Trials@uspto.gov
`571.272.7822
`
`Paper No. 8
`Filed: March 8, 2017
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`LIMELIGHT NETWORKS, INC.,
`Petitioner,
`
`v.
`
`AKAMAI TECHNOLOGIES, INC.,
`Patent Owner.
`____________
`
`Case IPR2016-01894
`Patent 7,472,178 B2
`____________
`
`
`
`Before GREGG I. ANDERSON, JENNIFER MEYER CHAGNON, and
`GARTH D. BAER, Administrative Patent Judges.
`
`ANDERSON, Administrative Patent Judge.
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`571.272.7822
`
`Paper No. 8
`Filed: March 8, 2017
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`LIMELIGHT NETWORKS, INC.,
`Petitioner,
`
`v.
`
`AKAMAI TECHNOLOGIES, INC.,
`Patent Owner.
`____________
`
`Case IPR2016-01894
`Patent 7,472,178 B2
`____________
`
`
`
`Before GREGG I. ANDERSON, JENNIFER MEYER CHAGNON, and
`GARTH D. BAER, Administrative Patent Judges.
`
`ANDERSON, Administrative Patent Judge.
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`IPR2016-01894
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`I. INTRODUCTION
`Limelight Networks, Inc. (“Petitioner”) filed a Petition (“Pet.,”
`Paper 1) pursuant to 35 U.S.C. §§ 311–319 to institute an inter partes
`review of claims 1, 2, and 9 (“the challenged claims”) of U.S. Patent
`No. 7,472,178 B2 (“the ’178 patent,” Ex. 1001), which was filed on April 1,
`2002.1 The Petition is supported by the Declaration of Michael J. Freedman,
`Ph.D. (“Freedman Declaration,” Ex. 1003). Akamai Technologies, Inc.
`(“Patent Owner”) filed a Preliminary Response (“Prelim. Resp.,” Paper 7).
`Pursuant to 35 U.S.C. § 314(a), the Director may not authorize an
`inter partes review unless the information in the petition and preliminary
`response shows a reasonable likelihood that Petitioner would prevail with
`respect to at least one challenged claim. We institute an inter partes review
`of claims 1, 2, and 9. The Board has not made a final determination of the
`patentability of any claim.
`A. Related Proceedings
`The parties advise us that the ’178 patent is involved in co-pending
`litigation captioned Limelight Networks, Inc. v. XO Communications, LLC,
`No. 3:15-cv-00720-JAG (E.D. Va. Nov. 30, 2015) (“District Court” or
`“District Court Lawsuit”). Pet. 1, Paper 4, 3.
`B. The ’178 Patent (Ex. 1001)
`The ’178 patent describes a “method for content storage on behalf of
`participating content providers [that] begins by having a given content
`provider identify content for storage.” Ex. 1001, Abstract. The content
`provider identifies content for storage, which may be “an image file, a
`
`
`1 The ’178 patent claims priority to U.S. Provisional Patent Application
`No. 60/280,917, which was filed on April 2, 2001. Ex. 1001, [65], 1:6–7.
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`streaming media file, a graphic file, a software download, or any other
`digital file identifiable by a locator such as a Uniform Resource Locator
`(URL).” Id. at 2:25–28; see id. at 2:24–28. The content provider uploads
`selected content to a given one of a set of storage sites. Id. at 2:28–30. A
`given storage site is identified by “resolving a first type of URL via a traffic
`management system.” Id. at 2:31–32; see id. at 2:30–33. The content is
`then replicated from the given storage site “to at least one other storage site
`in the set of storage sites.” Id. at 2:34–35; see id. at 2:33–35.
`Content may be identified and downloaded by a “given entity” from a
`given storage site, which “is identified by resolving a second type of URL
`via the traffic management system.” Id. at 2:35; see id. at 2:36–40. “The
`content is then downloaded from the identified given storage site to the
`given entity,” which in one embodiment is “an edge server of a content
`delivery network (CDN).” Id. at 2:40–43.
`Figure 3 of the ’178 patent is reproduced below.
`
`
`Figure 3 “illustrates the content storage system in detail, showing how the
`upload, replication and download services provide a full end-to-end storage
`
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`environment.” Ex. 1001, 9:6–8. Figure 3 shows “two geographically-
`dispersed storage sites 300 and 302.” Id. at 9:9–10. “Each storage site
`includes a set of storage servers 304, a set of FTP (upload) servers 306,
`and . . . a set of HTTP (download) servers 308.” Id. at 9:10–12. A
`“participating content provider machine 308” establishes an FTP or other
`file transfer connection “to one of the storage sites 300, 302, preferably
`under the control of a global traffic manager product [(‘GTM’)], system or
`managed service.” Id. at 9:12–17, 9:47; see id. at 9:45–47. The “GTM
`resolves a storage URL domain . . . to the optimal storage site based on, for
`example, real-time Internet traffic and server load mapping.” Id. at 9:49–53.
`“Once content is uploaded and stored on the storage servers 304, the
`replication mechanism provides two-way replication such [that] the content
`becomes available from both sites even though it was only uploaded to one
`of them.” Id. at 9:19–23. “[E]nd users (e.g., client machines running HTTP
`compatible browser software with appropriate media players for streaming
`content) request that content, which is then delivered on an as needed basis
`from either the CDN edge servers or the HTTP download servers 308 via the
`content delivery network (CDN).” Id. at 9:25–31.
`C. Illustrative Claim
`Of the challenged claims, method claim 1 is the only independent
`claim. Challenged claims 2 and 9 each depend from claim 1. Claim 1 is
`reproduced below:
`1. A method of content storage and delivery, operative in a
`content delivery network (CDN) deployed, operated and
`managed by a service provider on behalf of participating
`content providers, where the participating content providers
`are distinct from the service provider, comprising:
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`(a) deploying a content delivery network that comprises (i) a
`plurality of CDN content servers that are organized into
`sets, (ii) one or more CDN storage sites that are distinct
`from the plurality of content servers; and (iii) one or
`more CDN-managed domain name servers each of
`which is authoritative to resolve predetermined CDN
`specific hostnames, where each such hostname has a first
`portion uniquely associated with a given participating
`content provider and a second portion associated with the
`service provider;
`(b) for a first participating content provider:
`(i) establishing a first content storage directory at a
`storage site;
`(ii) providing the first participating content provider with
`a first CDN-specific hostname for use in association
`with the first content storage directory, the first
`CDN-specific hostname having a first portion
`uniquely associated with the first participating
`content provider, and the second portion;
`(iii) receiving, via upload, and storing, in the first content
`storage directory at the storage site, first content,
`where the first content is one of: a web object, a
`media file, or a software download that the first
`participating content provider desires to be stored and
`delivered over the CDN;
`(c) for a second participating content provider distinct from
`the first content provider:
`(i) establishing a second content storage directory at a
`storage site;
`(ii) providing the second participating content provider
`with a second CDN-specific hostname for use in
`association with the second content storage directory,
`the second CDN-specific hostname having a first
`portion uniquely associated with
`the second
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`the second
`
`participating content provider, and
`portion;
`(iii) receiving, via upload, and storing, in the second
`content storage directory at the storage site, second
`content, where the second content is one of: web
`object, a media file, or a software download that the
`second participating content provider desires to be
`stored and delivered over the CDN;
`(d) upon receipt by a CDN-managed domain name server of
`a DNS query associated with the first CDN-specific
`hostname:
`identifying one or more CDN content servers;
`(i)
`(ii) receiving a request for the first content at one of the
`identified content servers;
`(iii) if the first content is available to be served, serving
`the first content; and
`(iv) if the first content is not available to be served,
`obtaining a copy of the first content from the first
`content storage directory as needed to respond to the
`request for the first content;
`(e) upon receipt by a CDN-managed domain name server of
`a DNS query associated with the second CDN-specific
`hostname:
`(i) identifying one or more CDN content servers;
`(ii) receiving a request for the second content at one of
`the identified CDN content servers;
`(iii) if the second content is available to be served, serving
`the second content; and
`(iv) if the second content is not available to be served,
`obtaining a copy of the second content from the
`second content storage directory as needed to respond
`to the request for the second content;
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`where the second portion is common to each of the first and
`second CDN-specific hostnames, and where the first
`CDN-specific hostname also has associated therewith a
`value that identifies the first content storage directory from
`which the copy of the first content can be obtained, and
`where the second CDN-specific hostname also has
`associated therewith a value that identifies the second
`content storage directory from which the copy of the
`second content can be obtained;
`wherein the one or more CDN storage sites include first and
`second CDN storage sites that are each located in different
`Internet-accessible locations and operate asynchronously
`and autonomously from one another.
`Ex. 1001, 23:63–25:11.
`D. Asserted Grounds of Unpatentability
`Petitioner challenges claims 1, 2, and 9 of the ’178 patent as
`unpatentable on the following grounds. Pet. 3, 15–83.
`References
`Basis
`Claims Challenged
`Speedera2 and Apache3
`§ 103(a) 1, 2, and 9
`Chaudhri-4444 and Apache
`§ 103(a) 1, 2, and 9
`
`
`II. ANALYSIS
`
`A. Claim Construction
`In inter partes review, claim terms are given their broadest reasonable
`interpretation in light of the specification in which they appear. Cuozzo
`
`
`2 U.S. Patent No. 6,405,252 B1, to Ajit Kumar Gupta et al., issued
`June 11, 2002 (“Speedera,” Ex. 1006).
`3 Manuel Alberto Ricart, Apache Server Survival Guide (New Riders, 1996)
`(“Apache,” Ex. 1007).
`4 US 2002/0116444 A1, to Imran Chaudhri et al., published August 22, 2002
`(“Chaudhri-444,” Ex. 1004).
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`Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016); 37 C.F.R.
`§ 42.100(b). We presume that claim terms have their ordinary and
`customary meaning. See Trivascular, Inc. v. Samuels, 812 F.3d 1056, 1061–
`62 (Fed. Cir. 2016) (“Under a broadest reasonable interpretation, words of
`the claim must be given their plain meaning, unless such meaning is
`inconsistent with the specification and prosecution history.”) (internal
`citation omitted); In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed.
`Cir. 2007). Any special definition for a claim term must be set forth in the
`specification with reasonable clarity, deliberateness, and precision. In re
`Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). In the absence of such a
`special definition or other consideration, “limitations are not to be read into
`the claims from the specification.” In re Van Geuns, 988 F.2d 1181, 1184
`(Fed. Cir. 1993). Only those terms that are in controversy need to be
`construed and only to the extent necessary to resolve the controversy. See
`Vivid Techs. Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir.
`1999).
`For purposes of this proceeding, neither party proposes a construction
`for any claim term. Pet. 15; Prelim. Resp. 12. However, at this stage of the
`proceeding, construction issues are raised in the papers regarding the
`following terms.
`1. “CDN storage sites”
`Patent Owner advises us that the phrase “CDN storage sites” has been
`construed by the court in the related District Court Lawsuit to mean
`“physical locations containing a collection of one or more servers that
`provide storage in a content delivery network (CDN).” Prelim. Resp. 12 n.2
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`(quoting Ex. 1013, 21 (District Court Claim Construction Order filed
`September 2, 2016)).
`The term “CDN storage sites” appears in limitation 1a-ii5 of claim 1.
`Petitioner’s showing on limitation 1a-ii concludes that “the WebServers in
`Speedera constitute CDN storage sites that are distinct from the WebCache
`servers.” Pet. 28 (citing Ex. 1006, 10:51–58); see also id. at 63–64 (arguing
`the retargetter nodes of Chaudhri-444 are “CDN storage sites”). At this
`stage of the proceeding, Patent Owner does not contest whether limitation
`1a-ii or any other limitation is taught by the combinations of Speedera and
`Apache or Chaudhri-444 and Apache. Further, Patent Owner “does not
`believe that any claim construction is necessary for purposes of this inter
`partes proceeding.” Prelim. Resp. 12. Thus, the term is not in dispute in
`this proceeding.
`To the extent “CDN storage sites” was in dispute at the District Court,
`the parties’ proposed constructions were very similar. See Ex. 1013, 21.
`Applying the broadest reasonable interpretation standard, we agree with the
`District Court that the claim language reciting that each “CDN storage site”
`is located in a different “Internet-accessible location” suggests that the
`storage sites are physical places. Id. at 22 (quoting Ex. 1001, 25:9–10; see
`
`
`5 We adopt Petitioner’s numbering format for identifying the claim
`limitations, which substantially matches like numbering in the claims as
`printed. In some instances, Petitioner breaks out limitations into parts or
`adds additional numbering for limitations not specifically numbered in the
`printed patent. See, e.g., Pet. 18–31 (breaking limitation 1a-iii into two
`limitations, 1a-iii-a and 1a-iii-b); id. at 43–47 (adding limitations 1f, 1g, 1h,
`and 1i).
`
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`Ex. 1001, 25:8–12). Beyond that, we need not further expressly construe the
`term for purposes of this Decision. See Vivid Techs. Inc., 200 F.3d at 803.
`2. “deployed, operated and managed”
`Claim 1’s preamble recites, in pertinent part, “a content delivery
`network (CDN) deployed, operated and managed by a service provider”
`(emphasis added). Petitioner acknowledges, in the case of the challenge
`based on Chaudhri-444, the preamble may be limiting. Pet. 54. We
`determine that the preamble of claim 1 (Ex. 1001, 23:63–67) provides
`antecedent basis for a “service provider” and a “content provider . . .
`distinct” from the service provider. All of these terms appear later in claim 1
`and look to the preamble for antecedent basis. The preamble is therefore
`limiting. Eaton Corp. v. Rockwell Int’l Corp., 323 F.3d 1332, 1339 (Fed.
`Cir. 2003) (“When limitations in the body of the claim rely upon and derive
`antecedent basis from the preamble, then the preamble may act as a
`necessary component of the claimed invention.”).
`Second, Petitioner advises us that the Patent Owner argued to the
`District Court that Chaudhri-444 “does not ‘deploy, operate, and manage’ a
`CDN because [it] teaches a management/intermediary between existing
`CDNs and does not ‘deploy’ the third-party CDN’s computers (e.g., as
`shown in FIG. 3) itself.” Pet. 58 (quoting Ex. 1016,6 1–2). Specifically,
`Patent Owner argued “Chaudhri teaches ‘a management/intermediate
`function or module or system between various competing CDN systems and
`publishers.’” Ex. 1016, 2 (quoting Ex. 1004 ¶ 10). Patent Owner has not
`taken a position at this stage in this proceeding, but seemingly argued in the
`
`
`6 “Counterclaim Plaintiffs Akamai and MIT’S Preliminary Validity
`Contentions” from the District Court.
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`District Court that Chaudhri-444 is limited to an intermediate deployment
`between CDNs, suggesting that the preamble of the ’178 patent be construed
`as requiring direct deployment of the CDN.
`Petitioner, on the other hand, argues “[u]nder the BRI standard,
`‘deploy, operate, and manage’ clearly encompasses both direct and indirect
`deployment, operation and management of a CDN.” Pet. 58. Petitioner
`proceeds to argue, applying this construction, that Figure 3 of Chaudhri-444
`meets the limitation. Id.
`The preamble of claim 1 in its entirety recites
`[a] method of content storage and delivery, operative in a content
`delivery network (CDN) deployed, operated and managed by a
`service provider on behalf of participating content providers,
`where the participating content providers are distinct from the
`service provider.
`Ex. 1001, 23:63–67. The plain and ordinary meaning of the language
`does not preclude indirect deployment, operation, and management of
`a CDN. The specification states that “[o]ne preferred deployment
`uses outsourced storage, such as storage available from a storage
`service provider (SSP).” Id. at 6:17–19. The preceding is the only
`reference to “deploy” outside of the background and claim language.
`The description of “outsourced storage” suggest that “deployment,” as
`used in the specification, is broader that what Patent Owner proposes
`in the District Court.
`At this stage of the proceeding and on this record we determine
`that “deployed, operated and managed” includes indirect deployment,
`operation, and management of a CDN.
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`B. Alleged Deficiencies in the Petition
`Patent Owner contends the Petition improperly incorporates by
`reference Exhibits 1008 and 1012 into the Petition. Prelim. Resp. 4–8.
`Patent Owner argues specifically that Petitioner’s reliance on Exhibits 1008
`and 10127 amounts to an improper incorporation by reference of arguments
`from one document into another document. Id. at 6 (citing 37 C.F.R.
`§ 42.6(a)(3)). Patent Owner also alleges that Exhibits 1009, 1010, and 10118
`are improperly incorporated by reference. Id. at 9–10. As a result of the
`alleged improper incorporation by reference, Patent Owner contends the
`Petition exceeds the word count limit imposed on petitions for inter partes
`review. Id. at 7–8; see 37 C.F.R. § 42.24(a)(i) (setting the word count limit
`for a Petition in an inter partes review to 14,000 words).
`Patent Owner also contends the Petition’s reliance on Exhibits 1008
`and 1012 is a violation of 37 C.F.R. § 42.104(b)(4), because the Petition
`broadly cites to Exhibits 1008 and 1012, and according to Patent Owner, it
`does not “specify where each element of the claim is found in the prior art
`patents or printed publications relied upon.” Prelim. Resp. 8 (quoting
`37 C.F.R. § 42.104(b)(4)). Patent Owner concludes that
`
`
`7 Exhibit 1008 is a claim chart in support of the challenge based on
`Chaudhri-444 and Apache “created for this analysis” by Dr. Freedman.
`Ex. 1003 ¶ 96. Exhibit 1012 is a claim chart in support of the challenge
`based on Speedera and Apache “created for this analysis” by Dr. Freedman.
`Id. ¶ 90.
`8 Exhibits 1009, 1010, and 1011 are claim charts in support of Dr.
`Freedman’s opinion that “a [person of ordinary skill in the art] would
`understand the disclosures in Chaudhri-Prov [Exhibit 1005, US Provisional
`Application No. 60/186054] support the applicable parts of the specification
`of Chaudhri-444.” Ex. 1003 ¶ 70.
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`[b]y including pages of claim charts filled with unexplained
`citations that are either string cited in the Petition or do not
`appear at all in the Petition, Petitioner improperly shifts the
`burden to the Board and the Patent Owner to discern what
`particular portions of each reference are being relied upon as
`meeting the pertinent claim limitations.
`Id. at 8–9.
`1. Exhibits 1008 and 1012
`Pursuant to our rules, “[a]rguments must not be incorporated by
`reference from one document into another document. Combined
`motions, oppositions, replies, or other combined documents are not
`permitted.” 37 C.F.R. § 42.6(a)(3); see also DeSilva v. DiLeonardi,
`181 F.3d 865, 866–67 (7th Cir. 1999) (Incorporation “by reference
`amounts to a self-help increase in the length of the [] brief[,]” and “is
`a pointless imposition on the court’s time. A brief must make all
`arguments accessible to the judges, rather than ask them to play
`archaeologist with the record.”).
`Patent Owner cites Cisco Sys., Inc. v. C-Cation Techs., LLC,
`Case IPR2014-00454, Decision Denying Institution, slip op. at 7–10
`(PTAB Aug. 29, 2014) (Paper 12) (informative), where the panel
`declined to “sift through” an extensive record including footnote
`references to multiple paragraphs of an expert declaration, which then
`referenced additional pages of claim charts. Cisco, slip op. at 10. As
`explained in Cisco, citations to “large portions of another document,
`without sufficient explanation of those portions, amounts to
`incorporation by reference.” Id. at 8. Patent Owner also cites to
`several non-precedential decisions of the Board that found improper
`incorporation by reference into a Petition. See Prelim. Resp. 6–7.
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`We begin with a discussion of how the claim charts
`(Exhibits 1008 and 1012) are used in the Petition. Petitioner’s expert,
`Dr. Freedman, prepared the claim charts, which include a claim by
`claim analysis of the Speedera-based challenge (Exhibit 1012) and the
`Chaudhri-444-based challenged (Exhibit 1008), each mapping the
`asserted references to the challenged claims. See Pet. 24 n.3
`(Speedera); id. at 54 n.7 (Chaudhri-444). The Freedman Declaration
`includes one statement about each claim chart, e.g., for Speedera,
`Dr. Freedman states “I provide my analysis explaining where each
`element of each claim is found in Speedera and Apache in a claim
`chart that I have created for this analysis in Ex 1012.” Ex. 1003 ¶ 90;
`see also id. ¶ 91 (regarding Exhibit 1008 for Chaudhri-444).9
`Because, as discussed above, the Freedman Declaration does
`not cite to specific portions of the claim charts, the Petition
`necessarily cites directly to Exhibits 1008 and 1012, not to the
`Freedman Declaration, when discussing these claim charts. See, e.g.,
`Pet. 24, 54. However, the Petition, like the Freedman Declaration, is
`devoid of any explanation of the claim charts, beyond the bare
`citations thereto.
`We determine that the Petition’s use of Exhibits 1008 and 1012
`does not meet the requirements of our rules. See 37 C.F.R.
`§ 42.22(a)(2) (providing that the Petition must contain “a detailed
`explanation of the significance of the evidence”); 37 C.F.R.
`
`
`9 The Freedman Declaration does not specifically state that Exhibits 1008
`and 1012 are incorporated into his declaration nor are the claim charts
`signed by Dr. Freedman.
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`§ 42.104(b)(5) (providing that the Petition must “identif[y] specific
`portions of the evidence that support the challenge”). The failure to
`identify specific portions of the supporting evidence may result in
`exclusion of the evidence or giving the evidence little or no weight.
`37 C.F.R. § 42.104(b)(5).
`In addition to the preceding, Exhibits 1008 and 1012 are
`voluminous, respectively 37 and 52 pages, and include large amounts
`of copied language from the references. Each also includes summary
`language above each limitation, presumably authored by
`Dr. Freedman. See, e.g., Ex. 1012, 7.10 The Petition does not
`specifically cite to, quote, or discuss the summary language or any
`relevance it may have to the asserted challenges.
`Additionally, upon an initial review, Exhibit 1012 includes
`citations from the references that are not found in the Petition. For
`example, for the first two limitations of claim 1, 1a-i and 1a-ii,
`Exhibit 1012 cites to Speedera — Ex. 1006, 5:41–53 (1a-i) and
`Ex. 1006, 2:1–8 (1a-ii). These two citations to the references are
`missing from the Petition’s analysis of the same two limitations. See
`Pet. 24–28. Absent incorporation, these citations are neither included
`nor explained in the Petition. We have not delved further into what
`additional disclosure, if any, from the references is present in Exhibits
`1008 and 1012, but lacking in the Petition.
`
`
`10 For limitation 1a-ii, Exhibit 1012 includes the following summary
`language: “Speedera discloses a CDN comprising multiple WebServers
`(orange) within POPs that are distinct from the plurality of WebCaches.
`Each WebServer within a POP is a CDN storage site, while each WebCache
`is a CDN content server.”
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`In summary, the Petition references the claim charts with
`insufficient explanation of their significance. Further, the claim charts
`include summary language, which is not discussed in the Petition or
`the Freedman Declaration. Finally, the claim charts include additional
`disclosure from the references copied into the claim charts, which are
`neither cited nor discussed in the Petition. In exercising our discretion
`under 37 C.F.R. § 42.104(b)(5), we decline to give any weight to
`Exhibits 1008 and 1012.
`Further, we determine that under the particular facts and
`circumstances presented herein, the Petition violates the rule against
`incorporation by reference into a petition arguments made only in a
`supporting document. See 37 C.F.R. § 42.6(a)(3); Cisco, slip op. at 8
`(stating that citations to “large portions of another document, without
`sufficient explanation of those portions, amounts to incorporation by
`reference”). Accordingly, we have not considered Exhibits 1008 and
`1012 for purposes of this decision. We, therefore, need not consider
`whether or not the word count rule has also been violated. See Office
`Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,764 (Aug. 14,
`2012) (explaining that “[c]laim charts submitted as part of a
`petition . . . count towards applicable page limits”).
`Because we find below that, even without Exhibits 1008 and
`1012, the Petition has shown a reasonable likelihood that at least one
`claim of the ’178 patent is unpatentable, we are not excluding the
`exhibits from the evidence of record at this time.
`
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`
`2. Exhibits 1009–1011
`As to Exhibits 1009 through 1011, the Petition asserts that the filing
`date of Chaudhri-444 is sufficient to qualify Chaudhri-444 as prior art under
`35 U.S.C. § 102(e), without reliance on the Chaudhri-Prov filing date.
`Pet. 4. Patent Owner does not contest that assertion. See Prelim. Resp. 9.
`At this stage of the proceeding, we are not presented with an issue as to
`whether or not the ’178 patent and Chaudhri 444 are entitled to the filing
`dates of their respective provisional applications.
`On this record, Petitioner has provided sufficient evidence that
`Chaudhri-444 is prior art to the ’178 patent, even without the benefit of the
`Chaudhri-Prov filing date. See Pet. 4–5 (citing Dynamic Drinkware, LLC v.
`National Graphics, Inc., 800 F.3d 1375 (Fed. Cir. 2015)). At this stage of
`the proceeding, Petitioner need not rely on the Chaudhri-Prov to support its
`contention that Chaudhri-444 is prior art. Thus, we disagree with Patent
`Owner’s contention that Exhibits 1009 through 1011 are necessary for our
`consideration of the Petition or are improperly incorporated by reference.
`See Prelim. Resp. 9.
`Under Dynamic Drinkware the priority date of a prior art reference is
`a shifting burden. See Dynamic Drinkware, 800 F.3d at 1379. That
`Petitioner has met its burden of production at this stage does not relieve it of
`the ultimate burden of persuasion to prove Chaudhri-444 is prior art. Id.
`Exhibits 1009 through 1011 may be part of the evidence considered during
`trial if the priority date of Chaudhri-444 becomes an issue. Petitioner’s
`inclusion of these exhibits at this time is appropriate if priority had been
`raised at this stage of the proceeding in order for Petitioner to meet its
`
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`burden of going forward with evidence. Submitting the evidence at this time
`provides notice to Patent Owner of Petitioner’s evidence.11
`Exhibits 1009 through 1011 are not incorporated by reference into the
`Petition. They are not part of Petitioner’s substantive case and are provided
`on the potential evidentiary issue of priority date. At this stage of the
`proceeding, priority has not been shown to be an issue and we need not
`consider Exhibits 1009 through 1011 in order to institute trial.
`C. Prior Art Already Considered by the Examiner
`Patent Owner argues we should exercise our discretion under
`35 U.S.C. § 325(d) to deny the Petition, because Speedera was cited to the
`Examiner during prosecution of the application for the ’178 patent in an
`information disclosure statement (“IDS”). Prelim. Resp. 10–12 (citing
`Ex. 1002,12 105, 126). We are not persuaded on this record that a citation to
`Speedera in an IDS, without substantive discussion of the reference by the
`Examiner, is sufficient reason to exercise our discretion under 35 U.S.C.
`§ 325(d) to decline to institute an inter partes review.
`In addition, as Patent Owner acknowledges, we have discretion as to
`whether to proceed. Specifically, we may “reject the petition” where “the
`same or substantially the same prior art or arguments previously were
`presented to the Office.” 35 U.S.C. § 325(d). Even accepting Patent
`Owner’s argument, the other ground raised in the Petition based on
`Chaudhri-444 as the principle reference is not resolved. Accordingly, we
`
`
`11 We are not deciding whether Petitioner’s attachment of this evidence
`(without discussion in the Petition) would have been sufficient if Patent
`Owner had raised this issue in the preliminary response.
`12 File History of the ’178 patent.
`
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`decline to exercise our discretion to reject the Speedera challenge under
`section 325(d).
`
`D. Obviousness Analysis
`A claim is unpatentable under 35 U.S.C. § 103(a) if the differences
`between the subject matter sought to be patented and the prior art are such
`that the subject matter as a whole would have been obvious at the time the
`invention was made to a person having ordinary skill in the art to which said
`subject matter pertains. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
`(2007). The question of obviousness is resolved on the basis of underlying
`factual determinations including: (1) the scope and content of the prior art;
`(2) any differences between the claimed subject matter and the prior art;
`(3) the level of ordinary skill in the art; and (4) objective evidence of
`nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
`1. Level of Ordinary Skill
`Petitioner contends a person of ordinary skill in the art, at the time of
`the earliest filing date claimed in the application for the ’178 patent, “would
`have at least a Bachelor’s degree in Computer Science, Computer
`Engineering, or the equivalent, and several years’ experience in the field of
`distributed systems, name services, or Internet content delivery.” Pet. 14
`(quoting Ex. 1003 ¶ 28).13 Patent Owner does not state a position. At this
`
`
`13 Petitioner mistakenly cites to “§ X,” entitled “Claim Construction” in the
`Freedman Declaration. Section VI (including ¶¶ 20–29), is the “Level of
`Ordinary Skill in the Art” section of Dr. Freedman’s declaration. The
`Petition and paragraph 28 of the Freedman Declaration include the same
`language. We insert the correct citation.
`
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`stage of the proceeding, we adopt Petitioner’s proposed level of ordinary
`skill.
`
`2. Obviousness over Speedera and Apache
`Petitioner alleges claims 1, 2, and 9 would have been obvious to a
`person of ordinary skill in the art over Speedera and Apache. Pet. 15–50.
`Petitioner provides a table that identifies specifically those limitations of
`claim 1 that are disclosed in Speedera and those limitations disclosed by
`Apache. Id. at 15. Petitioner cites the Freedman Declaration in support of
`its positions. See Ex. 1003 ¶¶ 86–90.
`At this time, Patent Owner argues only the issues discussed
`previously, namely the sufficiency of the Petition, and section 325(d). We
`proceed without a response from Patent O
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