Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 14
`Entered: October 18, 2017
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_______________
`
`FANDUEL, INC.
`DRAFTKINGS, INC.
`BWIN.PARTY DIGITAL ENTERTAINMENT PLC,
`Petitioner,
`
`v.
`
`CG TECHNOLOGY DEVELOPMENT, LLC,
`Patent Owner.
`____________
`
`Case IPR2017-00902
`Patent RE39,818
`____________
`
`
`
`Before THOMAS L. GIANNETTI, BARRY L. GROSSMAN, and
`MITCHELL G. WEATHERLY, Administrative Patent Judges.
`
`
`GROSSMAN, Administrative Patent Judge.
`
`
`
`DECISION
`Institution of Inter Partes Review
`35 U.S.C. § 314; 37 C.F.R. § 42.108
`
`
`
`
`
`
`
`
`
`Tel: 571-272-7822
`
`Paper 14
`Entered: October 18, 2017
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_______________
`
`FANDUEL, INC.
`DRAFTKINGS, INC.
`BWIN.PARTY DIGITAL ENTERTAINMENT PLC,
`Petitioner,
`
`v.
`
`CG TECHNOLOGY DEVELOPMENT, LLC,
`Patent Owner.
`____________
`
`Case IPR2017-00902
`Patent RE39,818
`____________
`
`
`
`Before THOMAS L. GIANNETTI, BARRY L. GROSSMAN, and
`MITCHELL G. WEATHERLY, Administrative Patent Judges.
`
`
`GROSSMAN, Administrative Patent Judge.
`
`
`
`DECISION
`Institution of Inter Partes Review
`35 U.S.C. § 314; 37 C.F.R. § 42.108
`
`
`
`
`
`
`
`
`
`
`IPR2017-00902
`Patent RE39,818
`
`
`I.
`
`INTRODUCTION
`
`A. Background
`
`FanDuel, Inc., DraftKings, Inc., and bwin.party Digital Entertainment
`
`PLC (collectively, “Petitioner”), filed a petition, Paper 1(“Pet.”), to institute
`
`an inter partes review of claims 1, 16, 20, 21, 24, 25, 31, and 32 (the
`
`“challenged claims”) of U.S. Patent RE39,818 (the “’818 patent”).
`
`35 U.S.C. § 311. CG Technology Development, LLC (“Patent Owner”)
`
`timely filed a Preliminary Response. Paper 13 (“Prelim. Resp.”).
`
`We conclude that Petitioner has satisfied the burden, under 35 U.S.C.
`
`§ 314(a), to show that there is a reasonable likelihood that Petitioner would
`
`prevail with respect to at least one of the challenged claims. Accordingly,
`
`on behalf of the Director (37 C.F.R. § 42.4(a)), we institute an inter partes
`
`review as stated in the accompanying Order.
`
`B. Related Proceedings
`
`Petitioner each state that the ’818 patent has been asserted in the
`
`following patent infringement lawsuits: CG Technology Development, LLC
`
`et al. v DraftKings, Inc., Case No. 2:16-cv-00781 (D. Nevada); CG
`
`Technology Development, LLC et al. v FanDuel, Inc., Case No. 2:16-cv-
`
`00801 (D. Nevada); CG Technology Development, LLC et al. v bwin.party
`
`digital entertainment PLC et al., Case No. 2:16-cv-00871 (D. Nevada); CG
`
`Technology Development, LLC et al. v Double Down Interactive, LLC, Case
`
`No. 2: 16-cv-00858 (D. Nevada); CG Technology Development, LLC et al. v
`
`Big Fish Games, Inc., Case No. 2:16-cv-00857 (D. Nevada); CG Technology
`
`Development, LLC et al. v 888 Holdings PLC, Case No. 2:16-cv-00856 (D.
`
`Nevada); and CG Technology Development, LLC et al. v Zynga, Inc., Case
`
`2
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`IPR2017-00902
`Patent RE39,818
`
`No. 2:16-cv-00859 (D. Nevada). Pet. 1–2; Paper 7, 2–3. The parties also
`
`state that the ’818 patent is involved in an ownership dispute in Russell Slifer
`
`v. CG Technology Development, L.P., Case No. 1:14-cv- 09661 (S.D.N.Y).
`
`Pet. 2; Paper 7, 3.
`
`C. Asserted Grounds of Unpatentability
`
`Petitioner challenges claims on the following three grounds (Pet. 5):
`
`References
`
`Basis
`
`Claims Challenged
`
`Walker1 and Kelly2
`
`Walker, Kelly, and
`Viescas4
`
`Kelly and Walker
`
`§ 103(a)3
`
`§ 103(a)
`
`§ 103(a)
`
`20, 21, 24, and 31, 32
`
`25
`
`1, 16
`
`The order in which references are listed is of no significance to the
`
`substance of the asserted basis of unpatentability. Thus, Petitioner’s
`
`Ground 1 and Ground 3 are the same and will be combined and considered
`
`as a single asserted basis of unpatentability. See, e.g., In re Bush, 296 F.2d
`
`491, 496 (CCPA 1961) (“[i]n a case of this type where a rejection is
`
`predicated on two references each containing pertinent disclosure which has
`
`been pointed out to the applicant, we deem it to be of no significance, but
`
`
`1 U.S. Pat. 5,779,549, issued July 14, 1998. Ex. 1007
`
`2 U.S. Pat. 5,816,918, issued Oct. 6, 1998. Ex. 1008.
`
`3 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125
`Stat. 284, 296–07 (2011), took effect on September 16, 2012. Because the
`application for the patent at issue in this proceeding has an effective filing
`date before that date, we refer to the pre-AIA versions of the statute.
`
`4 John L. Viescas, The Official Guide to the Prodigy Service, Microsoft
`Press (1991). Ex. 1009.
`
`3
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`Patent RE39,818
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`merely a matter of exposition, that the rejection is stated to be on A in view
`
`of B instead of B in view of A, or to term one reference primary and the
`
`other secondary.”); see also In re Cook, 372 F.2d 563, 566 n.4 (CCPA
`
`1967).
`
`Petitioner also adds the phrase “in further view of the Knowledge of a
`
`PHOSITA” to Petitioner’s Grounds 2 and 3. Id. This phrase is superfluous.
`
`The applicable statute states that the determination of patentability is based
`
`on whether “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.” 35 U.S.C. § 103(a). Thus, the
`
`knowledge, skill, and creativity of a person having ordinary skill in the art
`
`(“PHOSITA”) is a factor in every determination of patentability under
`
`§ 103(a). See KSR Int’l v. Teleflex Inc., 550 U.S. 398, 421 (2007) (“A
`
`person of ordinary skill is also a person of ordinary creativity.”).
`
`Thus we consider whether claims 1, 16, 20, 21, 24, 31, and 32 would
`
`have been obvious based on Walker and Kelly; and whether claim 25 would
`
`have been obvious based on Walker, Kelly, and Viescas.
`
`II. ANALYSIS
`
`A. The ’818 Patent
`
`The ’818 patent discloses an interactive video system, such as a video
`
`game system, that allows the system to recognize individual users and adjust
`
`the game to each individual player, such as by varying the skill level.
`
`Ex. 1001, 1:21–24; 2:55–57. The disclosed system uses wireless game
`
`controllers that allow for personalized operation of an interactive video
`
`4
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`Patent RE39,818
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`system based upon personal data transmitted from the controller. Id.
`
`at 1:49–53.
`
`The disclosed video game system includes a central processing unit
`
`(CPU) connected to a video screen, and a wireless game controller.
`
`Id. at 2:60–67. The wireless controller transmits control signals to the CPU.
`
`Id. at 2:67–3:1. The controller can include a number of inputs, or switches,
`
`for providing signals to operate a video game. Id. at 3:1–3.
`
`The controller includes a non-volatile memory device used to store
`
`personal information regarding the user, such as name, age, previous video
`
`game scores and statistics, and current skill level for a video game.
`
`Id. at 3:29–37. Each user can have a “personalized controller.” Id. at 3:41–
`
`42. By including the age of a user as part of the stored personal information,
`
`operation of a video game can be prohibited based on the user’s age, or
`
`adjusted to the age of the user. Id. at 3:42–48. .
`
`The CPU also can contain a memory device that stores personal data
`
`corresponding to the personal data stored in the controller. This allows the
`
`wireless controller to transmit a user identification code to the CPU, which
`
`allows the CPU to retrieve stored personalized information for a specific
`
`user from the CPU memory. Id. at 3:49–58.
`
`B. Illustrative Claim
`
`The challenged claims are all independent. They are directed to a
`
`“video game system” (claim 1); a “method of operating an interactive video
`
`system” (claim 16); a “game apparatus” (claim 20); a “method of playing an
`
`interactive game” (claim 21); a “gaming system” (claims 24 and 25); a
`
`“method of playing a game” (claim 31); and a “method of operating a game”
`
`(claim 32). Ex. 1001, 5:40–8:48. All of the challenged claims include a
`
`5
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`limitation that authorizes or permits a player to play a game based at least in
`
`part on the age of the game player or whether the player’s age falls within a
`
`defined age group. Claim 1, reproduced below, is representative.
`
`1. A video game system comprising:
`
`a processor unit for executing game instructions and
`displaying video images on a display screen, the processor
`includes a receiver for receiving wireless identification and
`control signal transmissions; and
`
`a personalized portable control comprising:
`
`a plurality of control switches for generating game control
`signals;
`
`storing personalized
`for
`a non-volatile memory
`identification information corresponding to a user of the
`controller, the personalized identification information comprises
`a user age, and historical game performance data; and
`
`a transmitter for wireless transmitting of the personalized
`identification and game control signals to the processor unit,
`wherein the processor unit authorizes game execution based on
`the user age, further the processor unit comprises a transmitting
`for transmitting the historical game performance data to the
`portable controller.
`
`Ex. 1001, 40–59 (emphasis added). Each of the challenged claims is similar
`
`to claim 1 in that it authorizes or allows game play based solely, or in part,
`
`on the age of the user.
`
`C. Claim Construction
`
`Petitioner asserts that, at this time, “no explicit claim constructions are
`
`necessary.” Pet. 10. Patent Owner does not take any position regarding
`
`claim construction.
`
`6
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`
`We need to construe only those terms “that are in controversy, and
`
`only to the extent necessary to resolve the controversy.” Vivid Techs., Inc. v.
`
`Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).
`
`We determine that an explicit construction of the claims is not
`
`necessary for the purposes of determining whether there is a reasonable
`
`likelihood that the Petitioner would prevail with respect to at least one of the
`
`claims challenged in the Petition. This determination does not preclude the
`
`parties from arguing their proposed constructions of the claims during trial.
`
`Indeed, the parties are hereby given notice that claim construction, in
`
`general, is an issue to be addressed at trial. Claim construction will be
`
`determined at the close of all the evidence and after any hearing. The parties
`
`are expected to assert all their claim construction arguments and evidence in
`
`the Petition, Patent Owner’s Response, Petitioner’s Reply, or otherwise
`
`during trial, as permitted by our rules.
`
`D. Level of Ordinary Skill
`
`Petitioner asserts that as of November 14, 1997, “a person having
`
`ordinary skill in the art (PHOSITA)” would have had a B.S. degree in
`
`Electrical Engineering or Computer Engineering, or equivalent, and
`
`possessed at least two years of experience in the design and development of
`
`video game-related hardware and software. Pet. 10 (citing Ex. 1010, ¶¶ 48–
`
`49).5 Mr. Kitchen testifies that in forming his opinion he considered the type
`
`
`5 Exhibit 1010 is a declaration from Mr. Garry Kitchen. Mr. Kitchen is an
`engineer, video game designer, and consultant. Ex. 1010 ¶ 3. Mr. Kitchen
`has over 35 years of experience running game development companies, with
`experience “in all game genres, including console, PC retail and download,
`online, mobile, and dedicated electronic.” Id. at ¶¶ 4, 7, 9–12, 14. He has
`designed hundreds of commercially-released video game products, across a
`
`7
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`IPR2017-00902
`Patent RE39,818
`
`of problems encountered in the art, the solutions to those problems, the
`
`rapidity with which innovations are made in the field, the sophistication of
`
`the technology, and the education level of active workers in the field.
`
`Ex. 1010 ¶ 48. He also “placed [himself] back in the time frame of the
`
`claimed invention” and “considered the colleagues with whom [he] had
`
`worked at that time.”
`
`Patent Owner does not assert or otherwise address a proposed level of
`
`skill.
`
`For purposes of this Decision, we adopt Petitioner’s proposed level of
`
`ordinary skill.
`
`E. Asserted Unpatentability
`
`1.
`
`Claims 1, 16, 20, 21, 24, 31, and 32
`Based on Walker and Kelly
`
`Patent Owner asserts “[t]he Petition fails to articulate where the
`
`claimed authorizing or allowing game play ‘based at least in part on an age
`
`of a player’ is found in the cited references.” Prelim. Resp. 1. According to
`
`Patent Owner, “the Petition identifies only the potential relevance of a
`
`predefined age.” Id. at 2.
`
`a)
`
`Scope and Content of the Prior Art
`
`Walker discloses an input/output (I/O) device that players use to play
`
`games and participate in tournaments. Ex. 1007, Abstract. Walker’s I/O
`
`device transmits data including the player’s unique identifier and game
`
`inputs to the central controller. Id. at 6:24-33; Figure 3, step 304. As part of
`
`
`breadth of hardware platforms. Id. He has received numerous awards and
`industry recognition for his work. Id. at ¶¶ 8, 9, 16.
`
`8
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`IPR2017-00902
`Patent RE39,818
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`a registration process, a player enters information “such as name, age,
`
`address, payment preferences, etc.” Id. at 6:37–40. The central controller
`
`generates a unique identifier for the player and stores it in the database.
`
`Id. at 40–42.
`
`Kelly discloses a game unit used by a player to play networked
`
`games. Kelly’s game unit includes a communication device that
`
`communicates with a centralized game server over a network. Id. at 12:13–
`
`15. In one embodiment, the communication device is “a wireless
`
`transmitter/receiver for communicating without the use of cables or wires.”
`
`Id. at 12:37–40; 17:9–17. Kelly teaches authorizing a player’s participation
`
`in tournaments or games based on age. Id. at 22:42-44.
`
`b)
`
`Discussion
`
`Petitioner provides a detailed claim-by-claim, clause-by-clause
`
`analysis discussing each claim limitation and explaining why, in Petitioner’s
`
`view, the challenged claim would have been obvious based on Walker and
`
`Kelly. Petitioner relies on Mr. Kitchen’s testimony for support.
`
`Petitioner acknowledges the differences between the challenged
`
`claims and the prior art. For example, Petitioner recognizes that Walker
`
`does not use the phrase “wireless transmitter,” as recited in claim 20.
`
`Petitioner asserts, however, that a “PHOSITA would have understood” that
`
`Walker's I/O device would necessarily include a transmitter in order for the
`
`I/O device to communicate with the central controller over a wireless
`
`telecommunications network. Pet. 18 (citing EX1010 ¶ 53). Petitioner also
`
`notes that Kelly discloses a wireless transmitter. Id. at 18–19 (citing
`
`Ex. 1008, 12:37–40). Petitioner concludes that “[i]t would have been
`
`9
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`IPR2017-00902
`Patent RE39,818
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`obvious to a PHOSITA to include a wireless transmitter in Walker’s I/O
`
`device as taught by Kelly.” Id. at 19 (citing Ex. 1010 at ¶¶54-55).
`
`Petitioner provides similar detailed analyses of all the claim
`
`limitations, supported by citations to the evidence supporting the analyses.
`
`In response, Patent Owner asserts “[t]he Petition fails to articulate
`
`where the claimed authorizing or allowing game play ‘based at least in part
`
`on an age of a player’ is found in the cited references.” Prelim. Resp. 1.
`
`According to Patent Owner, “the Petition identifies only the potential
`
`relevance of a predefined age.” Id. at 2. Patent Owner also asserts that the
`
`“Petition unreasonably removes the claims’ plain-language requirement—
`
`which defines an age of a user—and replaces it with a different requirement,
`
`i.e., a predefined age.” Id. at 3. Patent Owner provides no persuasive
`
`evidence in support of this argument concerning the asserted modification of
`
`the claim language by Petitioner. Moreover, we have not been directed to
`
`any persuasive evidence establishing a substantive difference between “an
`
`age of a user” and a “predefined age” in the context of the ’818 patent. We,
`
`of course, recognize a slight difference in the actual words. In this record,
`
`there is neither argument nor evidence, however, to support persuasively
`
`Patent Owner’s assertion.
`
`Walker teaches the player’s age as being part of the account
`
`information. Ex. 1007 at 6:37–40. Walker does not, however, specify
`
`whether the central controller authorizes game play based on the age of the
`
`player.
`
`Kelly teaches authorizing a player’s participation in tournaments or
`
`games based on age. Ex. 1008, 22:42–44. Kelly discloses that “players can
`
`also be required to meet certain conditions before participating in a credit
`
`10
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`game or a tournament.” Ex. 1008 at 22:42-44. Kelly also refers to
`
`authorizing participation in games “based on predefined characteristics
`
`(age, member of a group or club, ‘preferred customer’ status, whether they
`
`have achieved a ‘tournament goal’ in a game, etc.), providing various skill
`
`levels or handicaps, and providing special tournaments with different prizes
`
`and conditions.” Id. at 42:63–43:5 (emphases added).
`
`Patent Owner has not cited any persuasive evidence that distinguishes
`
`authorizing player participation based on Kelly’s “predefined characteristic”
`
`of age from authorizing play based on a player’s age, as recited in the claims
`
`(e.g., claim 20 which authorizes “game play based at least in part on an age
`
`of a player”). We recognize that the claims use several different variations
`
`of this quoted phrase from claim 20, but we have not been directed to any
`
`persuasive evidence that establishes a substantive difference between, for
`
`example, the claim phrases “an age of a player” (claim 20), “an age of the
`
`player” (claim 21), or “an age of a game player” (claim 31).
`
`Petitioner relies on the testimony of Mr. Kitchen for support of its
`
`proposed modification of Walker to authorize play based on the age of a
`
`player. Mr. Kitchen testifies that, in his opinion, “it would have been
`
`obvious to a person having ordinary skill in the art at the time of the RE’818
`
`patent to modify Walker’s central controller to authorize gameplay based on
`
`the age of the player as taught by Kelly.” Ex. 1010 ¶ 58.
`
`Why would a person of ordinary skill make this modification?
`
`Mr. Kitchen explains that “a skilled artisan would have appreciated that
`
`modifying Walker’s central controller to perform an age verification as
`
`taught by Kelly would have been one of a finite number of ways to
`
`implement age restrictions on a networked game.” Id. at ¶ 59.
`
`11
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`
`Based on the evidence and arguments of record, we determine that
`
`there is a reasonable likelihood that Petitioner will prevail in establishing
`
`that claims 1, 16, 20, 21, 24, 31, and 32 would have been obvious based on
`
`Walker and Kelly.
`
`2.
`
`Claim 25 Based on Walker, Kelly, and Viescas
`
`Claim 25 requires a central processing unit comprising “a receiver for
`
`wirelessly receiving . . . .” Ex. 1001, 7:28. Walker teaches that the I/O unit
`
`and central controller may communicate over a wireless telecommunications
`
`network. Ex. 1007, 5:19-23. Walker does not explicitly state that the central
`
`controller includes a receiver for receiving wireless transmissions over the
`
`wireless telecommunications network. Mr. Kitchen opines that it would
`
`have been obvious to a person of ordinary skill in the art to provide a
`
`wireless receiver as input to the central controller. Ex. 1010 ¶ 74.
`
`According to Mr. Kitchen, wireless networks were well-known prior to the
`
`invention of the ’818 patent. Id. (citing Ex. 1019, 1–5). Mr. Kitchen also
`
`testifies that it was also “known for a century prior to the invention of the
`
`RE’818 patent” that a wireless receiver would be required to receive
`
`wireless transmissions. Id.
`
`Claim 25 also requires a game controller comprising “a non-volatile
`
`memory storing the identification code.” Ex. 1001, 8:4–5. Walker teaches
`
`that the I/O device includes a non-volatile memory. Ex. 1007, 16:26–28
`
`(“each 110 device includes secure memory (RAM. ROM. EPROM.
`
`EEPROM and the like) for storing tournament data.”). Walker also teaches
`
`that the player enters his or her unique identifier into the I/O device. Id. at
`
`6:24–25 (“The player enters 302 a unique identifier through the associated
`
`12
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`I/O device.”). However, Walker does not disclose storing the player’s
`
`unique identifier in the I/O device’s memory.
`
`Viescas is a 1991 user guide for the Prodigy Network. Ex. 1009. One
`
`feature of the Prodigy network described by Viescas is the “autologon”
`
`feature where the user’s ID and optionally also the user’s password is stored
`
`in a file on the user’s computer. Id. at 75 (exhibit page 75; document page
`
`330). Mr. Kitchen opines it would have been obvious to a person having
`
`ordinary skill in the art to modify Walker’s I/O device to store the user’s
`
`unique identifier in the non-volatile memory in order to streamline the login
`
`process as taught by Viescas. Ex. 1010 ¶ 82. The rationale for the proposed
`
`change is to enable the user to login to the system more quickly. Id.
`
`Implementing this feature in Walker’s I/O device would have required only
`
`a simple modification to I/O device software. Id.
`
`Patent Owner argues only that there is no evidence that Viescas is a
`
`printed publication available as a reference under 35 U.S.C. § 102(b).
`
`Viescas contains the following publication and copyright information:
`
`“PUBLISHED BY Microsoft Press” and a standard copyright notice,
`
`“Copyright © 1991 by John L. Viescas.” Ex. 1009, 2. Patent Owner argues
`
`that the 1991 copyright notice is not sufficient to establish that Viescas is a
`
`printed publication. Prelim. Resp. 5.
`
`Under 35 U.S.C. § 102(b), a person is entitled to a patent unless “the
`
`invention was patented or described in a printed publication in this or a
`
`foreign country . . . more than one year prior to the date of the application
`
`for patent in the United States.” Whether a document qualifies as a printed
`
`publication under § 102 is a legal conclusion based on underlying factual
`
`determinations. SRI Int’l, Inc. v. Internet Sec. Sys., Inc., 511 F.3d 1186,
`
`13
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`1192 (Fed. Cir. 2008) (citation omitted). “Public accessibility” has been
`
`called the touchstone in determining whether a reference constitutes a
`
`printed publication bar under 35 U.S.C. § 102(b). Id. at 1194. A reference
`
`is publicly accessible upon a satisfactory showing that it 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. Bruckelmyer v. Ground Heaters, Inc.,
`
`445 F.3d 1374, 1378 (Fed. Cir. 2006); see also In re Cronyn, 890 F.2d 1158,
`
`1160 (Fed. Cir. 1989) (“The statutory phrase ‘printed publication’ has been
`
`interpreted to mean that before the critical date the reference must have been
`
`sufficiently accessible to the public interested in the art; dissemination and
`
`public accessibility are the keys to the legal determination whether a prior
`
`art reference was ‘published.’”) (quoting Constant v. Advanced Micro-
`
`Devices, Inc., 848 F.2d 1560, 1568 (Fed.Cir.1988)).
`
`In In re Klopfenstein, 380 F.3d 1345 (Fed. Cir. 2004), our reviewing
`
`court rejected an argument that “distribution and/or indexing” are the key
`
`components to a “printed publication” inquiry because that argument “fails
`
`to properly reflect what our [Federal Circuit] precedent stands for,”
`
`explaining that “printed publication” means reasonably accessible through
`
`generally available media that serve to disseminate information. Id. at 1348.
`
`A printed publication need not be easily searchable after publication if it was
`
`sufficiently disseminated at the time of its publication. Suffolk
`
`Technologies, LLC v. AOL Inc., 752 F.3d 1358, 1364 (Fed. Cir. 2014).6
`
`
`6 As explained in Klopfenstein, the word “disseminate” is not used in its
`literal sense, i.e.[,] “make widespread” or “to foster general knowledge of”
`
`14
`
`
`
`IPR2017-00902
`Patent RE39,818
`
`
`The determination of whether a reference is a “printed publication”
`
`under 35 U.S.C. § 102(b) involves a case-by-case inquiry into the facts and
`
`circumstances surrounding the reference’s disclosure to members of the
`
`public. Klopfenstein, 380 F.2d at 1350. 7
`
`Here, we have more than a mere copyright notice. We also have a
`
`statement that Viescas was “published” by Microsoft Press. Ex. 1009, 2.
`
`Additionally, there is a statement prohibiting reproduction “without written
`
`permission of the publisher.” Id. See Veeam Software Corp. v. Symantec
`
`Corp., Case IPR2013-00142 (PTAB Aug. 7, 2013) (Paper 11, p. 11–12)
`
`(prohibition against unauthorized copying suggests the document was
`
`publicly available, as there would be no need for such a warning if the
`
`document were not disseminated). Given the copyright notice and other
`
`indicia, we consider Viescas as a printed publication for the purpose of this
`
`decision. Patent Owner has an opportunity under 37 C.F.R. § 42.64(b) to
`
`press this objection further.
`
`On this record, we also determine that there is a reasonable likelihood
`
`that Petitioner will prevail in establishing that claim 25 would have been
`
`obvious based on Walker, Kelly, and Viescas.
`
`
`and does not require distribution of reproductions or photocopies. 380 F.2d.
`at 1352, n. 3.
`
`7 See also ServiceNow, Inc. v. Hewlett-Packard Co., Case IPR2015-00707,
`slip op. at 9–10 (PTAB Aug. 26, 2014) (Paper 12) (discussing case law and
`prior inter partes reviews that considered whether a document was a printed
`publication).
`
`15
`
`
`
`IPR2017-00902
`Patent RE39,818
`
`
`III. CONCLUSION
`
`Based on the analysis above, we determine that Petitioner has
`
`demonstrated a reasonable likelihood of prevailing on at least one of the
`
`challenged claims. Accordingly, as explained above, and in accordance with
`
`the Order below, we institute trial on claims 1, 16, 20, 21, 24, 25, 31, and 32.
`
`Our factual findings and determinations at this stage of the proceeding
`
`are based on the evidentiary record developed thus far. This is not a final
`
`decision as to the patentability of claims for which inter partes review is
`
`instituted. Our final decision will be based on the record as fully developed
`
`during trial.
`
`IV. ORDER
`
`In consideration of the foregoing, it is hereby:
`
`ORDERED that inter partes review is instituted as to whether claims
`
`1, 16, 20, 21, 24, 31, and 32 of the ’818 patent would have been obvious
`
`under 35 U.S.C. § 103 based on Walker and Kelly;
`
`FURTHER ORDERED that inter partes review is instituted as to
`
`whether claim 25 would have been obvious under 35 U.S.C. § 103 based on
`
`Walker, Kelly, and Viescas; and
`
`FURTHER ORDERED that pursuant to 35 U.S.C. § 314(a), inter
`
`partes review of the ʼ818 patent is hereby instituted commencing on the
`
`entry date of this Order, and, pursuant to 35 U.S.C. § 314(c) and 37 C.F.R.
`
`§ 42.4, notice is hereby given of the institution of a trial.
`
`16
`
`
`
`IPR2017-00902
`Patent RE39,818
`
`PETITIONER:
`
`Eric Buresh
`Eric.buresh@eriseip.com
`
`Jonathan Berschadsky
`jberschadsky@merchantgould.com
`
`Adam Yowell
`ayowell@bhfs.com
`
`
`PATENT OWNER:
`
`Joshua Goldberg
`Joshua.goldberg@finnegan.com
`
`James Barney
`James.barney@finnegan.com
`
`Scott Allen
`Scott.allen@finnegan.com
`
`
`
`
`
`17
`
`
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