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2018 Pat. App. LEXIS 8834

2018 Pat. App. LEXIS 8834

Patent Trial and Appeal Board Representative Orders, Decisions and Notices

September 5, 2018, Decided

Case IPR2018-00614, Paper 10Patent 9,054,728 B2

USPTO Bd of Patent Appeals & Interferences; Patent Trial & Appeal Bd Decs.

Opinion

KAISER, Administrative Patent Judge.

DECISION

Denying Institution of Inter Partes  Review

35 U.S.C. § 314

INTRODUCTION

A. Background

EchoStar Corporation and Hughes Network Systems, L.L.C. (collectively, "Petitioner") filed a Petition (Paper 2, "Pet.") requesting an inter partes  review of claim 25 of U.S. Patent No. 9,054,728 B2 (Ex. 1001, "the '728 patent"). Realtime Data LLC ("Patent Owner") filed a Preliminary Response (Paper 9, "Prelim. Resp.").

We have authority to determine whether to institute an inter partes  review. 35 U.S.C. § 314(b); 37 C.F.R. § 42.4(a) [*2]  . The standard for instituting an inter partes  review is set forth in 35 U.S.C. § 314(a), which provides that 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."

After considering the Petition, the Preliminary Response, and the evidence currently of record, we determine that 35 U.S.C. § 325(d) and 35 U.S.C. § 314(a) both apply to allow us discretion to deny institution, and we find that it is appropriate for us to exercise that discretion. Accordingly, we do not institute inter partes  review of claim 25 of the '728 patent on the grounds asserted in the Petition.

B. Related Matters

The parties note that the '728 patent has been asserted against Petitioner in Realtime Data LLC d/b/a IXO v. Echostar Corp. et al., Case No. 6-17-cv-00084 (E.D. Tex.). Pet. 4-6; Paper 4, 8. The parties also identify at least 37 other district court cases in which the '728 patent has been asserted [*3]  against other defendants. Pet. 4-6; Paper 4, 6-10. Finally, some claims of the '728 patent previously have been challenged in other inter partes  review proceedings, including IPR2017-00108, IPR2017-00179, IPR2017-00808, IPR2017-01354, IPR2017-01690, IPR2017-02178, and IPR2018-00703. Pet. 6-7; Paper 4, 4-5.

C. The Asserted Grounds of Unpatentability

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2018 Pat. App. LEXIS 8834 *

ECHOSTAR CORPORATION and HUGHES NETWORK SYSTEMS, L.L.C.,Petitioner,v. REALTIME DATA LLC,Patent Owner.

Notice:

 [*1] 

ROUTINE OPINION. Pursuant to the Patent Trial and Appeal Board Standard Operating Procedure 2, the opinion below has been designated a routine opinion.

CORE TERMS

patent, compression, block, inter partes, weigh, has, outputting, discretion to deny, disclosure, unpatentability, parameter, processor, somewhat, teach, was, prior art, prelim, earlier proceeding, comprise