Snap, Inc. v. SRK Technology LLC

Trials@uspto.gov 	Paper 15
571-272-7822 	Entered: October 21, 2020
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
SNAP, INC.,
Petitioner,
v.
SRK TECHNOLOGY LLC,
Patent Owner.
IPR2020-00820
Patent 9,930,159 B2
Before KRISTEN L. DROESCH, GEORGIANNA W. BRADEN, and
CHARLES J. BOUDREAU, Administrative Patent Judges.
DROESCH, Administrative Patent Judge.
DECISION
Granting Institution of Inter Partes Review
35 U.S.C. § 314

IPR2020-00820
Patent 9,930,159 B2
2
I. INTRODUCTION
A. Background
Snap Inc. (“Petitioner”) filed a Petition requesting an inter partes
review of claims 1, 3–17, 19–21, and 23–26 (“challenged claims”) of U.S.
Patent No. 9,930,159 B2 (Ex. 1001, “’159 Patent”). Paper 2 (“Pet”).
Petitioner filed a Declaration of Christopher M. Schmandt (Ex. 1002) with
its Petition. SRK Technology LLC (“Patent Owner”) filed a Preliminary
Response. Paper 9 (“Prelim. Resp.”). Pursuant to our authorization,
Petitioner filed a Reply to the Preliminary Response (Paper 11, “Reply to
Prelim. Resp.”) to address the issue of discretionary denial under 35 U.S.C.
§§ 314(a), 325(d), to which Patent Owner filed a Sur-Reply (Paper 13, “Sur-
Reply to Prelim. Resp.”).
We have authority to determine whether to institute review under
35 U.S.C. § 314 and 37 C.F.R. § 42.4. An inter partes review may not be
instituted unless it is determined that “the information presented in the
petition filed under section 311 and any response filed under section 313
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 provided below, we determine based on the record
before us that there is a reasonable likelihood Petitioner would prevail in
showing at least one of the challenged claims is unpatentable.
B. Related Matters
The parties indicate the ’159 Patent is or has been the subject of
litigation in SRK Technology LLC v. Snap, Inc., Case No. 2:19-cv-02515-
PSG–JPR (C.D. Cal). See Pet. 1; Paper 4, 2; Paper 7, 2. Patent Owner

IPR2020-00820
Patent 9,930,159 B2
3
further indicates that the proceeding in IPR2020-00819 challenging claims
of U.S. Patent No. 8,996,059 (“’059 Patent”) would affect, or may be
affected, by a decision in this proceeding. See Paper 4, 2; Paper 7, 2.
C. The ’159 Patent (Ex. 1001)
The ’159 Patent relates to a method and system for determining a
communication mode for recording a media message on a communication
device. See Ex. 1001, code (57). The method and system includes an
adaptive recording application executable by a processor configured to
record the media message on the communication device. See id. at 7:7–10.
The adaptive recording application detects activation (e.g., click, touch,
press, push, tap) of an interface element on the communication device for
initiating the recording of the media message. See id. at 7:10–17. The
adaptive recording application determines the duration of the activation of
the interface element and compares the duration with one or more
configurable timing parameters. See id. at 7:24–33, Fig. 1A. The
configurable timing parameters can be fixed as a system settable parameter,
a user-settable parameter, or may vary, and can be calculated based on the
type of communication device, characteristics of the user, user interactions,
past interactions, etc. See id. at 7:47–53. The adaptive recording application
can learn and change the configurable timing parameters based on the user’s
behavior with the adaptive recording application. See id. at 7:56–59. Based
on the duration of the activation of the interface element, the adaptive
recording application selects one of the communication modes. See id.
at 7:60–65. For example, the adaptive recording application can select the
tap-to-start communication mode if the duration of the activation is less than
a critical time, or can select the push-to-talk communication mode if the

IPR2020-00820
Patent 9,930,159 B2
4
duration of the activation is greater than the critical time. See id.
at 7:65–8:4, Fig. 2. The adaptive recording application triggers recording of
the media message in the selected mode. See id. at 7:57–58.
In another embodiment, the adaptive recording application, upon
detection of activation of the interface element, determines the presence or
absence of a media signal during and/or after the activation of the interface
element, and selects one of the communication modes for recording based
on the presence or absence of the media signal. See Ex. 1001, 8:10–9:26;
Fig. 1B. In yet another embodiment, the adaptive recording application,
upon detection of activation of the interface element, determines the duration
of the activation of the interface element, determines the presence or absence
of a media signal during and/or after the activation of the interface element,
and selects one of the communication modes for recording based on a
comparison of the duration of the activation element with one or more
configurable timing parameters and the presence or absence of a media
signal. See Ex. 1001, 10:26–57, Fig. 1C.
D. Illustrative Claims
Claims 1, 13, 20, 24, 25, and 26 are independent and claims 3–12, 14–
17, 19, 21, and 23 variously depend from claims 1, 13, and 20. Claims 1
and 13 are illustrative and reproduced below:
1. A computer implemented method for determining a
communication mode, comprising:
detecting activation of an interface element by an
application on a communication device;
determining a duration of said activation of said interface
element by said application;

IPR2020-00820
Patent 9,930,159 B2
5
comparing said duration of said activation of said interface
element with one or more configurable timing parameters
by said application; and
selecting, in response to said detection of said activation of
said interface element, one of a plurality of
communication modes by said application based on said
comparison of said duration of said activation of said
interface element with said one or more configurable
timing parameters.
Ex. 1001, 27:9–23.
13. 	A computer implemented method for determining a
communication mode, comprising:
detecting activation of an interface element by an
application on a communication device;
determining by said application, using an input device of
said communication device, one of a presence and an
absence of a media signal in proximity of said
communication device, during and/or after said activation
of said interface element; and
selecting, in response to said detection of said activation of
said interface element, one of a plurality of
communication modes by said application based on said
determination of said one of said presence and said
absence of said media signal.
Ex. 1001, 28:21–34.

IPR2020-00820
Patent 9,930,159 B2
6
E. Asserted Challenges to Patentability and Asserted Prior Art
Petitioner asserts the following challenges to the patentability of
claims 1, 3–17, 19–21, and 23–26:
Claim(s)
Challenged 35 U.S.C. § 	Reference(s)/Basis
1, 3–7, 20, 21, 23–25 	103 	Newman1, Araki2,3, Trewin4
8–12 	103 	Newman, Araki, Trewin, Ronkainen5
13–17, 19, 26 	103 	Newman, Araki, Ronkainen
II. ANALYSIS
A. Discretion under 35 U.S.C. § 314(a)
Patent Owner argues that we should exercise our discretion and deny
institution based on a parallel district court proceeding in SRK Technology
LLC v. Snap, Inc., Case No. 2:19-cv-02515-PSG–JPR (C.D. Cal) (“District
Court proceeding”) and other circumstances regarding discovery issues for
evidence of secondary considerations. See Prelim. Resp. 43–50; Sur-Reply
to Prelim. Resp. 1–4.
Under § 314(a), the Director has discretion to deny institution of an
inter partes review. See 37 C.F.R. § 42.4(a) (“The Board institutes the trial
on behalf of the Director.”); Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct.
2131, 2140 (2016) (“[T]he agency’s decision to deny a petition is a matter
committed to the Patent Office’s discretion.”); SAS Inst., v. Iancu, 138 S. Ct.
1348, 1356 (2018) (“[Section] 314(a) invests the Director with discretion on
1 Ex. 1003, US Patent No. 9,063,629 B2, issued June 23, 2015 (“Newman”).
2 Ex. 1005, JP 3888584 B2, issued March 7, 2007.
3 Ex. 1004, English Translation of Ex. 1005, (“Araki”).
4 Ex. 1007, US Patent No. 6,948,136 B2, issued Sep. 20, 2005 (“Trewin”).
5 Ex. 1006, US Patent No. 7,721,227 B2, issued May 18, 2010
(“Ronkainen”).

IPR2020-00820
Patent 9,930,159 B2
7
the question whether to institute review . . . .” (emphasis omitted));
Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016)
(“[T]he PTO is permitted, but never compelled, to institute an IPR
proceeding.”).
In NHK Spring Co. v. Intri-Plex Techs., Inc., the Board denied
institution relying in part on § 314(a) because the parallel district court
proceeding was scheduled to finish before the Board reached a final
decision. IPR2018-00752, Paper 8 (PTAB Sept. 12, 2018) (precedential).
Following NHK, the Board articulated the following factors for
consideration when determining whether to exercise discretion to deny
institution in view of a parallel district court proceeding:
1. whether the court granted a stay or evidence exists that one
may be granted if a proceeding is instituted;
2. proximity of the court’s trial date to the Board’s projected
statutory deadline for a final written decision;
3. investment in the parallel proceeding by the court and the
parties;
4. overlap between issues raised in the petition and in the
parallel proceeding;
5. whether the petitioner and the defendant in the parallel
proceeding are the same party; and
6. other circumstances that impact the Board’s exercise of
discretion, including the merits.
Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 at 5–6 (PTAB March 20,
2020) (precedential, designated May 5, 2020) (“Fintiv”). “These factors
relate to whether efficiency, fairness, and the merits support the exercise of
authority to deny institution in view of an earlier trial date in the parallel
proceeding.” Id. at 6. In evaluating these factors, we take “a holistic view
of whether efficiency and integrity of the system are best served by denying
or instituting review.” Id. (citing Patent Trial and Appeal Board

IPR2020-00820
Patent 9,930,159 B2
8
Consolidated Trial Practice Guide November 2019 (“CTPG”), 58). We
address each of these factors in turn below.
1. Analysis of Fintiv Factors
a. Whether the court granted a stay and the proximity of court’s trial date
Patent Owner acknowledges that the parallel District Court
proceeding is stayed currently. See Prelim. Resp. 47. Patent Owner
contends that if the Petition was denied, “it is likely that the District Court
case would resume and that a trial would be held at or before the date on
which a final written decision would be due.” Id. at 47; see id. at 47–48
(citing Ex. 2009; Ex. 2010, 3:13–4:2); see also id. at 46 (“[A] speedy
resolution in less than a year is likely once the Petition is denied.”). Patent
Owner asserts that prior to the stay, the trial date was set for April 2021, and
contends that “if the Petition is denied, it is likely that the trial court would
‘tighten up’ the dates and permit an expedient trial within ten months or
less– a faster resolution than the 12 month period from institution to Final
Written Decision pr[e]scribed by statu[t]e.” Id. at 48; see id. at 47–48.
Patent Owner further argues that this factor is not dispositive because, if
institution is denied, the District Court would likely resolve overlapping
issues of invalidity prior to a deadline for a final written decision. See Sur-
Reply to Prelim. Resp. 3.
In reply, Petitioner contends that if institution is granted based on the
Petition before us, or the petition filed in IPR2020-00819, the District Court
proceeding will remain stayed until issuance of the final written decision(s).
See Reply to Prelim. Resp. 1 (citing Ex. 1019, 2). Petitioner asserts the
Board has recognized that a stay of the parallel proceeding weighs strongly
against exercising discretion to deny institution because it allays concerns

IPR2020-00820
Patent 9,930,159 B2
9
about inefficiency and duplication efforts. See id. (citing Fintiv at 6).
Petitioner argues that Patent Owner offers only unfounded speculation as to
how the court might proceed if both petitions are denied. See id. (citing
Prelim. Resp. 47–48). Petitioner further argues that because of the stay, any
guessed-at trial date is irrelevant. See id. (citations omitted).
We agree with Petitioner that the District Court’s stay of the litigation
pending denial of institution or a final written decision allays concerns about
inefficiency and duplication of efforts. See Fintiv at 6. The granting of a
stay pending inter partes review has weighed strongly against exercising
discretion to deny institution under NHK. See id. Accordingly,
consideration of the first Fintiv factor weighs strongly against exercising
discretion to deny institution.
Although Patent Owner asserts that, should institution be denied, “it is
likely that the District Court Litigation would resume and that trial would be
held at or before the date on which a final written decision would be due,”
we agree with Petitioner that this amounts to “unfounded speculation as to
how the court might proceed.” Therefore, consideration of the second Fintiv
factor also does not weigh in favor of exercising discretion to deny
institution.
b. Investment in the parallel proceeding by the court and the parties
Patent Owner contends the parties and the District Court each have
invested substantial resources in the parallel proceeding and that the
proceeding is at an advanced stage. See Prelim. Resp. 46; Sur-Reply to
Prelim. Resp. 2. According to Patent Owner, infringement contentions and
invalidity contentions have been served, discovery has been conducted, and,
at the time the Petition was filed, Markman positions had been exchanged

IPR2020-00820
Patent 9,930,159 B2
10
and the parties were preparing for Markman briefing. See Prelim. Resp. 46
(citing Ex. 2009).
Petitioner contends the District Court proceeding is in its early
stages––the parties have only exchanged preliminary contentions and claim
construction positions, and the District Court has not issued a claim
construction order. See Pet. 3; Reply to Prelim. Resp. 2. Petitioner asserts
that neither party has taken any depositions and the court has not engaged in
claim construction or motion practice. See Reply to Prelim. Resp. 2.
Petitioner further asserts that, because the District Court proceeding will
remain stayed if institution is granted on this Petition or the petition filed in
IPR2020-00819, no further work will occur in the District Court proceeding
until a final written decision is issued. See id.
We agree with Petitioner that the District Court proceeding was in its
early stages prior to the stay. The record before us indicates that the District
Court has not issued any substantive orders related to the ’159 Patent, and
has not substantially invested in the case, apart from holding a scheduling
conference in November 2019 and granting the parties joint stipulation to
stay the parallel proceeding in April 2020. See Ex. 1019, 2009, 2010. “If, at
the time of the institution decision, the district court has not issued orders
related to the patent at issue in the petition, this fact weighs against
exercising discretion to deny institution.” Fintiv at 9–10. Importantly, no
claim construction orders have issued in the District Court proceedings. See
id. at 10 (“[C]laim construction orders may indicate that the court and parties
have invested sufficient time in the parallel proceeding to favor denial.”).
We recognize that the weight to give claim construction orders varies
because some district courts may postpone significant discovery until after

IPR2020-00820
Patent 9,930,159 B2
11
the issuance of a claim construction order, while others may not. See Fintiv
at 10 n.7. Although Patent Owner relies on the fact that Markman positions
had been exchanged and the parties were preparing for Markman briefing
(see Prelim. Resp. 46), Patent Owner does not identify the significant
discovery that has been completed. Rather, discovery is not complete
because, according to Petitioner, neither party had taken any depositions.
See Reply to Prelim. Resp. 2. Where the District Court has not issued claim
construction orders and the discovery process is not yet complete, the
remaining investment of time and effort likely necessary to bring co-pending
litigation to trial appears to far outweigh that which has already been
invested. See Juniper Networks, Inc. v. Packet Intelligence LLC,
IPR2020-00336, Paper 21 at 18 (PTAB Sept. 10, 2020).
The third Fintiv factor also provides that a petitioner’s diligence or
delay in filing a petition may be relevant. See Fintiv at 11–12. If the
evidence shows that a petitioner filed its petition expeditiously, such as
promptly after becoming aware of the claims being asserted, this fact has
weighed against denying institution. See id. at 11 (citing Intel Corp. v.
VLSI Tech. LLC, IPR2019-01192, Paper 15 at 12–13 (PTAB Jan. 9, 2020);
Illumina Inc. v. Natera, Inc., IPR2019-01201, Paper 19 at 8 (PTAB Dec. 18,
2019)). If, however, the evidence shows that the petitioner did not file its
petition expeditiously, such as at or around the same time that the patent
owner responded to the petitioner’s invalidity contentions, or even if a
petitioner cannot explain the delay in filing its petition, these facts have
favored denial. See Fintiv at 11–12 (citing Next Caller, Inc. v.
TRUSTID, Inc., IPR2019-00961, Paper 10 at 16 (PTAB Oct. 16, 2019)).

IPR2020-00820
Patent 9,930,159 B2
12
Patent Owner contends that Petitioner’s delay in filing the petition
weighs in favor of denying institution under § 314(a). See Prelim.
Resp. 46–47 (quoting Next Caller, Paper 10 at 15–16; Fintiv at 11–12).
According to Patent Owner, the parallel District Court proceeding was
initiated on April 3, 2019, but Petitioner did not file this Petition until more
than a year later on April 8, 2020. See id. at 47. Patent Owner contends that
Petitioner cannot justify the magnitude of its delay. See Sur-Reply to
Prelim. Resp. 2.
In reply, Petitioner argues that the parallel District Court proceeding
was still in its early stages when the Petition was filed. See Reply to Prelim.
Resp. 3. Petitioner argues, moreover, that the timing of filing enabled the
Petition to take into account both parties’ claim construction positions,
which resulted in a more focused and thorough petition than what would
have been possible even weeks earlier. See id.
Patent Owner disputes Petitioner’s argument regarding claim
construction because the Petition does not propose any express claim
constructions. See Sur-Reply to Prelim. Resp. 2 (citing Pet. 8). Patent
Owner contends that Petitioner’s “delay in filing this Petition and its
misleading excuse both favor discretionary denial.” See id.
We find that the Petition was filed neither expeditiously nor with
delay because, although it was not filed promptly after Petitioner became
aware of the claims being asserted in the invalidity contentions filed in the
District Court on January 31, 2020 (Ex. 2020), it was not filed in close
proximity to any response by Patent Owner to the invalidity contentions
because Patent Owner did not file a response prior to the stay of the
proceedings. In view of our finding that the parallel District Court

IPR2020-00820
Patent 9,930,159 B2
13
proceeding was in an early stage prior to the stay, the timing of the filing of
the Petition does not weigh in favor of exercising discretion to deny
institution. See Supercell Oy v. Gree, Inc., PGR2020-00038 Paper 14 at 15
(PTAB Sept. 3, 2020) (Although the petition was filed late within the
statutory filing window, because the evidence demonstrated that only
minimal investments had been made in the parallel proceeding, the panel
was not persuaded that the petitioner’s delay in filing the petition was a
compelling countervailing reason to exercise discretion to deny institution).
On balance, the considerations of the third Fintiv factor weigh against
exercising discretion to deny institution.
c. Overlap between the issues raised in the petition and
in the parallel proceeding
Patent Owner asserts that the parallel District Court proceeding
involves the same patent and the same claims. See Prelim. Resp. 44–45
(citing Pet. 1; Ex. 2007, 1; Ex. 2008, 1). Patent Owner contends that
Petitioner’s invalidity contentions in the parallel District Court proceeding
include an explicit reference to Ronkainen and an implicit reference to
Newman. See id. at 45 (citing Ex. 2008, 9). Patent Owner alleges that
Petitioner’s invalidity contentions are similar to those raised in its Petition.
See id. (citing Ex. 2008, 15–18). Patent Owner further contends that
resolution of Petitioner’s challenges to the same claims in the District Court
proceeding will necessarily resolve key issues presented in the Petition. See
id. at 45–46
Petitioner does not dispute that the Petition challenges the same
claims as those asserted in the District Court proceeding. Reply to Prelim.
Resp. 2. Petitioner contends that an inter partes review could dispose of the

IPR2020-00820
Patent 9,930,159 B2
14
entire District Court proceeding. See id. Petitioner, however, asserts that
the art is not the same. According to Petitioner, “Patent Owner does not
dispute that three of the four references in the Petition––Newman, Trewin,
and Araki––were not included in the [D]istrict [C]court [proceeding].” Id.
(citing Ex. 2008, 22–23, 34). Petitioner further argues that Patent Owner’s
vague allegations that Petitioner made “very similar arguments” should be
entitled to no weight. See id. (citing Comcast Cable Commc’ns, LLC v.
Veveo, Inc., IPR2019-00239, Paper 15 at 11 (PTAB July 5, 2019).
Patent Owner argues that Petitioner does not contest in its Reply that
it made the same arguments based on Ronkainen. See Sur-Reply to Prelim.
Resp. 1. Patent Owner also argues that Petitioner misstates that Newman
was not included in the District Court proceeding because, according to
Patent Owner, Petitioner “ignores that its invalidity contentions incorporate
Newman based on its identification on the face of the ’159 Patent.” Id.
(citing Prelim. Resp. 38–39). Patent Owner further asserts that Petitioner
ignores that the Petition paraphrases Petitioner’s invalidity contentions
regarding motivation to combine the “interface element” and “critical time”
references based on purported relation to buttons of a user interface. See id.
(comparing Pet. 36, with Ex. 2008, 16–17). Patent Owner contends that
Petitioner incorrectly relies on the Comcast decision for the proposition that
this is of no weight, because the Comcast decision was based on the absence
of evidence showing the similarity of Petitioner’s arguments to those made
previously, while Petitioner’s invalidity contentions show its arguments. See
id. at 1–2.
If the prior art and arguments in the parallel proceeding are
substantially identical to those presented in a petition, “concerns of

IPR2020-00820
Patent 9,930,159 B2
15
inefficiency and the possibility of conflicting decisions [would be]
particularly strong.” Fintiv at 12. “Conversely, if the petition includes
materially different grounds, arguments, and/or evidence than those
presented in the district court, this fact has tended to weigh against
exercising discretion to deny institution.” Id. at 12–13.
We agree with Petitioner that the invalidity contentions do not include
the Araki and Trewin references. See generally Ex. 2008. Nonetheless, we
acknowledge that Ronkainen is explicitly included while Newman is
implicitly included in the invalidity contentions, as argued by Patent Owner.
See Ex. 2008, 5–6, 15–18, 31. The Araki reference is not included in the
invalidity contentions, but is used in the Petition for every proposed
challenge to patentability. Therefore, we find the prior art and arguments
included in the Petition are materially different than those presented in the
District Court. Additionally, the Trewin reference is relied upon for two of
the three challenges to patentability presented addressing all of the
challenged claims. As a further example of a material difference, we note
that the Petition explicitly relies on Ronkainen for teaching the
“determining . . . one of a presence and an absence of a media signal,” as
recited in claim 13 (see Pet. 57–58), yet Petitioner’s invalidity contentions
addressing this same limitation do not include the Ronkainen reference (see
Ex. 2008, 19–20).
Notwithstanding the material differences between Petitioner’s
challenges and the invalidity contentions, due to the stay of the parallel
District Court proceeding, the Board will likely address patentability issues
prior to the District Court reaching invalidity issues at trial, thereby
obviating concerns of inefficiency and conflicting decisions while providing

IPR2020-00820
Patent 9,930,159 B2
16
the possibility of simplifying issues for trial in the parallel District Court
proceeding. See, e.g., MED-EL Elektromedizinische Geräte GmbH v.
Sonova AG, IPR2020-00176, Paper 13 at 15 (PTAB June 3, 2020) (“As to
the fourth factor, the parties do not dispute that overlap exists between the
invalidity issues in this case and in the district court. This overlap may inure
to the district court’s benefit, however, by simplifying issues for trial should
we reach our determination on the challenges raised in the Petition before
trial.”).
Based on the aforementioned material differences between the
challenges to patentability set forth in the Petition compared to the invalidity
contentions before the District Court, as well as the stay of the parallel
District Court proceeding, the considerations of the fourth Fintiv factor
weigh against exercising discretion to deny institution.
d. Whether the petitioner and defendant in the
parallel proceeding are the same party
Petitioner does not dispute Patent Owner’s contention that the
Petitioner here, and the defendant in District Court, are the same party. See
Prelim. Resp. 44; generally Reply to Prelim. Resp.; Sur-Reply to Prelim.
Resp. 1. In consideration of the fact that the parallel District Court
proceeding is stayed, and there is not substantial overlap between the
invalidity contentions and the Petition challenges, we regard the
consideration of the fifth Fintiv factor as neutral or, at most, weighing
slightly in favor of exercising discretion to deny institution.
e. Other circumstances, including the merits
Patent Owner also argues that the ability to develop facts related to
secondary considerations that are within the control of Petitioner and would

IPR2020-00820
Patent 9,930,159 B2
17
have been the focus of the District Court proceedings is a compelling factor
that weighs heavily in favor of denying institution. See Prelim. Resp. 48.
Patent Owner asserts that critical areas of discovery relevant to secondary
considerations include Petitioner’s patent filings, including U.S. Patent
No. 8,428,453 to Spiegel (Ex. 2002, “Spiegel” or “Spiegel Patent”), the
interference between Mojo Media and Snapchat Inc. related to Spiegel
(Ex. 2001), Petitioner’s SEC filings and statements therein (Ex. 2004, 89),
and industry praise, commercial success, and unexpected results related to
Petitioner’s products that practice one or more of the asserted claims of
the ’159 Patent (Ex. 2005; Ex. 2011). See id. at 48–49. According to Patent
Owner, “[i]t would be in the interest of justice for this discovery to be borne
out in a U.S. District Court where discovery is not subject to the limitations
of PTAB practice.” Id. at 49–50. Patent Owner contends that this factor
weighs heavily in favor of denial of the Petition. See id. at 50. In reply,
Petitioner contends that “Patent Owner’s vague allegations and speculation
about secondary considerations are not a basis for denying institution,
otherwise every petition containing an obviousness ground could be defeated
at the institution stage by the mere proposition that discovery is required
regarding secondary considerations.” See Reply to Prelim.
Resp. 3–4 (citing Samsung Elecs. Co. v. Dynamics, Inc., IPR2020-00504,
Paper 11 at 19–22 (PTAB Aug. 12, 2020)).
We are not persuaded by Patent Owner’s arguments. Patent Owner
does not meaningfully explain why it would be in the interests of justice for
discovery regarding secondary considerations to take place before the
District Court instead of before the PTAB. Although we recognize that
routine discovery in trial proceedings before the PTAB is limited compared

IPR2020-00820
Patent 9,930,159 B2
18
to U.S. District Courts, we note that our rules provide parties the ability to
file a motion for additional discovery. See 37 C.F.R. § 42.51(b)(2);
CTPG 23–28 (available at
https://www.uspto.gov/sites/default/files/documents/tpgnov.pdf). Parties
can generally seek the same types of discovery under the Federal Rules of
Civil Procedure. See CTPG 24. We further note that the standard for
granting a motion for additional discovery is “in the interests of justice.”
See 37 C.F.R. § 42.51(b)(2); Garmin Int’l, Inc. v. Cuozzo Speed Techs. LLC,
IPR2012–00001, Paper 26 (PTAB March 5, 2013) (precedential). The
parties’ additional dispute regarding the existence of evidence of secondary
considerations (see Reply to Prelim. Resp. 3–4; Sur-Reply to Prelim.
Resp. 3–4) bear little relevance to Patent Owner’s argument that discovery
related to secondary considerations before the District Court instead of the
PTAB is in the interests of justice and weighs heavily in favor of denying
institution. We evaluate Patent Owner’s contentions and evidence regarding
secondary considerations below in addressing the merits of Petitioner’s
patentability challenges.
As noted above, the sixth Fintiv factor may include consideration of
the merits. As explained in the detailed analysis below, we find that the
merits of Petitioner’s patentability challenges appear to be strong at this
stage of the proceeding.
For the foregoing reasons, consideration of other circumstances,
including Patent Owner’s concerns about discovery and the merits of
Petitioner’s challenges weigh against exercising discretion to deny
institution.

IPR2020-00820
Patent 9,930,159 B2
19
2. Conclusion
We have considered the circumstances and facts before us in view of
the Fintiv factors. Because our analysis is fact-driven and we take a holistic
view of the factors, no single factor is determinative of whether we exercise
our discretion to deny institution under § 314(a). Based on the facts before
us, the stay in the parallel District Court proceeding, the early stages of that
parallel proceeding prior to the stay, and the lack of overlap between the
invalidity contentions in the District Court proceeding and the challenges
raised in the Petition allay any concerns regarding inefficiency, duplication
of efforts, and the possibility of conflicting decisions. Of the remaining
factors, we find only that Petitioner is the same as the defendant in the
parallel proceeding to be neutral or to weigh slightly in favor of
discretionary denial. Balancing all of the Fintiv factors, on this record, we
determine that the circumstances presented here weigh against exercising
discretion under § 314(a) to deny institution of inter partes review.
B. Discretion under 35 U.S.C. § 325(d)
Patent Owner asserts that the Board should exercise its discretion to
deny institution of the inter partes review under 35 U.S.C. § 325(d). See
Prelim. Resp. 50–56. For the reasons that follow, we decline to exercise
discretion to deny institution based on § 325(d).
In evaluating arguments under § 325(d), we use
[a] two-part framework: (1) 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, whether the petitioner has
demonstrated that the Office erred in a manner material to the
patentability of challenged claims.

IPR2020-00820
Patent 9,930,159 B2
20
Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH,
IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential)
(“Advanced Bionics”); see also 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) (listing factors to
consider in evaluating the applicability of § 325(d)) (“Becton, Dickinson”).
Under Advanced Bionics, Becton, Dickinson factors (a), (b), and (d)
are considered in the evaluation of whether the same or substantially the
same art or arguments were previously presented to the Office. Advanced
Bionics at 10. Becton, Dickinson identifies these factors as:
(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; and (d) the extent of the
overlap between the arguments made during examination and
the manner in which petitioner relies on the prior art.
Becton, Dickinson at 17–18. If the first part of the Advanced Bionics
framework is satisfied, we turn to the second part where Becton, Dickinson
factors (c), (e), and (f) are considered in the evaluation of whether the
petitioner has demonstrated that the Office erred in a manner material to the
patentability of challenged claims. Becton, Dickinson identifies these factors
as:
(c) the extent to which the asserted art was evaluated during
examination, including whether the prior art was the basis for
rejection;
(e) whether petitioner has pointed out sufficiently how the
examiner erred in its evaluation of the asserted prior art; and

IPR2020-00820
Patent 9,930,159 B2
21
(f) the extent to which additional evidence and facts presented
in the petition warrant reconsideration of the prior art or
arguments.
Becton, Dickinson at 17–18.
1. Brief overview of pertinent prosecution history
The Notice of Allowability for parent Application No. 13/945,278,
which issued as U.S. Patent No. 8,996,059, included a reasons for
allowance, in which the Examiner noted that Newman discloses a
communication device for recording a message on a first and second mode
comprising detecting activation of a button on the communication device by
touching or depressing the button in a duration of activation, and selecting a
mode to record the message. See Ex. 1016, 2 (Nov. 2014 Office Action, 2;
citing US 2014/0024324 A1, Abstract, ¶¶ 15, 96–98, 100, 110, 114, 118,
122–126, Figs. 4a–4c). The Examiner also noted that in the background of
the invention section, the applicant disclosed activating a button for
recording a message, in which a single press or tap on the button is used for
a short message recording and “a kept-depressing button for recording until
the button is released for a long message.” Id. (citing US 2014/0024324 A1
¶¶ 3–7). The Examiner, however, found:
[t]he prior art of record failed to explicitly suggest or disclose
selecting one of a plurality of communication modes for
recording the media message based upon the comparison of the
activated duration and a timing parameter (threshold), or based
upon the presence or absence of a media signal after the
activation of the interface element/button.
Id. at 2–3. The Notice of Allowability for parent Application
No. 13/945,278 included a Notice of References Cited, which listed U.S.
Patent Application Publication No. 2013/0110565 A1 to Means Jr. et al.

IPR2020-00820
Patent 9,930,159 B2
22
(Ex. 2012, “Means Jr.”), but did not include any comments by the Examiner
regarding the listed references. See id. at 2–3, 5.
During prosecution of the ’159 Patent, the Examiner relied on the
teachings of Means Jr. to address then-pending claims 14–19 which
depended from then-pending independent claim 13, which described an
embodiment where the recording application selects one of a plurality of
communication modes based on the presence or absence of a media signal.
See Ex. 2003, 62–63 (Dec. 2016 Office Action, 7–8), 70–71 (May 2017
Office Action, 5–6), 86–87 (May 2016 Office Action, 4–5), 95–96
(Dec. 2015 Office Action, 5–6), 107–108 (amended claims submitted with
March 2017 Response), 121–122 (amended claims submitted with
Sept. 2016 Response), 142–143 (originally filed claims 13–19).
2. The parties’ contentions pertinent to the first part of the
Advanced Bionics framework
Patent Owner contends the Petition should be denied pursuant to
§ 325(d) because similar art and arguments used in the Petition were
presented previously to the Office. See Prelim. Resp. 51. More specifically,
Patent Owner argues that factors (a), (b), and (d) of the Becton, Dickinson
factors weigh in favor of denial because Newman was of record during
prosecution, similar arguments made in the Petition were raised and
addressed during prosecution of the ’159 Patent, and the additional
references including Araki, Trewin, and Ronkainen are cumulative of the art
that was before the Board. See id. at 52.
Patent Owner argues that Petitioner admits that the Newman reference
used in the Petition is the same reference substantively considered by the
Examiner during prosecution. See Prelim. Resp. 52; Sur-Reply to Prelim.

IPR2020-00820
Patent 9,930,159 B2
23
Resp. 4. Patent Owner argues that part one of the Advanced Bionics
framework is met because the patentability challenges of the Petition rely on
the same art that was substantively considered and used by the Examiner
during prosecution. See Prelim. Resp. 53. Patent Owner also makes the
following acknowledgement: “Petitioner relies on Araki ‘for the feature of
selecting a communication mode based on the duration of activation’ and
Ronkainen for ‘the further feature of selecting a communication mode based
on the presence or absence of a media signal.’” Id. (citing Pet. 4).
Patent Owner also argues that an examination of Araki reveals that it
is merely cumulative of Means Jr., which was discussed at length during
prosecution of the ’159 Patent. See Prelim. Resp. 53–54. According to
Patent Owner, “the Examiner analyzed Means Jr. and acknowledged that
both push-to-talk and tap to record are known in the art.” See id. at 54
(quoting Ex. 2003, 63 (Dec. 2016 Office Action, 8). Patent Owner points
out that the Examiner also cited paragraph 16 of Means Jr., which Patent
Owner characterizes as describing timers used to begin and end a recording.
See id. (citing Ex. 2003, 62 (Dec. 2016 Office Action, 7)). In support of its
arguments, Patent Owner reproduces a portion of paragraph 16. See id.
Paragraph 16, in pertinent part discloses:
According to an exemplary embodiment, a system, method
and/or computer program product may include a computer
implemented method of providing an employee or user activity
management system comprising: receiving, by at least one
processor, an indication to start or stop recording, wherein said
indication comprises receiving at least one of a selection to start
recording, a selection to stop recording, a trigger, or a toggle,
comprising at least one of receiving said selection based on a
timer, wherein said timer comprises at least one of a user
defined timer or a signaled timer from a remote web server to

IPR2020-00820
Patent 9,930,159 B2
24
start recording user activity and stop recording said user
activity; receiving said selection based upon receiving
launching of at least one user-selected software application, or
portion of at least one software application to start recording
user activity; receiving said selection based upon receiving . . . .
Ex. 2012 ¶ 16.
Patent Owner notes that the Examiner’s reasons for allowance
indicated that the prior art failed to teach selecting one of a plurality of
communication modes for recording the media/text message based upon the
comparison of an activated duration and a timing parameter. See Prelim.
Resp. 54 (quoting Ex. 2003, 71 (May 2017 Office Action, 6)). According to
Patent Owner, “the Examiner already would have considered whether a
button and associated timing parameter, such as Araki, was within the scope
of the prior art.” Id. at 55.
Petitioner asserts that Patent Owner does not dispute that Trewin,
Ronkainen, and Araki were not considered during prosecution of the ’159
Patent and ’059 Patent. See Reply to Prelim. Resp. 4. Petitioner also notes
that Patent Owner does not argue that Trewin or Ronkainen references, nor
Petitioner’s arguments regarding these references were the same or
substantially the same as arguments presented previously to the Office. See
id.
In reply, Petitioner contends that Patent Owner’s argument that Araki
is cumulative of Means Jr. is meritless because Patent Owner misleadingly
suggests that the Examiner found that Means Jr. discloses both push-to-talk
and tap-to-record communication modes. See Reply to Prelim. Resp. 4
(quoting Prelim. Resp. 54). According to Petitioner, “the Examiner never
found that Means Jr. disclosed multiple communication modes, let alone the

IPR2020-00820
Patent 9,930,159 B2
25
claim step of selecting a communication mode based on duration of
activation.” Id. at 4–5. Petitioner asserts that the Examiner found only that
Means Jr. discloses initiating/starting recording of a message, and only
rejected pending claims 14–19 which did not recite mode selection based on
a duration of activation based on a prior art combination that included
Means Jr. See id. at 5 (citing Ex. 2003, 62–63, 70–71, 107–108). Petitioner
further asserts that no pending claims in the ’059 Patent were rejected based
on Means Jr. See id. Finally, Petitioner contends that paragraph 16 of
Means Jr., cited by Patent Owner, does not disclose or suggest a key
teaching required by the challenged claims and disclosed by Araki––
detecting a duration of activation of an interface element and selecting a
communication mode based on that duration. See id.
Patent Owner counters that Araki and Ronkainen are both cumulative
of Means Jr. under Petitioner’s arguments because Petitioner relies on Araki
for the feature of selecting a communication mode based on the duration of
activation and on Ronkainen for “the further feature of selecting a
communication mode based on the presence or absence of a media signal.
See Sur-Reply to Prelim. Resp. 5. According to Patent Owner, “[t]he
Examiner explicitly stated that ‘it would have been obvious[] . . . to have
Itoh, modified by Means, Jr. in order to start[] recording a message which
will reduce[] recording time.” Id. (quoting Ex. 2003, 62–63 (Dec. 2016
Office Action, 7–8)).
3. Analysis
As an initial matter, there is no dispute that Newman was presented
previously to the Office. See Pet. 5; Prelim. Resp. 52. Patent Owner,
however, does not present arguments to demonstrate that the additional

IPR2020-00820
Patent 9,930,159 B2
26
Araki, Trewin, and Ronkainen references were previously considered by the
Office. See Prelim. Resp. 50–56. At best, Patent Owner merely argues “the
additional references including Araki, Trewin, and Ronkainen are
cumulative of the art that was before the [Office].” Id. at 52. For the
reasons set forth below, we disagree. Accordingly, the only similarity
between the asserted art and the prior art involved during examination is
Newman.
We do not agree with Patent Owner that Araki is cumulative of
Means Jr. In particular, we do not agree with Patent Owner’s argument that
“the Examiner already would have considered whether a button and
associated timing parameter, such as Araki, was within the scope of the prior
art,” because Patent Owner too broadly characterizes the teachings of Araki
that are relied upon in the Petition. The Petition relies on Araki for teaching
determining the duration of activation of an interface element (see
Pet. 17–21), and selecting one of a plurality of communication modes based
on a comparison of the duration of the activation to one or more timing
parameters (see Pet. 14–17, 26–28). The disclosures of Means Jr. cited by
Patent Owner (see Prelim. Resp. 54 (quoting Ex. 2012 ¶ 16)) do not include
the same or similar teachings as Araki that were relied upon in the Petition,
e.g., selecting one of a plurality of communication modes based on a
comparison of the duration of the activation of an interface element to one or
more timing parameters. Instead, Means Jr. merely discloses starting and/or
stopping a recording based on a processor receiving an indication that
comprises receiving a selection that may be based on a timer that comprises
either a user defined timer or a signaled time from a remote web server. See
Ex. 2012 ¶ 16. We also note that the Examiner relied on the teachings of

IPR2020-00820
Patent 9,930,159 B2
27
Means Jr. to address then-pending claims 14–19, which depended from then-
pending independent claim 13, which described an embodiment where the
recording application selects one of a plurality of communication modes
based on the presence or absence of a media signal. See, e.g., Ex. 2003, 62–
63 (Dec. 2016 Office Action), 121–122 (amended claims submitted with
Sept. 2016 Response). Then-pending claims 13–19 did not include any
description related to selecting one of a plurality of communication modes
based on a comparison of the duration of an interface element with the
timing parameter. See, e.g., id. at 121–122. For these reasons, we do not
agree with Patent Owner’s contentions that Araki is cumulative of Means Jr.
See Prelim. Resp. 53–54.
We also do not agree with Patent Owner’s Sur-Reply contention that
Ronkainen is cumulative of Means Jr. The Petition relies on Ronkainen for
teaching selecting one of a plurality of communication modes based on the
presence or absence of a media signal. See Pet. 50–53, 54–55, 57–58.
Patent Owner, however, does not direct us to where Means Jr. discloses,
teaches, or suggests selecting one of a plurality of communication modes
based on the presence or absence of a media signal. See Prelim.
Resp. 50–56; Sur-Reply to Prelim. Resp. 4–5. Patent Owner points only to
the Examiner’s determination that it would have been obvious to modify the
teachings of Itoh in order to start recording a message which will reduce
recording time (see Sur-Reply 5), but does not explain sufficiently how the
teachings of Ronkainen are cumulative of the teachings of Means Jr. See
Prelim. Resp. 50–56; Sur-Reply to Prelim. Resp. 4–5.
We also do not agree with Patent Owner’s argument that the teachings
of Trewin are cumulative of art that was before the Office (see Prelim.

IPR2020-00820
Patent 9,930,159 B2
28
Resp. 52). As one example, the Petition relies on Trewin for teaching “one
or more configurable timing parameters,” as recited in at least claim 1 (see
Pet. 21–26), but Patent Owner does not present arguments sufficient to
demonstrate that the teachings of Trewin are cumulative of the teachings of
any specific reference presented previously to the Office (see Prelim.
Resp. 50–56).
We further do not agree with Patent Owner’s unsupported argument
that similar arguments made in the Petition were raised and addressed during
prosecution of the ’159 Patent. See Prelim. Resp. 52. Patent Owner does
not meaningfully explain any overlap between arguments made during
examination and the manner in which Petitioner relies on the prior art. See
id. at 52 (“The arguments presented in the [P]etition are thus largely the
same as the arguments that were already before the Office.”), 53 (“Petitioner
largely repeats the same arguments that the Examiner used during
prosecution.”).
In consideration of the first step of the Advanced Bionics framework
and Becton, Dickinson factors (a), (b), and (d), we determine that neither the
same or substantially the same art nor the same or substantially the same
arguments were presented previously to the Office. Because the first step of
the Advanced Bionics test is not satisfied, we need not proceed to the second
part of the test. See Advanced Bionics at 8 (second step of the framework
only applies “if either condition of the first part of the framework is
satisfied”). Accordingly, we decline to exercise our discretion under
35 U.S.C. § 325(d) to deny institution of inter partes review.

IPR2020-00820
Patent 9,930,159 B2
29
C. Claim Construction
For petitions filed after November 13, 2018, the Board applies the
same claim construction standard as that applied in federal courts. See
37 C.F.R. § 42.100(b) (2019). The claim construction standard used in a
civil action under 35 U.S.C. § 282(b) is generally referred to as the Phillips
standard. See Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en
banc). Under the Phillips standard, generally words of a claim are given
their ordinary and customary meaning. Phillips, 415 F.3d at 1312.
Petitioner does not provide explicit claim constructions for any claim
term or phrase. See Pet. 8. Nonetheless, Petitioner addresses claim
constructions for “adaptive recording application,” “configurable timing
parameters,” “communication mode,” and “critical time” in the portions of
the Petition addressing the challenges to patentability. See Pet. 21–22, 27,
31, 33. Patent Owner does not appear to dispute Petitioner’s constructions
for these terms. In addition, we note that the ’159 Patent provides explicit
claim constructions for the following terms that appear in the claims:
“media message,” “communication mode,” “interface element,” “duration of
activation,” “configurable timing parameters,” “critical time,” “media
signal,” “lower threshold time,” and “upper threshold time.” See, e.g.,
Ex. 1001, 2:67–3:58, 5:1–5:9, 6:40–7:1, 7:33–39, 14:6–10.
As demonstrated in the analysis below, we need not construe any
claim terms or phrases. See Nidec Motor Corp. v. Zhongshan Broad Ocean
Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe
terms ‘that are in controversy, and only to the extent necessary to resolve the
controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc.,
200 F.3d 795, 803 (Fed. Cir. 1999))).

IPR2020-00820
Patent 9,930,159 B2
30
D. Principles of Law
A claim is unpatentable under 35 U.S.C. § 103 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 the 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) if in evidence, so-called secondary considerations.
Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
E. Level of Ordinary Skill in the Art
Petitioner asserts:
[a] person of ordinary skill as of July 2012 would have
possessed at least a bachelor’s degree in electrical engineering
or computer science, and two years of work experience in
multimedia data communications and user interfaces. A person
could also have qualified with more formal education and less
technical experience, or vice versa.
Pet. 5 (citing Ex. 1002 ¶¶ 15–21). Patent Owner does not dispute
Petitioner’s assertions addressing the skill level of a person of ordinary skill
in the art. See generally Prelim. Resp. For the purpose of this Decision, we
adopt Petitioner’s definition of a person of ordinary skill in the art.

IPR2020-00820
Patent 9,930,159 B2
31
F. Proposed Unpatentability of Challenged Claims
1. Proposed Unpatentability of Claims 1, 3–7, 20, 21, and 23–25 over
Newman, Araki, and Trewin
a. Overview of Newman (Ex. 1003)
Newman is directed to hand-held portable electronic devices that may
provide one or more of audio/text/video communication functions and/or
text transmission, interactive/non-interactive viewing functions, music
recording/playing functions, downloading/sending of data functions, image
capture functions, and gaming functions. See Ex. 1003, 1:6–26. The
portable electronic devices provide a mode of operation with intermediate
functionality (i.e., second mode) between an active first mode that allows a
user to generally interact with the device and access the full functionality of
the device and a standby-type or sleep-type mode (i.e., third mode) where
the full availability of options is disabled. See id. at 7:19–42, 8:43–55,
10:41–49. The second mode of operation with intermediate functionality
allows the user to access desired information directly, without the need for
the user to consider which on-screen or menu option the user needs to select
in order to interact with the desired information. See id. at 7:43–47, 9:1–10.
“Operating a device using locked user interaction in an intermediate-type
operating mode using specific limited user inputs may require a lower level
of competence and ability of the user than operating a device allowing
general unlocked user interaction.” Id. at 7:62–67. When a portable
electronic device is operating in the intermediate type mode, the battery life
may be prolonged and the processing activity may be reduced, requiring
reduced battery recharging frequency and providing increased application
speed. See id. at 8:1–9.

IPR2020-00820
Patent 9,930,159 B2
32
Figures 4a through 4c of Newman are reproduced below.
Figures 4a through 4c are illustrations depicting a user responding to a
message received from a third party by dictating a message while operating
in the mode of intermediate functionality. See Ex. 1001, 6:50–51, 6:56–58,
12:8–9. Figure 4a shows device 400 with touch-sensitive screen 402
displaying text message 406 received from third party 404. See id.
at 10:51–53. Figure 4b shows a user has performed a locked user interaction
of touching and holding down “respond” button 408 with finger 416. See id.
at 10:55–57. Holding “respond” button 408 has activated device 400 to
record sound for the duration of the activating user input, i.e., while
“respond” button 408 is held. See id. at 10:59–61. Rather than holding
down a dedicated button to provide activating user input, a first touch may
begin recording and a second touch may end recording. See id. at 10:64–65,
11:2–4. Figure 4b shows the user dictating message 418 while holding
“respond” button 408. See id. at 11:9–12. The device may be configured to
operate voice recognition software to convert the user’s recorded voice into

IPR2020-00820
Patent 9,930,159 B2
33
text message 422. See id. at 11:25–27. Figure 4c shows the user has
stopped speaking, but the user would like to check that message 422 appears
as they wish before it is transmitted by continuing to hold down “respond”
button 408. See id. at 11:43–49. To indicate that device 400 has recognized
that the user has finished speaking, the word “To” 420 appears to show that
message 422 as dictated will be sent to third party 404. See id. at 11:49–52.
Releasing the press on the button automatically terminates the activating
user input and begins the transmission of message 422 to third party 404.
See id. at 11:60–65, Fig. 4d. The device also is configured to record the
user’s voice message and transmit an audio recording of the message rather
than a text version. See id. at 11:27–33.
b. Overview of Araki (Exs. 1004, 1005)
Araki discloses a speech-recognizing device that comprises a
microphone-button-detecting portion for detecting an ON operation or both
an ON operation and an OFF operation of a microphone button that is
operated when the user is to speak. See Ex. 1005 ¶¶ 15, 41. A speech-
recognizing portion of the speech-recognizing device carries out speech
recognition based on the timing of the ON operation, or timing of both an
ON and an OFF operation, detected by the microphone-button-detecting
portion. See id. ¶¶ 15, 41. The user can operate the microphone button in
two different methods, and includes a comparison of the pressing time
interval against a set time interval. See id. ¶ 16. The microphone button can
be operated in a first operating method of pressing for at least one second or
a second operating method of pressing for less than one second. See id.
¶ 69, Fig. 5 (step S14). When operating in the first operating method,
wherein the microphone button has been pressed for at least one second, the

IPR2020-00820
Patent 9,930,159 B2
34
device determines the ending time based on the time at which the
microphone button is released and stops speech recognition. See id. ¶ 69,
Fig. 5 (step S14: YES). When the microphone button has been pressed for
less than 1 second, the automatic translating device performs speech
recognition on the sound that is inputted after releasing the microphone
button up until a nonspeech segment continues for at least three seconds.
See id. ¶ 69, 71, Fig. 5 (step S14: NO).
c. Overview of Trewin (Ex. 1007)
Trewin discloses automatic, dynamic configuration of input devices
used to control computer systems in order to accommodate the control
requirements of users who have differing abilities, or users operating in a
context which affects their control of an input device. See Ex. 1007, 1:13–
19, 3:43–46, 4:58–63. The input device may comprise a physical device,
such as a keyboard, mouse, or binary switch, or a less tangible means, such
as speech input, and is used to control a target device such as a personal
computer, household appliance, etc. See id. at 4:64–5:6. The input device
has a number of configuration options that include, but are not limited to:
the delay before a key on a keyboard starts to repeat – key repeat delay
(KRD) – the rate at which keys repeat, etc. See id. at 5:9–18. The
configurations, such as KRD, are implemented in software. See id.
at 5:18–19, 8:55–58. For KRD, as the user presses keys on the keyboard,
these actions generate key down and key up events that are passed to the
operating system and automatic configuration agent software. See id.
at 8:58–66, Fig. 8. Within the automatic configuration agent, the events are
processed by an input monitor that passes the events to an analyzer and a
user change recognizer. See id. at 8:66–9:3, Fig. 8. The analyzer uses the

IPR2020-00820
Patent 9,930,159 B2
35
events to calculate an appropriate KRD. See id. at 9:3–6. Based on
detection of a change in user, the analyzer responds by restarting its
calculations and passes a recommended KRD for a new user to a configurer
to update the KRD. See id. at 9:6–21, 9:45–59, 10:28–48, 11:36–44;
Figs. 8, 10, 12.
d. Analysis
For the purpose of this Decision and based on Petitioner’s identified
disclosures of Newman, Araki, Trewin, and Mr. Schmandt’s supporting
testimony (Ex. 1002), we are persuaded for the reasons provided below that
Petitioner establishes sufficiently that the combination of Newman, Araki,
and Trewin teaches or suggests all of the limitations recited in independent
claims 1, 20, 24 and 25, and claims 3–7, 21, and 23 dependent therefrom.
Claim 1
(a) A computer implemented method for determining
a communication mode, comprising:
Petitioner contends that, to the extent the preamble is limiting, the
recited method is taught by, or obvious over Newman, Araki, and Trewin, as
explained with respect to the limitations recited in the body of claim 1. See
Pet. 14. Patent Owner does not dispute Petitioner’s assertions addressing the
preamble. See generally Prelim. Resp. Nonetheless, the burden remains on
Petitioner to demonstrate unpatentability. See Dynamic Drinkware,
800 F.3d 1375, 1378 (Fed. Cir. 2015). Based on the current record,
regardless of whether the preamble is limiting, we are persuaded Petitioner
has shown adequately for the purpose of institution that the combined prior
art discloses a computer implemented method for determining
a communication mode, as recited in claim 1.

IPR2020-00820
Patent 9,930,159 B2
36
(b) detecting activation of an interface by an application on
a communication device;
Petitioner asserts that Newman further teaches “detecting activation of
an interface element by an application on a communication device” based on
Newman’s disclosure of a reply button shown in Figure 3b and a respond
button 408 shown in Figure 4b on a smartphone that are each capable of
receiving user input or capturing the application of pressure from the user,
and an email or messaging application. See Pet. 14–17 (reproducing
Ex. 1003, Figs. 3b, 4a; citing Ex. 1003, 1:6–20, 1:30–34, 2:29–33, 8:39–42,
9:24–25, 10:32–35, 10:51–61, 18:41–45; Ex. 1002 ¶¶ 90, 93–94). Patent
Owner does not dispute Petitioner’s assertions with respect to this limitation.
See generally Prelim. Resp. Nonetheless, the burden remains on Petitioner
to demonstrate unpatentability. See Dynamic Drinkware, 800 F.3d at 1378.
Based on the current record, we are persuaded Petitioner has shown
adequately for the purpose of institution that the combined prior art discloses
“detecting activation of an interface element by an application on a
communication device” as recited by claim 1.
(c) determining a duration of said activation of said interface element
by said application;
Petitioner asserts that Newman discloses detecting an activation of an
interface element by an application, and that a voice recording is carried out
for the duration of that activation, but that Newman does not disclose
determining a duration of that activation. See Pet. 17–18 (citing Ex. 1003,
10:59–63). Petitioner asserts that determining a duration of the activation is
taught by and would have been obvious in view of Araki. See id.

IPR2020-00820
Patent 9,930,159 B2
37
Petitioner asserts that Araki discloses a speech recognition program,
where depending on the duration that a button on a device is pressed, one of
two operating modes for recording and performing speech recognition is
selected––either push-to-talk or tap-to-start (i.e., “push to activate”). See
Pet. 18 (citing Ex. 1005 ¶¶ 41, 46, 69, 71). Petitioner contends that Araki
provides a specific example of detecting whether the button has been pressed
for more or less than one second. See id. at 18–19 (reproducing a portion of
Ex. 1005, Fig. 5, with annotations; citing Ex. 1005 ¶¶ 41, 46, Fig. 5
(step S14)).
For the purpose of this Decision and based on Petitioner’s citations to
Newman, Araki, and Mr. Schmandt’s supporting testimony (Ex. 1002), we
are persuaded by Petitioner’s position. Specifically, we are persuaded
Petitioner sets forth sufficient articulated reasoning with rational
underpinning to support the conclusion that it would have been obvious to
one of ordinary skill in the art to modify the teachings of Newman to include
(a) determining a duration of activation of a button and (b) selectively
performing push-to-talk and tap-to-start modes as a result, as taught by
Araki, in order (i) “to improve the flexibility and ease-of-use of the reply
button[] and respond button [] in Newman” and (ii) to provide the “benefit
of a more accurate recording of the message regardless of which mode is
selected.” Pet. 19–21 (citing Ex. 1002 ¶¶ 99–101) see KSR, 550 U.S. at 418.
In particular, Petitioner contends that a skilled artisan would have
appreciated that users might be confused as to how the buttons work, for
example, how the start and ending of a recording is determined when the
button is pressed. See id. at 20. In support of its arguments, Petitioner
directs attention to Araki’s disclosure addressing when a user does not

IPR2020-00820
Patent 9,930,159 B2
38
understand the use of the speech recognition device and how to activate the
microphone button. See id. (citing Ex. 1005 ¶ 25). Petitioner asserts that
Araki teaches the system can select a recording mode that reflects the user’s
intentions based on a duration of activation of the user interface element.
See id. (citing 1005 ¶ 89; Ex. 1002 ¶ 101). According to Petitioner:
[f]or example, regardless of the duration for which a user
activated the “‘reply’ button []” and “‘respond’ button [],” the
messaging program in Newman adapted based on Araki would
have been able to more correctly record the voice message as
the user intended, even for users with a limited understanding
of how the button operated.
Id. (citing Ex. 1002 ¶ 101).
Patent Owner argues that Petitioner fails to identify where
“determining a duration of said activation of said interface element by said
adaptive recording application,” is found in Araki. See Prelim. Resp. 29.
We do not agree with Patent Owner’s argument because it is undeveloped
and not commensurate in scope with the limitations of claim 1. See Prelim.
Resp. 29–38. Moreover, Patent Owner’s argument addresses the teachings
of Araki individually, instead of addressing the combined teachings of
Newman in view of Araki, as proposed by Petitioner. One cannot show non-
obviousness by attacking references individually. See In re Merck & Co.,
800 F.2d 1091, 1097 (Fed. Cir. 1986) (“Non-obviousness cannot be
established by attacking references individually where the rejection is based
upon the teachings of the combination of references.”). We understand
Petitioner to propose modifying the application of Newman to include
determining a duration of the activation of the interface element, as taught
by Araki. See Pet. 17–21.

IPR2020-00820
Patent 9,930,159 B2
39
(d) comparing said duration of said activation of said interface element with
one or more configurable timing parameters by said application; and
Petitioner asserts the combined teachings of Newman and Araki teach
“comparing said duration of said activation of said interface element with
one or more configurable timing parameters by said application,” as recited
in claim 1. See Pet. 21–22. Petitioner bases its assertion on the teachings of
Newman as modified by Araki’s teaching of comparing a duration of
activation of a button to whether it is pressed for more or less than one
second. See id. at 21 (citing Ex. 1005 ¶¶ 69, 71, Fig. 5 (step S14)).
Petitioner acknowledges that Araki discloses an exemplary duration of one
second, but asserts that Araki refers more generally to the duration as a “set
time interval” or a “prescribed time interval.” See id. (citing Ex. 1005
¶¶ 23, 24, claims 1, 4, 6, 7, 9). Petitioner asserts that it would have been
obvious that the interval could have been implemented using other values.
See id. (citing Ex. 1002 ¶ 121). Petitioner further acknowledges that the
claim limitation requires one or more configurable timing parameters, where
“configurable timing parameter” is described in the ’159 Patent as follows:
As used herein, the term “configurable timing parameters”
refers to time parameters used by the adaptive recording
application for comparison with the duration of activation of an
interface element to enable the adaptive recording application to
select one of the communication modes for recording the media
message.
Ex. 1001, 3:35–40; see Pet. 21–22. Petitioner asserts the combination of
Newman and Araki teaches a set time interval or prescribed time interval
(e.g., one second) which corresponds to a configurable timing parameter
consistent with the ’159 Patent description. See Pet. 22 (citing Ex. 1005
¶¶ 23, 24).

IPR2020-00820
Patent 9,930,159 B2
40
Petitioner further asserts that if the word “configurable” incorporates a
further requirement that the time parameter “can be set and changed by the
application,” consistent with Petitioner’s litigation position, Newman and
Araki do not teach this limitation as more narrowly construed. See Pet. 22.
Petitioner asserts that this limitation, as more narrowly construed, would be
obvious in view of the teachings of Trewin. See id.
Petitioner contends that Trewin teaches a technique for setting and
changing parameters associated with input devices to improve the
performance and control of the device according to the needs of a user. See
Pet. 23 (citing Ex. 1007, 3:43–52; Ex. 1002 ¶ 106). Petitioner asserts that
Trewin discloses the delay before a keyboard starts to repeat can be
configured, e.g., pressing a letter key on a keyboard quickly causes only one
letter to appear, but holding down the letter key for a given duration will
cause the letter to repeat. See id. (citing Ex. 1007, 5:11–13). Petitioner
asserts that Trewin’s key repeat delay (KRD) is analogous to the teachings
of Araki because, like Araki’s microphone button, a key in Trewin can have
two different behaviors based on how long the key is held down. See id.
(citing Ex. 1002 ¶ 108). Petitioner points out that Trewin generally discloses
the ability to configure and customize the repeat delay value based on the
needs of the particular user. See id. (quoting Ex. 1007, 1:41–42). According
to Petitioner, “[a]lthough Trewin’s discussion of the KRD focuses on
physical keyboards, Trewin explains that its techniques are broadly
‘applicable to any control device that can be configured via software, and
not necessarily one composed of physical buttons.’” Id. at 24 (citing
Ex. 1007, 2:41–43, 13:23–28; Ex. 1002 ¶¶ 102 n.1, 108)

IPR2020-00820
Patent 9,930,159 B2
41
For the purpose of this Decision and based on Petitioner’s citations to
Newman, Araki, and Mr. Schmandt’s supporting testimony (Ex. 1002), we
are persuaded Petitioner sets forth sufficient articulated reasoning with
rational underpinning to support the conclusion that it would have been
obvious to one of ordinary skill in the art to modify the combined teachings
of Newman and Araki in view of Trewin’s teachings such that the set or
prescribed timing parameter (e.g., one second) was capable of being set and
changed by the application in order “to allow the application to adapt to the
needs of the specific user” and “best suit the needs and capabilities of the
user, thus resulting in more accurate recording.” Pet. 24–26 (citing Ex. 1002
¶¶ 109–114); see KSR, 550 U.S. at 418. In particular, Petitioner contends
that “[a] skilled artisan would have appreciated that the amount of delay
required by the user to properly utilize a single button/multiple function
element . . . may vary from one user to the next, as users often have varying
visual capabilities, motor skills, and reaction times based on their age,
experience, familiarity with the application, and many other factors.” See id.
at 25 (citing Ex. 1002 ¶ 111). In support of its arguments, Petitioner directs
attention to Trewin’s disclosure that users with disabilities or novice users
may have difficulty with single button/multiple function user interface
elements because of inadvertently activating the “long press” repeat
functionality. See id. (quoting Ex. 1007, 1:36–39). Petitioner further asserts
that the ability of the user to configure timing parameters of input devices
was a well-known feature of the Microsoft Windows and Apple Macintosh
operating systems since at least the 1990s, and that, by 2011, it was known
to provide configurability of the “tap and hold delay” parameter for
touchscreen mobile devices. See id. at 25–26 (citing Ex. 1002 ¶ 110).

IPR2020-00820
Patent 9,930,159 B2
42
Patent Owner does not address the construction of “configurable
timing parameters,” nor does Patent Owner dispute Petitioner’s assertions
that the combination of Newman, Araki, and Trewin teaches this limitation
of claim 1. See generally Prelim. Resp. Nonetheless, the burden remains on
Petitioner to demonstrate unpatentability. See Dynamic Drinkware, 800
F.3d at 1378.
Based on the current record, regardless of whether the preamble is
limiting, we are persuaded Petitioner has shown adequately for the purpose
of institution that the combined teachings of Newman and Araki teach
“comparing said duration of said activation of said interface element with
one or more configurable timing parameters by said application,” as recited
in claim 1.
(e) selecting in response to said detection of said activation of said interface
element, one of a plurality of communication modes by said application
based on said comparison of said duration of said activation of said
interface element with one or more configurable timing parameters.
Petitioner asserts that the combination of Newman and Araki
discloses or renders obvious implementing Newman’s application to select
between either a push-to-talk (PTT) or a tap-to-start (TTS) communication
mode based on comparing the duration of the activation of the “reply”
button or “respond” button to a timing parameter such as 1 second. See
Pet. 26–27 (citing Ex. 1005 ¶¶ 69–71, Fig. 5; incorporating by reference
Pet. 21–23). Petitioner further asserts that modifying the combination of
Newman and Araki in view of the teachings of Trewin would have resulted
in a configurable timing parameter that would be compared to the duration
of pressing the “reply” button or “respond” button in order to select the

IPR2020-00820
Patent 9,930,159 B2
43
communication mode. See id. at 27–28 (incorporating by reference
Pet. 17–21).
Patent Owner argues that neither Newman nor Araki teaches or
discloses a “communication mode” and a “plurality of communication
modes for recording said media message by said adaptive recording
application.” See Prelim. Resp. 29. According to Patent Owner, “Petitioner
states that the ’159 Patent describes the ‘communication mode’ as a ‘mode
for initiating and terminating recording of a media message on a
communication device.’” Id. at 29–30 (quoting Pet. 27). Patent Owner
contends, therefore, the ability to record a media message is required by
each mode. See id. at 30. Patent Owner argues that Newman alone is
deficient for teaching the ability to record, and Petitioner does not argue that
Newman teaches or discloses an application with multiple modes. See id.
(citing Pet. 14–15).
Patent Owner contends that Petitioner incorrectly characterizes Araki
as teaching a button that causes recording. See Prelim. Resp. 30 (citing
Pet. 27). Patent Owner asserts that Petitioner cites to paragraphs 41, 46, 69,
70, and 71 of Araki, but none of these paragraphs teach or suggest that
depressing a button causes recording, and therefore none of these paragraphs
teach or suggest that depressing a button causes communication or
recording. See id. at 30–31 Patent Owner argues that paragraphs 41, 46,
69–71 of Araki discloses only speech recognition and automatic translating.
See id. at 30–31 (quoting Ex. 1005 ¶ 71; citing Ex. 1005 ¶¶ 41, 46, 69–71).
Patent Owner argues that, in Araki, storage of sound is performed by a
completely different mechanism including a reusable buffer that is not
affected by any buttons or interface elements, and where the alleged

IPR2020-00820
Patent 9,930,159 B2
44
recording is constant and performed in a single mode. See id. at 32–35
(reproducing Ex. 1005, Figs. 2, 4; citing Ex. 1005 ¶¶ 54, 58, 66).
Patent Owner also contends that Newman does not disclose an option
to select between push-to-talk or tap-to-start recording mode. See Prelim.
Resp. 36. Patent Owner points out that Newman states that in Figures 4a-4e
the device is operating only in the second mode. See id. (quoting Ex. 1003,
10:50–51). Patent Owner further argues that Araki does not disclose the use
of two communication modes with respect to recording because Araki does
not disclose a recording device, any initiation or termination of recording,
and any purported recording in a buffer begins before a duration time is
determined. See id. (citing Pet. 27; Ex. 1005 ¶¶ 66, 69–71, Fig. 5).
According to Patent Owner, “Araki’s single storage mode, which includes
only a temporary buffer storing speech segments, is incompatible with
recording media, such as voice or video” because “Araki[’s] algorithm cuts
out silence.” Id. at 37; see id. at 36–37 (citing Ex. 1005 ¶ 66, Fig. 5).
We do not agree with Patent Owner’s arguments. Patent Owner’s
arguments are misplaced and address the teachings of Newman alone and
Araki alone instead of addressing the combined teachings of Newman in
view of Araki, as proposed by Petitioner. One cannot show non-obviousness
by attacking references individually. See In re Merck, 800 F.2d at 1097.
Contrary to Patent Owner’s arguments, Petitioner does not rely on Newman
alone for teaching an option to select between push-to-talk and tap-to-start
modes and does not rely on the teachings of Araki alone to disclose
recording or a recording application. Rather, we understand Petitioner to
propose modifying Newman’s recording application to include Araki’s
teachings of selecting between push-to-talk and tap-to-start modes based on

IPR2020-00820
Patent 9,930,159 B2
45
a comparison of the duration of the activation time to a timing parameter.
See Pet. 17–21, 26–28.
(f) Proposed Reasons to Combine
Patent Owner also argues there is no motivation to combine Newman
with Araki because, according to Patent Owner, Petitioner’s motivations
“are conclusory and do not set forth a well-reasoned rationale.” Prelim.
Resp. 40. Patent Owner contends that Petitioner does not address
disclosures of Newman and Araki that would be impediments to the
combination, specifically, that Newman is focused on giving a user limited
input, and not on providing a user multiple modes of interaction. See id.
Patent Owner points out that the user only has one option available in the
second mode to reply to the incoming message, but in a first mode has
several options. See id. (quoting Ex. 1003, 9:41–42, 10:9–13). According to
Patent Owner, “the purpose of Newman is to lower power by having limited
interaction, and Petitioner provides no reasoning or rationale that would
motivate one of skill in the art to increase the capabilities of the limited user
interaction to allow for two more modes of media recording which would
increase power consumption.” Id.
We do not agree with Patent Owner’s arguments. Patent Owner’s
argument that Newman provides only a single option for replying to a
message while the portable electronic device is operating in a second mode
of intermediate functionality and allows only limited input compared to a
first mode that allows a user several options (i.e., reply, forward, delete,
archive, etc.) is not germane to Petitioner’s proposed modification.
Petitioner’s proposed modification of Newman in view of Araki would
enable Newman’s recording application operating in the mode of

IPR2020-00820
Patent 9,930,159 B2
46
intermediate functionality and limited input to operate using two modes for
recording a voice message––i.e., tap-to-talk and push-to-start. In any event,
we note that Newman discloses that the portable electronic device operating
in a mode of limited input operates by activating the device to record by
receiving the locked user interaction of a user holding the respond button
(i.e., push-to-start), and also that it is envisaged that the portable electronic
device may operate by activating the device to begin recording based on a
first touch and end recording based on a second touch (i.e., touch to start).
See Ex. 1003, 10:50–11:12.
(g) Objective Indicia of Non-Obviousness
Patent Owner contends that Petitioner’s failure to address secondary
considerations should result in denial of the Petition. See Prelim.
Resp. 10, 41. According to Patent Owner, Petitioner fails to address
secondary considerations of commercial success and unexpected results
“despite the fact that Patent Owner disclosed that it intended to rely on
secondary considerations in the District Court litigation.” Id. at 10. Patent
Owner points out that “[i]n the parallel district court proceeding, Patent
Owner provided responses to interrogatories that directed Petitioner to its
own financial documents and positive reviews of the Accused Products
identified in Patent Owner’s infringement contentions, i.e. the Snapchat
App.” Id.; see id. at 41 (Ex. 2006, 10). Patent Owner further argues that
statements made by Petitioner in its SEC filings, marketing documents,
Petitioner’s patent filings, and before the Office during an interference
indicate strong secondary considerations of nonobviousness, and call into
question the veracity of statements made by Petitioner. See id. at 10.

IPR2020-00820
Patent 9,930,159 B2
47
More specifically, Patent Owner argues that Petitioner had already
conceded during prosecution of the Spiegel Patent that a timing parameter is
not taught by the prior art when it acquiesced to the Examiner’s statement of
the reasons for allowance and permitted the application to issue. See id.
at 16 (reproducing Ex. 2001, Oct. 2012 reasons for allowance 4; Ex. 2003,
Nov. 2017 reasons for allowance 2). Patent Owner contends that Petitioner
adopted and advocated for this position during interference proceedings
involving the Spiegel Patent. See id. at 16–17 (quoting Ex. 2015, 20; citing
Ex. 2015, 6, 19–24). Patent Owner contends that Petitioner’s statements
should be viewed as binding party admissions and should weigh heavily in
favor of a finding of nonobviousness. See id. at 17 (quoting Ex. 2004, 89).
Patent Owner further asserts that Petitioner’s Spiegel Patent demonstrates
long-felt need and non-obviousness of nearly the same claimed subject
matter as that of the ’159 Patent. See id. at 42 (citing Ex. 2002, 1:12–19; Ex.
2001, Oct. 2012 reasons for allowance 4); see also id. at 14 (arguing that
Spiegel solves the same problem as the ’159 Patent; reproducing Ex. 2002,
Fig. 2, Ex. 1001, Fig. 2; quoting Ex. 2002, 1:14–18).
Patent Owner further argues that Petitioner’s SEC filings include
statements touting the features claimed in the ’159 Patent and the later-filed
Spiegel Patent and depict an increase in commercial success immediately
after the Spiegel Patent was filed. See id. at 17–19 (reproducing
Ex. 2004, 91 (graph); quoting Ex. 2004, 89); 425 (citing Ex. 2004, 89;
Ex. 2014 ¶ 33)). According to Patent Owner, Petitioner’s “SEC filings
support a finding of nonobviousness because Petitioner has provided a direct
correlation between the success of its product and the implementation of the
features claimed in the ’159 Patent.” Id. at 19.

IPR2020-00820
Patent 9,930,159 B2
48
Patent Owner also argues that Petitioner has received industry praise
touting the features of its patents as well as the features accused of
infringement in the parallel District Court proceeding and claimed in
the ’159 Patent. See Prelim. Resp. 20 (quoting Ex. 2005, 2; citing
Ex. 2005); see also id. at 42 (similar argument).
For objective indicia of nonobviousness to be accorded substantial
weight, its proponent must establish a nexus between the evidence and the
merits of the claimed invention. ClassCo, Inc. v. Apple, Inc., 838 F.3d 1214,
1220 (Fed. Cir. 2016). “[T]here is no nexus unless the evidence presented is
‘reasonably commensurate with the scope of the claims.’” Id. (quoting
Rambus Inc. v. Rea, 731 F.3d 1248, 1257 (Fed. Cir. 2013)). A patentee is
entitled to a presumption of nexus “when the patentee shows that the
asserted objective evidence is tied to a specific product and that product
‘embodies the claimed features, and is coextensive with them.’” Fox
Factory, Inc. v. SRAM, LLC, 944 F.3d 1366, 1373 (Fed. Cir. 2019) (quoting
Polaris Indus., Inc. v. Arctic Cat, Inc., 882 F.3d 1056, 1072 (Fed. Cir. 2018)
(quoting Brown & Williamson Tobacco Corp. v. Philip Morris Inc.,
229 F.3d 1120, 1130 (Fed. Cir. 2000))). “[T]he purpose of the
coextensiveness requirement is to ensure that nexus is only presumed when
the product tied to the evidence of secondary considerations ‘is the invention
disclosed and claimed.’” Id. at 1374 (quoting Demaco Corp. v. F. Von
Langsdorff Licensing Ltd., 851 F.2d 1387, 1392 (Fed. Cir. 1988)). “[T]he
degree of correspondence between a product and the patent claim falls along
a spectrum. At one end of the spectrum lies perfect or near perfect
correspondence. At the other end lies no or very little correspondence.” Id.
“A patent claim is not coextensive with a product that includes a ‘critical’

IPR2020-00820
Patent 9,930,159 B2
49
unclaimed feature that is claimed by a different patent and that materially
impacts the product's functionality.” Id. at 1375.
We have considered Patent Owner’s evidence and arguments, but we
find it insufficiently developed at this stage of the proceeding to have
sufficient weight to preclude a determination that Petitioner demonstrates a
reasonable likelihood of success on this challenge to patentability. For
example, at this stage of the proceeding and based on the current record,
Patent Owner does provide analysis demonstrating sufficiently that
Petitioner’s alleged infringing products (i.e., Snapchat App) and/or products
covered by the Spiegel Patent are coextensive with the challenged claims.
Therefore, at this stage of the proceeding, we determine that a presumption
of nexus would be inappropriate. “A finding that a presumption of nexus is
inappropriate does not end the inquiry into secondary considerations,”
because a patent owner “is still afforded an opportunity to prove nexus by
showing that the evidence of secondary considerations is the ‘direct result of
the unique characteristics of the claimed invention.’” Fox Factory, 944 F.3d
at 1373–75 (quoting In re Huang, 100 F.3d 135, 140 (Fed. Cir. 1996)).
Accordingly, we invite the parties to further address the alleged evidence of
objective indicia of non-obviousness during the trial.
(h) Summary
For all of the foregoing reasons, for the purpose of this Decision and
based on the record before us, there is a reasonable likelihood Petitioner
would prevail in showing claim 1 is unpatentable under 35 U.S.C. § 103
over Newman, Araki, and Trewin.

IPR2020-00820
Patent 9,930,159 B2
50
Independent Claim 20
Petitioner asserts that most of the limitations of independent claim 20
are substantively identical to the limitations of claim 1. See Pet. 32 (citing
Ex. 1002 ¶ 136). Petitioner notes that, different from claim 1, claim 20
recites “critical time configured by said adaptive recording application.” See
id. Petitioner contends that the configurable timing parameter taught by and
obvious over Newman, Araki, and Trewin corresponds to the “critical time.”
See id. (incorporating by reference Pet. 30–31). Patent Owner further asserts
that “said adaptive recording application” lacks antecedent basis in claim 20
and, therefore, refers to the earlier recited “application.” See id. Patent
Owner contends that “adaptive recording application” refers to the same
“application” recited in claim 1. See id (citing Ex. 1002 ¶ 139).
Petitioner argues that, to the extent claim 20 requires an “adaptive
recording application,” this is disclosed by and obvious over Newman and
Araki alone, or in further combination with Trewin. See Pet. 33. Petitioner
points out that “adaptive recording application is described in the ’159
Patent generally as an application that changes its manner of recording
without requiring manual intervention. See id. (quoting Ex. 1001, 5:39–46;
citing Ex. 1001, 11:60–67). Specifically, Petitioner asserts that “Newman’s
application, as adapted based on Araki’s teachings, . . . would have
predictably resulted in Newman’s application automatically adapting its
manner of recording voice messages (e.g., tap-to-start or push-to-talk) based
on the duration of time that a button was pressed, and without requiring user
intervention.” Id. at 33. Petitioner also asserts the combination with Trewin
to automatically adapt one or more timing parameters would have provided
an additional way for automatically and more precisely adapting the

IPR2020-00820
Patent 9,930,159 B2
51
application’s behavior to a user’s intent when interacting with Newman’s
reply button or respond button. See id. at 33–34.
Patent Owner does not address substantively the limitations of
claim 20 and Petitioner’s contentions regarding claim 20. See generally
Prelim. Resp. Nonetheless, the burden remains on Petitioner to demonstrate
unpatentability. See Dynamic Drinkware, 800 F.3d at 1378.
For these reasons and for the same reasons as those explained above
for claim 1, for the purpose of this Decision and based on the record before
us, there is a reasonable likelihood Petitioner would prevail in showing
independent claim 20 is unpatentable under 35 U.S.C. § 103 over Newman,
Araki, and Trewin.
Independent Claim 24
Claim 24 recites similar limitations as those recited in independent
claims 1 and 20, in the form of a system that includes a processor, a non-
transitory computer readable storage medium, and several modules. See
Pet. 35–41; compare Ex. 1001, 29:19–30:3 (claim 1), with Ex. 1001,
27:9–23 (claim 1), and 28:62–29:4 (claim 20). Claim 24 also recites a mode
selection module configured to select one of a plurality of communication
modes “based on one or a combination of: said comparison of said duration
of said activation of said interface element with said one or more
configurable timing parameters; and a determination of one of a presence
and an absence of a media signal during and/or after said activation of said
interface element.” See Ex. 1001, 29:19–30. Petitioner asserts that because
claim 24 only requires that the selection of a communication mode is based
on one of the recited options, and does not require selecting a
communication mode based on the presence or absence of a media signal,

IPR2020-00820
Patent 9,930,159 B2
52
the combination of Newman, Araki, and Trewin disclose and render obvious
the claimed selection based only on “said comparison of said duration of
said activation of said interface element with one or more configurable
timing parameters.” See Pet. 41. Petitioner also asserts that similar to
claim 20, claim 24 recites “said adaptive recording application” without
antecedent basis. See id. at 38. Petitioner contends that “said adaptive
recording application” refers to the “application” recited earlier in claim 24.
See id. (citing Ex. 1003 ¶ 156). Petitioner contends that, for the same
reasons as those addressing claim 20, to the extent claim 24 requires an
“adaptive recording application” it is disclosed by and obvious over
Newman and Araki alone, or in further combination with Trewin. See id.
at 37–38 (citing Ex. 1002 ¶ 157).
We have reviewed Petitioner’s contentions and supporting evidence
addressing how Newman, Araki, and Trewin, as combined by Petitioner,
teach or suggest the limitations of independent claim 24. See Pet. 35–41.
Patent Owner does not address substantively the limitations of independent
claim 24 and Petitioner’s contentions regarding claim 24. See generally
Prelim. Resp. Nonetheless, the burden remains on Petitioner to demonstrate
unpatentability. See Dynamic Drinkware, 800 F.3d at 1378.
For the same reasons as those addressed above for claims 1 and 20,
for the purpose of this Decision and based on the record before us, there is a
reasonable likelihood Petitioner would prevail in showing independent
claim 24 is unpatentable under 35 U.S.C. § 103 over Newman, Araki, and
Trewin.

IPR2020-00820
Patent 9,930,159 B2
53
Independent Claim 25
Claim 25 recites similar limitations as those recited in independent
claim 24, but utilizes the term “computer program code” in place of
“module” recited in claim 24. See Pet. 41–43; compare Ex. 1001, 30:26–41
(claim 25), with Ex. 1001, 29:19–30:3 (claim 24). We have reviewed
Petitioner’s contentions and supporting evidence addressing how Newman,
Araki, and Trewin, as combined by Petitioner, teach or suggest the
limitations of independent claim 25, including the recited “computer
program code.” See Pet. 41–43. Patent Owner does not address
substantively the limitations of claim 25 and Petitioner’s contentions
regarding claim 25. See generally Prelim. Resp. Nonetheless, the burden
remains on Petitioner to demonstrate unpatentability. See Dynamic
Drinkware, 800 F.3d at 1378.
For the same reasons as those addressed above for claims 1, 20
and 24, for the purpose of this Decision and based on the record before us,
there is a reasonable likelihood Petitioner would prevail in showing
independent claim 25 is unpatentable under 35 U.S.C. § 103 over Newman,
Araki, and Trewin.
Dependent Claims 3–7, 21 and 23
Claims 3–7 depend ultimately from claim 1, and claims 21 and 23
depend from independent claim 20. Ex. 1001, 27:27–54, 29:5–7, 29:12–17.
We have reviewed Petitioner’s contentions and supporting evidence
addressing how the combination of Newman, Araki, and Trewin teach or
suggest the additional limitations recited in dependent claims 3–7, 21,
and 23. See Pet. 28–32, 33–35 (citations omitted).

IPR2020-00820
Patent 9,930,159 B2
54
Patent Owner does not address substantively the limitations of
dependent claims 3–7, 21, and 23 and Petitioner’s contentions addressing
these claims. See generally Prelim. Resp. Nonetheless, the burden remains
on Petitioner to demonstrate unpatentability. See Dynamic Drinkware,
800 F.3d at 1378.
For the purpose of this Decision and based on the record before us,
Petitioner establishes sufficiently that the combination of Newman, Araki,
and Trewin teaches or suggests each of the additional limitations recited in
dependent claims 3–7, 21, and 23.
e. Summary
For all of the foregoing reasons, for the purpose of this Decision, and
based on the current record before us, we determine there is a reasonable
likelihood Petitioner would prevail in showing claims 1, 3–7, 20, 21,
and 23–25 are unpatentable under 35 U.S.C. § 103 over Newman, Araki, and
Trewin.
2. Proposed Unpatentability of Claims 8–12 over Newman, Araki, Trewin,
and Ronkainen
a. Overview of Ronkainen (Ex. 1006)
Ronkainen discloses a device and method of using a single button
instead of multiple buttons to accomplish more than one functionality, where
a long press of a button is used to perform a different function from a short
press of the button. See Ex. 1006, 1:12–15, 2: 26–27, 2:36–39. The
invention includes describing for the user one of a plurality of possible
alternative actions that can be caused by a button that is currently being
operated. See id. at 2:26–30, 2:39–40. Users are often unaware of their
options, especially when a function is rarely used. See id. at 1:48–49.

IPR2020-00820
Patent 9,930,159 B2
55
The device includes a button and a sensor for sensing when the button
is pressed. See id. at 4:59–61, Fig. 2. The sensor reports both the pressing
of the button and the release of the button to a timer, which passes the
information to a processing unit. See id. at 4:61–64, Fig. 2. The processing
unit also controls a user display and the means for making the functions
occur depending on when the button is released. See id. at 4:64–5:3, Fig. 2.
Figure 1 of Ronkainen is reproduced below.
Figure 1 depicts a flowchart of a method for providing information regarding
operation of a button on a device. See Ex. 1006, 4:3–4, 4:12–14. When a
user presses the button, the device senses the button is pressed in step 105.
See id. at 4:16–17. In step 110, the device provides information to the user
during operation of the button that indicates a first action that the device can
perform if the button were to be immediately released. See id. at 4:17–21.
If the user immediately releases the button in step 120, the first action is

IPR2020-00820
Patent 9,930,159 B2
56
performed in step 115. See id. If the button is not immediately released by
the user in step 120, in step 125 the display shows to the user a second action
that will be later available by releasing the button. See id. at 4:21–24. If the
button is released in step 130 before the second action becomes available,
the first action is performed in step 115. See id. at 4:24–25. If the button is
not released in step 130, an indication is provided in step 135 notifying the
user that the second action is now available. See id. at 4:25–27. If the user
releases the button in step 140 after the second action becomes available, the
second action is performed in step 145. See id. at 4:27–29. The user may
decide at step 140 not to release the button and instead wait for another
action or actions become available. See id. at 4:29–31. The user may hasten
the availability of another action in step 146, for example, by exerting extra
pressure on the button. See id. at 4:32–33. The other action can optionally
be a no-action function in step 150, or optionally be the first action 110. See
id. at 4:34–36. Instead of waiting for a no-action function in step 150, it is
also possible for the user to release the button, while avoiding any actions,
by making a sound if the device is capable of audio recognition. See id.
at 4:39–42. The user has the option to skip to the next functionality without
having to wait for a time-out by pressing the button with extra pressure or
saying a word, such as “skip,” if the device has audio recognition capability.
See id. at 3:26–3:32.
b. Analysis
For the purpose of this Decision and based on Petitioner’s identified
disclosures of Newman, Araki, Trewin, Ronkainen, and Mr. Schmandt’s
supporting testimony (Ex. 1002), we are persuaded for the reasons provided
below that Petitioner establishes sufficiently that the combination of

IPR2020-00820
Patent 9,930,159 B2
57
Newman, Araki, Trewin, and Ronkainen teaches or suggests all of the
limitations recited in dependent claims 8–12.
Dependent Claim 8
Claim 8 depends from claim 1 and further recites:
wherein said one or more configurable timing parameters
comprise a lower threshold time and an upper threshold time,
and wherein said comparison of said duration of said activation
of said interface element with said one or more configurable
timing parameters by said application comprises comparing
said duration of said activation of said interface element with
said lower threshold time and said upper threshold time.
Ex. 1001, 27:55–63.
For the purpose of this Decision and based on the record before us,
Petitioner establishes sufficiently that the combination of Newman, Araki,
Trewin, and Ronkainen teaches and renders obvious the additional
limitations recited in dependent claim 8. Petitioner asserts that the
combination of Newman, Araki, and Trewin teach a configurable timing
parameter in the form of a duration of time (e.g., one second) used to
determine whether to select a push-to-talk mode or a tap-to-start mode. See
Pet. 43 (incorporating by reference Pet. 17–21). Petitioner contends that the
duration of the timing parameter could also be configured using Trewin’s
techniques based on the user’s interaction with Newman’s application
button. See id. Petitioner implicitly acknowledges that the combination of
Newman, Araki, and Trewin does not teach two configurable timing
parameters, a lower threshold time, and an upper threshold time, as required
by dependent claim 8. See id. at 43–44. Petitioner asserts that Ronkainen
teaches a lower threshold time and an upper threshold time based on
Ronkainen’s disclosure of a time duration associated with a quick button

IPR2020-00820
Patent 9,930,159 B2
58
press and release (e.g., the time between steps 105 and 120 in Figure 1) and
a time duration associated with a time-out of “short-press functionality”
(e.g., after the time between steps 105 and 134 in Figure 1 has elapsed). See
id. at 44–46 (reproducing Ex. 1006, Fig. 1 (with annotations); quoting
Ex. 1006, 2:42–45, 2:48–50; citing Ex. 1006, 3:15–18, 4:60–5:3, 5:12–25;
Ex. 1002 ¶ 181).
For the purpose of this Decision and based on Petitioner’s citations to
Newman, Araki, Trewin, Ronkainen and Mr. Schmandt’s supporting
testimony (Ex. 1002), we are persuaded Petitioner sets forth sufficient
articulated reasoning with rational underpinning to support the conclusion
that it would have been obvious to one of ordinary skill in the art to modify
the combined teachings of Newman, Araki, and Trewin to include a lower
threshold time and upper threshold time, as taught by Ronkainen such that
Newman’s communication device, as modified to include the single-button
tap-to-start and push-to-talk teachings of Araki, would initiate a tap-to-start
communication mode in response to a quick tap (e.g., under 100 ms) of the
respond button or initiate a push-to-talk communication mode in response to
pressing the respond button for a longer duration (e.g., 1 second or longer) in
order to provide multiple functions for a single button and during an
intermediate time interval inform the user what will happen if the button
continues to be pressed (i.e., push-to-talk recording mode). See Pet. 47–49
(quoting Ex. 1006, 1:27–31, 1:40–48, 3:1–7; citing Ex. 1005 ¶ 25; Ex. 1002
¶¶ 183–187). Petitioner reproduces Ronkainen’s explanation that the
utilization of a few buttons on a limited interface is enhanced by separating a
short press of a button from a longer duration press. See id. at 48–49
(quoting Ex. 1006, 1:27–31). Petitioner further reproduces Ronkainen’s

IPR2020-00820
Patent 9,930,159 B2
59
explanation that when the function resulting from a long key press is not
obvious, or is a hidden feature of the interface, the feature may be left
unused or the user may have to guess what will happen. See id. at 49
(quoting Ex. 1006, 1:40–48). Petitioner also reproduces Ronkainen’s
explanation that the long-press presentation give information about what the
extra functionality is, which can be important in user interfaces where it is
unclear what happens, and which can happen in some cases when the button
count is extremely limited (e.g. only one button). See id. (quoting Ex. 1006,
3:1–7). Petitioner contends that the concerns expressed in Ronkainen are
echoed in Araki, which discusses issues when a user may not understand
how the recording button operates. See id. (citing Ex. 1005 ¶ 25).
Patent Owner does not address substantively the limitations of
dependent claim 8 and Petitioner’s contentions regarding claim 8. See
generally Prelim. Resp. Nonetheless, the burden remains on Petitioner to
demonstrate unpatentability. See Dynamic Drinkware, 800 F.3d at 1378.
For the foregoing reasons and for the same reasons as those explained
above in Section II.F.1.d with respect to claim 1, for the purpose of this
Decision and based on the record before us, there is a reasonable likelihood
Petitioner would prevail in showing dependent claim 8 is unpatentable under
35 U.S.C. § 103 over Newman, Araki, Trewin, and Ronkainen.
Dependent Claims 9–12
Claims 9–12 depend from claim 8, and ultimately depend from
claim 1. We have reviewed Petitioner’s additional contentions and
supporting evidence addressing how the combination of Newman, Araki,
Trewin, and Ronkainen teaches and renders obvious the additional
limitations recited in dependent claims 9–12. See Pet. 53–56 (citations

IPR2020-00820
Patent 9,930,159 B2
60
omitted). Patent Owner does not substantively address the limitations of
dependent claims 9–12. See generally Prelim. Resp. Nonetheless, the
burden remains on Petitioner to demonstrate unpatentability. See Dynamic
Drinkware, 800 F.3d at 1378.
For the purpose of this Decision and based on the record before us,
Petitioner establishes sufficiently that the combination of Newman, Araki,
Trewin, and Ronkainen teaches or suggests each of the additional limitations
recited in dependent claims 9–12.
c. Summary
For all of the foregoing reasons, for the purpose of this Decision, and
based on the current record before us, we determine there is a reasonable
likelihood Petitioner would prevail in showing dependent claims 8–12 are
unpatentable under 35 U.S.C. § 103 over Newman, Araki, Trewin, and
Ronkainen.
3. Proposed Unpatentability of Claims 13–17, 19, and 26 over
Newman, Araki, and Ronkainen
a. Analysis
For the purpose of this Decision and based on Petitioner’s identified
disclosures of Newman, Araki, Ronkainen, and Mr. Schmandt’s supporting
testimony (Ex. 1002), we are persuaded for the reasons provided below that
Petitioner establishes sufficiently that the combination of Newman, Araki,
and Ronkainen teaches or suggests all of the limitations recited in
independent claims 13 and 26, and claims 14–17, and 19 which depend from
claim 13.

IPR2020-00820
Patent 9,930,159 B2
61
Independent Claim 13
(a) A computer implemented method for determining
a communication mode, comprising:
Petitioner contends that, to the extent the preamble is limiting, the
recited method is taught by, or obvious over Newman, Araki, and
Ronkainen, as explained with respect to the limitations recited in the body of
claim 13. See Pet. 56. Patent Owner does not dispute Petitioner’s assertions
addressing the preamble. See generally Prelim. Resp. Nonetheless, the
burden remains on Petitioner to demonstrate unpatentability. See Dynamic
Drinkware, 800 F.3d at 1378. Based on the current record, regardless of
whether the preamble is limiting, we are persuaded Petitioner has shown
adequately for the purpose of institution that the combined prior art discloses
a computer implemented method for determining a communication mode, as
recited in claim 13.
(b) detecting activation of an interface element by an application on a
communication device;
Petitioner asserts that Newman, teaches this limitation for the same
reasons as those addressed by Petitioner with respect to the identical
limitations of claim 1. See Pet. 56–57 	Patent Owner does not dispute
Petitioner’s assertions addressing these limitations. See generally Prelim.
Resp. Nonetheless, the burden remains on Petitioner to demonstrate
unpatentability. See Dynamic Drinkware, 800 F.3d at 1378.

IPR2020-00820
Patent 9,930,159 B2
62
(c) determining by said application, using an input device of
said communication device, one of a presence and an absence of
a media signal in proximity of said communication device,
during and/or after said activation of said interface element; and
(d) selecting, in response to said detection of said activation of
said interface element, one of a plurality of communication modes
by said application based on said determination of said one of
said presence and said absence of said media signal.
Petitioner acknowledges implicitly that Newman and Araki do not
teach determining the presence or absence of a media signal in proximity of
said communication device during and/or after user interface activation and,
in response to detecting user interface activation, selecting a communication
mode based on the determination of the presence or absence of the media
signal. See Pet. 56–58. Petitioner incorporates by reference its analysis for
claims 1, 8, 10, and 11. See id. (citing Ex. 1002 ¶¶ 214, 217). Petitioner
points out that both Newman and Araki disclose communication devices
with microphones. See id. at 57 (citing Ex. 1003, 10:50–55, 12:10–17;
Ex. 1005 ¶¶ 50–51, Fig. 1:3). Petitioner asserts that Ronkainen discloses a
microphone input device used to input the voice of a user in close proximity
to the communication device. See id. (quoting Ex. 1006, 3:32–33, 6:33–34)
Petitioner further asserts that Ronkainen teaches a skipping effect that allows
a user to skip to the long press functionality without having to wait for the
time out interval for the current function using audio recognition capability
to monitor for audio input. See id. at 50–51 (citing Ex. 1006 3:27–33,
6:29–34 (claims 6 and 7); see also id. 55 (“Ronkainen discloses a ‘skipping
effect’ that uses audio recognition (i.e., ‘a presence…of a media signal’) to
skip-to a second function before a time-out associated with a first function
elapses.”).

IPR2020-00820
Patent 9,930,159 B2
63
For the purpose of this Decision and based on Petitioner’s citations to
Newman, Araki, Ronkainen, and Mr. Schmandt’s supporting testimony
(Ex. 1002), we are persuaded Petitioner sets forth sufficient articulated
reasoning with rational underpinning to support the conclusion that it would
have been obvious to one of ordinary skill in the art to modify the combined
teachings of Newman, and Araki to include determining the presence or
absence of a media signal and selecting a communication mode based on the
presence or absence of a media signal, as taught by Ronkainen in order to
“allow[] brief messages to be retained, by detecting the input of voice as an
immediate indication to skip to the push-to-talk (PTT) mode.” Pet. 51
(citing Ex. 1002 ¶ 188); see KSR, 550 U.S. at 418. Petitioner points out that
in the tap-to-start (TTS) mode of Araki, in which the user presses and holds
the microphone only for a short duration, the message recording does not
begin until after the button is released. See id. at 50 (citing Ex. 1005 ¶ 71).
Petitioner asserts that this creates a potential problem for recording brief
voice messages, where the application interprets the user’s action as a short
press and activates the tap-to-start mode, where the recording begins only
after the button is released, thereby disregarding the brief message provided
by the user. See id. (citing Ex. 1002 ¶ 188). According to Petitioner:
a skilled artisan would have recognized that Ronkainen’s
technique would have improved Araki’s technique of selecting
tap-to-start or push-to-talk by helping to resolve the usability
issues that Araki expressly recognized, and would further
Araki’s goal of “‘determin[ing] more appropriately the starting
position and ending position of speech recognition, even when
the timing with which the user presses the microphone button is
inaccurate.”
Id. at 51–52 (quoting Ex. 1005 ¶ 89; citing Ex. 1002 ¶ 189).

IPR2020-00820
Patent 9,930,159 B2
64
Patent Owner does not dispute Petitioner’s contentions addressing the
limitations of independent claim 13 that are not also recited in claim 1. See
Prelim. Resp. 21–33. Nonetheless, the burden remains on Petitioner to
demonstrate unpatentability. See Dynamic Drinkware, 800 F.3d at 1378.
For the same reasons as those explained above with respect to claim 1,
Patent Owner’s arguments regarding evidence of secondary considerations
are insufficiently developed at this stage of the proceeding to have sufficient
weight to preclude a determination that Petitioner demonstrates a reasonable
likelihood of success on this challenge to patentability.
(e) Summary
For all of the foregoing reasons, for the purpose of this Decision and
based on the record before us, there is a reasonable likelihood Petitioner
would prevail in showing claim 13 is unpatentable under 35 U.S.C. § 103
over Newman, Araki, and Ronkainen.
Independent Claim 26
Petitioner asserts that the limitations of independent claim 26 are
substantially identical to the limitations of claim 13. See Pet. 63 (citing
Ex. 1002 ¶¶ 230–231). Petitioner asserts that claim 26 recites determining
“presence and an absence of a media signal input into said communication
device,” whereas claim 13 recites determining “presence and an absence of a
media signal in proximity of said communication device.” See id. Petitioner
contends that these differences in claim limitations are not meaningful
because a skilled artisan would have understood that the media signal of
Ronkainen would be input into the device. See id. (citing Ex. 1002 ¶ 232).

IPR2020-00820
Patent 9,930,159 B2
65
We have reviewed Petitioner’s contentions and supporting evidence
addressing how Newman, Araki, and Ronkainen, as combined by Petitioner,
teach or suggest the limitations of independent claim 26. See Pet. 63.
Moreover, Patent Owner does not address substantively the limitations of
independent claim 26 and Petitioner’s contentions regarding claim 26. See
generally Prelim. Resp. Nonetheless, the burden remains on Petitioner to
demonstrate unpatentability. See Dynamic Drinkware, 800 F.3d at 1378.
For the same reasons as those addressed above for claim 13, for the
purpose of this Decision and based on the record before us, there is a
reasonable likelihood Petitioner would prevail in showing independent
claim 26 is unpatentable under 35 U.S.C. § 103 over Newman, Araki, and
Ronkainen.
Dependent Claims 14–17 and 19
Claims 14–17 and 19 depend from independent claim 13. Ex. 1001,
28:35–52, 28:57–61. We have reviewed Petitioner’s contentions and
supporting evidence addressing how the combination of Newman, Araki,
and Ronkainen teach or suggest the additional limitations recited in
dependent claims 14–17 and 19. See Pet. 58–63 (citations omitted). Patent
Owner does not substantively address the limitations of dependent
claims 14–17 and 19 and Petitioner’s contentions addressing these claims.
See generally Prelim. Resp. Nonetheless, the burden remains on Petitioner
to demonstrate unpatentability. See Dynamic Drinkware, 800 F.3d at 1378.
For the purpose of this Decision and based on the record before us,
Petitioner establishes sufficiently that the combination of Newman, Araki,
and Trewin teaches or suggests each of the additional limitations recited in
dependent claims 14–17 and 19.

IPR2020-00820
Patent 9,930,159 B2
66
b. Summary
For all of the foregoing reasons, for the purpose of this Decision, and
based on the current record before us, we determine there is a reasonable
likelihood Petitioner would prevail in showing independent claims 13 and 26
and dependent claims 14–17 and 19 are unpatentable under 35 U.S.C. § 103
over Newman, Araki, and Ronkainen.
III. CONCLUSION
For the foregoing reasons, we determine there is a reasonable
likelihood that Petitioner would prevail in showing at least one of the
challenged claims of the ’159 Patent is unpatentable. Additionally, we
decline to exercise our discretion under 35 U.S.C. §§ 314(a), 325(d) to deny
either of the proposed challenges to patentability.
Our factual findings, conclusions of law, and determinations at this
stage of the proceeding are preliminary, and based on the evidentiary record
developed thus far. At this stage of the proceeding, the Board has not made
a final determination as to the patentability of any challenged claim. Our
final decision will be based on the record as fully developed during trial.
IV. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that, pursuant to 35 U.S.C. § 314(a), an inter partes
review of claims 1, 3–17, 19–21, and 23–26 of the ’159 Patent is instituted
with respect to all challenges to patentability set forth in the Petition; and
FURTHER ORDERED that pursuant to 35 U.S.C. § 314(c) and
37 C.F.R. § 42.4(b), inter partes review of the ’159 Patent shall commence

IPR2020-00820
Patent 9,930,159 B2
67
on the entry date of this Order, and notice is hereby given of the institution
of a trial.

IPR2020-00820
Patent 9,930,159 B2
68
PETITIONER:
Heidi Keefe
Andrew Mace
COOLEY LLP
hkeefe@cooley.com
amace@cooley.com
PATENT OWNER:
Vincent J. Rubino, III
Peter Lambrianakos
Enrique W. Iturralde
FABRICANT LLP
vrubino@fabricantllp.com
plambrianakos@fabricantllp.com
eiturralde@fabricantllp.com
Jialin Zhong
ZHONG LAW, LLC
zhong@zhong-law.com