Akamai Techs. v. Equil IP Holdings LLC
| Docket Number | IPR2023-00330,Patent 8,495,242 B2 |
| Decision Date | 21 July 2023 |
| Parties | AKAMAI TECHNOLOGIES, INC., Petitioner, v. EQUIL IP HOLDINGS LLC, Patent Owner. |
| Court | Patent Trial and Appeal Board |
Before RICHARD M. LEBOVITZ, ROBERT J. WEINSCHENK, and SHARON FENICK Administrative Patent Judges.
FENICK, Administrative Patent Judge.
Akamai Technologies, Inc. ("Petitioner") filed a Petition (Paper 2, "Pet.") requesting institution of inter partes review of claim 9 ("the challenged claim") of U.S. Patent No. 8,495,242 B2 (Ex. 1001, "the '242 patent"). Equil IP Holdings LLC ("Patent Owner") filed a Preliminary Response ). After authorization (see Ex. 1040) to file additional briefing relating to 35 U.S.C. § 325(d) arguments and issues relating to the correction of inventorship in U.S. Patent No. 6,964,009, Petitioner filed a Preliminary Reply ) and Patent Owner filed a Preliminary Sur-reply ).
An inter partes review may be instituted 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) (2018). For the reasons below, we decline to exercise our discretion to dismiss under 35 U.S.C. §§ 314(a) or 325(d), and determine that Petitioner has established a reasonable likelihood that it would prevail in showing the unpatentability of the challenged claim. Accordingly, we institute an inter partes review of the challenged claim on all grounds raised in the Petition.
Petitioner and Patent Owner identify only themselves as real parties in interest. Pet. 3; P aper 4 (Patent Owner's Mandatory Notices), 1.
Petitioner and Patent Owner each identify as related Equil IP Holdings LLC v. Akamai Technologies, Inc., Case l-22-cv-00677(D. Del.) and inter partes review petitions IPR2023-00329 andIPR2023-00332. Pet. 3-4; Paper 4,1. Patent Owner additionally notes that the '242 patent is related to several patent applications. P aper 4,1-2.
The '242 patent, titled "Automated Media Delivery System," describes an automatic graphics delivery system that operates in parallel with an existing Web site infrastructure to provide delivery of media for access by an end user. Ex. 1001, codes (54), (57), 1:18-23. Id. at 7:8-16.
When a request for the media is received, the client connection, server traffic, content generation procedures, and proprietary tags within the URL are used to generate a version of the media for the client. Id. at 7:17-20, 17:27-30. The generated media is cached so that further requests for the same version of the media requires less overhead. Id. at 7:22-24,18:34-40.
In some embodiments, a primary content generation procedure produces a derivative image based on images from an image repository. Id. at 18:41-45. A dynamic image content system then may generate a subsequent derivative media from that intermediate derivative image, which may be modified for a specific user browser and then passed to the user. Id. at 18:45-51,18:63-67,19:48-53. Inputs to the dynamic image content system may be stored in a cache so the intermediate derivative image need not be regenerated. Id. at 18:60-63,19:23-42,19:66-20:3.
The sole challenged claim, claim 9, is reproduced below with bracketed identifiers added as used by the Petitioner.
Ex. 1001,23:45-24:16.
"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 Teck, Inc., 815 F.3d 1356,1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) ()). This burden never shifts to Patent Owner. See Dynamic Drinkware, LLC v. Nat 7 Graphics, Inc., 800 F.3d 1375,1378 (Fed. Cir. 2015) (citing Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316,1326-1327 (Fed. Cir. 2008)) (discussing the burden of proof in inter partes review). Furthermore, Petitioner must explain with particularity how the prior art would have rendered the challenged claims unpatentable. 35U.S.C. §312(a)(3);37C.F.R. §42.104(b)(4)("The petition must specify where each element of the claim is found in the prior art patents or printed publications relied upon.").
To establish anticipation, each and every element in a claim, arranged as recited in the claim, must be found in a single prior art reference. See Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359,1369 (Fed. Cir. 2008); Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376,1383 (Fed. Cir. 2001). Although the elements must be arranged or combined in the same way as in the claim, "the reference need not satisfy an ipsissimis verbis test," i.e., identity of terminology is not required. In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009); accord In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990).
A claim is unpatentable under 35 U.S.C. § 103 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 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) when presented, objective indicia relating to obviousness.[5] See Graham v. John Deere Co., 3 83 U.S. 1,17-18 (1966).
Additionally, the obviousness inquiry typically requires an analysis of "whether there was an apparent reason to combine the known elements in the fashion claimed by the patent at issue." KSR, 550 U.S. at418 (citing In re Kahn, 441 F.3d 977,988 (Fed. Cir. 2006) ()). Petitioner cannot satisfy its burden of proving obviousness by employing "mere conclusory statements," but "must instead articulate specific reasoning, based on evidence of record, to support the legal conclusion of obviousness." In re Magnum Oil Tools Int'l, Ltd., 829 F.3d 1364,1380 (Fed. Cir. 2016).
Petitioner argues that:
A person of ordinary skill in the art ("POSITA") as of the '242's claimed priority date would have had a bachelor's degree in computer systems, computer science, or the equivalent thereof, and at least two years of experience with networked media delivery or related technologies. More education can supplement...
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