Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 28
`Entered: October 2, 2015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`AVOCENT HUNTSVILLE CORPORATION and
`LIEBERT CORPORATION,
`Petitioner,
`
`v.
`
`CYBER SWITCHING PATENTS, LLC,
`Patent Owner.
`_______________
`
`Case IPR2015-00690
`Case IPR2015-007251
`Patent 7,550,870 B2
`_______________
`
`Before MICHAEL R. ZECHER, GLENN J. PERRY, and
`NEIL T. POWELL, Administrative Patent Judges.
`
`PERRY, Administrative Patent Judge.
`
`
`DECISION ON MOTIONS
`Denying Avocent’s Motion to Submit Supplemental Information
`Denying Avocent’s Motion to Compel Testimony
`37 C.F.R. § 42.123(a); 37 C.F.R. § 42.52(a)
`
`
`1 This Decision applies to both captioned inter partes reviews. We exercise
`our discretion to issue one Decision to be filed in each case. The parties are
`not authorized to use this style heading for any subsequent papers. For
`convenience, only the Motions filed in IPR2015-00690 are discussed.
`
`
`
`

`
`Case IPR2015-00690; IPR2015-00725
`Patent 7,550,870
`
`I. INTRODUCTION
`
`On February 4, 2015, Avocent Huntsville Corporation and Liebert
`
`Corporation (“Avocent”) filed a Petition for inter partes review of the ’870
`
`patent. Paper 1. Patent Owner Cyber Switching Patents, LLC (“Cyber”)
`
`filed a waiver of Preliminary Response on May 20, 2015 (Paper 14,
`
`“Waiver”). We instituted trial on August 11, 2015 (Paper 16) including
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`challenges based on the Sentry reference (Ex. 1006). Cyber objected to
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`Avocent’s Exhibits 1006, 1008, 1011, and 1013 as inadmissible hearsay, and
`
`it objected to Avocent’s Exhibit 1017 as inadmissible under Federal Rule of
`
`Evidence 702. Paper 19, “Objection.” Avocent moved to file supplemental
`
`information by submitting the Declaration of Office Manager at Internet
`
`Archive relating to Sentry reference (Ex. 1006), Rabbit 2000 (Ex. 1008), and
`
`PIC17C75X (Ex. 1011). Paper 23, “Mot. SI.” Avocent also moved to
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`compel discovery from a third party – Server Technology, Inc.
`
`(“ServerTech”), the author and custodian of the Sentry reference. Paper 26,
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`“Mot. Compel.” Cyber opposes Avocent’s Motion to Submit Supplemental
`
`Information. Paper 27 (“Opp. SI”).
`
`For reasons stated below, Avocent’s Motion to Submit Supplemental
`
`Information is denied and Avocent’s Motion to Compel Testimony is
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`denied.
`
`II. DISCUSSION
`
`A. Legal Principles
`
`a. What Constitutes a Printed Publication
`
`Whether a document qualifies as a prior art printed publication is a
`
`legal conclusion based on underlying factual determinations. SRI Int’l, Inc. v.
`
`2
`
`

`
`Case IPR2015-00690; IPR2015-00725
`Patent 7,550,870
`
`Internet Sec. Sys., Inc., 511 F.3d 1186, 1192 (Fed.Cir.2008) (citation
`
`omitted). “Public accessibility” has been called the touchstone in determining
`
`whether a reference constitutes a prior art printed publication. Id. at 1194. A
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`reference is publicly accessible upon a satisfactory showing that it has been
`
`disseminated or otherwise made available to the extent that persons interested
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`and ordinarily skilled in the subject matter or art exercising reasonable
`
`diligence, can locate it. Bruckelmyer v. Ground Heaters, Inc., 445 F.3d
`
`1374, 1378 (Fed. Cir.2006).; see also In re Cronyn, 890 F.2d 1158, 1160
`
`(Fed. Cir. 1989) (“The statutory phrase ‘printed publication’ has been
`
`interpreted to mean that before the critical date the reference must have been
`
`sufficiently accessible to the public interested in the art; dissemination and
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`public accessibility are the keys to the legal determination whether a prior art
`
`reference was ‘published.’”) (quoting Constant v. Advanced Micro-Devices,
`
`Inc., 848 F.2d 1560, 1568 (Fed.Cir.1988)).
`
`In In re Klopfenstein, 380 F.3d 1345 (Fed. Cir. 2004), our reviewing
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`court rejected an argument that “distribution and/or indexing” are the key
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`components to a “printed publication” inquiry because that argument “fails
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`to properly reflect what our [Federal Circuit] precedent stands for,”
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`explaining that “printed publication” means reasonably accessible through
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`generally available media that serves to disseminate information. Id. at
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`1348. A printed publication need not be easily searchable after publication
`
`if it was sufficiently disseminated at the time of its publication. Suffolk
`
`Techs., LLC v. AOL Inc., 752 F.3d 1358, 1364 (Fed. Cir. 2014).2
`
`
`2 As explained in Klopfenstein, the word “disseminate” is not used in its
`literal sense, i.e. “make widespread” or “to foster general knowledge of” and
`does not require distribution of reproductions or photocopies. 380 F.2d. at
`1352, n. 3.
`
`3
`
`

`
`Case IPR2015-00690; IPR2015-00725
`Patent 7,550,870
`
`2. Showing of Publication
`
`In order to institute trial, we require a petitioner to provide a showing
`
`of publication of an asserted reference only to the extent necessary to
`
`demonstrate a reasonable likelihood of prevailing on its patentability
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`challenge(s). See 35 U.S.C. § 314(a). When a petitioner does not present
`
`sufficient or credible evidence establishing a key aspect of public
`
`availability in support of its Petition, we have denied institution. See id. at 5–
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`6 (no evidence thesis was indexed, cataloged, and shelved); Actavis, Inc. v.
`
`Research Corp. Techs., Inc., Case IPR2014-01126, slip op. at 10–13 (PTAB
`
`Jan. 9, 2015) (Paper 21) (same); Cisco Systems, Inc. v. Constellation Techs.,
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`LLC, Case IPR2014-01085, slip op. at 7–9 (PTAB Jan. 9, 2015) (Paper 11)
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`(noting “naked assertion,” unsupported by record, that reference was
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`published).
`
`The fact that we institute an inter partes review on a not fully
`
`developed record is not dispositive of the ultimate legal conclusion as to
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`whether a particular reference document qualifies as a publication reference.
`
`That legal conclusion is based on a preponderance of the fully developed
`
`record evidence.
`
`3. Supplemental Information
`
`Section 42.123 of Title 37 of the Code of Federal Regulations governs
`
`the filing of supplemental information after a decision to institute an inter
`
`partes review.
`
`4. Objections to Evidence
`
`Section 42.64 of Title 37 of the Code of Federal Regulations governs
`
`objections to evidence and the appropriate follow up. For evidence other
`
`than a deposition, it provides a process by which an objection to evidence
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`4
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`

`
`Case IPR2015-00690; IPR2015-00725
`Patent 7,550,870
`
`may be obviated. This regulatory provision states, in relevant part (emphasis
`
`added):
`
`
`(2) Supplemental evidence. The party relying on evidence to
`which an objection is timely served may respond to the
`objection by serving supplemental evidence within ten business
`days of service of the objection.
`
`
`5. Compelling Testimony and Production
`
`Section 42.52 of Title 37 of the Code of Federal Regulations controls
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`compelling testimony and production.
`
`B. Cyber’s Objections to Evidence
`
`Pursuant to 37 C.F.R. § 42.64, a party objecting to evidence serves
`
`those objections on the party proffering and relying on that evidence. Per a
`
`recent rule change, the objecting party also must file those objections with
`
`the Board. In these proceedings, Cyber has done so. Thus, noting an
`
`objection triggers the ability of the party relying on the objected to evidence
`
`to serve supplemental evidence on the objecting party in an effort to obviate
`
`the objection. In the event the objecting party is not satisfied that the
`
`supplemental evidence overcomes the objection, the objecting party may
`
`preserve its objection by filing a motion to exclude the objected to evidence.
`
`Paper 19 recites service of Cyber’s objections to Exhibits 1006
`
`(Sentry), 1008 (Rabbit 2000), 1011 (PIC17C75X), and 1017 (Denning
`
`Declaration) as of August 25, 2015. The record reflects (infra.) that Avocent
`
`served supplemental evidence on Cyber following objections filed in Paper
`
`19. Supplemental evidence, served in response to an evidentiary objection,
`
`is offered solely to support admissibility of the originally filed evidence and
`
`to defeat a motion to exclude that evidence, and not to support any argument
`
`5
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`

`
`Case IPR2015-00690; IPR2015-00725
`Patent 7,550,870
`
`on the merits (i.e., regarding the patentability or unpatentability of a claim).
`
`To the extent that Avocent’s Motion to Submit Supplemental Information
`
`(Paper 23) is offered solely to support the admissibility of originally filed
`
`evidence, now objected to by Cyber, that evidence should have been served
`
`on Cyber within the time limits set forth in 37 C.F.R. § 42.64.
`
`C. Avocent’s Motion to Submit Supplemental Information
`
`Avocent’s Motion to Submit Supplemental Information (Paper 23)
`
`was made within one month of institution and is relevant to at least claims
`
`being challenged by the Sentry reference. This Motion is not couched as a
`
`discovery request, so we presume that the information sought to be
`
`submitted as “supplemental information” is already in the possession of
`
`Avocent. Avocent seeks permission to file the following information: (1)
`
`Declaration of Office Manager at Internet Archive, attesting to the
`
`authenticity of publicly available webpages catalogued by the Internet
`
`Archive; and (2) the publicly available webpages correspond Sentry
`
`(Ex. 1006), Rabbit 2000 (Ex. 1008), and PIC17C75X (Ex. 1011). Mot. SI 3.
`
`Avocent alleges that along with its supplemental evidence (timely
`
`served but not filed) on Cyber, the Declaration establishes online
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`accessibility and prior art status of Sentry at least as early as October 20,
`
`2001; Rabbit 2000 at least as early as December 14, 2000; and PIC17C75X
`
`at least as early as March 15, 2003. Mot. SI 2–3.
`
`These items of evidence, now described as “supplemental
`
`information” address Cyber’s evidentiary objections (Paper 19) and should
`
`have been served on Cyber in accordance with 37 C.F.R. § 42.64(b)(2). To
`
`the extent supplemental evidence was served on Cyber in accordance with
`
`6
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`

`
`Case IPR2015-00690; IPR2015-00725
`Patent 7,550,870
`
`37 C.F.R. § 42.64 (b)(2), such evidence may be filed as exhibits in the
`
`proceeding. This is not an authorization for discovery.
`
`D. Avocent’s Motion to Compel Testimony
`
`Avocent moves to compel testimony of ServerTech. Mot. Compell. 1.
`
`Avocent justifies its request by stating that the evidence rebuts Cyber’s
`
`evidentiary objections. Id. at 3. This motion is denied.
`
`Avocent made the decision to file a Petition relying on Sentry. It had
`
`ample time to consider its strategy prior to filing the Petition and to consider
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`any problems of proof related to the Sentry reference on which it chose to
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`rely. Now, after evidentiary objections, it argues that the requested
`
`compelled discovery is in the interest of justice. Avocent notes that record
`
`information supports a likelihood that ServerTech has information regarding
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`publication date of the Sentry reference. Mot. Compell. 2. Avocent
`
`indicates that ServerTech has indicated a willingness to cooperate with a
`
`subpoena. Id. at 4.
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`However, Avocent has not explained adequately why it could not
`
`have obtained the requested evidence (or other evidence accomplishing its
`
`goal) prior to filing its Petition to shore up any problems of proof regarding
`
`the Sentry reference that had the potential to impact the trial. Absent such
`
`an explanation, Avocent has not carried its burden in establishing that the
`
`requested compelled discovery is in the interest of justice.
`
`An America Invents Act inter partes review regime is different from
`
`the District Court regime which relies upon notice pleading and more
`
`complete discovery afforded by the Federal Rules of Civil Procedure
`
`permitting a Plaintiff to prove its case after pleading it based on reasonable
`
`certainty.
`
`7
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`

`
`Case IPR2015-00690; IPR2015-00725
`Patent 7,550,870
`
`The parties are reminded that the Board instituted trial relying on
`
`Sentry based on evidence then of record that Sentry qualified as a
`
`publication reference. Cyber has not yet come forward with evidence to the
`
`contrary. It is welcome to do so in its formal response to the Petition.
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`Accordingly, it is:
`
`III. ORDER
`
`ORDERED that Avocent’s Motion to Submit Supplemental
`
`Information is DENIED;
`
`FURTHER ORDERED that, to the extent items of evidence were
`
`served on Cyber to cure its evidentiary objections (Paper 19), such items
`
`may be filed as exhibits in this proceeding in accordance with 37 C.F.R.
`
`§ 42.64(b)(2); and
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`FURTHER ORDERED that Avocent’s Motion to Compel Testimony
`
`is DENIED.
`
`
`
`
`
`8
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`

`
`Case IPR2015-00690; IPR2015-00725
`Patent 7,550,870
`
`
`
`PATENT OWNER:
`
`Donald L. Jackson
`Wayne Helge
`Davidson Berquist Jackson & Gowdey, LLP
`djackson@dbjg.com
`whelge@dbjg.com
`
`PETITIONER:
`
`Jing Cherng
`Mount, Spelman & Fingerman, P.C.
`gcherng@mount.com
`
`9