Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`
`Paper 12
`Entered: August 26, 2015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`SERVICENOW, INC.,
`Petitioner,
`
`v.
`
`HEWLETT-PACKARD CO.,
`Patent Owner.
`
`____________
`
`Case IPR2015-00707
`Patent 7,925,981 B2
`____________
`
`Before RAMA G. ELLURU, JAMES B. ARPIN, and
`CHRISTOPHER L. CRUMBLEY, Administrative Patent Judges.
`
`Opinion for the Board filed by ARPIN, Administrative Patent Judge.
`
`Opinion Dissenting filed by CRUMBLEY, Administrative Patent Judge.
`
`ARPIN, Administrative Patent Judge.
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`
`Tel: 571-272-7822
`
`
`
`
`Paper 12
`Entered: August 26, 2015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`SERVICENOW, INC.,
`Petitioner,
`
`v.
`
`HEWLETT-PACKARD CO.,
`Patent Owner.
`
`____________
`
`Case IPR2015-00707
`Patent 7,925,981 B2
`____________
`
`Before RAMA G. ELLURU, JAMES B. ARPIN, and
`CHRISTOPHER L. CRUMBLEY, Administrative Patent Judges.
`
`Opinion for the Board filed by ARPIN, Administrative Patent Judge.
`
`Opinion Dissenting filed by CRUMBLEY, Administrative Patent Judge.
`
`ARPIN, Administrative Patent Judge.
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`
`
`IPR2015-00707
`Patent 7,925,981 B2
`
`
`I.
`
`INTRODUCTION
`
`A. Background
`ServiceNow, Inc. (“Petitioner”) filed a Petition (Paper 1, “Pet.”) to
`institute an inter partes review of claims 1, 22, and 23 (the “challenged
`claims”) of Patent No. US 7,925,981 B2 to Pourheidari et al. (Ex. 1001, “the
`’981 patent”), pursuant to 35 U.S.C. §§ 311–319. Pet. 1. Hewlett-Packard
`Company (“Patent Owner”) filed a Preliminary Response (Paper 11,
`“Prelim. Resp.”). We have jurisdiction under 35 U.S.C. § 314,1 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.” 35 U.S.C. § 314(a).
`Petitioner relies upon the following references, declaration, and
`affidavit in support of its ground for challenging claims 1, 22, and 23 of the
`’981 patent:
`
`
`Exhibit
`1002
`1004
`
`1005
`
`1006
`
`1008
`
`1009
`
`Description
`Declaration of Tal Lavian Ph.D.
`BEA Systems, Inc., Introducing BEA WebLogic Collaborate
`(dated July 2001) (“Introducing Collaborate”)
`BEA Systems, Inc., Administering BEA WebLogic
`Collaborate (dated July 2001) (“Administering Collaborate”)
`BEA Systems, Inc., Programming BEA WebLogic Collaborate
`Management Applications (dated July 2001) (“Programming
`Collaborate”)
`David Fox et al., Web Publisher’s Construction Kit with
`HTML 3.2 (1996) (“Fox”)
`Kenn Scribner et al., Applied SOAP: Implementing .NET
`XML Web Services (2001) (“Scribner”)
`
`
`1 See Section 6(a) of the Leahy-Smith America Invents Act (“AIA”), Pub. L.
`No. 112-29, 116 Stat. 284, 300 (2011).
`
`2
`
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`IPR2015-00707
`Patent 7,925,981 B2
`
`
`Exhibit
`1011
`
`1013
`
`1014
`
`Description
`BEA Unveils Comprehensive Web Services Strategy and
`Support For Widest Range of Web Services Standards in the
`Industry, PR Newswire, Feb. 26, 2001
`BEA and Gauss Interprise Announce Strategic Relationship,
`Canadian Corporate Newswire, Aug. 27, 2001
`Affidavit of Christopher Butler, dated January 15, 2015
`(including Exhibit A (BEA WebLogic Screen Shots)) (“the
`Butler Affidavit”)
`
`
`Exhibits 1004–1006 are referred to collectively as the “Collaborate
`References.” Pet. 20.
`Petitioner asserts that the challenged claims are unpatentable on the
`following ground (Pet. 4, 21–60):
`References
`Claims
`Ground
`1, 22, and 23
`35 U.S.C. § 103(a) Collaborate References and
`Fox
`
`
`For the reasons set forth below, we determine that, on this record,
`Petitioner fails to demonstrate a reasonable likelihood of prevailing in
`showing the unpatentability of any of the challenged claims. Accordingly,
`we deny institution of inter partes review as to any of the challenged claims
`of the ’981 patent.
`B. Related Proceedings
`Petitioner was sued for infringement of the ’981 patent by Patent
`
`Owner: Hewlett‐Packard Co. v. ServiceNow, Inc., Case No. 14‐CV‐
`
`00570BLF (N.D. Cal. filed Feb. 6, 2014). Pet. 1. Petitioner has filed a
`petition seeking covered business method review of the ’981 patent
`(CBM2015-00077) and petitions to review several of Patent Owner’s other
`patents – Patent Nos. US 6,321,229 B1 (IPR2015-00523); US 7,392,300 B2
`
`3
`
`
`
`IPR2015-00707
`Patent 7,925,981 B2
`
`(IPR2015-00631); US 7610,512 B2 (IPR2015-00699); US 7,890,802 B2
`(IPR2015-00702); and US 7,945,860 B2 (IPR2015-00716).2
`C. The ’981 Patent
`The ’981 patent, entitled “Systems and Methods for Managing Web
`Services Via a Framework of Interfaces,” relates to a web service
`management system comprising service managed objects. Ex. 1001, col. 3,
`ll. 41–43. The Specification discloses that managed objects are
`“management representations of a resource,” that implement “managed
`object interfaces 130 to provide a common set of basic management
`
`capabilities.” Id. at col. 7, ll. 25–35. Figure 1A, depicting an embodiment
`
`of a web service management system, is reproduced below:
`
`
`2 As with the ’981 patent, Patent No. US 7,945,860 B2 (Ex. 1003, “the ’860
`patent”) was filed on May 14, 2003. Petitioner relies upon the Collaborate
`References and Fox in its challenges to claims of the ’860 patent in
`IPR2015-00716.
`
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`Id. at Fig. 1A.
`In Figure 1A, web service management system 100 has service
`managed objects 104, 110 that have service interfaces 112, 114 that allow
`manager 102 to access information regarding the state of services 104, 110.
`Id. at col. 4, ll. 51–60. In this embodiment, the Specification describes that:
`Service managed objects 108, 110 represent the management
`features of resource(s)
`that perform services 104, 106.
`Interfaces in one or more categories can be included in service
`interfaces 112, 114 for each service managed object 108, 110.
`Service interfaces 112, 114 can allow manager 102 to access
`information regarding the state of services 104, 106, as well as
`to control the operation of services 104, 106.
`
`Id. at col. 4, ll. 51–60 (emphases added).
`
`
`
`Service managed objects “can be considered managed objects 128.”
`Id. at col. 7, ll. 28–29. The Specification explains that a “[m]anaged object
`
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`IPR2015-00707
`Patent 7,925,981 B2
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`128 implements managed object interfaces 130 to provide a common set of
`basic management capabilities that allow manager 102 to monitor and/or
`control the underlying resource(s) represented by managed objects 128
`through various features such as attributes, operations, and event
`notifications.” Id. at col. 7, ll. 30–35. Figure 1B, depicting an embodiment
`of a managed object interface collection for the web service management
`system of Figure 1A, is reproduced below:
`
`
`
`6
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`Id. at Fig. 1B. Figure 1B depicts Managed Object Interface Collection 132.
`
`Managed Object Configuration Interface of Managed Object Interface
`Collection 132 can include several attributes regarding the configuration of
`associated managed object 128, such as Name, Type, Description, Owner,
`Vendor, Resource Version, Managed Object Version, Created On,
`Supported Event Types, and Supported Relations. Id. at col. 8, ll. 36–40.
`Supported Relations can represent an attribute that returns a list of the
`relations supported by managed object 128. Id. at col. 9, ll. 10–11.
`Relations in the returned list may be used in relationships managed object
`128 has with other managed objects. “For example, managed object 128 can
`support relations such as Contains, [Contained In], Depends On, Depended
`Upon, and Corresponds To.” Id. at col. 9, ll. 14–16. As depicted in Figure
`1B, other features can be included in Managed Object Interface Collection
`132.
`
`D. Illustrative Claim
` Petitioner challenges claims 1, 22, and 23 of the ’981 patent. Claims
`1 and 22 are independent, while claim 23 depends directly from claim 22.
`Claim 1 is directed to a system for managing a web service; claim 22 is
`directed to a computer program product tangibly embodied in a computer
`storage readable medium, comprising a service interface and a managed
`object interface.
`Claim 1 is illustrative and is reproduced below:
`
`
`
`1. A system for managing a Web service, comprising:
`
`a computer processor; and
`
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`IPR2015-00707
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`a service managed object executable on the computer
`processor, wherein:
`the service managed object is associated with the Web
`service and includes at least one interface configured to allow a
`manager to access management features for the Web service;
`and
`
`the at least one interface is configured to provide a list of
`conversations associated with the Web service.
`
`
`Ex. 1001, col. 19, ll. 34–43 (claim 1).
`
`E. Claim Construction
`Each of Petitioner and Patent Owner proposes a construction for
`various claim terms, including “Web service,” “managed object,” and
`“service managed object.” Pet. 11–20; Prelim. Resp. 27–31. We, however,
`do not construe any term at this time because no term needs to be construed
`expressly for purposes of this Decision.
`II. ANALYSIS
`
`A. Overview
`Petitioner argues that claims 1, 22, and 23 of the ’981 patent are
`rendered obvious by the combinations of references described above. See
`supra Section I.A. Petitioner has the burden to establish in its Petition a
`reasonable likelihood of success, including, among other things, making a
`threshold showing that the Collaborate References are “printed publications”
`within the meaning of 35 U.S.C. §§ 102(b) and 311(b). 35 U.S.C. § 314(a);
`see 37 C.F.R. § 42.108(c); Apple, Inc. v. DSS Tech. Mgmt., Inc., Case
`IPR2015-00369, slip op. at 4–5, 9–11 (PTAB Aug. 12, 2015) (Paper 14).
`For the reasons set forth below and on this record, Petitioner does not satisfy
`its burden.
`
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`
`B. Asserted Grounds
`1. Prior Art and Printed Publications
`Petitioner argues that each of the Collaborate References is a printed
`publication that may be asserted properly as a basis for a ground of
`unpatentability in its Petition because each Collaborate Reference was
`published more than one year before the filing date (May 14, 2003) of the
`’981 patent. Pet. 22; see 35 U.S.C. § 312(a)(3)(A); 37 C.F.R.
`§ 42.104(b)(2). Patent Owner disagrees, and contends that Petitioner fails to
`demonstrate that the Collaborate References are prior-art, printed
`publications. Prelim. Resp. 12–23.
` “Public accessibility” is the touchstone in determining whether a
`reference is a “printed publication.” In re Hall, 781 F.2d 897, 898–99 (Fed.
`Cir. 1986); see, e.g., L-3 Commc’n. Holdings, Inc. v. Power Survey, LLC,
`Case IPR2014-00832, slip op. at 11–12 (PTAB Nov. 14, 2014) (Paper 9)
`(applied reference not shown to be publicly accessible); C&D Zodiac, Inc. v.
`B/E Aerospace, Inc., Case IPR2014-00727, slip op. at 20–22 (PTAB Oct. 29,
`2014) (Paper 15) (applied reference shown to be publicly accessible). “A
`reference is publicly accessible ‘upon a satisfactory showing that such
`document has been disseminated or otherwise made available to the extent
`that persons interested and ordinarily skilled in the subject matter or art
`exercising reasonable diligence, can locate it.”’ Kyocera Wireless Corp. v.
`Int’l Trade Comm’n, 545 F.3d 1340, 1350 (Fed. Cir. 2008) (quoting SRI
`Int’l, Inc. v. Internet Sec. Sys., Inc., 511 F.3d 1186, 1194 (Fed. Cir. 2008)).
`The status of a reference as a printed publication is a legal question “based
`on underlying factual determinations.” Id.
`[W]hether information is printed, handwritten, or on
`microfilm or a magnetic disc or tape, etc., the one who wishes
`
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`to characterize the information, in whatever form it may be, as a
`‘printed publication’ . . . should produce sufficient proof of its
`dissemination or that it has otherwise been available and
`accessible to persons concerned with the art to which the
`document relates and thus most likely to avail themselves of its
`contents.
`In re Wyer, 655 F.2d 221, 227 (CCPA 1981). As noted above, Petitioner
`expressly argues that the Collaborate References qualify as prior art because
`they were published more than one year prior to the filing date of the ’981
`patent. Pet. 3, 22.
`
`a. The Wayback Machine Service
`
`In support of Petitioner’s argument that the Collaborate References
`were available for download more than one year prior to May 14, 2013,
`Petitioner submits an affidavit of Christopher Butler, Office Manager of
`Internet Archive, San Francisco, CA, which is the creator of the Wayback
`Machine service. Ex. 1014, 1. Attached to the Butler Affidavit is Exhibit A,
`which includes “true and accurate copies of printouts of the Internet
`Archive’s records of the HTML files for the URL[’]s [of each of the
`Collaborate References] and the dates specified in the footer of the printout.”
`Id. Moreover, the Butler Affidavit explains how the date of the webpage can
`be determined from the URL. Id. In particular, Exhibit A includes printouts
`for the following URLs:
`URL
`https://web.archive.org/web/20010829204911/http://e-
`docs.bea.com/wlintegration/v2_0/collaborate/interm/pdf.h
`tm (Ex. 1014, 4–5 (emphasis added))
`
`Date
`Aug. 29, 20013
`
`
`3 These dates were determined based on the explanation provided in the
`Butler Affidavit. Ex.1014, 1 (paragraph five).
`
`10
`
`
`
`Date
`Aug. 29, 2001
`
`Nov. 1, 2002
`
`Sep. 15, 2001
`
`Sep. 15, 2001
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`IPR2015-00707
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`URL
`https://web.archive.org/web/20010829205428/http://e-
`docs.bea.com/wlintegration/v2_0/collaborate/interm/sitem
`ap.htm (Ex. 1014, 6 (emphasis added))
`https://web.archive.org/web/20020111212156/http://e-
`docs.bea.com/wlintegration/v2_0/collaborate/intro/index.
`htm (Ex. 1014, 7 (“Introducing Collaborate”) (emphasis
`added))
`https://web.archive.org/web/20010915203606/http://e-
`docs.bea.com/wlintegration/v2_0/collaborate/admin/index
`.htm (Ex. 1014, 8–10 (“Administering Collaborate”)
`(emphasis added))
`https://web.archive.org/web/20010915214820/http://e-
`docs.bea.com/wlintegration/v2_0/collaborate/devmgmt/in
`dex.htm (Ex. 1014, 11 (“Programming Collaborate”)
`(emphasis added))
`https://web.archive.org/web/20010915212456/http://e-
`docs.bea.com/wlintegration/v2_0/collaborate/devlog/inde
`x.htm (Ex. 1014, 11 (emphasis added))
`
`Initially, we note that, even relying on Exhibit A to the Butler Affidavit, the
`webpage for the Introducing Collaborate Reference was archived on
`November 1, 2002, less than one year prior to the May 14, 2003 filing date
`of the ’981 patent and, thus, fails to qualify as a prior-art, printed publication
`under 35 U.S.C. § 102(b), as argued by Petitioner.4 Pet. 3, 22.
`Petitioner argues that:
`In this case, the Internet Archive captured a webpage entitled
`“BEA WebLogic Collaborate 2.0: PDF” that includes download
`links to various documents (in PDF form), including the
`
`Sep. 15, 2001
`
`
`4 Because each of Petitioner’s asserted grounds relies on a combination
`including all three of the Collaborate References, Petitioner would fail to
`establish a reasonable likelihood of success if any of the Collaborate
`References fails to qualify as a prior-art, printed publication.
`
`11
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`
`Collaborate References cited in this Petition. (Lavian Decl.,
`Ex. 1002, ¶ 144; Butler Aff., Ex. 1014, Ex. A (BEA download
`page).) Based on the date of capture recorded by the Internet
`Archive, the page was publicly accessible through the web by
`no later than August 29, 2001. (Lavian Decl., Ex. 1002, ¶ 144.)
`
`
`Pet. 23 (emphasis added). The webpage in Exhibit A to the Butler Affidavit,
`listing the Collaborate References and including our annotations, is
`reproduced below:
`
`12
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`Petitioner further argues that
`
`[this] download page was part of what BEA called its “e‐docs
`
`Web Site” (edocs.bea.com), which the Collaborate References
`themselves describe as a central source of documentation about
`BEA’s products. (See Introducing
`
`
`
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`
`Collaborate, Ex. 1004, at vi (“The WebLogicCollaborate
`product documentation is available on the BEA Systems, Inc.
`corporate Web site.”); Administering Collaborate, Ex. 1005, at
`x
`(“From
`the BEA Home page, click on Product
`Documentation or go directly
`to
`
`the ‘e‐docs’ Product
`Documentation page at http://e‐docs.bea.com.”); id. at xi (“A
`
`PDF version of this document is available from the BEA
`WebLogic Collaborate documentation Home page . . . at
`http://edocs.bea.com.”).)
`
`
`Pet. 23–24; see also Ex. 1006, 6 (“BEA product documentation is available
`at the following location: http://e-docs.bea.com.”).
`Nevertheless, Petitioner fails to make the critical link between the
`alleged identification of the Collaborate References on the “download page”
`and the exhibits relied upon in support of its asserted grounds. Despite
`Petitioner’s arguments and assertion that this “page” was publicly accessible
`“by no later than August 29, 2001,” Petitioner fails to demonstrate Exhibits
`1004–1006, which Petitioner relies upon in support of each of the asserted
`grounds, were publicly accessible through the webpages included in Exhibit
`A to the Butler Affidavit more than one year prior to May 14, 2003. See Pet.
`23; Ex. 1002 ¶ 144. This failure goes hand-in-hand with Petitioner’s alleged
`failure properly to authenticate Exhibits 1004–1006. See Prelim. Resp. 6.
`
`Patent Owner contends that the evidence available from the Wayback
`Machine service demonstrates that Exhibits 1004–1006 were not publicly
`accessible prior to May 14, 2003. Prelim. Resp. 12–23. In Exhibit 2001,
`Patent Owner submits screenshots depicting the URLs of the archived
`documents obtained by linking to the indicated documents on the “download
`page” of the Butler Affidavit’s Exhibit A. Id. at 9–10 (reproducing Ex.
`2001, 1–3). Using the explanation for date determination provided in the
`
`14
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`Butler Affidavit (Ex. 1014, 1), Patent Owner produced the following table
`indicating the dates on which each of Exhibits 1004–1006 was archived:
`
`
`Prelim. Resp. 11; see also Ex. 2002, 1–3 (dates provided by the Wayback
`Machine service). Patent Owner contends that the Wayback Machine
`service shows dates of capture for Exhibits 1004 and 1005 of November 26,
`2004, and for Exhibit 1006 of June 11, 2003; each of these dates is after May
`14, 2003. Prelim. Resp. 11–12. That the archived dates for Exhibits 1004–
`1006 vary is consistent with the varying archived dates noted above for the
`webpages identified in Exhibit A to the Butler Affidavit. Thus, on this
`record, we are not persuaded that Petitioner demonstrates that the evidence
`drawn from the Wayback Machine service is sufficient to show a reasonable
`likelihood that Exhibits 1004–1006 were printed publications that were prior
`art to the ’981 patent.
`b. The Dates on Exhibits 1004–1006 and the Download
`Instructions
`Petitioner argues that each of Exhibits 1004–1006 includes the date
`“July 2001” on its face (see, e.g., Ex. 1004, 1) and includes a copyright date
`of “2001” (see, e.g., id. at 2). Pet. 22. Further, as noted above, Petitioner
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`argues that each of Exhibits 1004–1006 indicates that the reference is
`available for download from BEA Systems, Inc. Id. at 23–24; see, e.g., Ex.
`1004, 6 (“The WebLogicCollaborate product documentation is available on
`the BEA Systems, Inc. corporate Web site.”).
`Patent Owner contends that the date on the face of each exhibit, the
`copyright dates, and the indications of the availability of these references for
`download from BEA Systems, Inc. are inadmissible hearsay. Prelim. Resp.
`13–15. To the extent that Petitioner relies on the date on the face of each
`exhibit and the indications of the availability of these references for
`download from BEA Systems, Inc. for the truth of that information, and
`considering that Petitioner has not established that any hearsay exception or
`exclusion applies, we agree with Patent Owner. See Apple, Case IPR2015-
`00369, slip op. at 6 (Paper 14).
`In addition, as Patent Owner notes, each of Exhibits 1004–1006
`includes the following statement restricting use and dissemination of the
`Collaborative References:
`Restricted Rights Legend
`This software and documentation is subject to and made
`available only pursuant to the terms of the BEA Systems
`License Agreement and may be used or copied only in
`accordance with the terms of that agreement. . . . This document
`may not, in whole or in part, be copied photocopied,
`reproduced, translated, or reduced to any electronic medium or
`machine readable form without prior consent, in writing, from
`BEA Systems, Inc.
`
`Prelim. Resp. 20 (quoting Ex. 1004, 2; Ex. 1005, 2; Ex. 1006, 2). We
`consider the references as a whole and read the download instructions, cited
`by Petitioner, in view of the restrictions on use and dissemination that also
`are set forth in the references. We are persuaded that, read together, the
`
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`download instructions and the Restricted Rights Legends do not provide
`sufficient evidence that these references were publicly accessible.
`At least one panel of the Board has determined that reliance on a
`copyright notice as evidence that a reference was a printed publication as of
`a particular date is inadmissible hearsay. See Standard Innovation Corp. v.
`Lelo, Inc., Case IPR2014-00148, slip op. at 13–16 (PTAB Apr. 23, 2015)
`(Paper 41). We note, however, that, when determining the threshold issue of
`whether a reference is a printed publication for purposes of a decision on
`institution, a copyright notice has been accepted as prima facie evidence of
`publication.5 See Ford Motor Co. v. Cruise Control Techs. LLC, Case
`IPR2014-00291, slip op. at 7–8 (PTAB June 29, 2015) (Paper 44) (citing
`FLIR Sys., Inc. v. Leak Surveys, Inc., Case IPR2014-00411, slip op. at 18–19
`(PTAB Sept. 5, 2014) (Paper 9)). We are not bound by the determinations
`noted above, and, on this record, we are not persuaded that the presence of a
`copyright notice, without more, is sufficient evidence of public accessibility
`as of a particular date. See, e.g., LG Electronics, Inc. v. Advanced Micro
`Devices, Inc., Case IPR2015-00329, slip op. at 10–13 (PTAB July 10, 2015)
`(Paper 13).
`Consequently, on this record, we are not persuaded that Petitioner
`demonstrates that the dates on Exhibits 1004–1006, the download
`instructions, or both, is sufficient to show a reasonable likelihood that
`Exhibits 1004–1006 were publicly accessible more than one year prior to
`May 14, 2003.
`
`
`5 “[A] notice of copyright . . . may be placed on publicly distributed copies
`from which the work can be visually perceived . . . .” 17 U.S.C. § 401(a)
`(emphasis added).
`
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`c. Petitioner’s Declarants
`
`Petitioner argues that, “[a]s explained by Dr. Lavian and in the
`accompanying ‘Affidavit of Christopher Butler’ from the Internet Archive,
`the Collaborate References were publicly available for download from
`BEA’s website no later than August 2001.” Pet. 22 (citing Ex. 1002 ¶¶ 142–
`47; Ex. 1014, 1). Patent Owner disagrees, and contends that Petitioner’s
`declarants’ testimony fails to demonstrate that they or anyone else used the
`identified webpages or the search engines identified by Dr. Lavian “to locate
`the Collaborate References in July 2001 or at any other time before May 14,
`2003.” Prelim. Resp. 20–21.
`Neither Mr. Butler nor Dr. Lavian testifies expressly that Exhibits
`1004–1006 could have been downloaded prior to May 14, 2003. See id. at
`21–22. As noted above, Mr. Butler merely testifies regarding the operation
`of the Wayback Machine service and to the accuracy of the printouts
`provided in Exhibit A. Ex. 1014, 1. Dr. Lavian testifies that the “download
`page” contains links to the Collaborate References (Ex. 1002 ¶¶ 147), and
`opines that he has “seen no evidence suggesting that a person of ordinary
`skill in the art would have experienced difficulty locating the Collaborate
`References from BEA’s website.” Id. (emphasis added). Nevertheless, Dr.
`Lavian does not testify that he downloaded Exhibits 1004–1006 from the
`download page before May 14, 2003, or that he is aware of anyone else who
`did. See Dish Network L.L.C. v. Dragon Intellectual Property, LLC, Case
`IPR2015-00499, slip op. at 10–11 (PTAB July 17, 2015) (Paper 7).
`Consequently, on this record, we are not persuaded that Petitioner
`demonstrates that the testimony of Dr. Lavian (Ex. 1002) or Mr. Butler (Ex.
`1014), or both, is sufficient to show a reasonable likelihood that Exhibits
`
`18
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`1004–1006 were publicly accessible more than one year prior to May 14,
`2003.
`
`d. Press Releases Regarding BEA Activities in 2001
`
`made the Collaborate References, was a well‐known provider of web
`
`Finally, Petitioner alleges that “BEA Systems, Inc., the company that
`
`services products in the early 2000s” and notes that that the company
`claimed to have more than 11,000 customers worldwide by 2001. Pet. 24
`(citing Ex. 1002 ¶ 148); see Ex. 1011, 1; Ex. 1013, 1. Patent Owner
`contends that Petitioner does not offer any testimony from BEA Systems,
`Inc. or from its customers attesting that the Collaborate References were
`provided or made available to BEA’s customers more than one year before
`May 14, 2003. Prelim. Resp. 13. Further, as noted above, each of Exhibits
`1004–1006 bears a notice restricting its dissemination and the use of the
`described products to the terms of the BEA Systems Licensing Agreement.
`E.g., Ex. 1004, 2. In view of this restriction, we are not persuaded that
`Petitioner’s evidence of the number of BEA’s customers prior to May 14,
`2003 sufficiently demonstrates that Exhibits 1004–1006 had been
`“disseminated or otherwise made available to the extent that persons
`interested and ordinarily skilled in the subject matter or art exercising
`reasonable diligence, [could] locate [them].”’ Kyocera, 545 F.3d at 1350.
`Thus, on this record, we are not persuaded that Petitioner demonstrates that
`the press releases (Exs. 1011 and 1013) discussing activities of BEA
`Systems, Inc. are sufficient to show a reasonable likelihood that Exhibits
`1004–1006 were publicly accessible more than one year prior to May 14,
`2003.
`
`Consequently, on this record and for purposes of this Decision, we are
`
`19
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`IPR2015-00707
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`
`not persuaded that Petitioner has demonstrated a reasonable likelihood of
`prevailing in establishing that the Collaborate References are prior-art,
`printed publications.
`2. Obviousness of Claims 1, 22, and 23 over Collaborate
`References and Fox
`Petitioner asserts that claims 1, 22, and 23 are unpatentable under 35
`U.S.C. § 103(a) over the Collaborate References and Fox. Pet. 21–60.
`Because we are not persuaded that Petitioner has demonstrated a reasonable
`likelihood that the Collaborate References are prior-art, printed publications
`(see supra Section II.B.1.), we are not persuaded that Petitioner has
`demonstrated a reasonable likelihood of showing that any of claims 1, 22,
`and 23 is unpatentable under 35 U.S.C. § 103(a) over the Collaborate
`References and Fox.
`
`III. CONCLUSION
`Petitioner fails to demonstrate that there is a reasonable likelihood of
`prevailing in its challenge to the patentability of claims 1, 22, and 23 of the
`ʼ981 patent. Consequently, the Petition is denied as to each of the asserted
`grounds.6
`
`
`6 The dissent differs from the majority on two basic issues: the sufficiency of
`the evidence presented in the Petition, considered in light of the evidence
`presented in the Preliminary Response, and the relevance of evidence
`presented at this stage of the proceeding to the decision to institute. With
`respect to the first issue, reasonable minds may differ as to the weight
`appropriately accorded to presented evidence. With respect to the second
`issue, the Petition represents Petitioner’s case in chief. The possibility that
`Petitioner has or may obtain additional persuasive evidence regarding the
`public accessibility of the Collaborate References and that such evidence
`properly may be introduced into this case is speculative.
`
`20
`
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`
`IV. ORDER
`For the reasons given, it is
`ORDERED that the Petition is denied, and no inter partes review is
`instituted.
`
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`CRUMBLEY, Administrative Patent Judge, dissenting.
`
`I agree with the majority’s recitation of the facts, established by the
`
`present record. I also agree with the majority’s evaluation that the evidence
`submitted by Patent Owner casts doubt on Petitioner’s assertion that the
`Collaborate References are prior art to the ’981 patent. Where the majority
`and I part ways, however, is whether this record meets the “reasonable
`likelihood” standard for institution of an inter partes review. See Majority
`Opinion 19–20. Because I find that the information presented in the Petition
`and the Preliminary Response shows that there is a reasonable likelihood
`Petitioner would prevail, I respectfully dissent.
`In an inter partes review trial, the petitioner bears the burden of
`
`establishing unpatentability of the challenged claims by a preponderance of
`the evidence. 35 U.S.C. § 316(e). This burden only applies at the
`conclusion of the trial and the close of the evidence; we do not require a
`petitioner to meet its ultimate burden based on the information in its petition
`alone. Rather, the statute speaks in general terms of whether the record as it
`stands at that time of the decision on institution – “the information presented
`in the petition . . . and any response” – shows that there is a reasonable
`likelihood of the petitioner prevailing. 35 U.S.C. § 314(a); see Aruze
`Gaming Macau, Ltd. v. MGT Gaming, Inc., Case IPR2014-01288, slip op. at
`6 (PTAB Feb. 20, 2015) (Paper 13). The legislative history of the America
`Invents Act indicates that the reasonable likelihood standard was intended to
`“require[] the petitioner to present a prima facie case,” akin to a District
`Court’s determination of “whether a party is entitled to a preliminary
`injunction.” See 157 Cong. Rec. S1375 (daily ed. Mar. 8, 2011) (statement
`of Sen. Kyl). As the Supreme Court has noted in the preliminary injunction
`
`1
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`IPR2015-00707
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`
`context, “[a] party thus is not required to prove his case in full.” Univ. of
`Texas v. Camenisch, 451 U.S. 390, 395 (1981).
`The reasonable likelihood standard for instituting inter partes review
`is, therefore, not a lower standard of proof than a preponderance of the
`evidence, but instead asks whether the same preponderance standard is
`reasonably likely to be met at a later time. We must assess the
`persuasiveness of the petitioner’s evidence while “recognizing that [we are]
`doing so without all evidence that may come out at trial.” New England
`Braiding Co. v. A.W. Chesterton Co., 970 F.2d 878, 883 (Fed. Cir. 1992).
`As such, we have required only a “threshold showing” of public availability
`in order to institute trial. See Apple, Inc. v. DSS Tech. Mgmt., Inc., Case
`IPR2015-00369, slip op. at 5 (PTAB Aug. 12, 2015) (Paper 14). When
`petitioners have not come forward with any credible evidence establishing a
`key aspect of public availability, we have denied institution. See id. at 5–6
`(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.,
`LLC, Case IPR2014-01085, slip op. at 7–9 (PTAB Jan. 9, 2015) (Paper 11)
`(noting “naked assertion,” unsupported by record, that reference was
`published).
`The majority faults Petitioner for not establishing sufficiently that the
`Collaborate References were publicly available more than one year prior to
`the filing date of the ’981 patent. See Majority Opinion, Sections II.B.1.a–d.
`I agree that the record, as it currently stands, does not convincingly establish
`this fundamental aspect of Petitioner’s case. But the record does not
`convincingly establish the converse, either. In my view, the 2001 dates on
`
`2
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`the cover pages of the Collaborate References (e.g., Ex. 1004, 1), their 2001
`copyright notices (id. at 2), and the August 29, 2001 Wayback Machine
`archive date for the BEA e-docs page (Ex. 1014, 4) are suffic
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