Trials@uspto.gov Paper 8 Tel: 571-272-7822 Entered: October 11, 2017

UNITED STATES PATENT AND TRADEMARK OFFICE ____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD

____________

ITRON, INC., Petitioner,

v.

SMART METER TECHNOLOGIES, INC., Patent Owner. ____________

Case IPR2017-01199 Patent 7,058,524 B2

____________

Before BRYAN F. MOORE, BARBARA A. BENOIT, and JOHN D. HAMANN, Administrative Patent Judges. HAMANN, Administrative Patent Judge.

DECISION Institution of Inter Partes Review

37 C.F.R. § 42.108

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I. INTRODUCTION

Itron, Inc. (“Petitioner”) filed a Petition (Paper 2, “Pet.”) for inter

partes review of claims 17–22 (“the challenged claims”) of U.S. Patent

No. 7,058,524 B2 (Ex. 1001, “the ’524 patent” or “the challenged patent”).

Smart Meter Technologies Inc. (“Patent Owner”) filed a Preliminary

Response (Paper 7, “Prelim. Resp.”) to the Petition.

We have authority under 35 U.S.C. § 314, which provides that an

inter partes review may be authorized only if “the information presented in

the petition . . . and any [preliminary] response . . . 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).

Upon consideration of the information presented in the Petition and

Preliminary Response, we determine that the information presented shows

there is a reasonable likelihood that Petitioner would prevail in establishing

the unpatentability of at least one of the challenged claims for one of the

asserted grounds.

A. Related Proceeding

As required by 37 C.F.R. § 42.8(b)(2), the parties identify Smart

Meter Technologies, Inc. v. Duke Energy Corp., Case No. 1:16-cv-00208 (D.

Del.) as a judicial matter that would affect or be affected by a decision in

this proceeding. Pet. 1; Paper 4 (Patent Owner’s Mandatory Notices), 2.

B. The Challenged Patent

The challenged patent relates generally to a power metering system

for measuring electrical power consumption, converting the measurements

to Internet Protocol (“IP”) format, and transmitting the IP format

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measurement information across a network. Ex. 1001, 1:6–11, 1:55–62.

Figure 1 of the ’524 patent is reproduced below.

Ex. 1001, Fig. 1.

Figure 1 depicts “a schematic diagram showing the [] power metering

system of the present invention, indicated generally at 10 and installed in a

dwelling 65. A power line 50 connects the dwelling 65 to the local power

distribution grid.” Id. at 2:57–60. The challenged patent discloses that

“[t]he power metering system 10 includes an antenna 15, processor 20,

multichannel transceiver 30, power meter 35, one or more clamp contacts

40, split-core transformer 42, and clamp filter 44, which operate together to

provide data acquisition, power measurement, data conversion, and data

transmission services.” Id. at 3:17–22.

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II. DISCUSSION

A. Claim Construction

We interpret claims of an unexpired patent using the “broadest

reasonable construction in light of the specification of the patent in which

[the claims] appear[].” 37 C.F.R. § 42.100(b); see Cuozzo Speed Techs.,

LLC v. Lee, 136 S. Ct. 2131, 2142–46 (2016) (concluding the broadest

reasonable construction “regulation represents a reasonable exercise of the

rulemaking authority that Congress delegated to the Patent Office”). Under

that standard, claim terms are presumed to be given their ordinary and

customary meaning as would be understood by one of ordinary skill in the

art in the context of the entire disclosure. In re Translogic Tech., Inc., 504

F.3d 1249, 1257 (Fed. Cir. 2007). Any special definition for a claim term

must be set forth with reasonable clarity, deliberateness, and precision. In re

Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). Further, “[t]he PTO should

also consult the patent’s prosecution history in proceedings in which the

patent has been brought back to the agency for a second review.” Microsoft

Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1298 (Fed. Cir. 2015). Moreover,

the Board may not “construe claims during IPR so broadly that its

constructions are unreasonable under general claim construction principles.”

Id.

Petitioner proposes a construction for “autonomously.” See Pet. 11–

12. Patent Owner “takes no position on whether Petitioner’s construction

[for autonomously] is correct or not.” Prelim. Resp. 11.

For purposes of this decision, we construe “autonomously.” This

preliminary claim construction may change as a result of the record

developing during trial. We note, for example, that Patent Owner has not

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yet filed its response under 37 C.F.R. § 42.120. We determine that no other

terms require express construction for this decision.

Independent claim 17 recites the term “autonomously.” Petitioner

notes the word “autonomously” does not appear in the ’524 patent’s

specification. Pet. 11. Rather, Petitioner proposes, based on the prosecution

history of the ’524 patent, the broadest reasonable interpretation of

“autonomously” is “without external prompting.” Id. at 11–12.

Petitioner argues the Patent Owner (then, Applicant) overcame an art

rejection by arguing the reference “must be proactively accessed using a web

browser to acquire data. Power quality data is not transmitted autonomously

(i.e., without external prompting) to a remote location over a power line

network.” Id. (citing Ex. 1002,5 218, 219, 221). Based on the above,

Petitioner contends “autonomously” should be interpreted to mean “without

external prompting.” Id. at 12.

On this record, we agree with Petitioner’s proposed construction.

Accordingly, given the claim language and considering the prosecution

history, we preliminarily construe “autonomously” as meaning “without

external prompting.” Cf. Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292,

1298 (Fed. Cir. 2015) (“The PTO should also consult the patent’s

prosecution history in proceedings in which the patent has been brought

back to the agency for a second review.”).

B. Asserted Ground of Obviousness over Suh

Petitioner contends claims 17–22 of the challenged patent are

unpatentable under 35 U.S.C. § 103 as obvious over Suh. Pet. 3, 14–16, 18–

5 File History of U.S. Patent No. 7,058,524 B2.

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47. In so doing, Petitioner also cites to statements (i.e., Alleged Admitted

Prior Art “AAPA”) in the challenged patent for establishing what one of

ordinary skill in the art would have understood and known at the time of

invention of the challenged patent.6 See id. at 19. Petitioner also cites to the

declaration testimony of Dr. Robert Akl (Ex. 1003) in further support of its

contentions. Patent Owner opposes Petitioner’s contention that the

challenged claims are obvious over Suh. See, e.g., Prelim. Resp. 3–6, 13–

19.

A claim is unpatentable as obvious “if the differences between the

subject matter sought to be patented 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.” 35 U.S.C. § 103. “In

an [inter partes review], the petitioner has the burden from the onset to show

with particularity why the patent it challenges is unpatentable.” Harmonic

Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing

35 U.S.C. § 312(a)(3) (requiring inter partes review petitions to identify

“with particularity . . . the evidence that supports the grounds for the

challenge to each claim”)). Furthermore, “the burden of persuasion is on the

petitioner to prove ‘unpatentability by a preponderance of the evidence,’ 35

U.S.C. § 316(e), and that burden never shifts to the patentee.” Dynamic

Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir.

2015).

6 Petitioner states that “[w]hile [it] does not rely on the ’524 APA as an additional reference, its disclosure confirms the state of the prior art that would have been part of a POSITA’s knowledge.” Pet. 19 (citations omitted).

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1. Summary of Suh

Suh describes “[a]n internet ready electronic power meter with

automatic reporting capabilities, the electronic power meter recording

electrical power usage and other utility usage, and periodically transmitting

utility usage reports to a remote site using internet and conventional

protocols of the public or private computer network.” Ex. 1006, Abstract.

Suh’s Figure 1 is reproduced below.

Figure 1 illustrates a perspective view of Suh’s electronic power meter

in a cylindrical housing. Ex. 1006 ¶ 15. Suh’s “meter . . . incorporates a

communication component that enables the electronic meter to communicate

in a dedicated local area network (LAN) or wide area network (WAN)

including a public or private network, such as the internet.” Id. ¶ 8. More

specifically, Suh’s meter “includes the communication components

necessary to communicate by telephone line, power line or wireless

communication systems to periodically transfer collected data to a remote

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site.” Id. (emphasis added). For example, Suh’s meter can include a modem

“connected to the international computer network 70 via communication

lines 72, power line 73 using developed data transmission overlay

technologies or, using a transceiver 74 via airway transmissions through an

antenna 76.” Id. ¶ 30 (emphasis added), ¶ 8 (stating that the Internet is “also

called the world wide international computer network”). “In the customary

system, multiple meters . . . communicate with a remote host 176 typically

through a dial up modem pool 178 through one or

more of the multiple communication pathways 72, 73 or 76 shown with

reference to FIG. 1.” Id. ¶ 51.

2. Petitioner’s Contentions

Petitioner provides analysis purporting to explain how Suh would

have conveyed to one of ordinary skill in the art the limitations recited in the

challenged claims. See Pet. 14–16, 18–47. We below address Petitioner’s

analysis for independent claim 17.

Petitioner argues, with support of Dr. Akl’s Declaration, Suh teaches

or suggests all of the limitations of claim 17 to one of ordinary skill in the

art. See id. at 18–32.

(i) measuring

Petitioner argues that Suh teaches “measuring current fluctuations in

the power line,” as recited in claim 17. See id. at 21–22. More specifically,

Petitioner argues Suh teaches “a meter chip U2 [] receives current and

voltage as input and provides measured current information to the

microprocessor U1.” Id. at 22 (citing Suh, Fig. 2); see also id. at 21–22

(citing Ex. 1006 ¶¶ 2, 26, 31 (teaching, inter alia, periodically reading the

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meter chip connected to the power supply to generate voltage and current

representations)).

(ii) calculating

Petitioner argues that Suh teaches “calculating power consumption

information from the current fluctuations in a processor,” as recited in claim

17, via Suh’s teaching of a microprocessor calculating power consumption

information based on the input current. See id. at 23 (citing Ex. 1006 ¶¶ 26,

41–43, Fig. 5 (arguing Suh teaches “read energy pulses from [a] meter chip”

are used by the microprocessor to prepare at least kilowatt-hours (“kWh”)

and date/time)).

(iii) converting

Petitioner argues that Suh teaches “converting the power consumption

information into IP-based power consumption information in the processor,”

as recited in claim 17. See Pet. 24–27.

The ’524 patent (8:66–9:2) provides an example of this type of

conversion, i.e., “[t]he power meter . . . stores power consumption

information in the payload data block 408, thereby converting power

consumption information into IP-based data” (emphasis added). See Pet. 25

(citing Ex. 1001, 8:65–9:2; Ex. 1003 ¶¶ 145–147); see also id. at 24–25

(citing Ex. 1001, Fig. 6 (illustrating payload data block 408), 2:32–34 (“FIG.

6 is a block diagram showing a standard Internet Protocol, Version 4

(‘IPv4’) packet utilized by the present invention.”).

Petitioner argues Suh also teaches this example (i.e., storing power

consumption information in the payload data block of an IP packet), and

thus, teaches the limitation. See Pet. 25–27. More specifically, Petitioner

argues Suh teaches storing kWh usage (i.e., power consumption

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information) in the payload data block of an IP datagram. Pet. 26 (citing Ex.

1006 ¶¶ 35–36 (“In the subsequent layer, the IP (Internet Protocol) is added

to comprise the IP datagram 102 including the IP header, the TCP header

and the data.”), Fig. 4 (showing kWh data block 98 and IP datagram block

102)); see also id. (citing Ex. 1003 ¶ 148 (opining “[s]toring information in a

payload data block of an Internet Protocol packet is direct encapsulation in

IP packets at the network layer”).

(iv) transmitting

Petitioner argues that Suh discloses, or renders obvious, to one of

ordinary skill in the art, “transmitting the IP-based power consumption

information from the processor to a destination autonomously in IP format

over an external power line network,” as recited in claim 17. See Pet. 27–

32; see also id. at 27, 32 (citing Ex. 1003 ¶¶ 152–156).

Petitioner first focuses on the term autonomously with respect to

transmitting the power consumption information, and argues Suh teaches

“transmit[ing] power consumption data (including kilowatt-hour usage)

automatically every hour to the remote destination, without external

prompting.” Id. at 27–28 (citing Ex. 1006 ¶¶ 40–42, Figs. 4–5; Ex. 1003

¶¶ 152–154). More specifically, Petitioner cites to Suh’s teaching “that

power usage data is recorded every minute and an email containing the

power usage data is sent by the power meter to the data collection center

every hour autonomously, without external prompting.” Id. at 29–30 (citing

Ex. 1006 ¶¶ 40–42) (emphasis added).

Petitioner contends in Suh “[t]his email is generated by adding

Internet Protocol headers to the power consumption data to form IP-based

[(i.e., an IP datagram)] power consumption data that can be emailed or

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otherwise sent over the Internet.” Pet. 28–29 (citing Ex. 1006 ¶¶ 8, 30, 40–

42, Fig. 4 (annotating IP Datagram block); Ex. 1003 ¶¶ 154–156); see also

id. at 31 (citing Ex. 1006 ¶¶ 2, 8, 30, Fig. 4; Ex. 1003 ¶ 154) (arguing Suh

teaches having kWh usage data in an IP datagram for transmission “over the

internet, ‘also known as the world wide international computer network,’

which a POSITA would have understood is an IP-based network.”).

As to the remainder of the limitation, Petitioner argues Suh teaches to

one of ordinary skill in the art that these IP datagrams can “be sent over

power line communication systems to a data collection center, which would

be over an external power line network.” Pet. 31 (citing Ex. 1006 ¶¶ 30, 51;

Ex. 1003 ¶155). More specifically, Petitioner argues “Suh’s power meter ‘is

either line connected to the international computer network 70 via

communication lines 72, power line 73 using developed data transmission

overlay technologies or, using a transceiver 74 via airway transmissions

through an antenna 76, as also shown in FIG. 1.’” Id. at 30 (citing Ex. 1006

¶ 30).

Furthermore, we understand Petitioner contends it was known to one

of ordinary skill in the art at the time of the invention to transmit data in IP

format over an external power line network, as evidenced by statements (i.e.,

AAPA) in the ’524 patent. Pet. 15–16. For example, Petitioner contends the

AAPA shows HomePlug was a “known power line protocol allow[ing] for

the transmission of IP data across power lines at speeds of up to 13.75

Mbits/second, with guaranteed Quality of Service (QoS).” Pet. 15–16

(citing Ex. 1001, 3:52–66 (emphasis omitted); Ex. 1003 ¶ 73 (citing Ex.

1001, 3:64–4:4)). We understand Petitioner argues based on one of ordinary

skill in the art’s knowledge of the AAPA, Suh would have conveyed to them

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transmitting the requisite data in IP format over an external power line

network.

Petitioner also relies on Dr. Akl’s testimony to support that (i) one of

ordinary skill in the art would have known that external power line networks

existed (see Pet. 14–16 (citing Ex. 1003 ¶ 73 (citing, inter alia, the

HomePlug protocol)) and (ii) Suh teaches to one of ordinary skill in the art

transmitting data in IP format over an external power line network (see Pet.

27, 31–32 (citing Ex. 1003 ¶¶ 152–156)). For example, this testimony

includes:

In the email messaging system disclosed in Figure 4 of Suh, the lowest layer discloses an embodiment that uses a telephone modem. However, a POSITA would have understood that the patentees intended that any of the suggested physical layer communication networks, including a power line communications modem, could be substituted into Figure 4 without altering any other steps of that Figure. That is, the system would still communicate power measurement data over a TCP/IP connection, but that connection would be carried over a power line rather than a phone line.

Ex. 1003 ¶ 156; see also id. ¶ 155 (opining that transmitting the IP datagram

“would have, at least in some cases, involved transmission over a power line

network external to the building where the power meter is located”)

(emphasis added).

3. Patent Owner’s Contentions

In response, Patent Owner contends that there is not a reasonable

likelihood that Suh would have rendered obvious the challenged claims. See

generally Prelim. Resp. Patent Owner provides a declaration of Mr. Thomas

L. Blackburn (Ex. 2001) in support of its contentions.

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Patent Owner does not respond to Petitioner’s contentions concerning

the first three elements of claim 17. Patent Owner disputes that Suh teaches

the last element of claim 17. Prelim. Resp. 12–19.

Patent Owner contends that Suh does not teach “transmitting the IP-

based power consumption information from the processor to a destination

autonomously in IP format over an external power line network,” as recited

in claim 17. Id. at 13–19.

Patent Owner argues the only portions of Suh that (i) teach

transmitting data in IP format or (ii) allegedly teach autonomously

transmitting data, do so using telephone (i.e., dial up) modems on telephone

lines — not power lines. See id. at 13–14 (citing Ex. 1006 ¶¶ 35–36

(teaching “an e-mail is converted into IP datagram packets that are

transmitted ‘by the telephone modem 64’”), 39 (describing Fig. 5 as “[t]he

basic process for collecting, storing and transmitting data by the electronic

power meter”), 40 (teaching data polling), 44 (teaching at block 130 of Fig.

5, “the modem is activated and an off-hook connect to the ISP is effected”),

Fig. 4 (disclosing sending meter readings as an e-mail (which is in the

Simple Mail Transfer Protocol (“SMTP”) as a heading)), Fig. 5 (disclosing

modem “off-hook”)). Importantly, however, telephone modems cannot be

used for power line networks, according to Patent Owner. Prelim. Resp. 15

(citing Ex. 2001 ¶ 59).

Moreover, Patent Owner argues Suh teaches away from transmitting

IP format data on an external power line network because (i) a telephone

modem cannot operate on a power line, (ii) Suh “did not disclose

transmitting IP formatted data over an external power line,” and (iii) Suh

“did not disclose [any method of] transmitting IP formatted data over an

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external power line [network].” Id. at 15–16 (citing Ex. 1006 ¶¶ 35–36, 40–

42) (emphasis added). Patent Owner also submits Suh (i) excludes using

power lines from the allegedly autonomous transmission process detailed in

Figure 5 because “only . . . a dial-up internet connection” is disclosed, and

(ii) fails to include power lines as a potential alternative to telephone lines

when discussing the availability of wireless for areas where using telephone

lines is impractical. See id. at 14, 17 (citing Ex. 1006 ¶¶ 30, 40–42, 45, Fig.

5; Ex. 2001 ¶ 59).

As to the alleged AAPA, Patent Owner argues that although the ’524

patent discloses the use of known home network protocols, including

HomePlug (i.e., AAPA), “the ’524 patent recognizes that at the time of the

invention, each of those protocols were internal communication protocols,

and all occurred on the ‘post’-meter side of the smart meter.” Prelim. Resp.

5, 15; Ex. 2001 ¶¶ 46–47, 54. In fact, Patent Owner argues the ’524 patent

discloses modules and firewalls that were configured to allow for the

conversion of HomePlug data into IP-based communications. See Prelim.

Resp. 6 (citing Ex. 1001, 8:49–9:33, Figs. 6–8).

4. Analysis

On the present record and for purposes of institution, we determine

that Petitioner has made a sufficient showing that Suh would have conveyed

to one of ordinary skill in the art all of the limitations of claim 17. As

discussed above with respect to Petitioner’s Contentions, Petitioner has

described sufficiently its contentions, with citations to Suh, the AAPA, and

Dr. Akl’s declaration.

For example, Petitioner’s position that Suh teaches transmitting IP-

based power consumption information (e.g., emails containing kWh usage)

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from the processor to a destination autonomously (e.g., programmed,

periodic data polling) in IP format (e.g., IP datagrams) over an external

power line network (i.e., across power lines external to the building) is

sufficient for institution. See Petitioner’s Contentions supra.

We acknowledge that Dr. Akl and Mr. Blackburn disagree as to, inter

alia, the HomePlug Protocol, emails, and transmitting IP format data over an

external power line network. See, e.g., Ex. 1003 ¶¶ 73, 152–156; Ex. 2001

¶¶ 46–47, 54. For purposes of deciding whether to institute an inter

partes review, however, a genuine issue of material fact created by Mr.

Blackburn’s testimonial evidence will be viewed in the light most favorable

to the Petitioner. 37 C.F.R. § 42.108(c). Based on the record before us and

for the purpose of this decision, we credit Dr. Akl’s testimony. We

encourage the parties to consider further addressing these disagreements

between Dr. Akl and Mr. Blackburn, relying on appropriate record evidence.

Furthermore, on the present record, we are not persuaded by Patent

Owner’s arguments that we should deny institution because Suh teaches

away from transmitting IP formatted data over an external power line

network, as Patent Owner contends. A reference teaches away from a

claimed invention if it criticizes, discredits, or otherwise discourages

modifying the reference to arrive at the claimed invention. In re Fulton, 391

F.3d 1195, 1201 (Fed. Cir. 2004) (“The prior art’s mere disclosure of more

than one alternative does not constitute a teaching away from any of the[]

[disclosed] alternatives because such disclosure does not criticize, discredit,

or otherwise discourage the solution claimed . . . .”).

In addition, on the current record, we are not persuaded that we should

deny institution based on Patent Owner’s argument concerning Suh’s alleged

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failure to disclose any method of transmitting data over an external power

line network. Petitioner’s contentions based on express disclosures of Suh,

statements concerning how one of ordinary skill in the art would understand

Suh based on evidence of the state of the art (e.g., AAPA), and testimony by

Dr. Akl are sufficient for institution. The prior art must be read in context,

including, where relevant, the background knowledge possessed by a person

having ordinary skill in the art. C.f. Ariosa Diagnostics v. Verinata Health,

Inc., 805 F.3d 1359, 1365–66 (Fed. Cir. 2015).

We also disagree with Patent Owner’s contention that Dr. Akl’s

testimony, on which Petitioner relies, is insufficient for institution of an inter

partes review because Dr. Akl does not “disclose the underlying facts or

data” for his conclusion or “simply repeats the unsupported attorney

argument.” Prelim. Resp. 1–2; see, e.g., Ex. 1003 ¶¶ 70–73 (citing the

challenged patent for AAPA), 152–156 (citing Suh’s teachings).

On the present record, and for purposes of institution, we determine

that Petitioner has made a sufficient showing that Suh would have taught or

suggested all of the limitations of claim 17. Accordingly, the information

presented shows it is more likely than not that at least one of the claims

challenged in the Petition would have been unpatentable for obviousness

over Suh, as set forth in the Petition.

Having concluded that Petitioner has demonstrated a reasonable

likelihood of demonstrating that one claim would have been obviousness

over Suh, we institute an inter partes review of claims 17–22 on this ground.

37 C.F.R. § 42.108(c) (“Inter partes review shall not be instituted for a

ground of unpatentability unless the Board decides that the petition

supporting the ground would demonstrate that there is a reasonable

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likelihood that at least one of the claims challenged in the petition is

unpatentable.”).

C. Asserted Grounds of Obviousness over (i) Suh and Bartone and (ii) Bartone and Villicana

We have reviewed the Petition and the Preliminary Response, and

determine that Petitioner has not shown a reasonable likelihood that it would

prevail in establishing the unpatentability of any of claims 17–22 for either

the combination of (i) Suh and Bartone or (ii) Bartone and Villicana.

For the asserted ground of Suh and Bartone, Petitioner relies on its

arguments regarding how Suh would have conveyed to one of ordinary skill

in the art each of the limitations recited in the challenged claims. See, e.g.,

Pet. 51, 54, 56 (regarding the measuring, calculating power, converting, and

transmitting limitations in independent claim 17). Petitioner additionally

contends that Bartone discloses each of the limitations. See, e.g., Pet. 51–64

(regarding Bartone). In its asserted ground of Bartone and Villicana,

Petitioner relies on its contentions regarding Bartone’s disclosure and

additionally contends that Villicana discloses each of the limitations. See,

e.g., Pet. 76, 78, 80 (regarding Villicana).

For each of these grounds, Petitioner has failed to articulate, with

reasonable clarity what specific element from which reference is to be

combined with what specific element of the other reference, and in what

manner, to meet each element of independent claim 17. See generally Pet.

47–64, 72–83. In other words, even assuming that the references would

provide the teachings alleged based on some possible combination, we are

not persuaded that Petitioner has explained sufficiently the exact

combination of teachings, out of the numerous possible combinations, that it

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is relying upon. See Pet. 47–48 (“To the extent that the Board finds that Suh

does not explicitly teach any of the elements of the Challenged Claims, there

is a teaching, suggestion, or motivation for combining Suh with Bartone,

which also teaches all claim elements.”), 74–83 (incorporating Bartone’s

disclosure by reference into each element of claim 17 and also showing how

Villicana allegedly discloses the elements).

Furthermore, the rationale for the proposed combinations also fails to

address specifically any proposed modifications. Instead, for each ground,

Petitioner describes the systems disclosed in the references and cites Dr.

Akl’s testimony positing that one of ordinary skill in the art would have been

motivated to combine the systems, as taught by the references, including by

substituting known elements of one system in the other system, and would

have expected success given the similarity in technology. See Pet. 48–49,

72–74 (citing Ex. 1003 ¶¶ 179, 242). The reasoning provided is excessively

generic and does not make a meaningful clarification of what specific

elements of which reference are combined with what specific elements of

what other reference or references, and in what manner. See id.

A petition must identify with particularity each claim challenged, the

grounds on which the challenge to each claim is based, and the evidence that

supports the grounds for the challenge. 35 U.S.C. § 312(a)(3). Under

37 C.F.R. § 42.22(a), a petition must include a statement of the precise relief

requested and a full statement of the reasons for the relief requested,

including a detailed explanation of the significance of the evidence including

material facts, the governing law, rules, and precedent.

As discussed above, Petitioner has failed to meet these requirements

with respect to grounds two and three. Accordingly, we determine the

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information in the Petition does not show a reasonable likelihood that

Petitioner would prevail in establishing that independent claim 17 is obvious

over (i) Suh and Bartone or (ii) Bartone and Villicana. On the same basis,

we determine the information presented in grounds two and three of the

Petition fails to establish a reasonable likelihood that Petitioner would

prevail in showing that at least one of claims 18–22, which each depend

from claim 17, is unpatentable.

III. CONCLUSION

For the foregoing reasons, we determine that there is a reasonable

likelihood that Petitioner would prevail in showing that at least one of

claims 17–22 of the challenged patent is unpatentable over Suh.

Any discussion of facts in this decision are made only for the purposes

of institution and are not dispositive of any issue related to any ground on

which we institute review. The Board has not made a final determination

with respect to the patentability of any challenged claim. The Board’s final

determination will be based on the record as fully developed during trial.

IV. ORDER

After due consideration of the record before us, it is:

ORDERED that pursuant to 35 U.S.C. § 314(a), an inter partes

review of the challenged patent is instituted on the following ground asserted

in the Petition: claims 17–22 under 35 U.S.C. § 103 over Suh;

FURTHER ORDERED that pursuant to 35 U.S.C. § 314(c) and

37 C.F.R. § 42.4, notice is hereby given of the institution of a trial; the trial

commences on the entry date of this decision; and

FURTHER ORDERED that the trial is limited to the ground identified

above and no other ground set forth in the Petition as to any challenged

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claim is authorized.

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PETITIONER:

Kirk T. Bradley kirk.bradley@alston.com Christopher Douglas Alston & Bird LLP christopher.douglas@alston.com

PATENT OWNER:

Decker A. Cammack WHITAKER CHALK SWINDLE & SCHWARTZ PLLC dcammack@whitakerchalk.com