy.
E. Challenge Based on Christensen
Petitioner argues that Christensen’s system “necessarily performs
each and every step of the methods claimed.” Pet. 14; see also id. at 14–42
(arguing with support from Christensen and declarant testimony that
Christensen discloses claims 5–10 and 13). Petitioner does not address
whether we should exercise our discretion under § 325(d). See generally id.;
see also id. at 9 (stating that “Christensen was listed in a 170-reference-long
[Information Disclosure Statement (IDS)] during prosecution, Ex. 1002,
152–159, but, Christensen was never cited by the Examiner”); Paper 11
(requesting additional briefing only to address our discretion under
§ 314(a)).
Patent Owner responds that institution should be denied under
§ 325(d) because Christensen was previously considered and discussed
during prosecution. Prelim. Resp. 42–53.
1. 35 U.S.C. § 325(d)
Institution of inter partes review is discretionary. See Harmonic Inc.
v. Avid Tech, Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016) (“[T]he [Office]
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is permitted, but never compelled, to institute an [inter partes review]
proceeding.”). Pursuant to 35 U.S.C. § 325(d), in determining whether to
institute an inter partes review, “the Director may take into account whether,
and reject the petition or request because, the same or substantially the same
prior art or arguments previously were presented to the Office.” In
evaluating the exercise of discretion to deny institution under § 325(d), the
Board uses the following two-part framework: (1) determining whether the
same or substantially the same art previously was presented to the Office or
whether the same or substantially the same arguments previously were
presented to the Office; and (2) if either condition of the first part of the
framework is satisfied, determining whether the petitioner has demonstrated
that the Office erred in a manner material to the patentability of challenged
claims. Advanced Bionics, LLC v. Med-El Electromedizinishe Gerӓte
GmbH, IPR2019-01469, Paper 6, 8 (PTAB Feb. 13, 2020) (precedential).
In applying the two-part framework, we consider several non-
exclusive factors, including:
(a) the similarities and material differences between the asserted
art and the prior art involved during examination; (b) the
cumulative nature of the asserted art and the prior art evaluated
during examination; (c) the extent to which the asserted art was
evaluated during examination, including whether the prior art
was the basis for rejection; (d) the extent of the overlap between
the arguments made during examination and the manner in which
Petitioner relies on the prior art or Patent Owner distinguishes
the prior art; (e) whether Petitioner has pointed out sufficiently
how the Examiner erred in its evaluation of the asserted prior art;
and (f) the extent to which additional evidence and facts
presented in the Petition warrant reconsideration of the prior art
or arguments.
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Becton, Dickinson & Co. v. B. Braun Melsungen AG, IPR2017-01586,
Paper 8 at 17–18 (PTAB Dec. 15, 2017) (precedential as to Section III.C.5,
first paragraph) (“Becton, Dickinson”).
Factors (a), (b), and (d) of the Becton, Dickinson factors relate to
whether the art or arguments presented in the Petition are the same or
substantially the same as those previously presented to the Office. Advanced
Bionics, Paper 6 at 10. Factors (c), (e), and (f) “relate to whether the
petitioner has demonstrated a material error by the Office” in its prior
consideration of that art or arguments. Id. Only if the same or substantially
the same art or arguments were previously presented to the Office do we
then consider whether petitioner has demonstrated a material error by the
Office. Id. “At bottom, this framework reflects a commitment to defer to
previous Office evaluations of the evidence of record unless material error is
shown.” Id. at 9.
a) Same or Substantially the Same Art or Arguments Previously
Presented to the Office
We first consider whether Petitioner asserts the same or substantially
the same art or arguments that previously were presented to the Office.
Advanced Bionics, Paper 6 at 8.
(1) Becton, Dickinson Factors (a), (b), and (d)
As to Becton, Dickinson factor (a), Petitioner argues that “Christensen
was listed in a 170-reference-long IDS during prosecution, Ex. 1002,
152–159, but, Christensen was never cited by the Examiner.” Pet. 9. Patent
Owner responds that Christensen “was expressly referred to and discussed
on the record by the examiner of the ’806 patent.” Prelim. Resp. 44–45
(citing Ex. 1002, 111, 395; Ex. 2012, 1475).
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Christensen was cited in an IDS during prosecution and appears on
the face of the ’806 patent. Ex. 1001, code (56); Ex. 1002, 420. Christensen
was also cited during prosecution of the parent application (U.S. Appl. No.
12/366,483). Ex. 1001, code (63); Ex. 2012, 1475.
Because the same reference was cited during prosecution, there is no
material difference between Christensen and the prior art involved during
examination. Given these facts, we need not further evaluate factor (b),
whether Christensen is cumulative, nor factor (d) the extent of overlap in
arguments regarding Christensen. Thus, we find that the same reference was
previously presented to the Office and we move on to the second part of the
Advanced Bionics framework.
b) Whether the Office Erred in a Manner Material to
Patentability
Because we find that the same art previously was presented to the
Office, we turn to whether Petitioner demonstrates that the Office erred in a
manner material to the patentability of the challenged claims. Advanced
Bionics, Paper 6 at 8, 10; see Becton, Dickinson, Paper 8 at 24.
(1) Becton, Dickinson Factor (c)
As to Becton, Dickinson factor (c), the extent to which Christensen
was evaluated during prosecution of the ’806 patent, Patent Owner argues
that “amendments were made to the Parent application ‘to overcome a
double patenting rejection’ in view of Christensen”2 and during prosecution

2 Patent Owner refers to Christensen as “Christensen 203” to distinguish
from other references also named “Christensen.” Prelim. Resp. at 46 n.9
(noting that “the ‘Christensen’ prior art in the Examiner’s Reasons for
Allowance includes at least Christensen 203”). The named inventors of the
’806 patent are Kelly Christensen, John Hansen, and Thomas Mock.
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of the ’806 patent, the examiner indicated that Christensen does not disclose
the limitations of claims 6, 8, and 15, which issued as claims 5, 7, and 14.
Prelim. Resp. 45–46 (citing Ex. 1002, 111, 395; Ex. 2012, 1475). Patent
Owner also argues that a terminal disclaimer was filed over three patents,
including the one that issued from the parent application. Id. at 46 (citing
Ex. 1002, 129).
Although Petitioner notes that Christensen was cited in an IDS,
Petitioner does not address expressly the extent to which Christensen was
evaluated during prosecution of the ’806 patent or its parent. See generally
Pet. By specifying the length of the IDS that listed Christensen, Petitioner
appears to imply that Christensen was not extensively evaluated. See Pet. 9.
As argued by Patent Owner, however, Christensen was distinguished
during prosecution of the parent application, and a terminal disclaimer was
filed in view of the claims that issued from the parent application. Ex. 1002,
129; Ex. 2012, 1475. Based on Patent Owner’s arguments, the Examiner
was familiar with the substance of Christensen because the same Examiner
examined the parent application. Ex. 2012, 101 (Office Action by Examiner
Castro), 393 (Notice of Allowability by Examiner Castro).
Because the Examiner was already familiar with the substance of
Christensen, Patent Owner listed Christensen in an IDS, and Christensen
was cited in a nonstatutory obviousness-type double patenting rejection
during prosecution of the ’806 patent, it is assumed that the Examiner

Ex. 1001, code (72). The named inventors of Christensen are Kelly
Christensen, Thomas Mock, Lewis Kushner, and Richard Bowman.
Ex. 1004, code (75). Patent Owner is the listed assignee for both patents.
Ex. 1001, code (73); Ex. 1004, code (73).
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considered the substance of Christensen when examining the ’806 patent.
Factor (c), thus, favors exercise of our discretion.
(2) Becton, Dickinson Factor (e)
Factor (e) asks whether Petitioner points to error in the Examiner’s
evaluation of Christensen. We agree with Patent Owner that Petitioner fails
to point out any error in the Examiner’s evaluation of Christensen. Prelim.
Resp. 49 (citing Pet. 9; Ex. 2012, 1475).
Thus, factor (e) weighs in favor of denial.
(3) Becton, Dickinson Factor (f)
Patent Owner argues that “Petitioner presents no additional evidence
or facts that would warrant reconsideration of Examiner Castro’s conclusion
that at least claims 5 and 7 are not taught in Christensen 203,” Petitioner’s
declarant testimony “is a verbatim copy of the attorney argument in the
Petition and should be accorded no weight,” and “the Petition includes no
additional evidence or facts that would indicate the Examiner was wrong in
his conclusion that Christensen 203 does not teach at least claims 5 and 7.”
Prelim. Resp. 49–50.
Relevant to factor (f), Petitioner offers the testimony of Dr. Madisetti
(Ex. 1003), which was not available to the Examiner, but is consistent with
the arguments made in the Petition. At this stage, we cannot say that the
testimony should be given no weight, as argued by Patent Owner.
Thus, this factor is, at most, neutral.
2. Exercising Our Discretion to Deny
For the reasons set forth above, we conclude that the circumstances of
this case, on the record presented, warrant exercise of our discretion to deny
institution based on § 325(d). Patent Owner cited Christensen during
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prosecution, and Petitioner has not shown that the Examiner materially erred
in allowing the claims of the ’806 patent.
As we explain in detail above in Section II.D., Petitioner has not
demonstrated a reasonable likelihood of prevailing on its other asserted
grounds of unpatentability. Because each of Petitioner’s grounds should be
denied, either for an inadequate showing on the merits or pursuant to our
discretion under § 325(d), we do not institute review.

III. CONCLUSION
For the reasons above, Petitioner does not show that there is a
reasonable likelihood that it would prevail with respect to at least one of the
challenged claims in its challenges based on Levy, and we exercise our
discretion under § 325(d) for the anticipation challenge based on
Christensen.

IV. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that the Petition is denied, and no inter partes review is
instituted.

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FOR PETITIONER:
Eric S. Lucas
David J. Cooperberg
SHEARMAN & STERLING LLP
eric.lucas@Shearman.com
david.cooperberg@Shearman.com

FOR PATENT OWNER:
John Scheibeler
Jonathan Lamberson
Ashley T. Brzezinski
WHITE & CASE LLP
jscheibeler@whitecase.com
jonathan.lamberson@whitecase.com
ashley.brzezinski@whitecase.com