LiTL LLC

Patent Trials and Appeals Board

Nov 2, 2021

IPR2021-00800 (P.T.A.B. Nov. 2, 2021)

Trials@uspto.gov Paper 7
Tel: 571-272-7822 Date: November 2, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

LENOVO (UNITED STATES) INC.,
Petitioner,

v.

LITL LLC,
Patent Owner.

IPR2021-00800
Patent 10,289,154 B2

Before KRISTINA M. KALAN, CHRISTOPHER M. KAISER,
and BRIAN D. RANGE, Administrative Patent Judges.

KAISER, Administrative Patent Judge.

DECISION
Denying Institution of Inter Partes Review
35 U.S.C. § 314

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INTRODUCTION
A. Background
Lenovo (United States) Inc. (“Petitioner”) filed a Petition (Paper 1,
“Pet.”) requesting an inter partes review of claims 1–20 of U.S. Patent
No. 10,289,154 B2 (Ex. 1001, “the ’154 patent”). LiTL LLC (“Patent
Owner”) filed a Preliminary Response. Paper 6 (“Prelim. Resp.”).
We have authority to determine whether to institute an inter partes
review. 35 U.S.C. § 314(b); 37 C.F.R. § 42.4(a) (2020). The standard for
instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which
provides that an inter partes review may not be instituted unless “there is a
reasonable likelihood that the petitioner would prevail with respect to at
least 1 of the claims challenged in the petition.”
After considering the Petition, the Preliminary Response, and the
evidence of record, we determine that Petitioner has not demonstrated a
reasonable likelihood that it would prevail with respect to at least one
challenged claim. Accordingly, we do not institute an inter partes review of
any challenged claim on any asserted ground.
B. Related Matters
The parties identify LiTL LLC v. Lenovo (United States), Inc., No.
1:20-cv-00689 (D. Del.), as a matter related to the present proceeding.
Pet. 2; Paper 5, 1. Patent Owner also notes that there are several related
inter partes review proceedings: IPR2021-00681, IPR2021-00786,
IPR2021-00821, and IPR2021-00822. Paper 5, 2.
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C. The Asserted Grounds of Unpatentability
Petitioner contends that claims 1–20 of the ’154 patent are
unpatentable based on the following grounds (Pet. 39–97):1
Claims Challenged 35 U.S.C. §2 References/Basis
1–8 103 Shimura,3 Tsuji,4 Tonouchi5
9, 10 103 Shimura, Tsuji, Tonouchi, Pogue6
11–16, 20 103 Shimura, Tsuji, Tonouchi, Ryuuzaki7
17–19 103 Shimura, Tsuji, Tonouchi, Ryuuzaki, Kawai,8 Pogue
D. The ’154 Patent
The ’154 patent, titled “Portable Computer with Multiple Display
Configurations,” issued on May 14, 2019. Ex. 1001, codes (45), (54). The

1 Petitioner also relies on a declaration from Jean Renard Ward. Ex. 1011.
2 The earliest priority date claimed by the ’154 patent is April 1, 2008.
Ex. 1001, codes (22), (60), (63). Because Patent Owner does not challenge
the effective filing date of the application leading to the ’154 patent on the
present record, we presume that the ’154 patent has an effective filing date
before March 16, 2013. Accordingly, patentability is governed by the
versions of 35 U.S.C. §§ 102 and 103 that were in force before they were
amended by the Leahy-Smith America Invents Act (“AIA”), Pub. L.
No. 112–29, 125 Stat. 284 (2011).
3 JP 1994-242853 A, published September 2, 1994 (Ex. 1003) (certified
English translation provided as Ex. 1004).
4 US 2005/0062715 A1, published Mar. 24, 2005 (Ex. 1005).
5 US 2005/0122318 A1, published June 9, 2005 (Ex. 1006).
6 DAVID POGUE, WINDOWS XP HOME EDITION: THE MISSING MANUAL (2d
ed. Dec. 2004) (Ex. 1007).
7 US 6,449,146 B1, issued Sept. 10, 2002 (Ex. 1008).
8 JP 2005-168036 A, published June 23, 2005 (Ex. 1009) (certified English
translation provided as Ex. 1010).
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patent relates to a “portable computer that is configurable between a
plurality of display modes.” Id. at code (57). According to the ’154 patent,
“[c]onventional portable computers most commonly have a ‘clam-shell’
configuration, with a base including the keyboard, various ports, connectors
and/or inputs . . . and a display component pivotably coupled to the base by
a hinge.” Id. at 1:45–52. Conventional computers sometimes “operat[e] in
‘tablet mode,’” and the ’154 patent also describes existing computers that
were “capable of operating either as a normal laptop computer receiving user
input via a keyboard (‘laptop mode’), or as a tablet computer receiving user
input via a touch screen.” Id. at 1:56–65. In this latter case, “the display
component of the computer is attached to the base of the computer by hinges
that allow the display to be tilted relative to the base (for laptop mode), and
to be rotated and folded against the base to configure the computer into
tablet mode.” Id. at 1:65–2:3.
The ’154 patent builds on these configurations, describing “a portable
computer” that “is configurable between various modes, including a closed
mode, a laptop mode, an easel mode, a flat mode, and a frame mode.” Id.
at 2:44–47. Each of these modes is depicted in a figure of the ’154 patent.
Id. at 5:1–6:6. Figure 1, reproduced below, shows the laptop mode.
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Figure 1 depicts the portable computer of the ’154 patent in laptop mode.
Id. at 6:61–64. Display component 102 is “inclined at a viewing angle from
the base 104.” Id. at 6:64–65.
Figure 2, reproduced below, shows the closed mode.

Figure 2 depicts the portable computer of the ’154 patent in closed mode.
Id. at 7:33–34. The angle between display component 102 and base 104 is
zero, and “the display screen is disposed ‘face down’ against the keyboard of
the base 104.” Id. at 7:35–38.
Figure 4, reproduced below, shows the easel mode.
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Figure 4 depicts the portable computer of the ’154 patent in the easel mode.
Id. at 8:18–19. “[B]ase 104 and the display component 102 form an inverted
‘V’ shape with the bottom of the base and the back of the display component
fac[ing one] another.” Id. at 8:19–28.
Figure 26, reproduced below, shows the frame mode.

Figure 26 depicts the portable computer of the ’154 patent in the frame
mode. Id. at 16:58–60. In this mode, display component 102 and base 104
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are separated by a similar angle 134 as in the easel mode, but “the portable
computer is placed on a surface 212 with the keyboard 106 ‘face down’ . . .
and the display 110 facing upward,” rather than being placed in the “inverted
‘V’” of the easel mode. Id. at 16:60–17:4.
Figure 27, reproduced below, shows the flat mode.

Figure 27 depicts the portable computer of the ’154 patent in the flat mode.
Id. at 17:9–11. Display component 102 and base 104 are “rotated (or
opened) to approximately 180 degrees with respect to” one another, “such
that the base component and display component lay flat on a surface, with
the keyboard 106 and display screen 110 exposed.” Id. at 17:11–16.
In some of these display modes, the ’154 patent describes rotating the
information displayed on display screen 110 “such that the information
appears ‘right-way-up,’ even though the display screen is upside-down
compared to when the portable computer is in the laptop mode.” Id. at 8:44–
49. The portable computer may “include[] an orientation (or mode) sensor
that is configured to detect whether the portable computer is in the laptop
mode or the easel mode, and to adjust the display accordingly.” Id. at 8:54–
58. In addition, in some modes, the portable computer of the ’154 patent
may be configured to permit a user to rotate the information displayed
manually by 90 or 180 degrees. Id. at 17:19–43.
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E. Illustrative Claim
Claims 1–20 of the ’154 patent are challenged. Claims 1, 11, and 20
are independent, and claim 1 is illustrative; it recites:
1. A portable computer configurable between a
plurality of display modes comprising a first mode and
a second mode, the portable computer comprising:
a display component comprising a display screen;
a base comprising a keyboard and a touchpad;
hinge assembly that rotatably couples the base to
the display component, the hinge assembly
being configured to permit the display
component to rotate relative to the base up to at
least 270 degrees from a closed position where
the display screen faces the keyboard;
an orientation sensor configured to generate
orientation information indicative of an
orientation of at least part of the portable
computer; and
a display manager configured to detect a current
display mode from among the plurality of
display modes based at least in part on the
orientation information and enlarge at least
some computer content displayed on the display
screen when the current display mode
transitions from the first mode to the second
mode;
wherein the display component is in a first position
relative to the base in the first mode; and
wherein the display component is in a second
position relative to the base that is different
from the first position in the second mode.
Ex. 1001, 18:2–24.
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ANALYSIS
A. Procedural Defects
A petition for inter partes review must “identif[y], in writing and with
particularity, each claim challenged, the grounds on which the challenge to
each claim is based, and the evidence that supports the grounds for the
challenge to each claim.” 35 U.S.C. § 312(a)(3). According to 37 C.F.R.
§ 42.104(b)(4), a petition for inter partes review “must identify how the
construed claim is unpatentable under the statutory grounds on which the
petitioner challenges the claims, and must specify where each element of the
claim is found in the prior art patents or printed publications relied upon.”
Rule 42.104(b)(5) adds that the Petition must “identify[] specific portions of
the evidence that support the challenge.” Similarly, Rule 42.22(a)(2) states
that each petition must include “[a] full statement of the reasons for the relief
requested, including a detailed explanation of the significance of the
evidence including material facts, and the governing law, rules, and
precedent.” The Patent Trial Practice Guide suggests that “parties should
avoid submitting a repository of all the information that a judge could
possibly consider, and instead focus on concise, well-organized, easy-to-
follow arguments supported by readily identifiable evidence of record.”
Patent Trial and Appeal Board Consolidated Trial Practice Guide, available
at https://www.uspto.gov/TrialPracticeGuideConsolidated (Nov. 14, 2019),
at 39. Patent Owner argues that the Petition fails to comply with each of
these requirements with respect to each of the asserted grounds. Prelim.
Resp. 10–29. For the reasons discussed below, we determine that the
Petition fails to comply with our requirements.
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1. The Petition Fails to Identify the Portions of the Challenged
Claims Being Discussed, Creating a Lack of Clarity
The Petition is drafted in such a way as to make it effectively
impossible to follow unless we ignore our rule against incorporation by
reference. The arguments in the Petition rely extensively on abbreviations
for the limitations of the ’154 patent’s claims, such as [1pre], [11e2], and
[20f]. Pet. 39–97. There is no way to understand many of Petitioner’s
arguments without an understanding of the meaning of these abbreviations,
see, e.g., id. at 83 (arguing that “[t]he Shimura-Tsuji combination discloses
[11e2] and renders it obvious,” without defining what “[11e2]” means), and
the Petition does not define them. Id. at 1–97. The Petition directs the
reader instead to Exhibit 1013 for the definitions of these abbreviations. Id.
at 14 (“EX-1013 is a claim listing that enumerates each claim element.”).
But “[a]rguments must not be incorporated by reference from one document
into another document.” 37 C.F.R. § 42.6(a)(3). Although the mere
abbreviation of claim language does not violate our rules, Petitioner’s failure
to define its abbreviations within the Petition violates Rule 42.6(a)(3).
Even if we were to ignore our rule against incorporation by reference
and refer to Exhibit 1013 to determine what each abbreviation means each
time it appears in the Petition, we still would be unable to understand the
Petition’s arguments with respect to more than half of the challenged claims.
Petitioner’s claim listing divides claim 11 into twelve portions, each with an
abbreviation. Ex. 1013, 2–3. But the Petition divides claim 11 into fourteen
portions, including two portions whose abbreviations are undefined
anywhere in the record that Petitioner directs us, even in Exhibit 1013.
Pet. 77–84. We could perhaps overlook this discrepancy if the Petition itself
were clear about the meaning of each abbreviation, but, as just discussed, it
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is not. In the absence of such clarity, we are left to speculate, in violation of
Rules 42.22(a) and 42.104(b), exactly what claim language makes up each
of the limitations Petitioner argues the prior art teaches or suggests. This
problem affects not just claim 11, but also claims 4 and 20. Compare
Pet. 64–66 (discussing limitations [4a] and [4b]), with Ex. 1013, 2 (failing to
define limitations [4a] or [4b]); compare Pet. 91 (discussing limitations
[20e3] and [20e4]) with; Ex. 1013, 4–6 (failing to define limitations [20e3]
or [20e4]). Because this problem prevents Petitioner from carrying its
burden with respect to claims 4, 11, and 20, it also prevents Petitioner from
carrying its burden with respect to any claims that depend from those claims.
37 C.F.R. § 1.75(c) (“Claims in dependent form shall be construed to
include all the limitations of the claim incorporated by reference into the
dependent claim.”). Accordingly, we determine that Petitioner has not
shown a reasonable likelihood of prevailing with respect to claims 4, 5,
or 11–20. Ex. 1001, 18:43–44 (claim 5 depending from claim 4), 19:26–
20:5 (claims 12–19 depending from claim 11).
2. The Structure of the Petition Exacerbates the Lack of Clarity
The Petition’s lack of clarity is compounded by the way Petitioner
presents its unpatentability arguments. The Petition’s unpatentability
analysis begins with a synopsis of each reference, describing what Petitioner
contends the references relied upon in the Petition generally disclose.
Pet. 23–39 (§§ VIII.A.1–VIII.A.7). These sections paraphrase the disclosure
of the references, and they include figures that add annotations to the figures
of the references, as well as some citations to the Ward Declaration,
rendering these sections less a summary of the prior art than an opportunity
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for Petitioner to annotate the art so that it becomes what Petitioner wants it
to be. Id.
Next, each of the Petition’s four asserted grounds begins with a
section describing a hypothetical computer that a person of ordinary skill in
the art allegedly would have arrived at by combining the teachings of the
references asserted in that particular ground. Id. at 39–54, 70–72, 74–77,
92–94 (§§ VIII.B.1–VIII.B.2, VIII.C.1, VIII.D.1–VIII.D.2, VIII.E.1); see
also Ex. 1014 (describing the hypothetical computers of each asserted
ground).9 These sections rely heavily on the Ward Declaration, cite to
multiple portions of the references in question, and contain further
characterizations of the disclosure of the references, including figures with
added annotations. Pet. 39–54, 70–72, 74–77, 92–94. They also rely on
references back to earlier sections of the Petition. Id.
Finally, each asserted ground in the Petition presents a list of the
limitations of the challenged claims with some discussion of how the prior
art in question teaches or suggests those limitations. Id. at 54–70, 72–74,
77–92, 94–97 (§§ VIII.B.3–VIII.B.10, VIII.C.2–VIII.C.3, VIII.D.3–
VIII.D.9, VIII.E.2–VIII.E.4). For support, these sections refer extensively
back to, and rely extensively upon, the previously discussed sections of the
Petition, which often refer back to and rely upon even earlier portions of the
Petition, and so on. Id. Thus, Petitioner’s unpatentability analysis relies on
the description of a set of hypothetical computers relying, in part, on
Petitioner’s descriptions and characterizations of the teachings of the prior

9 To the extent Petitioner intends to rely on the content of Exhibit 1014 for a
clear description of the hypothetical computers it uses in its arguments, that
constitutes incorporation by reference in violation of 37 C.F.R. § 42.6(a)(3).
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art. The result of all these layers of analysis and argument is that the final
unpatentability analysis is two or three levels removed from the actual
disclosure of the references. Petitioner’s approach completely blurs the line
between the actual teachings of each asserted reference, Petitioner’s
modifications to those teachings, and Petitioner’s characterizations of those
teachings.
The Petition’s analysis of limitation [20e1] is a good example of the
nested nature of the cross-references. In alleging that “[t]he Shimura-Tsuji
combination discloses [20e1] and renders it obvious” and “[t]he Shimura-
Tsuji Computer discloses the function and corresponding structure of the
means-plus-function limitation ‘display manager’ recited in [20e1], or its
equivalents,” the Petition cites to three earlier sections. Pet. 91 (citing Pet.
§§ VI.B.1, VIII.B.3.f, VIII.D.9.a).
These three earlier sections cover pages 13–14,10 60, 86, and 9111 of
the Petition, a span of five pages. In addition, some of the cited sections
themselves cite other portions of the Petition. Id. at 60 (§ VIII.B.3.f, citing
Pet. §§ VI.B.1, VIII.B.3.h), 86 (§ VIII.D.9.a (discussing [20pre]), citing Pet.
§§ VI.A.1, VIII.B.3.a, VIII.B.6.a, VIII.B.6.b), 91 (§ VIII.D.9.a (discussing
[20e2]), citing Pet. §§ VI.B.1, VIII.D.3.a; § VIII.D.9.a (discussing [20e3]),

10 As discussed more fully below, Petitioner cites to § VI.B.1, but § VI.B
lacks further subdivision, so we treat this citation as referring to § VI.B.
Pet. 12–13.
11 As discussed more fully below, Petitioner cites to § VIII.D.9.a, but there
are three separate portions of the Petition each labeled § VIII.D.9.a. Pet. 86
(discussing limitation [20pre]), 91 (separate sections discussing limitations
[20e2] and [20e3]). We have no way of determining which of these sections
Petitioner intended to cite, so we treat this citation as referring to all three
sections.
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citing Pet. §§ VI.B.1, VIII.D.3.b). All told, the material cited on page 91 of
the Petition, together with the material cited in that cited material, covers
fourteen sections of the Petition12 spanning twenty pages,13 none of which
expressly discusses the language of limitation [20e1] or how the prior art
teaches or suggests that language. This approach of forcing the reader to
follow a web of nested cross-references to find Petitioner’s arguments
improperly shifts the burden of deciphering Petitioner’s arguments onto
Patent Owner and the Board. See Apple Inc. v. ContentGuard Holdings,
Inc., IPR2015-00442, Paper 9 at 5–10 (PTAB July 13, 2015).
3. The Petition’s Internal Cross-References Often Are
Nonexistent or Ambiguous
As noted above, the Petition often cites to earlier portions of the
Petition, and the portions cited sometimes do not exist at all and sometimes
exist in multiple separate locations. Although we noted above a handful of
occurrences of these problems, these are not isolated instances. See supra
nn. 10–13. A citation to a nonexistent or ambiguous portion of the Petition
occurs in the Petition’s discussion of nearly every limitation of every
challenged claim. In most cases, these citations are to nonexistent sections
VI.A.1, VI.A.2, VI.B.1, or VI.B.2. Pet. 54, 56–67, 69, 74, 77–80, 82–87,
89–92, 96. Other nonexistent sections to which the Petition cites include
sections V.A, V.D, V.E, VI.A.4, VI.A.5, VI.A.6, VI.C.1, VI.D.1, VI.D.2,
and VI.E.1. Id. at 72–74, 78–79, 81, 84–85, 87–89, 92–97. The citation of

12 As discussed more fully below, cited sections VIII.D.3.a and VIII.D.3.b
are each present twice. Pet. 77, 83.
13 As discussed more fully below, cited sections VI.A.1 and VI.B.1 do not
exist because sections VI.A and VI.B are not subdivided.
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these nonexistent sections of the Petition makes it even more difficult to
evaluate the merits of Petitioner’s arguments. In addition, the Petition cites
to section VIII.D.3.a and VIII.D.3.b, each of which appears twice, and
section VII.D.9.a, which appears three times. Id. at 83, 86–87, 89–91.
Given the ambiguity in the citations to these sections, it is impossible to
evaluate the merits of Petitioner’s arguments. Because these citation
problems affect Petitioner’s arguments for each of the challenged claims, we
determine that Petitioner has not shown a reasonable likelihood of prevailing
with respect to any challenged claim.
4. The Ward Declaration Contributes to the Petition’s Lack of
Clarity
As in ContentGuard, the problem of nested citations here is not
limited to the Petition. The Ward Declaration also makes use of the same
type of internal cross-references. For example, in arguing that the prior art
teaches or suggests limitation [20e1], the Petition cites to paragraph 327 of
the Ward Declaration. Pet. 91 (citing Ex. 1011 ¶ 327). That paragraph,
however, cites to three additional sections of the declaration, comprising
twenty-one paragraphs, for support. Ex. 1011 ¶ 327 (citing Ex. 1011
§§ VIII.A.1, [1e1], [20pre]). Those twenty-one paragraphs themselves cite
an additional six sections of the Ward declaration that comprise twenty-three
paragraphs. Id. ¶¶ 226–228 (citing id. §§ [1d], VI.A), 309 (citing id.
§§ VII.A, [1pre], [4a], [4b]). Thus, even ignoring the fact that these
additional sections cite even more additional sections and the possibility that
those further additional sections might themselves cite still more, the single
paragraph of the Ward declaration Petitioner cites expands to a total of forty-
five paragraphs. Most concerning in our review of these forty-five
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paragraphs is that none of them expressly discusses how the prior art teaches
or suggests the language of limitation [20e1].
Similar nested citations from the declaration to other large portions of
the declaration plague Ward’s discussion of many of the challenged claims.
See, e.g., Ex. 1011 ¶¶ 284 (discussing limitation [11b1] and citing Ex. 1011
¶¶ 189–205, 217–218, 282–283), 344–349 (discussing claim 18 and citing
Ex. 1011 ¶¶ 157–162, 170–177, 206–214, 224–225, 238–249, 262–272,
333–343).
In most cases, the material the Petition cites in the Ward Declaration,
together with the other portions of the declaration cited therein, is far more
extensive than any argument present in the Petition. See, e.g., Pet. 78 (two
lines of argument regarding limitation [11b1], relying on testimony
appearing on twenty pages of Ward Declaration), 91 (four lines of argument
regarding limitation [20e1], relying on testimony appearing on thirty-five
pages of Ward Declaration), 95–96 (two pages of argument regarding claim
18, relying on testimony appearing on forty-two pages of Ward Declaration).
This incorporation by reference also contributes to the deficiency of the
Petition. See 37 C.F.R. § 42.6(a)(3).
5. The Petition’s Analysis of Many of the Challenged Claims is
Largely Conclusory
As noted above, the Petition’s discussion of nearly every limitation
relies upon earlier portions of the Petition (usually in a nested fashion) to
identify the evidence that allegedly supports Petitioner’s unpatentability
arguments. See, e.g., id. at 78 (citing Pet. §§ VI.B.1, VIII.B.3.b, VIII.D.3.b),
91 (citing Pet. §§ VI.B.1, VIII.B.3.f, VIII.D.9.a), 95–96 (citing Pet. §§ V.A,
V.E, VI.B.1.b, VI.B.2, VI.C.1, VI.E.1, VIII.B.3.h, VIII.B.5, VIII.B.6.a,
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VIII.B.6.b, VIII.C.2, VIII.E.2). Some of these sections also contain text
explaining Petitioner’s argument that the prior art teaches or suggests the
limitation in question, along with citations directly to the relevant prior art.
See, e.g., id. at 95–96 (citing Ex. 1007, 264). Most of these sections,
however, do not contain this type of argument, opting instead for conclusory
statements that a particular reference or the hypothetical combination of
references discloses the limitation in question, referring the reader to earlier
portions of the Petition for any relevant argument. See, e.g., id. at 78 (“The
Shimura-Tsuji combination discloses [11b1] and renders it obvious.”), 91
(“The Shimura-Tsuji combination discloses [20e1] and renders it obvious.
The Shimura-Tsuji Computer discloses the function and corresponding
structure of the means-plus-function limitation ‘display manager’ recited in
[20e1], or its equivalents.”). This latter type of argument is particularly
problematic because it shifts an even greater portion of the burden of
deciphering Petitioner’s arguments onto Patent Owner and the Board. For
these limitations, Petitioner provides no argument at all, requiring Patent
Owner or the Board to sift through multiple lengthy sections of the Petition
even to determine what argument Petitioner intends to make. This problem
affects Petitioner’s arguments with respect to claims 2, 4, 11–16, 19, and 20.
Pet. 62, 64–66, 77–92, 96–97. In addition, claims 3, 5, 17, and 18 depend
from one or more of claims 2, 4, 11–16, 19, and 20, so this problem affects
these additional claims as well. Accordingly, we determine that Petitioner
has not shown a reasonable likelihood of prevailing with respect to claims
2–5 or 11–20.
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6. Conclusion
As explained above, the Petition provides deficient arguments that fail
to explain Petitioner’s positions fully. Where the Petition provides some
explanation, it often does so only through a web of internal cross-references
that require the reader to engage in extensive analysis just to decipher what
is being argued, much less evaluate the merits of that argument. For nearly
every limitation of every claim, the Petition makes internal cross-references
that are either dead-end citations to portions of the Petition that do not exist
at all or ambiguous citations to portions of the Petition that exist in multiple
locations.
Although it might be possible for us to guess at the support Petitioner
intended to cite and to wade through the Petition to separate the teachings of
the references, the Ward testimony, Petitioner’s characterizations of the
evidence, and Petitioner’s arguments, that is not our role. Rather, Petitioner
is required to “specify where each element of the claim is found in the prior
art patents or printed publications relied upon” and to both “identify[]
specific portions of the evidence that support the challenge” and explain “the
relevance of [that] evidence to the challenge raised.” 37 C.F.R.
§ 42.104(b)(4)–(5); see also id. § 42.22(a)(2) (petitions “must include . . . [a]
full statement of the reasons for the relief requested, including a detailed
explanation of the significance of the evidence”). Petitioner has not
complied with our rules. To hold otherwise would require us to “play
archaeologist with the record,” which we decline to do. DeSilva v.
DiLeonardi, 181 F.3d 865, 866–67 (7th Cir. 1999).
Based on all these deficiencies, the Petition fails to specify
sufficiently where the limitations of the challenged claims of the ’154 patent
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are taught or suggested by any of the asserted references. It also fails to
provide a sufficiently detailed explanation of the significance of the citations
to the asserted references and the Ward Declaration. These failures violate
the requirements of 35 U.S.C. § 312(a)(3), 37 C.F.R. § 42.22(a)(2), and
37 C.F.R. § 42.104(b)(4)–(5). Because these requirements must be met to
show that “there is a reasonable likelihood that the petitioner would prevail
with respect to at least 1 of the claims challenged in the petition” under
35 U.S.C. § 314(a), we determine that Petitioner has not made such a
showing.
B. Remaining Arguments
Petitioner presents arguments for the construction of some claim
terms, and Patent Owner disagrees with some of those arguments. Pet. 14–
23; Prelim. Resp. 33–40. Petitioner and Patent Owner also present
arguments on the merits of each of Petitioner’s four asserted grounds of
unpatentability. Pet. 39–97; Prelim. Resp. 40–60. Because we determine
that the Petition does not satisfy the requirements of 35 U.S.C. § 312(a)(3),
37 C.F.R. § 42.22(a)(2), and 37 C.F.R. § 42.104(b)(4)–(5), we need not
evaluate these arguments.
CONCLUSION
Upon consideration of the Petition, the Preliminary Response, and the
evidence presented, we determine that Petitioner has not shown a reasonable
likelihood that it will prevail in showing that at least one of the challenged
claims is unpatentable. Accordingly, we do not institute an inter partes
review of any challenged claim based on any ground asserted in the Petition.

IPR2021-00800
Patent 10,289,154 B2

20
ORDER
It is hereby
ORDERED that, pursuant to 35 U.S.C. § 314, the Petition is denied,
and no inter partes review is instituted.

IPR2021-00800
Patent 10,289,154 B2

21
For PETITIONER:
Martin Bader
Nam Kim
Mike Kim
SHEPPARD, MULLIN, RICHTER & HAMPTON LLP
LegalTm-LNV-LTL@sheppardmullin.com

For PATENT OWNER:
Gerald B. Hrycyszyn
Richard F. Giunta
Jason Balich
WOLF GREENFIELD & SACKS, P.C.
GHrycyszyn-PTAB@WolfGreenfield.com
RGiunta-PTAB@WolfGreenfield.com
JBalich-PTAB@wolfgreenfield.com
WGS-Lenovov.LITL_IPR@wolfgreenfield.com