throbber
Trials@uspto.gov
`571.272.7822
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` Paper No. 45
` Entered: August 9, 2018
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
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`
`
`
` FEDEX CORPORATION,
`Petitioner,
`
`v.
`
`INTELLECTUAL VENTURES II LLC,
`Patent Owner.
`____________
`
`Case IPR2017-00859
`Patent 9,047,586 B2
`____________
`
`
`
`Before TREVOR M. JEFFERSON, DAVID C. MCKONE, and
`JOHN A. HUDALLA, Administrative Patent Judges.
`
`JEFFERSON, Administrative Patent Judge.
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`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
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`IPR2017-00859
`Patent 9,047,586 B2
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`A.
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`Background
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`I.
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`INTRODUCTION
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`FedEx Corporation (“Petitioner”) filed a Petition (Paper 2, “Pet.”) to
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`institute an inter partes review of claims 7, 8, 12, 13, 16, 18, and 19 of U.S.
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`Patent No. 9,047,586 B2 (Ex. 1001, “the ’586 patent”). Petitioner indicates
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`that FedEx Corp., FedEx Corporate Services, Inc., Federal Express
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`Corporation, FedEx Ground Package System, Inc., FedEx Freight, Inc.,
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`FedEx Custom Critical, Inc., FedEx Office and Print Services, Inc., and
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`GENCO Distribution System, Inc., are real parties in interest. Pet. 82–83.
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`Intellectual Ventures II LLC (“Patent Owner”), filed a Preliminary Response
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`(Paper 6, “Prelim. Resp.”).
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`Pursuant to 35 U.S.C. § 314, in our Institution Decision (Paper 7,
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`“Dec.”), we instituted this proceeding as to claims 7, 8, 12, and 13 of the
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`’586 patent.
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`Patent Owner filed a Patent Owner’s Response (Paper 20, “PO
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`Resp.”), and Petitioner filed a Reply to the Patent Owner Response
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`(Paper 24, “Reply”).
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`Petitioner relies on the Declaration of Mr. Mark Reboulet.
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`(Ex. 1005, “Reboulet Decl.”), and Patent Owner relies on the Declaration of
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`Daniel W. Engels, Ph.D. (Ex. 2002, “Engels Decl.”; Ex. 2005, “2nd Engels
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`Decl.”).
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`Oral argument was held on April 26, 2018 (Paper 34, “Tr.”).
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`On April 24, 2018, the Supreme Court held that a decision to institute
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`under 35 U.S.C. § 314 may not institute on fewer than all claims challenged
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`in the petition. See SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1359–60
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`2
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`IPR2017-00859
`Patent 9,047,586 B2
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`(2018). Following the Supreme Court’s decision, we modified our Decision
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`on Institution to institute on all of the challenged claims and all of the
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`grounds presented in the Petition, namely claims 16, 18, and 19. Paper 42.
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`Notwithstanding, the parties waived additional briefing and agreed that we
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`should base our final written decision for claims 16, 18, and 19 on the
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`evidence and arguments presented in the Petition and the Preliminary
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`Response. Id.
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`We have jurisdiction under 35 U.S.C. § 6. This Decision is a final
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`written decision under 35 U.S.C. § 318(a) as to the patentability of claims 7,
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`8, 12, 13, 16, 18, and 19. Based on the record before us, Petitioner has
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`proved, by a preponderance of the evidence that claims 7, 8, 12, and 13 of
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`the ’586 patent are unpatentable, but not claims 16, 18, and 19.
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`B.
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`Related Proceedings
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`The parties indicate that the ’586 patent has been asserted in
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`Intellectual Ventures II LLC v. FedEx Corp., No. 2:16-cv-980 (E.D. Tex.).
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`Pet. 83; Paper 4, 1.
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`C. Asserted Prior Art References
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`Petitioner relies on the following prior art:
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`AMERICAN NATIONAL STANDARD FOR MATERIAL HANDLING—UNIT
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`LOADS AND TRANSPORT PACKAGES—TWO-DIMENSIONAL SYMBOLS, ANSI
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`10.8.3M-1996 (1996) (Ex. 1002, “ANSI Standard”).
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`U.S. Patent No. 5,298,731, issued Mar. 29, 1994 (Ex.1003, “Ett”).
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`GUIDE TO BAR CODING WITH UPS FOR CUSTOMERS GENERATING BAR
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`CODE LABELS, VERSION III (Ex. 1004, “UPS”).
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`3
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`IPR2017-00859
`Patent 9,047,586 B2
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`D.
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`Instituted Grounds
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`We instituted trial on the following grounds of unpatentability
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`(Dec. 22–23; Paper 42).
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`References
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`Basis
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`Claims Challenged
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`ANSI Standard and Ett
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`§ 103(a) 7, 8, 12, 13, 16, 18, and 19
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`ANSI Standard and UPS
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`§ 103(a) 7, 12, 16, 18, and 19
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`ANSI Standard, UPS,
`and Ett
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`E.
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`The ’586 Patent
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`§ 103(a) 8 and 13
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`The ’586 patent describes a method of tagged bar code data
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`interchange that includes creating electronic and/or printed documents with
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`tagged bar coded information. Ex. 1001, [57]. Figure 2, reproduced below,
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`illustrates an example:
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`4
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`IPR2017-00859
`Patent 9,047,586 B2
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`Figure 2 is a pictorial representation of a document containing tagged bar
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`codes. Id. at. 4:1–2. According to the ’586 patent, function key tags identify
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`data fields. Id. at 5:31–33.
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`Claim 7, reproduced below, is illustrative of the invention:
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`7. A computer-readable storage device storing computer
`executable instructions that are executable by a computer
`system to cause the computer system to perform operations for
`data interchange, the operations comprising:
`creating an electronic document having a plurality of bar
`codes, wherein the plurality of bar codes encode respective data
`tags and data items, and wherein at least one of the data tags
`includes an identifier identifying one of the data items;
`sending the electronic document for decoding of a first
`one of the plurality of bar codes to recover a first data tag and a
`first data item.
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`Ex. 1001, 10:29–40.
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`II. ANALYSIS
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`A.
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`Claim Construction
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`
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`We interpret claims of an unexpired patent using the broadest
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`reasonable construction in light of the specification of the patent in which
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`they appear. See 37 C.F.R. § 42.100(b); Cuozzo Speed Techs., LLC v. Lee,
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`136 S. Ct. 2131, 2144–45 (2016). In applying a broadest reasonable
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`construction, claim terms generally are given their ordinary and customary
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`meaning, as would be understood by one of ordinary skill in the art in the
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`context of the entire disclosure. See In re Translogic Tech., Inc., 504 F.3d
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`1249, 1257 (Fed. Cir. 2007).
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`Limitations with the language “means” or “means for” are presumed
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`to invoke 35 U.S.C. § 112 ¶ 6. See Williamson v. Citrix Online, LLC, 792
`5
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`IPR2017-00859
`Patent 9,047,586 B2
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`F.3d 1339, 1348–49 (Fed. Cir. 2015) (en banc in relevant part) (“use of the
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`word ‘means’ creates a presumption that § 112, ¶ 6 applies”); see also In re
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`Donaldson Co., 16 F.3d 1189, 1193 (Fed. Cir. 1994) (“[P]aragraph six
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`applies regardless of the context in which the interpretation of means-plus-
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`function language arises, i.e., whether as part of a patentability
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`determination in the PTO or as part of a validity or infringement
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`determination in a court.”). The sixth paragraph of 35 U.S.C. § 112 provides
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`that
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`[a]n element in a claim for a combination may be expressed as a
`means or step for performing a specified function without the
`recital of structure, material, or acts in support thereof, and such
`claim shall be construed to cover the corresponding structure,
`material, or acts described in the specification and equivalents
`thereof.
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`Where a challenged claim contains a means-plus-function limitation under
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`35 U.S.C. § 112, sixth paragraph, the Petitioner “must identify the specific
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`portions of the specification that describe the structure, material, or acts
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`corresponding to each claimed function.” 37 C.F.R. § 42.104(b)(3).
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`In the present case, for the decoding means of claim 16, both parties
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`identify the parsing and data cache application that identifies scanned bar
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`coded data as at least part of the structure corresponding to the function of
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`“decoding the plurality of bar codes to recover the respective data tags and
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`data items,” recited in claim 16. Pet. 11 (citing Ex. 1001, 5:40–42, Figs. 6,
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`9); Prelim. Resp. 16 (citing Ex. 1001, 3:37–47, 4:43–49, 5:40–48, 5:57–67,
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`10:19–20, 10:52–56; Ex. 2002, 5:61–63). Our Decision on Institution
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`agreed with Petitioner regarding the corresponding structure for the means-
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`plus-function limitation of claim 16, but determined that the structure for
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`6
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`IPR2017-00859
`Patent 9,047,586 B2
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`claim 16 also included the algorithm identified in the ’586 patent
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`specification, which Petitioner’s identification omitted. Dec. 6–9, 19–20.
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`The parties have agreed that we should base our final written decision for
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`claims 16, 18, and 19 on the evidence and arguments presented in the
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`Petition and the Preliminary Response. Paper 42. Neither party has
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`addressed or objected to the algorithm (Ex. 1001, 5:40–48) being identified
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`as the structure corresponding to the decoding means of claim 16. Dec. 8–9;
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`see Pet. 10–11, 55–57 (identifying structure but omitting algorithm).
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`Based on the ’586 patent specification and the decoding means of
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`claim 16, and related dependent claims 18 and 19, we determine that the
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`structure includes the algorithm that performs the decoding function. See
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`Ex. 1001, 5:40–48 (describing particular “logic and computer routines” in
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`step 127 of Figure 1). Thus, the corresponding structure is more than a
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`general purpose computer or controller. Pet. 10–11; see Aristocrat Techs.
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`Austl. Party Ltd. vs. Int’l Game Tech., 521 F.3d 1328, 1333 (Fed. Cir. 2008)
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`(quoting Harris Corp. v. Ericsson Inc., 417 F.3d 1241, 1249 (Fed. Cir.
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`2005)).
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`Petitioner does not address the algorithm identified as corresponding
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`structure for the “means for decoding” of independent claim 16 as construed
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`above, and in particular, Petitioner fails to show that the asserted prior art
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`teaches or discloses the algorithm in claim 16 and its dependent claims 18
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`and 19. Accordingly, Petitioner has not shown the unpatentability of
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`claims 16, 18, and 19.
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`7
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`IPR2017-00859
`Patent 9,047,586 B2
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`B.
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`Level of Ordinary Skill
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`Petitioner contends that a person of ordinary skill in the art “would
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`have held at least a Bachelor’s Degree in Electrical Engineering, Computer
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`Engineering, Supply Chain or Logistics Management, or the industry
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`equivalent thereof, and approximately two or more years of industry
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`experience in the field of bar code technology, or the academic equivalent
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`thereof.” Pet. 9. Petitioner bases its argument on the testimony and
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`experience of Mr. Reboulet. Id. (citing Ex. 1005 ¶¶ 56–60).
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`Patent Owner argues that
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`a person of ordinary skill at the time of the invention of the
`’586 patent would have held at least a Bachelor’s Degree in
`Electrical Engineering, Computer Engineering, Computer
`Science, Information Technology, Operations Research, Supply
`Chain or Logistics Management, or the industry equivalent
`thereof, and approximately two or more years of industry
`experience in the field of data interchange, including the
`exchange of electronic information and the various formats for
`that exchange, and specific experience using electronic
`documents for data interchange. (Engels Second Decl. ¶¶ 30–
`31.)
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`PO Resp. 12. Thus, Patent Owner appears to dispute certain aspects of
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`Petitioner’s proposed level of ordinary skill in the art. Id. (citing Ex. 2004,
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`33:2–3; 33:4–22). At the oral hearing, however, Patent Owner stated that
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`differences between the parties’ proposals are not a determinative factor in
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`reaching a conclusion of non-obviousness. Tr. 23:16–24:2.
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`We agree that the differences are not determinative. We also find that
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`Patent Owner’s evidence of the level of skill in the art, although generally
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`expansive regarding “data interchange” and exchange using electronic
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`documents, casts an overly broad net for the ’586 patent, which describes
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`that the “present invention relates generally to bar code technology”
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`(Ex. 1001, 1:19–20). We agree with Petitioner that bar code technology is
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`the technology that forms the background of the claims and specification.
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`Reply 15–16; Daiichi Sankyo Co. v. Apotex, Inc., 501 F.3d 1254, 1257 (Fed.
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`Cir. 2007) (referring to “the invention” and “the claim[s]” to determine the
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`level of ordinary skill in the art). Accordingly, we adopt Petitioner’s
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`identification of the level of ordinary skill in the art as reflecting the claims
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`and specification of the ’586 patent.
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`C.
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`Patent Owner’s Motion to Exclude
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`Patent Owner moves to exclude Exhibits 1002, 1006, 1011, and 1039
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`pursuant to Federal Rules of Evidence 801, 802, and 901. Paper 30 (“PO
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`Mot. Excl.”), 3–7. Patent Owner also seeks to exclude paragraphs 9–23 of
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`the Declarations of Mr. Reboulet (Exhibits 1008 and 1022) and paragraphs
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`6–20 of the Declaration of Mr. Halliday (Exhibit 1023) as inadmissible
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`under Federal Rules of Evidence 602 and 701. PO Mot. Excl. 7–10.
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`1.
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`Exhibits 1002, 1008, 1022, and 1023
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`We are not persuaded by Patent Owner’s motion that Petitioner has
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`failed to show that the ANSI Standard (Exhibit 1002) is authentic and not
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`hearsay. PO Mot. Excl. 1, 3–5. Our prior case, cited by Patent Owner,
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`acknowledges that panels have more often relied on copyright notices as
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`probative evidence of publication. See Ford Motor Co. v. Versata Dev.
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`Grp., Inc., Case IPR2016-01016, at 6 (PTAB Sept. 27, 2016) (Paper 11)
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`(citing cases); see also Ericsson Inc. v. Intellectual Ventures I LLC,
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`IPR2014-00527, Paper 41, at 10–11 (PTAB May 18, 2015). We find the
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`copyright notice on a commercial standards document, such as the ANSI
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`Standard copyright marking that is not directly challenged by the Patent
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`Owner, is generally reliable indicia used by the interested public, absent
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`counterfactual evidence. FRE 803(17); see Ex. 2004, 95:23–96:20;
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`Ex. 1008 ¶ 19; Ex. 1002, vvi. We note that Patent Owner acknowledges that
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`persons of ordinary skill in the art turn to ANSI publications as a recognized
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`source. PO Resp. 15.
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`We agree with Petitioner that the copyright notice of the ANSI
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`Standard
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`is admissible under the residual hearsay exception. FRE 807.
`ANSI has “circumstantial guarantees of trustworthiness” due to
`the voluminous evidence referencing it (e.g., Exs. 1011, 1032–
`1034, 1037), the formalized processes culminating in its
`publication (Ex. 1008 ¶¶ 9, 11–17; 1023 ¶¶ 6, 8–14; Exs. 1009,
`1010), and its status as a standards document. There can be no
`question that industries rely on ANSI standards. E.g., Ex. 1008
`¶ 19; Ex. 1023 ¶ 20; Ex. 2004 at 95:21–96:11, 190:16–194:7.
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`(Paper 34) Pet. Opp. Excl. 2 (footnote omitted). Patent Owner also does not
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`challenge the ANSI Publication Manuals (Exhibits 1009, 1010), which
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`further support the evidence that the ANSI Standard was published as a
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`standards document.
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`We also reject Patent Owner’s argument to exclude the declarations
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`submitted in support of the ANSI Standard, Exhibit 10081 and Exhibit 1023,
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` 1
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` Patent Owner acknowledges that “Exhibits 1008 and 1022 [declarations of
`Mr. Reboulet] are identical in all relevant respects.” PO Mot. Excl. 7.
`Accordingly, our analysis for Exhibit 1008 in this section is equally
`applicable to Exhibit 1022.
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`IPR2017-00859
`Patent 9,047,586 B2
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`under FRE 602 and 701. PO Mot. Excl. 1–5, 8–11. Patent Owner’s
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`citations to particularized knowledge or a lack of personal knowledge by
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`both Messrs. Reboulet and Halliday are not availing. See PO Resp. 35–37;
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`39–44; see, e.g., Ex 2004, 167:7–11, 163:21, 164:20, 165:13–166–21
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`(deposition of Mr. Reboulet); Ex. 2007 26:14–24, 30:6–24, 30:2–31:20
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`(deposition of Mr. Halliday). Patent Owner’s narrow focus on knowledge of
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`the document’s various stamps and publication process does not undermine
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`the import of the testimony of Mr. Reboulet who testified to drafting the
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`document at issue and participating in its approval as a standard. Indeed,
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`such evidence has been accepted as probative of the process of publication
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`and relied upon to establish publication. See Apple Inc. v. VirnetX Inc.,
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`IPR2016-01585, Paper 32, at 14 (PTAB Feb. 20, 2018); Palo Alto Networks,
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`Inc. v. Finjan, Inc., IPR2015-01974, Paper 49, at 22–24 (PTAB Mar. 16,
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`2017); Wangs Alliance Corp. v. Koninklijke Philips N.V., IPR2015-01292,
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`Paper 64, at 14–17 (PTAB Nov. 23, 2016).
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`Similarly, Patent Owner’s arguments do not persuade us that
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`Mr. Halliday lacks personal knowledge regarding Exhibit 1002 based on a
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`failure to directly witness specific events related to the ANSI Standard. PO
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`Mot. Excl. 10–11. We are not persuaded by Patent Owner’s narrow cross-
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`examination regarding direct perception and find that it fails to undermine or
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`refute evidence that Mr. Halliday was an ANSI representative, reviewed the
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`publication of the ANSI Standard, and was familiar with ANSI publication
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`practices. Ex. 1023 ¶¶ 2–6. In sum, Patent Owner’s argument
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`notwithstanding, we find that Mr. Halliday’s and Mr. Reboulet’s testimonies
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`are admissible and based on personal knowledge. Both declarants testify to
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`personal experience with the standards publications at issue.
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`With respect to the authenticity of the ANSI Standard, we credit the
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`declarants’ testimony and evidence in the record as sufficient to establish
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`Exhibit 1002 as authentic. See Ex. 1009, Ex. 1023. In particular,
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`Mr. Reboulet testified that he helped develop ANSI MH10.8.3M-1996
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`(Ex. 1008 ¶ 4) and declared that this standard “has been submitted as Exhibit
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`1002 in this proceeding” (Ex. 1005 ¶ 67). See Ex. 1005 ¶¶ 13, 32; Ex. 1023
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`¶¶ 3, 5; Ex. 2007, 28:6–16. Patent Owner’s narrow focus on the similarities
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`of the declarant testimony and wording of the identification of the ANSI
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`Standard document does not undermine the sufficient proof offered by
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`Petitioner to meet the burden of authenticating the ANSI Standard. See
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`generally Lexington Ins. Co. v. Western Pennsylvania Hosp., 423 F.3d 318,
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`329 (3d Cir. 2005) (the burden of proof for authentication is “slight”).
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`In sum, we deny Patent Owner’s motion to exclude Exhibits 1002,
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`1008, 1022, and 1023.
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`2.
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`Exhibits 1006, 1011, and 1039
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`On the full record, we do not agree with Patent Owner that Exhibits
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`1006, 1039 (excerpts from “The Bar Code Book”), and 1011 (“ANSI
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`Catalog”) are inadmissible. Patent Owner’s arguments regarding Exhibits
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`1006 and 1039 do not address whether the exhibits are admissible under
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`FRE 703. In this case, we find that Exhibits 1006 and 1039 are admissible
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`under FRE 703 to the extent that Petitioner’s expert cited and relied on the
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`documents. We also agree with Petitioner that Exhibit 1011, which lists
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`ANSI publications, is admissible as evidence that is used to show statements
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`regarding the ANSI Standard as being available. Ex. 1009 ¶¶ 20, 22; see
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`Anderson v. United States, 417 U.S. 211, 220 & n.8 (1974) (“Evidence is not
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`hearsay when it is used to prove that a prior statement was made and not to
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`prove the truth of the statement.”). We determine that Petitioner’s declarant
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`discusses Exhibit 1011 to establish that the ANSI Standard is listed in
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`further support of the testimony discussing the publication of the ANSI
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`Standard. Finally, Petitioner’s evidence indicates that the listing of ANSI
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`publications is the type of commercial data relied upon by the interested
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`public, and thus, falls within an exception to hearsay under FRE 803(17).
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`See Ex. 1008 ¶¶ 19–20; Ex. 1023 ¶ 17; Ex. 1011, 4. We deny Patent
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`Owner’s motions to exclude Exhibits 1006, 1039, and 1011.
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`3.
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`Exhibits 1032–1034 and 1037
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`Patent Owner’s contentions that Exhibits 1032–1034 and 1037 should
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`be excluded because they are improperly served supplemental evidence or
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`offer a new theory of public accessibility are misplaced. PO Mot. Excl. 11–
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`13. “[A] motion to exclude is not a vehicle for arguing that a Petitioner’s
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`arguments and supporting evidence are outside the proper scope of a reply.”
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`Palo Alto Networks, Inc. v. Finjan, Inc., IPR2015-01974, Paper 49, at 38
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`(PTAB Mar. 16, 2017); accord Cisco Sys., Inc. v. TQ Delta, LLC, IPR2016-
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`01760, Paper 35, at 42 (PTAB Mar. 12, 2018); Liberty Mut. Ins. Co. v.
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`Progressive Cas. Ins. Co., CBM2013-00004, Paper 53, at 62 (PTAB Mar.
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`13, 2014). Based on the full record, we do not agree with Patent Owner that
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`Petitioner advances a new theory of public availability or publication with
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`the exhibits in question, or submits new versions of documents to establish
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`publication of the original document, unlike the document in question in
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`Dropbox, Inc. v. Synchronoss Techs., Inc., IPR2016-00850, Paper 41, at 18–
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`21 (PTAB Oct. 5, 2017). See PO Mot. Excl. 12.
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`Patent Owner also argues that Exhibit 1037 is inadmissible because it
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`is irrelevant under FRE 402. PO Mot. Excl. 13. Patent Owner’s arguments
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`that the evidence has “no probative value” under FRE 401 and 402 is
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`conclusory and unduly limits Exhibit 1037. Relevant evidence need only
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`make a finding “more probable” than it would be without the evidence.
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`FRE 401(a). Patent Owner has not identified sufficient prejudice or shown
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`that Exhibit 1037 lacks minimal relevance to the inquiry regarding the
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`publication of Exhibit 1002.
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`We deny Patent Owner’s motions to exclude Exhibits 1032–1034 and
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`1037.
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`D.
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`Asserted Prior Art
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`1.
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`ANSI Standard
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`The ANSI Standard describes using two-dimensional symbols in
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`conjunction with unit loads and transport packages to convey data between
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`trading partners. Ex. 1002 § 1.1. Figure 17, reproduced below, illustrates an
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`example:
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`14
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`Figure 17 is a pictorial representation of a label complying with
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`standard encoding “Formats ‘01’ and ‘06’ using a MaxiCode symbol for
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`automated sortation/tracking.” Id. § 7.8. In the example set forth in
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`Figure 17, carrier data (i.e., data Format “01”) are combined with Data
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`Identifier data (data Format “06”). Id.
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`2.
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`Ett
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`Ett describes a data processing system for combining alphanumeric
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`data streams into a bar code representation. Ex. 1003, [57]. Figure 1,
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`reproduced below, illustrates an example:
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`15
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`Patent 9,047,586 B2
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`Figure 1 is a block diagram of system comprising general purpose
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`computer 20, display 18, keyboard 20, scanner 21, printer 22, and memory
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`12. Id. at 3:43–47. According to Ett, Bar Code Generator code 48, Bar
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`Code Interpreter code 50, and Bar Code Reading code 52 reside in memory
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`12. Id. at 4:9–15. To generate and print combined bar codes, character data
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`is entered using keyboard 20 and binary data is entered by a binary input
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`channel. Id. at 4:16–20. The inputs are converted to binary sequences, with
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`one binary stream representing bar widths and space widths, and the other
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`stream representing bar heights. Id. at 4:20–25. The two streams are stored
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`in memory 12.
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`Ett further describes that Bit Graphic Code Module 46 or Printer
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`Control Code Module 48 uses stored bit data to generate bit maps
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`16
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`IPR2017-00859
`Patent 9,047,586 B2
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`representing bars and spaces in the bar code thereby creating a combined bar
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`code pattern. Id. at 4:31–39. When the combined bar code pattern is
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`completed, it is sent as a graphic bit stream to the printer according to the
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`format required by the printer. Id. at 4:40–44.
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`3. UPS
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`UPS describes specifications to follow when “generating your own
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`bar code and MaxiCode labels.” Ex. 1004, 3. In particular, UPS provides
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`recommended label formats. Id. at 18.
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`E.
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`Printed Publication Status of UPS and ANSI Standard
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`1. UPS
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`Petitioner contends “UPS is a printed publication authored and
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`published by UPS in January 1996.” Pet. 64 (citing Ex. 1004, 45).
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`Petitioner submits and relies on the deposition testimony of Mr. Lewis taken
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`in another proceeding, i.e., Bartex Research, LLC v. FedEx Corp., No. 6:07-
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`cv-00385 (E.D. Tex.). Id.
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` Patent Owner contends and we agree that “Petitioner has not made a
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`preliminary showing that UPS was publicly accessible before May 30,
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`2001,” because “[t]he only evidence Petitioner offers to support its assertion
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`that UPS was publicly available is the 8-year old Lewis Transcript from an
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`unrelated litigation.” Prelim. Resp. 20. Patent Owner further contends that
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`Petitioner has not established that the transcript relates to UPS because
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`Petitioner did not submit the exhibit that was the subject of Mr. Lewis’
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`deposition testimony. Id. at 20–22.
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`17
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`We are not persuaded that Petitioner has sufficiently shown by a
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`preponderance of the evidence that UPS qualifies as a prior art printed
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`publication. The last page of UPS includes the following: “01880273 REV.
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`1/96 50M.” Ex. 1004, 47. Although “1/96” appears to be the date January
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`1996, the annotation itself does not indicate that the document was
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`disseminated on that date. Additionally, the deposition testimony from
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`Bartex that Petitioner relies on (Pet. 64 (citing Ex. 1012, 58–60)) pertains to
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`“Exhibit 4” (Ex. 1012, 58–60), which has not been submitted in this
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`proceeding. In sum, we have no way to determine if UPS is the same as
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`“Exhibit 4,” and Petitioner fails to establish as much. Thus, we do not find
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`Mr. Lewis’ testimony regarding “Exhibit 4” persuasive, nor do we find that
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`the record contains sufficient evidence to support the finding that UPS was
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`publicly disseminated. Thus, Petitioner has not established that UPS
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`qualifies as a prior art printed publication.
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`Accordingly, Petitioner has failed to show that the two grounds
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`including UPS render the challenged claims unpatentable by a
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`preponderance of the evidence.
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`2.
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`ANSI Standard
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`Petitioner and Patent Owner vigorously dispute the printed publication
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`status of the ANSI Standard. PO Resp. 34–37. Specifically, Patent Owner
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`argues that Petitioner has failed to show by a preponderance of the evidence
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`that the ANSI Standard was disseminated to the interested public. Patent
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`Owner further argues that the ANSI Standard is not self-authenticating and
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`that Petitioner’s summary assertion of its availability as of August 1996 is
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`18
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`based on declarants who lack personal knowledge sufficient to establish the
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`publication. Id.
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`Under 35 U.S.C. § 311(b), Petitioner bears the ultimate burden of
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`persuasion to prove unpatentability by a preponderance of the evidence
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`based on “prior art consisting of patents or printed publications.” 35 U.S.C.
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`§ 311(b); see DynamicDrinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d
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`1375, 1378–79 (Fed. Cir. 2015). “Because there are many ways in which a
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`reference may be disseminated to the interested public, ‘public accessibility’
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`has been called the touchstone in determining whether a reference
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`constitutes a ‘printed publication’ bar under 35 U.S.C. § 102(b).” In re Hall,
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`781 F.2d 897, 898–99 (Fed. Cir. 1986) (citations omitted). Whether a
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`reference is publicly accessible is determined on a case-by-case basis based
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`on the “facts and circumstances surrounding the reference’s disclosure to
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`members of the public.” In re Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir.
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`2004) (citations omitted). A reference will be considered publicly accessible
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`if it was “disseminated or otherwise made available to the extent that
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`persons interested and ordinarily skilled in the subject matter or art
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`exercising reasonable diligence, can locate it.” Kyocera Wireless Corp. v.
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`Int’l Trade Comm’n, 545 F.3d 1340, 1350 (Fed. Cir. 2008) (citations
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`omitted) (deeming a GSM standard was “sufficiently accessible, at least to
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`the public interested in the art” (citing In re Hall, 781 F. 2d at 899)). “[A]
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`printed publication need not be easily searchable after publication if it was
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`sufficiently disseminated at the time of its publication.” Suffolk Techs., LLC
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`v. AOL Inc., 752 F.3d 1358, 1365 (Fed. Cir. 2014). Whether a reference
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`qualifies as a printed publication is a legal conclusion based on underlying
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`19
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`Patent 9,047,586 B2
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`factual determinations. See In re Lister, 583 F.3d 1307, 1311 (Fed. Cir.
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`2009).
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`On the full record, we determine that a preponderance of the evidence
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`shows that the ANSI Standard is a printed publication that was available by
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`May 2001. We credit Petitioner’s declarant testimony, which supports that
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`the ANSI Standard was published in 1996 to the public interested in the
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`standards and made available to the public. Ex. 1008 ¶¶ 3–4, 8–23;
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`Ex. 1023 ¶¶ 2–20. As Petitioner notes (Pet. Reply 17–18), our Board has
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`held previously that ANSI standards are printed publications. See, e.g.,
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`Cisco Sys., Inc. v. TQ Delta, LLC, IPR2016-01007, Paper No. 38 (ANSI
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`T.1413-1995). In fact, Patent Owner’s arguments acknowledge and cite its
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`own declarant’s testimony that known ANSI standards are where persons
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`ordinarily skilled in the art would look for relevant barcode information. PO
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`Resp. 15 (“A person of ordinary skill who wanted information specific to 1D
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`barcodes, however, would look elsewhere, such as the 1993 ANSI
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`MH10.8M standard directed to 1D barcodes.”).
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`As discussed above with respect to Patent Owner’s Motion to
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`Exclude, we are not persuaded by Patent Owner’s argument that Petitioner’s
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`declarants lack personal knowledge to testify about the publication and
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`public accessibility of the ANSI Standard. Patent Owner’s arguments (PO
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`Resp. 40) do not undermine the testimony that the ANSI Standard was
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`sufficiently disseminated to be a printed publication. See Ex. 1023 ¶ 20;
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`Ex. 2004, 189:4–193:7, 197:4–199:25; see also In re Lister, 583 F.3d 1307,
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`1314 (Fed. Cir. 2009) (“[O]nce accessibility is shown, it is unnecessary to
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`show that anyone actually inspected the reference.”). Indeed, Patent
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`20
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`IPR2017-00859
`Patent 9,047,586 B2
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`Owner’s attacks (PO Resp. 41–42) on Petitioner’s declarants’ lack of precise
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`memory regarding the ANSI Standard fail to undermine persuasive
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`testimony from witnesses directly involved in the creation of the ANSI
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`Standard and the process of its publication by the ANSI organization. See
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`e.g., Ex. 1005 ¶¶ 13, 32; Ex. 1023 ¶¶ 3, 5; Ex. 2007, 28:6–16.
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`Patent Owner’s reliance on Kinetic Technologies., Inc. v. Skyworks
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`Solutions, Inc., Case IPR2014-00690, Paper 43, at 19 (PTAB Oct. 19, 2015)
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`as finding unpersuasive “bare testimony” based on the common organization
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`practice regarding documents similar to the ANSI Standard (PO Resp. 42) is
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`not apt here. In Kinetic, we credited the common practice testimony, but
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`found fault with the specific date of publication that testimony yielded. Id.
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`at 19–20. In the present case, the declarants’ testimony, which we credit,
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`establishes a printed publication date years before the priority date of the
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`’586 patent. We are persuaded by Petitioner’s argument and evidence
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`regarding the priority and authentication of the ANSI Standard publication
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`as prior art to the ’586 patent.
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`F. Unpatentability Under § 103
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`A claim is unpatentable under 35 U.S.C. § 103(a) if the differences
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`between the claimed subject matter and the prior art are such that the subject
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`matter as a whole would have been obvious at the time the invention was
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`made to a person of ordinary skill in the art. See KSR Int’l Co. v. Teleflex
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`Inc., 550 U.S. 398, 406 (2007).
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`Petitioner argues that the ANSI Standard and Ett render claims 7, 8,
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`12, 13, 16, 18, and 19 obvious. As discussed above, claims 16, 18, and 19
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`recite means-plus-function language, and Petitioner has failed to show that
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`21
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`IPR201

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