Trials@uspto.gov
`571-272-7822
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` Paper 7
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`Entered: October 16, 2017
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`INTERNATIONAL BUSINESS MACHINES CORP.,
`Petitioner,
`
`v.
`
`ENVISIONIT, LLC,
`Patent Owner.
`____________
`
`Case IPR2017-01247
`Patent 8,438,221 B2
`____________
`
`
`
`Before LYNNE E. PETTIGREW, DAVID C. MCKONE, and
`TERRENCE W. McMILLIN, Administrative Patent Judges.
`
`PETTIGREW, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`I. INTRODUCTION
`Petitioner, International Business Machines Corp., filed a Petition for
`inter partes review of claim 19 of U.S. Patent No. 8,438,221 B2 (Ex. 1001,
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`571-272-7822
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`
`
`
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` Paper 7
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`Entered: October 16, 2017
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`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`INTERNATIONAL BUSINESS MACHINES CORP.,
`Petitioner,
`
`v.
`
`ENVISIONIT, LLC,
`Patent Owner.
`____________
`
`Case IPR2017-01247
`Patent 8,438,221 B2
`____________
`
`
`
`Before LYNNE E. PETTIGREW, DAVID C. MCKONE, and
`TERRENCE W. McMILLIN, Administrative Patent Judges.
`
`PETTIGREW, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`I. INTRODUCTION
`Petitioner, International Business Machines Corp., filed a Petition for
`inter partes review of claim 19 of U.S. Patent No. 8,438,221 B2 (Ex. 1001,
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`“the ’221 patent”). Paper 1 (“Pet.”). Patent Owner, EnvisionIT, LLC, filed
`a Preliminary Response. Paper 6 (“Prelim. Resp.”). Institution of an inter
`partes review is authorized by statute when “the information presented in the
`petition . . . and any response . . . shows that there is a reasonable likelihood
`that the petitioner would prevail with respect to at least 1 of the claims
`challenged in the petition.” 35 U.S.C. § 314(a); see 37 C.F.R. § 42.108.
`Having considered the Petition and Preliminary Response, we conclude the
`information presented does not show there is a reasonable likelihood that
`Petitioner would prevail in establishing the unpatentability of claim 19 of the
`’221 patent.
`
`A. Related Matters
`The parties indicate that the ’221 patent has been asserted in CellCast
`Technologies, LLC v. United States, Case No. 1:15-cv-01307 (Fed. Cl.).
`Pet. 4; Paper 4, 2. The ’221 patent also was the subject of Department of
`Justice v. EnvisionIT, LLC, Case IPR2017-00160 (PTAB) (“the ’160 IPR”),
`in which we denied institution of inter partes review.
`
`B. The ’221 Patent
`The ’221 patent describes “[a] message processing system and method
`providing a broadcast message to a plurality of user devices located within a
`geographically defined broadcast target area.” Ex. 1001, at [57]. Figure 1,
`reproduced below, illustrates an example:
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`Figure 1 is a block diagram of a public service message location broadcast
`system. Id. at 4:57–59.
`The location broadcast system includes a broadcast service bureau
`(e.g., cell broadcast broker server 102) that receives a broadcast request from
`an originating broadcast agent associated with one of a plurality of broadcast
`agent message origination systems (e.g., 104). Id. at [57]. Each broadcast
`request includes a broadcast agent identification, a geographically defined
`broadcast target area, and a broadcast message. Id. The broadcast service
`bureau verifies the broadcast request based on the broadcast agent
`identification including an authority of the originating broadcast agent to
`send the broadcast message to the broadcast target area. Id. The broadcast
`service bureau processes the verified broadcast request for transmission to
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`one or more broadcast message network systems (e.g., cell broadcast centres
`112A, 112B) providing broadcast message alerting service to at least a
`portion of the broadcast target area.
`
`C. Challenged Claim
`Independent claim 19, reproduced below, is the only challenged
`claim:
`
`19. A method of public service broadcast messaging to a
`broadcast target area, the method comprising:
`receiving over an input interface a broadcast request
`including a broadcast agent identification, a geographically
`defined broadcast target area, and a broadcast message from one
`of a plurality of coupled broadcast agent message origination
`systems;
`storing a geographically defined broadcast message
`jurisdiction for a broadcast agent;
`verifying an authority of the broadcast agent identification
`including an authority of the originating broadcast agent to send
`the broadcast message to the broadcast target area by comparing
`the stored geographically defined broadcast message jurisdiction
`for the originating broadcast agent with the broadcast target area
`associated with the broadcast message in the broadcast request;
`and
`
`transmitting the broadcast message over an output
`interface to one or more coupled broadcast message networks
`providing broadcast message alerting service to at least a portion
`of the broadcast target area.
`
`Id. at 28:22–41.
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`D. Asserted Grounds of Unpatentability
`Petitioner asserts the following grounds of unpatentability (Pet. 30–
`
`37):
`
`Reference(s)
`FCC 1994,1 NSTC,2 and CAP 0.53
`
`Rieger4
`
`Rieger and NSTC
`
`Basis
`§ 103(a)
`
`§ 102(b)
`
`§ 103(a)
`
`Challenged Claim
`19
`
`19
`
`19
`
`II. DISCUSSION
`
`A. Claim Construction
`In an inter partes review, we construe claim terms in an unexpired
`patent according to their broadest reasonable construction in light of the
`specification of the patent in which they appear. See 37 C.F.R. § 42.100(b);
`Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016)
`(upholding the use of the broadest reasonable interpretation standard).
`Consistent with the broadest reasonable construction, claim terms are
`
`
`1 In re Amendment of Part 73, Subpart G, of the Commission’s Rules
`Regarding the Emergency Broadcast System, Report and Order and Further
`Notice of Proposed Rule Making, FCC Report No. 94-288 (Dec. 9, 1994)
`(Ex. 1010, “FCC 1994”).
`2 National Science and Technology Council Committee on Environment and
`Natural Resources, Effective Disaster Warnings, Report by the Working
`Group on Natural Disaster Information Systems Subcommittee on Natural
`Disaster Reduction (Nov. 2000) (Ex. 1013, “NSTC”).
`3 Common Alerting Protocol Technical Working Group, Common Alerting
`Protocol (v 0.5a) – Alert Message Data Dictionary (draft, June 20, 2002)
`(Ex. 1007, “CAP 0.5”).
`4 U.S. Publication No. US 2002/0103892 A1, published Aug. 1, 2002
`(Ex. 1009, “Rieger”).
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`presumed to have their ordinary and customary meaning as understood by a
`person of ordinary skill in the art in the context of the entire patent
`disclosure. See In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir.
`2007).
`Petitioner proposes that we adopt, for purposes of this proceeding
`only, constructions of “broadcast” and “broadcast network” allegedly
`proposed by Patent Owner in the ’160 IPR. Pet. 38. Nevertheless, it is not
`necessary to expressly construe these terms, or any other term, to resolve the
`parties’ dispute. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d
`795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in
`controversy, and only to the extent necessary to resolve the controversy.”).
`
`B. Principles of Law
`
`In order to anticipate a claim, a prior art reference must show all of
`the limitations of the claim arranged or combined in the same way as recited
`in the claim. Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1370 (Fed.
`Cir. 2008); accord In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990). A claim
`is unpatentable under § 103(a) if the differences between the claimed subject
`matter 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. 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
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`subject matter and the prior art; (3) the level of skill in the art;5 and (4) when
`in evidence, objective indicia of non-obviousness (i.e., secondary
`considerations). Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
`
`C. Asserted Obviousness over FCC 1994, NSTC, and CAP 0.5
`Petitioner contends that claim 19 is unpatentable under 35 U.S.C.
`§ 103(a) as obvious over FCC 1994, NSTC, and CAP 0.5. Pet. 38–50.
`Relying on the testimony of Mr. Art Botterell and Dr. Rajeev Surati,
`Petitioner alleges that the combined references teach or suggest all of the
`limitations of claim 19 and that a person having ordinary skill in the art
`would have combined the references in the manner asserted. Id. (citing, e.g.,
`Ex. 1003 ¶¶ 60–63; Ex. 1005 ¶¶ 57, 59–60, 63–64). In response, Patent
`Owner contends that (1) Petitioner fails to show that CAP 0.5 is available as
`prior art and, and (2) the combination of references does not teach or suggest
`certain limitations. Prelim. Resp. 15–41.
`1. Prior Art Status of CAP 0.5
`We begin with the threshold issue of whether CAP 0.5 is available as
`prior art to challenge the patentability of claim 19 of the ’221 patent.
`According to Petitioner, CAP 0.5 is a draft of the Common Alerting Protocol
`(“CAP”), designed by Mr. Botterell and posted, in June 2002, to a website
`
`
`5 Relying upon the testimony of Dr. Rajeev Surati and Mr. Art Botterell,
`Petitioner offers an assessment as to the level of skill in the art. Pet. 11
`(citing Ex. 1005 ¶ 26; Ex. 1003 ¶ 25). Patent Owner does not propose a
`level of skill in the art. To the extent necessary, and for purposes of this
`Decision, we accept the assessment offered by Petitioner as it is consistent
`with the ’221 patent and the asserted prior art. See Okajima v. Bourdeau,
`261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579
`(Fed. Cir. 1995).
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`Mr. Botterell owned. Pet. 34–35 (citing Ex. 1003 ¶¶ 46–47). Mr. Botterell
`testifies that his website “was visited by a variety of interested parties from
`government (nationally and internationally), academia, and technology
`developers and providers,” although he does not specify that CAP 0.5 itself
`was visited by those parties. Ex. 1003 ¶ 46. As evidence that CAP 0.5 was
`posted in June 2002, Petitioner submits an Internet Archive capture of a page
`purportedly linking to that document from July 2002. Pet. 34 (citing
`Ex. 1021). As evidence that Mr. Botterell’s website was visited by
`interested parties, Petitioner submits an Internet Archive capture, from 2005,
`of comments posted on the website. Id. at 34–35 (citing Ex. 1015).
`Mr. Botterell testifies as to a list of names of individuals who posted on his
`website from October 2002 to February 2003. Ex. 1003 ¶ 47. According to
`Mr. Botterell, many of those posters “work in emergency alerting and
`preparedness and are therefore persons of ordinary skill in the art.” Id.
`Petitioner further argues that a document published by the Partnership for
`Public Warning commented on CAP 0.5, further evidencing CAP 0.5’s
`public accessibility. Pet. 35 (citing Ex. 1008).
`Patent Owner contends that Petitioner has failed to establish that
`CAP 0.5 was publicly accessible before the priority date of the ’221 patent
`and, thus, Petitioner has not established that it is prior art to the ’221 patent.
`Prelim. Resp. 15–23.6 Patent Owner argues that Mr. Botterell’s testimony
`does not show that CAP 0.5 actually was downloaded or disseminated and
`does not show indexing or other means of making CAP 0.5 accessible. Id. at
`18–19. For example, Patent Owner argues that Petitioner does not present
`
`6 We do not reach Patent Owner’s evidentiary challenges, such as whether
`Petitioner has shown that CAP 0.5 is authentic and not hearsay.
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`evidence, or even allege, that any of those purportedly skilled artisans
`commenting on Mr. Botterell’s website actually downloaded or accessed
`CAP 0.5. Id. at 20–21. As to the document published by the Partnership for
`Public Warning, Patent Owner argues that it cites to a different document
`than CAP 0.5, with a different title (Common Alerting Protocol (CAP)
`(v.0.5) – Alert Message Format rather than Common Alerting Protocol
`(v 0.5a) – Alert Message Data Dictionary, the title of CAP 0.5), discussing a
`different version of the Common Alerting Protocol (version 0.5, rather than
`version 0.5a, discussed in CAP 0.5). Id. at 21–23.
`We agree with Patent Owner. According to the Federal Circuit,
`“[b]ecause there are many ways in which a reference may be disseminated to
`the interested public, ‘public accessibility’ has been called the touchstone in
`determining whether a reference constitutes a ‘printed publication’” under
`Section 102. Kyocera Wireless Corp. v. Int’l Trade Comm’n, 545 F.3d
`1340, 1350 (Fed. Cir. 2008) (quoting In re Hall, 781 F.2d 897, 898–99 (Fed.
`Cir. 1986)). A reference is publicly accessible “upon a satisfactory showing
`that such document has been disseminated or otherwise made available to
`the extent that persons interested and ordinarily skilled in the subject matter
`or art exercising reasonable diligence, can locate it.” SRI Int’l, Inc. v.
`Internet Sec. Sys., Inc., 511 F.3d 1186, 1194 (Fed. Cir. 2008). We assess
`public accessibility on a case-by-case basis. See Kyocera, 545 F.3d at 1350.
`In instances of references stored in libraries, for example, “competent
`evidence of the general library practice may be relied upon to establish an
`approximate time when a thesis became accessible.” In re Hall, 781 F.2d at
`899. “In these cases, we generally inquire whether the reference was
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`sufficiently indexed or cataloged.” Blue Calypso, LLC v. Groupon, Inc.,
`815 F.3d 1331, 1348 (Fed. Cir. 2016). According to the Federal Circuit,
`Just as indexing plays a significant role in evaluating
`whether a reference in a library is publicly accessible, Voter
`Verified underscores that indexing, “[w]hether . . . through search
`engines or otherwise,” id., is also an important question for
`determining if a reference stored on a given webpage in
`cyberspace is publicly accessible.
`Id. at 1349 (quoting Voter Verified, Inc. v. Premier Election Solutions, Inc.,
`698 F.3d 1374, 1381 (Fed. Cir. 2012)). In SRI International, for example, in
`the context of a motion for summary judgment, a document on an FTP
`server was not shown to have been sufficiently publicly available, in part,
`because “the FTP server did not contain an index or catalogue or other tools
`for customary and meaningful research.” 511 F.3d at 1196. In another
`example, in Voter Verified, despite a lack of evidence that a website had
`been indexed by commercial search engines, a document on the website was
`publicly available because a skilled artisan would have been independently
`aware of the prominence of the forum and would have used the website’s
`own search functions to find the document. 698 F.3d at 1381. Blue Calypso
`contrasted Voter Verified with its situation in which there was no evidence
`that a document posted to a personal webpage was viewed or downloaded
`and no testimonial evidence that a skilled artisan would have been
`independently aware of the webpage. 815 F.3d at 1349–50.
`At most, Petitioner’s evidence, including Mr. Botterell’s testimony,
`establishes that Mr. Botterell posted CAP 0.5 on his website prior to the
`critical date of the ’221 patent. Although Mr. Botterell testifies that others,
`including skilled artisans, visited his website, he does not identify anyone
`who actually accessed or downloaded the document. Ex. 1003 ¶¶ 46–47.
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`Despite referencing nearly 750 pages of comments (Ex. 1015), Mr. Botterell
`does not identify a single comment referencing CAP 0.5. Id. Neither
`Petitioner nor Mr. Botterell offers any evidence of whether and how
`Mr. Botterell’s website was indexed or cataloged. Moreover, we agree with
`Patent Owner (Prelim. Resp. 21–23) that Petitioner’s citation to the
`document published by the Partnership for Public Warning (Ex. 1008) does
`not evidence public accessibility of CAP 0.5 because it appears to reference
`a different document, with a different title, discussing a different version of
`CAP. In contrast to the website in Voter Verified, Petitioner does not
`contend that Mr. Botterell’s website had search functions. On this record,
`Petitioner’s evidence is insufficient to support a finding that CAP 0.5 was
`publicly accessible prior to the critical date of the ’221 patent. Accordingly,
`Petitioner’s evidence is insufficient to show that CAP 0.5 is available as
`prior art to the ’221 patent.
`
`2. Claim 19
`Claim 19 is directed to a “method of public service broadcast
`messaging to a broadcast target area.” The first step of the claimed method
`reads:
`receiving over an input interface a broadcast request including a
`broadcast agent
`identification, a geographically defined
`broadcast target area, and a broadcast message from one of a
`plurality of coupled broadcast agent message origination
`systems.
`
`Petitioner relies on CAP 0.5 for teaching certain aspects of the “receiving”
`limitation. Pet. 43. For example, with regard to an “input interface” over
`which a broadcast message is received, the Petition asserts that “CAP 0.5,
`designed to be used with the EAS system described in FCC 1994, provides
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`an internet-based input interface to receive a broadcast message.” Id. (citing
`Ex. 1003 ¶ 60; Ex. 1005 ¶ 64). The declaration testimony cited by Petitioner
`similarly relies on CAP 0.5 for teaching the claimed “user interface.” See
`Ex. 1003 ¶ 60 (“[I]t would have been obvious to replace the encoder/decoder
`[of the EAS system] with a more portable and user friendly interface . . . .
`NSTC suggests the internet as an interface for sending messages and
`CAP 0.5 provides a universal XML protocol that could be implemented on
`an internet interface.”); Ex. 1005 ¶ 64 (claim chart citing CAP 0.5 for the
`“receiving” limitation). As another example, the Petition cites only CAP 0.5
`for teaching receipt of a broadcast message from a plurality of message
`origination systems. Pet. 43 (“CAP 0.5 allows for the receipt of messages
`from a ‘plurality’ of origination systems: ‘CAP will permit the aggregation
`of all kinds of warning messages from all sources for comparison and
`pattern recognition.’” (quoting Ex. 1007, 1)).
`As explained above, Petitioner’s evidence is insufficient to show that
`CAP 0.5 is available as prior art to the ’221 patent. Because CAP 0.5 is a
`necessary component of Petitioner’s unpatentability contention for claim 19
`based on the combination of FCC 1994, NSTC, and CAP 0.5, Petitioner
`cannot succeed in challenging claim 19 on this asserted ground.
`Accordingly, we determine the information presented does not show a
`reasonable likelihood that Petitioner would prevail in establishing that claim
`19 would have been obvious over FCC 1994, NSTC, and CAP 0.5.
`
`D. Asserted Anticipation by Rieger
`
`Petitioner contends that claim 19 is unpatentable under 35 U.S.C.
`§ 102(b) as anticipated by Rieger. Pet. 50–55. Relying on the testimony of
`Mr. Botterell and Dr. Surati, Petitioner alleges that Rieger discloses all of the
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`limitations of claim 19. Id. (citing, e.g., Ex. 1003 ¶¶ 66; Ex. 1005 ¶¶ 71–
`72). In response, Patent Owner contends that Petitioner fails to show that
`Rieger discloses certain limitations of claim 19. Prelim. Resp. 41–51.
`1. Overview of Rieger
`Rieger describes a communications system for posting arbitrary
`information to a geographic region. Ex. 1009, at [57]. Figure 1, reproduced
`below, illustrates an example:
`
`
`Figure 1 is a block diagram of communications system 100. Id. ¶ 22.
`Communications server 111 communicates with mobile clients 109 and
`stationary clients 105, 107 over a network (e.g., the Internet). Id. ¶ 70.
`Communications server 111 is organized among a series of geographical
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`maps that cover an intended service area, e.g., a county, metropolitan area,
`state, or country. Id. ¶ 71. User interface 117 allows a user to interact, using
`map manager 121, with the maps. Id. ¶ 73. Postings manager 123 stores
`and retrieves information about postings on demand from user interface 117.
`Id. ¶ 76.
`Each posting includes an identification tag that describes, inter alia,
`who posted it, and an information component (i.e., the content of the
`posting). Id. ¶¶ 77–78. Each posting also includes a broadcast descriptor
`that identifies the posting’s geographic target region(s). Id. ¶ 79. According
`to Rieger:
`Administrators of the communications system 100 can restrict
`the nature of postings created by any particular user by defining
`geographic regions into which the user is either authorized or
`unauthorized to post. Authorized regions can be assigned
`optional passwords and posting category restrictions that further
`narrow the user’s posting privileges in those regions. These
`controls would, for example, permit system administrators to
`grant specific privileges to a regional authority to create postings
`of
`particular
`categories,
`e.g., Governmental/Traffic,
`Governmental/Weather, to particular regions, while excluding
`all other users from posting those categories to the regions.
`Id. ¶ 81.
`A user’s account includes “antenna” descriptors that describe the
`user’s location and a notification list that records postings whose broadcast
`descriptors have intersected with one or more of the antenna descriptors.
`Id. ¶¶ 84–85. The system provides multiple channels, which permit a user to
`describe what types of postings to receive on the antennas, such as postings
`on a general activity, interest, or sender type. Id. ¶¶ 145–146. In one
`embodiment,
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`“[r]estricted” system channels are assigned at the discretion of
`system administrators, and are made available only to users who
`have positively identified themselves as relevant uses of the
`channel, e.g., the ‘McLean VA Police Emergency’ channel.
`Restricted channels will generally have an associated broadcast
`region, defined by one or more Region objects agreed to by
`system administrators.
`
`Id. ¶ 157.
`Each user is represented as a user object and an entry in a
`UserMasterIndex database table. Id. ¶¶ 174–175. “Each User object
`uniquely identifies and describes one user of the system. Each entry in the
`UserMasterlndex table contains the critical information enabling the user to
`log on (log-on name and password), as well as the user’s system-wide
`unique email address.” Id. ¶ 176. When a user attempts to log on to the
`system, a client tier passes the user’s log-on name and password to the
`server and the server validates the log-on information and redirects the user
`to an appropriate user server. Id. ¶¶ 102, 177.
`2. Claim 19
`
`Claim 19 recites:
`receiving over an input interface a broadcast request including a
`broadcast agent
`identification, a geographically defined
`broadcast target area, and a broadcast message from one of a
`plurality of coupled broadcast agent message origination
`systems.
`
`Petitioner contends that Rieger’s user interface 117 of communication
`server 111 is an “input interface”; each posting in Rieger is a “broadcast
`request”; the identification tag of each posting is “a broadcast agent
`identification”; the broadcast descriptor of each posting is “a geographically
`defined broadcast target area”; the information component of each posting is
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`“a broadcast message”; and mobile clients 109 and stationary clients 105 and
`107 are “a plurality of coupled broadcast agent message origination
`systems.” Pet. 51–52 (citing Ex. 1009 ¶¶ 70, 73, 77–79). Claim 19 also
`recites “storing a geographically defined broadcast message jurisdiction for a
`broadcast agent.” For this limitation, Petitioner cites to Rieger’s description
`of administrators restricting the nature of postings created by a user by
`defining geographic regions into which the user is authorized to post and
`assigning optional passwords and posting category restrictions to further
`narrow the user’s posting privileges in those regions. Id. at 52–53 (citing
`Ex. 1009 ¶ 81).
`Claim 19 further recites:
`verifying an authority of the broadcast agent identification
`including an authority of the originating broadcast agent to send
`the broadcast message to the broadcast target area by comparing
`the stored geographically defined broadcast message jurisdiction
`for the originating broadcast agent with the broadcast target area
`associated with the broadcast message in the broadcast request.
`
`With regard to this “verifying” limitation, Petitioner points to Rieger’s
`UserMasterIndex table, stored in the master server database. Id. at 53 (citing
`Ex. 1009 ¶¶ 176–77). According to Petitioner, once the master server
`validates a user’s log-on name and password, the user is directed to a page
`that allows postings on pre-specified channels. Id. at 53–54 (citing Ex. 1009
`¶¶ 176–77). Petitioner further points to Rieger’s restricted channels, which
`have associated broadcast regions. Id. at 54 (citing Ex. 1009 ¶ 57). One
`example is an emergency channel for a local police station. Id. (citing
`Ex. 1009 ¶ 57). Petitioner argues that “[b]y allowing only the local police
`station to post on the restricted channel, [Rieger] provides a step by which
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`the region associated with a particular user is compared to the user for
`verification of jurisdiction.” Id. (citing Ex. 1003 ¶¶ 56, 667; Ex. 1005 ¶ 71).
`Patent Owner contends that Petitioner fails to show that Rieger
`discloses the “verifying” limitation. Prelim. Resp. 46–51. Among other
`things, Patent Owner argues that Rieger does not disclose “comparing the
`stored geographically defined broadcast message jurisdiction for the
`originating broadcast agent with the broadcast target area associated with the
`broadcast message in the broadcast request,” as recited in claim 19. Id. at
`51. We agree with Patent Owner that the Petition and supporting evidence
`do not establish that Rieger discloses the comparison required by the claim.
`To begin with, Petitioner argues in its analysis that Rieger discloses
`“an authority to send the broadcast message to the geographically defined
`broadcast area by comparing the stored geographic message jurisdiction for
`a broadcast agent.” Pet. 53 (emphasis added). Petitioner also argues that
`Rieger “provides a step by which the region associated with a particular user
`is compared to the user for verification of jurisdiction.” Id. at 54 (emphasis
`added). None of Petitioner’s arguments, however, expressly address the
`specific “comparing” step required by claim 19, i.e., a comparison between
`the stored broadcast message jurisdiction for an agent and the broadcast
`target area associated with the broadcast message in the broadcast request.
`Moreover, as Patent Owner contends, none of the passages in Rieger
`cited by Petitioner and its declarants describe a comparison between the
`
`
`7 Petitioner cites to paragraph 77 of the Botterell Declaration, which does not
`exist. We presume that Petitioner intended to cite to paragraph 66, which
`includes a claim chart mapping Rieger’s disclosure to the limitations of
`claim 19.
`
`17
`
`
`
`IPR2017-01247
`Patent 8,438,221 B2
`
`stored jurisdiction for an agent and the broadcast target area associated with
`a broadcast message, as required by the claim. For example, Dr. Surati
`explains that Rieger’s system first validates the log-in and password of a
`user (i.e., the claimed broadcast agent), and then allows the user to post to a
`restricted channel. See Ex. 1005 ¶ 71 (“Users who are allowed to post to
`restricted channels are directed to those channels after logging in to the
`system with a user name and password. [Ex. 1009 ¶ 177.] The password
`and associated allowed channels are stored on the system. [Ex. 1009
`¶ 102.]” We agree with Patent Owner that this testimony and the other
`evidence cited by Petitioner show that “a user is first authenticated as a
`trusted source and is then permitted to create postings without any further
`authentication checks or verification of authority.” Prelim. Resp. 51. It
`follows that the cited passages of Rieger do not disclose the comparison
`required by the claim—a comparison between a broadcast descriptor
`associated with a posting (i.e., the claimed broadcast area associated with a
`broadcast message) and a “jurisdiction” of a user (i.e., a broadcast agent)
`who originated the posting. See id.
`For at least these reasons, Petitioner’s evidence and argument are not
`sufficient to support a finding that Rieger discloses the “verifying” limitation
`of claim 19. Accordingly, we determine the information presented does not
`show a reasonable likelihood that Petitioner would prevailing in establishing
`that claim 19 is anticipated by Rieger.
`
`E. Asserted Obviousness over Rieger and NSTC
`
`Petitioner contends that claim 19 is unpatentable under 35 U.S.C.
`§ 103(a) as obvious over Rieger and NSTC. Pet. 55–57. Petitioner cites
`NSTC only for teaching cell broadcast as a transmission method, in contrast
`
`18
`
`
`
`IPR2017-01247
`Patent 8,438,221 B2
`
`to Rieger’s use of the Internet for transmitting messages. Id. Petitioner’s
`analysis, therefore, does not overcome the deficiency explained above with
`respect to the “verifying” limitation. Accordingly, we determine the
`information presented does not show a reasonable likelihood that Petitioner
`would prevailing in establishing that claim 19 would have been obvious over
`Rieger and NSTC.
`
`III. CONCLUSION
`For the foregoing reasons, we determine the information presented
`does not establish a reasonable likelihood that Petitioner would prevail in
`showing that claim 19 of the ’221 patent is unpatentable on the grounds
`asserted in the Petition.
`
`IV. ORDER
`
`Accordingly, it is:
`ORDERED that the Petition is denied, and no trial is instituted.
`
`
`
`
`
`19
`
`
`
`IPR2017-01247
`Patent 8,438,221 B2
`
`PETITIONER:
`Mark J. Abate
`Sarah Fink
`GOODWIN PROCTER LLP
`mabate@goodwinprocter.com
`sfink@goodwinprocter.com
`
`PATENT OWNER:
`Peter J. Chassman
`Robert R. Riddle
`Michael J. Forbes
`Matthew S. Gibson
`Amardeep S. Grewal
`REED SMITH LLP
`pchassman@reedsmith.com
`rriddle@reedsmith.com
`mforbes@reedsmith.com
`mgibson@reedsmith.com
`sgrewal@reedsmith.com
`
`20
`
`
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