StratosAudio, Inc.

Patent Trials and Appeals Board

Oct 25, 2021

IPR2021-00718 (P.T.A.B. Oct. 25, 2021)

Trials@uspto.gov Paper 16
571-272-7822 Entered: October 25, 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.

IPR2021-00718
Patent 9,584,843 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
10, 11, 13, and 15 of U.S. Patent No. 9,584,843 B2 (Ex. 1001, “the ’843
patent”). StratosAudio, Inc. (“Patent Owner”) filed a Preliminary Response
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(Paper 6, “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 10, 11,
13, and 15 of the ’843 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 ’843 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.
The ’843 patent issued from an application that is a continuation of an
application that issued as the patent challenged in IPR2021-00719.
Ex. 1001, code (63). 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
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petitioner filed petitions challenging claims of other patents asserted in
related litigation in IPR2021-01267, IPR2021-01303, IPR2021-01305, and
IPR2021-01371.
D. The ’843 Patent (Ex. 1001)
The ’843 patent issued on February 28, 2017 from an application filed
on February 8, 2016, that is a continuation of two other applications, the
earliest of which was filed on February 5, 2009 and claims priority to a
provisional application filed on February 5, 2008. Ex. 1001, codes (22),
(45), (60), (63), 1:7–11.
The ’843 patent “relates generally to the field of broadcasting, and in
particular methods, systems, and devices for scanning broadcasts.”
Ex. 1001, 1:20–22. Figure 1 of the ’843 patent is reproduced below.

Figure 1 is “a high-level block diagram of one embodiment of a
broadcast system.” Ex. 1001, 3:33–35. Broadcast system 100 includes
broadcast source 120, broadcast receiving system 140, broadcast scanning
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system 160, third party databases 143, and network 180. Id. at 6:15–17.
Broadcast source 120, broadcast receiving system 140, broadcast scanning
system 160, and third party databases 143 communicate with each other
through network 180. Id. at 6:18–21.
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, 7:55–60.
Broadcast source 120 transmits broadcast stream 121. Id. at 6:41–48.
Broadcast receiving system 140 receives broadcast stream 121 from
broadcast source 120 through link 141. Id. at 10:7–9. Broadcast scanning
system 160 scans broadcast stream 121 or a subcarrier data stream with
broadcast stream 121. Id. at 10:38–55. Figure 3 of the ’843 patent is
reproduced below.

Figure 3 is “a block diagram of one embodiment of a broadcast
scanning system.” Ex. 1001, 3:39–41. Broadcast scanning system 160 can
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capture the broadcast stream received by broadcast receiving system or
device 140, so that broadcast scanning system 160 can track the specific
broadcast stream being received. Id. at 10:38–43. 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 10:43–47. Broadcast
scanning system 160 can conduct an analysis of the 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 from
broadcast scanning system 160 to broadcast receiving devices 140 that are
receiving broadcast stream 121 from broadcast source 120. Id. at 10:47–55.
E. Illustrative Claim
The ’843 patent includes claims 1–15, of which Petitioner challenges
claims 10, 11, 13, and 15. Of the challenged claims, claim 10, reproduced
below, is the only independent claim.
10. A broadcast scanning system for associating data that
enables a unique identification of a specific instance of
acquisition of encoded third party data with a reception of a
specific instance of a media segment in an electronic
transmission, the system comprising:
one or more computer readable storage devices configured
to store a plurality of computer executable instructions
comprising at least a broadcast scanning module; and
one or more hardware computer processors in
communication with the one or more computer readable storage
devices and configured to execute the plurality of computer
executable instructions in order to cause the system to:
receive, using the broadcast scanning module, the specific
instance of the media segment in the electronic transmission;
determine data that identifies a source of the electronic
transmission;
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acquire encoded third party data associated with the
reception of the specific instance of the media segment in the
electronic transmission;
generate data that enables the unique identification of the
specific instance of acquisition of the encoded third party data;
determine an identification of the media segment using at
least the encoded third party data; and
store in a database the identification of the media segment
determined at least in part using the encoded third party data in
association with the data that enables unique identification of the
specific instance of acquisition of the encoded third party data
and the data that identifies the source of the electronic
transmission.
Ex. 1001, 36:8–41.
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. 9,584,843 (Ex. 1003).
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G. Asserted Grounds
Petitioner asserts that claims 10, 11, 13, and 15 are unpatentable on
the following grounds:
Claims Challenged 35 U.S.C. § Reference(s)/Basis
10, 11, 13, 15 102(e)1 Christensen
10, 11, 13, 15 102(b) Levy
10, 11, 13, 15 103 Levy, Finley

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).

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 ’843 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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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 ’843 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
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
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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. 9 (citing Ex. 1003 ¶ 45). Petitioner also argues that “a higher
education or skill might make up for less experience, and vice-versa.” Id.
(citing Ex. 1003 ¶ 45). Patent Owner neither addresses Petitioner’s
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 ’843 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.
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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 interpreting “media segment” with citations to the
record. Pet. 10 (citing Ex. 1001, 14:43–47; Ex. 1003 ¶¶ 51, 52). Patent
Owner provides a response. Prelim. Resp. 55–56.
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);
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 anticipates claims 10, 11, 13, and 15 with
citations to Levy and declarant testimony. Pet. 3, 47–69. Petitioner also
argues that claims 10, 11, 13, and 15 are unpatentable over Levy and Finley.
Id. at 3, 69–73. Patent Owner responds, inter alia, that Petitioner ignores an
explicit ordering required in the challenged claims. Prelim. Resp. 26–29.
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
with the object, other context information, such as the time of play back or
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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,
and “[a]t decoding time, the station ID is extracted and used along with
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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 10
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 10 with citations to Levy and declarant testimony. Pet. 47–65.
In particular, for the claim limitation of a processor that causes the
system to “acquire encoded third party data associated with the reception of
the specific instance of the media segment in the electronic transmission,”
Petitioner argues that Levy’s object identifier constitutes “encoded third
party data” because it can be a numeric or alphanumeric code, originates
outside of Levy’s user device, and is associated with a specific instance of a
media segment in an electronic transmission through mapping to metadata
that identifies title, artist, and lyrics. Pet. 57–59 (citing Ex. 1003 ¶¶ 181–
188; Ex. 1005 ¶¶ 6, 13–15, 22, 24, 26, 56, 64–68, Fig. 1).
For the claim limitation of a processor that causes the system to
“generate data that enables the unique identification of the specific instance
of acquisition of the encoded third party data,” Petitioner argues that, in
Levy, generating context information to be used with a broadcaster ID to
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look up the object identifier meets this claim element. Pet. 59–60 (citing
Ex. 1003 ¶¶ 189–194; Ex. 1005 ¶¶ 6, 13–15, 22, 26, 56, 64–69, Fig. 1).
a) Patent Owner’s Preliminary Response
Patent Owner responds that “generat[ing] data that enables the unique
identification of the specific instance of acquisition of the encoded third
party data” must occur either at the same time or after “acquir[ing] encoded
third party data associated with the reception of the specific instance of the
media segment in the electronic transmission” because the generated data
identifies the specific instance of acquisition of the encoded third party data.
Prelim. Resp. 27. According to Patent Owner, Petitioner argues that Levy
describes receiving a broadcast with an embedded broadcaster ID,
forwarding the broadcaster ID and context information to a server, and using
the forwarded broadcaster ID and context information to map an object
identifier to metadata. Id. at 27–28 (citing Pet. 57, 58).
Patent Owner argues that Levy’s “object identifier” is Petitioner’s
asserted “encoded third party data” and Levy’s “context information” is the
asserted generated data. Prelim. Resp. 28 (citing Pet. 59). Patent Owner
also argues that “Levy uses the context information to obtain the object
identifier, not the other way around,” and thus, Petitioner’s mapping
“contradicts the language of the claim.” Id.
b) Petitioner Fails to Show that Levy Discloses All the
Limitations of Claim 10
As argued by Patent Owner, Petitioner asserts that “Levy’s user
device receives via a broadcast a song that includes an embedded identifier
(e.g., a “broadcaster ID”),” “decodes (extracts) the ‘broadcaster ID’ from the
song,” and “forwards to a server the extracted ‘broadcaster ID’ and certain
‘context information’” so as to query for Levy’s “object identifier.” Pet. 57–
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58 (citing Ex. 1003 ¶¶ 183, 184, 186; Ex. 1005 ¶¶ 6, 13–15, 22, 26, 56, 64–
68, Fig. 1). Petitioner asserts that “Levy’s ‘object identifier’ constitutes
‘encoded third party data.’” Id. at 58–59 (citing Ex. 1003 ¶¶ 187, 188).
Petitioner also argues that
generation of the context information (specifically, “the time of
playback”) on Levy’s user device—which is sent to the server
with the “broadcaster ID” to provide the server with sufficient
information to be able to look up the “object identifier” (i.e., the
encoded third party data) in the radio station’s playlist database,
(Ex. 1005, ¶56, Fig. 1)—corresponds to the claimed “generate
data that enables the unique identification of the specific instance
of acquisition of the encoded third party data.”
Pet. 60 (citing also Ex. 1003 ¶ 192). Petitioner further argues that one of
ordinary skill in the art
would have understood that the context information “generated”
by the user device “enable[s] a[n] . . . identification of a specific
instance of acquisition” of the object identifier, because the
context data identifies when the “object identifier” was obtained
by the server (e.g., the timestamp shows when the context data
was generated at the user device and sent to the server/radio
station playlist database to obtain the object identifier).
Id. (citing Ex. 1003 ¶¶ 193, 194) (alteration in original).
As argued by Petitioner and supported by Petitioner’s declarant
testimony, Levy expressly describes extracting an embedded identifier and
forwarding that identifier with context information to identify an audio
object. Ex. 1005 ¶ 6 (“In 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. The server, 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.”), ¶ 13 (“A decoding
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device or programmatic process extracts the identifier from the object and
uses it to retrieve related data or actions (‘metadata’).”), ¶ 15 (“In the event
that an object ID is not encoded with an audio object, but instead, a
distributor or broadcaster identifier is encoded 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.”), ¶ 22 (“Based on identifier and optional context
information, the server determines an associated action to perform, such as
re-directing an identifier or context data to another server, returning
metadata (including programs, content, etc.), downloading content, logging a
transaction record.”), ¶ 56 (“To identify the object, context information such
as the play time captured at the tuner is used along with the radio station ID
extracted from the received audio signal to identify the audio object. The
decoding process forwards this information to a server.”); see also Pet. 13–
15 (describing Levy’s asserted disclosures); Ex. 1003 ¶¶ 63–74 (presenting
declarant’s understanding of Levy).
Based on our review of Petitioner’s relied-upon portions of Levy,
Levy uses an extracted identifier, such as a broadcaster ID, and “context
information” to identify an audio object. Ex. 1005 ¶¶ 15, 56. Thus, if we
accepted Petitioner’s position that obtaining Levy’s “object identifier”
discloses “acquir[ing] encoded third party data associated with the reception
of the specific instance of the media segment in the electronic transmission,”
Petitioner does not explain sufficiently how context information that is
extracted and forwarded with the broadcaster ID to obtain the “object
identifier” can disclose “generat[ing] data that enables the unique
identification of the specific instance of acquisition of the encoded third
party data.” See Pet. 57–60; Ex. 1003 ¶¶ 181–194. Petitioner does not
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explain or point to record evidence that indicates how Levy’s “object
identifier” can be acquired and generated in the manner argued by Petitioner.
See Pet. 57–60; Ex. 1003 ¶¶ 181–194; see also Prelim. Resp. 36–37
(contending that Petitioner’s anticipation challenges lack particularity).
As argued by Patent Owner, claim 10 requires that “generat[ing] data
that enables the unique identification of the specific instance of acquisition
of the encoded third party data” occur either after or at the same time as
“acquir[ing] encoded third party data associated with the reception of the
specific instance of the media segment in the electronic transmission.”
Ex. 1001, 36:28–33. Claim 10 recites a “specific instance of acquisition of
the encoded third party data” that apparently refers to the earlier-recited
“acquire encoded third party data associated with the reception of the
specific instance of the media segment in the electronic transmission,” and
Petitioner does not address the interpretation of “acquisition” in view of the
previously recited “acquire.” See Pet. 9–10, 57–60. Additionally,
Petitioner’s declarant testimony does not explain further the arguments or
evidence presented in the Petition and does not provide additional evidence
beyond that cited in the Petition. See Ex. 1003 ¶¶ 181–194.
Thus, for the reasons above, Petitioner fails to show that Levy
discloses all the limitations of independent claim 10.
3. Dependent Claims 11, 13, and 15
Petitioner argues that Levy anticipates dependent claims 11, 13, and
15 with citations to the record. Pet. 65–69. Petitioner’s arguments and
relied upon evidence for these claims do not remedy the deficiencies
discussed above for independent claim 10.
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For the reasons discussed above for claim 10, Petitioner fails to show
that Levy discloses all the limitations of dependent claims 11, 13, and 15
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. 69 (citing Ex. 1003 ¶ 227); 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 10, 11, 13, and 15
do not further address the limitations we discussed above for claim 10, 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 10.
Thus, for the reasons discussed above for claim 10, Petitioner fails to
show that Levy and Finley teach or suggest all the limitations of claims 10,
11, 13, and 15 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 10, 11, 13, and 15 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.
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E. Challenge Based on Christensen
Petitioner argues that Christensen anticipates claims 10, 11, 13, and
15 with support from Christensen and declarant testimony. Pet. 3, 20–47.
Petitioner does not address whether we should exercise our discretion under
§ 325(d). See generally id.; see also id. at 13 (stating that “Christensen was
listed in a 183-reference-long [Information Disclosure Statement (IDS)]
during prosecution, Ex. 1002, 100–108, 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. 41–51.
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]
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
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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.
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.
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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 183-reference-long IDS during prosecution, Ex. 1002, 100–
108, but, Christensen was never cited by the Examiner.” Pet. 13. Patent
Owner responds that Christensen “was expressly referred to and discussed
on the record by the examiner of the ’843 patent.” Prelim. Resp. 43 (citing
Ex. 2012, 1475; Ex. 2013, 111, 395).
Christensen was cited in an IDS during prosecution and appears on
the face of the ’843 patent. Ex. 1001, code (56); Ex. 1002, 102. Christensen
was also cited during prosecution of the parent application (U.S. Appl. No.
14/481,747) and the grandparent application (U.S. Appl. No. 12/366,483).
Ex. 1001, code (63); Ex. 2012, 1475; Ex. 2013, 111, 395.
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.
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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 ’843 patent, Patent Owner argues
that “during prosecution [Applicants] amended the claims of the
Grandparent patent to recite subject matter that is different from Christensen
203,2 and those differences carried through to the claims of the Parent patent
and the ’843 patent, as indicated with the double patenting rejections and the
terminal disclaimers within the family.” Prelim. Resp. 44.
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 ’843 patent or its parents. See generally
Pet. By specifying the length of the IDS that listed Christensen, Petitioner
appears to imply that Christensen was not extensively evaluated. See id. at
13.

2 Patent Owner refers to Christensen as “Christensen 203” to distinguish
from other references also named “Christensen.” Prelim. Resp. 43 (noting
that “the ‘Christensen’ prior art references discussed in the rejection of the
Grandparent patent [] include[] Christensen 203”). The named inventors of
the ’843 patent are Kelly Christensen, John Hansen, and Thomas Mock.
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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As argued by Patent Owner, however, Christensen was distinguished
during prosecution of the grandparent application, and terminal disclaimers
were filed in view of the claims that issued from the grandparent and parent
applications. Ex. 1002, 159; Ex. 2012, 1475; Ex. 2013, 129. Based on
Patent Owner’s arguments, the Examiner was familiar with the substance of
Christensen because the same Examiner examined both the grandparent and
parent applications. Ex. 2012, 1078 (Office Action by Examiner Castro),
1334 (Office Action by Examiner Castro), 1467 (Notice of Allowability by
Examiner Castro); Ex. 2013, 101 (Office Action by Examiner Castro), 393
(Notice of Allowability by Examiner Castro).
Because the Examiner was already familiar with the substance of
Christensen, and Patent Owner listed Christensen in an IDS, it is assumed
that the Examiner considered the substance of Christensen when examining
the ’843 patent, despite the lack of an express claim rejection over
Christensen during prosecution of the ’843 patent. Ex. 1002, 102; see also
Advanced Bionics, Paper 6 at 7–8 (explaining that “[p]reviously presented
art includes art made of record . . . such as on an Information Disclosure
Statement (IDS)”).
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. 50–51 (citing Pet. 13; Ex. 2012, 1475; Ex. 2013, 111, 395).
Thus, factor (e) weighs in favor of denial.
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(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 the claims of the ’843 patent 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
the subject matter of the ’843 patent.” Prelim. Resp. 51.
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
prosecution and Petitioner has not shown that the Examiner materially erred
in allowing the claims of the ’843 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.

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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
VW-Stratos@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
WCStratosAudioIPR@whitecase.com