`Trials@uspto.gov
`571-272-7822
`
`Date Entered: December 10, 2014
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`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SAMSUNG ELECTRONICS CO. LTD., SAMSUNG ELECTRONICS
`AMERICA, INC., SAMSUNG TELECOMMUNICATIONS AMERICA,
`LLC, and SAMSUNG AUSTIN SEMICONDUCTOR, LLC,
`Petitioner,
`
`v.
`
`REMBRANDT WIRELESS TECHNOLOGIES, LP,
`Patent Owner.
`____________
`
`Case IPR2014-00890
`Patent 8,457,228 B2
`____________
`
`
`Before JAMESON LEE, HOWARD B. BLANKENSHIP, and
`JUSTIN BUSCH, Administrative Patent Judges.
`
`
`BLANKENSHIP, Administrative Patent Judge.
`
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
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`
`I. BACKGROUND
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`
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`Samsung Electronics Co. Ltd., Samsung Electronics America, Inc.,
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`Samsung Telecommunications America, LLC, and Samsung Austin
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`IPR2014-00890
`Patent 8,457,228 B2
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`Semiconductor, LLC (collectively, “Petitioner”) request inter partes review
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`
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`of claims 22, 23, and 25 of U.S. Patent No. 8,457,228 B2 (“the ’228 patent”)
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`(Ex. 1101) under 35 U.S.C. §§ 311–319. Paper 2 (Petition, or “Pet.”).
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`Rembrandt Wireless Technologies, LP (Patent Owner) filed a preliminary
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`response (Paper 6, “Prelim. Resp.”) provided by 37 C.F.R. § 42.107. We
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`have jurisdiction under 35 U.S.C. § 314.
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`
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`For the reasons that follow, we do not institute an inter partes review
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`as to any of the challenged claims of the ’228 patent.
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`Related Proceeding
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`According to Petitioner, the ’228 patent is involved in the following
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`lawsuit: Rembrandt Wireless Technologies, LP v. Samsung Electronics
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`Company, No. 2:13-cv-00213 (E.D. Tex. 2013). Pet. 1. The ’228 patent has
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`also been challenged in the following cases: IPR2014–00889; IPR2014–
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`00891; IPR2014–00892; IPR2014–00893; and IPR2014–00895.
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`
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`The ’228 Patent
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`The ’228 patent issued from an application filed August 4, 2011,
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`which claimed priority, through a chain of intervening applications, under 35
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`U.S.C. § 120 to an application filed December 4, 1998, and which claimed
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`priority under 35 U.S.C. § 119 to a provisional application filed December 5,
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`1997.
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`The technical field of the patent relates to data communications and
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`modulators/demodulators (modems), and in particular to a data
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`communications system in which a plurality of modems use different types
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`2
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`IPR2014-00890
`Patent 8,457,228 B2
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`of modulation in a network. Ex. 1101, col. 1, ll. 21–25; col. 1, l. 58–col. 2, l.
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`23.
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`
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`Illustrative Claim
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`Claim 22 is illustrative.
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`22. A communication device configured to communicate
`according to a master/slave relationship in which a slave
`communication from a slave to a master occurs in response to a
`master communication from the master to the slave, the device
`comprising:
`a transceiver in the role of the master according to the
`master/slave relationship that is configured to send at least a
`plurality of communications, wherein each communication
`from among said plurality of communications comprises at
`least a respective first portion and a respective payload portion,
`wherein each communication from among said plurality of
`communications is addressed for an intended destination of the
`respective payload portion of that communication, and wherein
`for each communication from among said plurality of
`communications:
`said respective first portion is modulated according to a
`first modulation method from among at least two types of
`modulation methods, wherein the at least two types of
`modulation methods comprise the first modulation method and
`a second modulation method, wherein the second modulation
`method is of a different type than the first modulation method,
`said respective first portion comprises an indication of
`which of the first modulation method and the second
`modulation method is used for modulating respective payload
`data in the respective payload portion, and
`the payload data is modulated according to at least one of
`the first modulation method or the second modulation method
`in accordance with what is indicated by the respective first
`portion;
`the transceiver further configured to send at least a first
`communication of the plurality of communications such that
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`IPR2014-00890
`Patent 8,457,228 B2
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`payload data included in a payload portion of the first
`communication is modulated according to the second
`modulation method based on a first portion of the first
`communication indicating that the second modulation method
`will be used for modulating the payload data in the payload
`portion of the first communication, wherein the payload data is
`included in the first communication after the first portion of the
`first communication;
`the transceiver further configured to send at least a
`second communication of the plurality of communications such
`that payload data included in a payload portion of the second
`communication is modulated according to the first modulation
`method based on a first portion of the second communication
`indicating that the first modulation method will be used for
`modulating the payload data in the payload portion of the
`second communication.
`
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`Prior Art and Other Evidence Included with Petition
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`US 5,706,428
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`Jan. 6, 1998 (Ex. 1106)
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`
`
`Boer et al.
`(“Boer”)
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`IEEE P802.11, Draft Standard for Wireless LAN, Medium Access Control
`(MAC) and Physical Layer (PHY) Specification, P802.11D4.0, May 20,
`1996 (Ex. 1104) (“Draft Standard”)
`
`Declaration of Robert O’Hara, Mar. 11, 2014 (Ex. 1122).
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`
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`Asserted Grounds of Unpatentability
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`Petitioner asserts the following grounds of unpatentability (Pet. 2–3):
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`Evidence
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`
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`Basis (35 U.S.C.)
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`Claims
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`Draft Standard
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`Draft Standard and Boer
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`§ 102(b)/103(a)
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`§ 103(a)
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`22, 23, and 25
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`22, 23, and 25
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`IPR2014-00890
`Patent 8,457,228 B2
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`II. ANALYSIS
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`A. Asserted Anticipation and Obviousness Grounds Based on Draft
` Standard
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`
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`The dispositive issue in this proceeding is whether Draft Standard, on
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`which both of Petitioner’s asserted grounds of unpatentability rely, is a
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`printed publication.
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`
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`B. Overview of Draft Standard (Ex. 1104)
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`Draft Standard is an unapproved draft of a proposed IEEE (Institute of
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`Electrical and Electronics Engineers) Standard. Ex. 1104, i.1 The purpose
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`of the proposed standard was “[t]o provide wireless connectivity to
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`automatic machinery, equipment [, or] stations that require rapid
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`deployment, which may be portable, or hand-held or which may be mounted
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`on moving vehicles within a local area” and “[t]o offer a standard for use by
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`regulatory bodies to standardize access to one or more frequency bands for
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`the purpose of local area communication.” Id. at 1.
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`C. Declaration of Robert O’Hara (Ex. 1122)
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`Mr. Robert O’Hara was an editor of the IEEE 802.11-1997 standard.
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`Ex. 1122 ¶ 1; Ex. 1104, iii. Mr. O’Hara states that drafts of the 802.11-1997
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`standard, including Draft Standard, were available to members of the 802.11
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`Working Group for download from the 802.11 Working Group’s server. Ex.
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`1122 ¶ 9. According to Mr. O’Hara, announcements were sent to the
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`Working Group’s e-mail list when drafts became available, and a person
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`1 In this Decision, we refer to the original pagination of Draft Standard
`rather than the Exhibit page number.
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`Patent 8,457,228 B2
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`could be added to the Working Group’s e-mail list by providing an e-mail
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`address to the chair of the Working Group. Id. ¶¶ 9–10. Mr. O’Hara states
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`that there “were no restrictions on who could attend the 802.11 Working
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`Group’s meetings [or] on who could provide an e-mail address” and that,
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`according to his “recollection,” anyone who made a request to be added to
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`the e-mail list would be added. Id. ¶ 10.
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`Mr. O’Hara states that the copies of the drafts of the Standard
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`available on the Working Group’s servers were password-protected files,
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`and that the members of the e-mail list were provided with passwords to
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`access the documents, either as part of an announcement of a new draft or
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`via “another way.” Id. ¶ 11. According to Mr. O’Hara, the passwords were
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`intended to limit distribution to “interested individuals, as opposed to the
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`entire [I]nternet.” Id. Mr. O’Hara also states that attending an 802.11
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`Working Group meeting or asking for access prior to a meeting
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`demonstrated sufficient interest such that that person would receive the
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`password necessary to access the drafts on the Working Group’s server. Id.
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`Further, according to Mr. O’Hara, each of the 802.11 standard drafts,
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`including Draft Standard, would have been discussed at the Working Group
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`meetings and made available to all attendees. Id. ¶ 12. Mr. O’Hara also
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`states that the meetings were not limited to IEEE members but were open to
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`the general public. Id.
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`
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`D. Analysis of Whether Draft Standard Is a Printed Publication
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`We look to the underlying facts to make a legal determination as to
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`whether a document is a printed publication. Suffolk Techs., LLC v. AOL
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`Inc., 752 F.3d 1358, 1364 (Fed. Cir. 2014). The determination of whether a
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`document is a “printed publication” under 35 U.S.C. § 102(b) involves a
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`case-by-case inquiry into the facts and circumstances surrounding its
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`disclosure to members of the public. In re Klopfenstein, 380 F.3d 1345,
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`1350 (Fed. Cir. 2004). Public accessibility is a key question in determining
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`whether a document is a printed publication and is determined on a case-by-
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`case basis. Suffolk Techs., 752 F.3d at 1364. To qualify as a printed
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`publication, a document “must have been sufficiently accessible to the
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`public interested in the art.” In re Lister, 583 F.3d 1307, 1311 (Fed. Cir.
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`2009).
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`The O’Hara Declaration is the only extrinsic evidence that Petitioner
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`submits in support of its position that Draft Standard is a printed publication.
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`See Pet. 14–15. Petitioner asserts that Draft Standard “was completed on
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`May 20, 1996, and was available to anyone who wanted to view it on May
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`23, 1996.” Pet. 13–14 (citing Ex. 1122 ¶¶ 4, 5, 10, and 12) (emphasis
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`added). Petitioner indicates, initially, that this availability resulted in a
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`publication date of May 23, 1996. Pet. 14. Petitioner also argues that Draft
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`Standard “was available to any interested parties” no later than July 8, 1996,
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`because it “was available to all members of the 802.11 Working Group’s
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`email list” and discussed and distributed at an 802.11 Working Group
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`meeting held July 8–12, 1996. Id. at 14–15. Thus, Petitioner concludes that
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`this alleged distribution and availability to any interested parties by July 8,
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`1996 renders Draft Standard a “printed publication” under 35 U.S.C.
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`§ 102(b). Id. at 15.
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`Notably absent, however, from the Petition and Mr. O’Hara’s
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`declaration are any assertions or evidence in support of the availability of
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`Draft Standard to the public interested in the art. We do not find sufficient
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`Patent 8,457,228 B2
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`argument or evidence to indicate that the July 8–12 meeting of the 802.11
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`Working Group (or any other 802.11 Working Group meeting) was
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`advertised or otherwise announced to the public. Nor do we find sufficient
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`argument or evidence that any individual who was interested in the art
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`would have known about Draft Standard such that he or she would have
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`known to request a copy or ask to be added to an email list for access to the
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`document.
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`“A given reference is ‘publicly accessible’ upon a satisfactory
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`showing that such document has been disseminated or otherwise made
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`available to the extent that persons interested and ordinarily skilled in the
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`subject matter or art exercising reasonable diligence, can locate it.” SRI
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`Int’l, Inc. v. Internet Sec. Sys., Inc., 511 F.3d 1186, 1194 (Fed. Cir. 2008)
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`(quoting Bruckelmyer v. Ground Heaters, Inc., 445 F.3d 1374, 1378 (Fed.
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`Cir. 2006)). Although Mr. O’Hara declares that “[t]here were no restrictions
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`on who could attend the 802.11 Working Group’s meetings” (Ex. 1122 ¶ 10)
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`and that the meetings “were open to the general public” (id. ¶ 12), Petitioner
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`has not presented persuasive argument or evidence regarding how members
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`of the potentially interested public would have been made aware of these
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`meetings. Similarly, although Mr. O’Hara declares that an individual could
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`provide the chair with an e-mail address to be added to the Working Group’s
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`e-mail list (id. ¶ 10), the Petition has not established how an individual
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`would have known to attend a meeting or contact the chair in order to be
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`added to the e-mail list.
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`Based on the evidence before us, we find that the purpose of the
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`802.11 Working Group’s storage of drafts of the standard on a server is
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`similar to the placement of a file on an “FTP server solely to facilitate peer
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`review in preparation for later publication,” which the U.S. Court of Appeals
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`for the Federal Circuit found weighed against public accessibility of the file.
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`SRI Int’l, 511 F.3d at 1197. In SRI, even though the “paper was ‘posted’ on
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`an open FTP server and might have been available to anyone with FTP
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`know-how and knowledge of the” subdirectory in which it resided, the
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`Federal Circuit found the fact that the paper was not publicized suggested an
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`absence of public availability. Id. In this case, the submitted evidence does
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`not show that the 802.11 Working Group’s server was an open server and, to
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`the extent that it was, the evidence shows that the documents were password
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`protected. Ex. 1122 ¶ 11.
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`Moreover, notwithstanding Mr. O’Hara’s statement that passwords
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`were distributed to the 802.11 Working Group e-mail list (id.), the fact that
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`an interested individual needed to contact IEEE in order to obtain a
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`password or other means of accessing Draft Standard (and needed to know
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`who to contact in the first place) weighs against public accessibility. Cf.
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`Kyocera Wireless Corp. v. Int’l Trade Comm’n, 545 F.3d 1340, 1351 (Fed.
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`Cir. 2008) (finding facts weighed towards public accessibility because “[t]he
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`specifications themselves were visible to any member of the interested
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`public without requesting them from an ETSI member”). Mr. O’Hara states
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`that the drafts of the 802.11 standards, including Draft Standard, were (and
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`still are) protected by passwords in order to limit distribution to “interested
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`individuals, as opposed to the entire [I]nternet.” Ex. 1122 ¶ 11. However,
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`as previously discussed, the record does not contain persuasive evidence
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`showing how an individual outside the 802.11 Working Group would have
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`known of the existence of the Draft Standard, the 802.11 Working Group
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`meetings, or the 802.11 Working Group itself. Therefore, we are not
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`persuaded that such an individual, exercising reasonable diligence, would be
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`able to change his status from an anonymous member of “the entire
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`[I]nternet” to an “interested individual.” Moreover, the Working Group
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`created Draft Standard. See Ex. 1023 ¶ 2. Provision of a document to co-
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`authors of the document does not constitute dissemination, or availability, of
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`the document to the public.
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`Therefore, based on the evidence Petitioner provided, we conclude
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`Petitioner has not made a sufficient showing that Draft Standard was a
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`printed publication as of July 1996 or earlier, as alleged, i.e., that Draft
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`Standard was available as of July 1996 or earlier to an ordinarily skilled
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`individual, exercising reasonable diligence, who might have been interested
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`in the subject matter of Draft Standard.
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`E. Asserted Grounds of Unpatentability
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`Because Petitioner has not met its burden in establishing that Draft
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`Standard is a “printed publication” and, thus, prior art, Petitioner has not
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`shown a reasonable likelihood of prevailing on the grounds asserted.
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`III. CONCLUSION
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`The Petition fails to demonstrate a reasonable likelihood of prevailing
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`on the grounds that the challenged claims are anticipated by, or obvious
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`over, Draft Standard or obvious over Draft Standard and Boer.
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`IV. ORDER
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`In consideration of the foregoing, it is
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`ORDERED that the petition is denied as to all challenged claims and
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`no trial is instituted.
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`IPR2014-00890
`Patent 8,457,228 B2
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`For Petitioner:
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`Jeffrey Miller
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`millerj@dicksteinshapiro.com
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`Daniel Cardy
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`cardyd@dicksteinshapiro.com
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`For Patent Owner:
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`Thomas Engellenner
`engellennert@pepperlaw.com
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`Reza Mollaaghababa
`mollaaghababar@pepperlaw.com
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`Lana Gladstein
`gladsteinl@pepperlaw.com
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