PTAB at IPR Institute
In Google LLC f/k/a Google Inc. c. Ikorongo Technology LLC et alIPR2021-00204, IPR2021-00205 (PTAB 25 January 2022) (Document 16), the Board granted the institution of Interparte Examination (DPI) of Ikorongo Technology LLC’s patent, following Google LLC’s timely request for rehearing. In its decision, the Board found that Google had provided sufficient evidence that a skilled craftsman would have been motivated to combine the prior art and would have had a reasonable expectation of success in doing so. The Board later determined that Google had demonstrated a reasonable likelihood of demonstrating that at least one of the disputed claims was obvious.
Google originally sought intellectual property rights for U.S. Patent No. 8,874,554 (the ‘554 patent) held by Ikorongo, alleging that several claims of the patent were obvious under 35 USC 103(a). The ‘554 patent generally relates to a system for identifying media items associated with a geographic area of interest to a user.
On June 7, 2021, the Board denied institution under 35 U.S.C § 314(a) because the ‘554 patent was the subject of parallel proceedings in pending district court in the Western District of Texas . Google filed a timely request for a rehearing with the Board, citing a recent order in which the Federal Circuit issued a writ of mandamus ordering the Western District of Texas to transfer pending cases to the District Court in the Northern District of Texas. California. In its application, Google argued that the business schedule in the Western District of Texas, which was considered in the board’s decision to initially deny establishment, would be rescinded as a result of the Federal Circuit’s order. .
After a wait of approximately 8 months, the Board agreed to rehear its decision, as proceedings in the Northern District of California would receive a new business schedule. The Commission then considered the application on the merits.
In its decision on the rehearing, the Board focused on two prior art references submitted, Horowitz and Kalasapur. Horowitz describes a system for presenting media items associated with a selected geographic area and the locations at which the media items were used. Kalasapur describes a system for generating playlists of media items based on user-content interactions and the context of those interactions.
Upon review, the Commission determined that Google had established a reasonable likelihood of demonstrating that the references taught various claim limits. Additionally, the Board found that Google was able to demonstrate that a skilled craftsman would be motivated, at the time of invention, to look to Kalasapur’s GPS tracking capability to implement the user’s device. Horowitz, with a reasonable expectation of success. . Thus, the board considered that Google had demonstrated a reasonable probability of demonstrating that at least one of the disputed allegations would have been obvious.
In short, after having initially received a denial of institution, Google then succeeded in showing that the roadblock prior to the institution of IPRs no longer applied. Thus, this decision is a good reminder for claimants to follow parallel litigation even after the denial, as there may still be opportunities for future success.
 Ikorongo currently has a writ of certiorari before the United States Supreme Court regarding the Federal Circuit transfer order.
© 2022 Finnegan, Henderson, Farabow, Garrett & Dunner, LLPNational Law Review, Volume XII, Number 45