Paper No. 7
`Trials@uspto.gov
`Entered: October 16, 2017
`571-272-7822
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`INTERNATIONAL BUSINESS MACHINES CORPORATION,
`Petitioner,
`
`v.
`
`ENVISIONIT, LLC,
`Patent Owner.
`____________
`
`Case IPR2017-01248
`Patent 7,693,938 B2
`____________
`
`
`Before LYNNE E. PETTIGREW, DAVID C. MCKONE, and TERRENCE
`W. MCMILLIN, Administrative Patent Judges.
`
`McMILLIN, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
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`IPR2017-01248
`Patent 7,693,938 B2
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`I. INTRODUCTION
`
`A. Background
`International Business Machines Corporation (“Petitioner”) filed a
`Petition (Paper 1, “Pet.”) to institute an inter partes review of claims 1, 11–
`13, 42, 47, and 57 of U.S. Patent No. 7,693,938 B2 (Ex. 1001, “the ’938
`patent”). EnvisionIT, LLC (“Patent Owner”) filed a Preliminary Response
`(Paper 6, “Prelim. Resp.”). We have statutory authority under 35 U.S.C.
`§ 314(a), which provides that an inter partes review may not be instituted
`“unless . . . there is a reasonable likelihood that the petitioner would prevail
`with respect to at least 1 of the claims challenged in the petition.” See also
`37 C.F.R § 42.4(a) (delegating authority to the Board).
`Upon consideration of the Petition and Preliminary Response, we
`conclude Petitioner has not established a reasonable likelihood that it would
`prevail with respect to any of the challenged claims. Accordingly, we
`decline to institute an inter partes review of claims 1, 11–13, 42, 47, and 57
`of the ’938 patent.
`B. Related Matters
`The parties indicate that the ’938 patent has been asserted in CellCast
`Technologies, LLC v. United States, Case No. 1:15-cv-01307 (Fed. Cl.)
`(“CellCast Litigation”). Pet. 4; Paper 4, 2. The ’938 patent also was the
`subject of Department of Justice v. EnvisionIT, LLC, Case IPR2017-00183
`(PTAB). Pet. 4.
`C. The ’938 Patent
`The ’938 patent relates to admission control for message broadcast
`systems. Ex. 1001, 1:18–20. Figure 1, reproduced below, illustrates an
`example:
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`Figure 1 is a functional block diagram of public service message location
`broadcast system (“PLBS”) 100. Id. at 3:9–11, 5:29–30.
`One or more broadcast agent devices 104 are connected to public
`service location broadcast service bureau (“service bureau” or “PLBS-SB”)
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`102. Id. at 5:37–39. Broadcast agent device 104 provides cell@lert display
`106 to a broadcast agent, who inputs a message and defines a geographic
`target area for delivery of the message. Id. at 5:39–43. Service bureau 102
`also is connected to one or more local carrier networks 112A, 112B, which
`can include cellular carrier networks, wireline networks, satellite networks,
`and cable television networks. Id. at 6:17–25. Local carrier network 112A
`can include Cell Broadcast Center (“CBC”) 114A that receives broadcast
`messages and local delivery instructions from service bureau 102. Id. at
`6:25–29.
`Service bureau 102 ensures the authenticity of the broadcast messages
`and the authority of the senders to create the messages. Id. at 6:50–52. “The
`signal from the Broadcast Agent Terminal 104, for example, at a police
`station, to the PLBS-SB 102, would only indicate the geographical area to be
`covered, plus the message. PLBS-SB 102 then sends the broadcast request
`signal to the Carrier Broadcast Center 114 at the office of each local carrier
`concerned.” Id. at 6:54–59.
`The ’938 patent contains 59 claims. Ex. 1001, 39:21–46:17. As noted
`above, Petitioner challenges claims 1, 11–13, 42, 47, and 57. Pet. 1.
`Challenged, independent claim 1 is directed to a message broadcasting
`system. Ex. 1001, 39:21–43.
`Claim 1, reproduced below, is illustrative of the invention:
`1.
`A message broadcasting system providing a
`broadcast message to a broadcast target area, the system
`comprising:
`a broadcast request interface configured for receiving a
`broadcast message record having a broadcast
`message, a defined broadcast target area, and a
`broadcast message originator identifier;
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`a broadcast admission control module configured for
`receiving the broadcast message record, validating
`the broadcast message record as a function [sic] one
`or more of the broadcast message originator
`identifier, the broadcast target area, and a broadcast
`message
`transmission
`network
`parameter
`associated with a broadcast transmission network
`adapted for broadcasting the message to at least a
`portion of the broadcast target area, said broadcast
`admission control module configured for generating
`a validated broadcast message record as a function
`of the validating; and;
`a broadcast message distributor module configured for
`receiving the validated broadcast message record
`and transmitting the broadcast message and the
`broadcast target area, or a part thereof, to an output
`interface configured for distributing the broadcast
`message to at least a portion of the broadcast target
`area.
`D. Evidence Relied Upon
`Petitioner relies on the following references:
`Common Alerting Protocol Technical Working Group, Common
`Alerting Protocol (v 0.5a) – Alert Message Data Dictionary, Draft
`6/20/2002 (Ex. 1007, “CAP 0.5”);
`U.S. Patent Application Publication 2002/0103892 A1, published
`Aug. 1, 2002 (Ex. 1009, “Rieger”); 1
`In re Amendment of Part 73, Subpart G, of the Commission’s Rules
`Regarding the Emergency Broadcast System, Report and Order and Further
`
`
`1 Rieger is consistently misspelled “Reiger” in the Petition. We have
`corrected these misspellings in our quotations of the Petition.
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`Notice of Proposed Rule Making, FCC Report No. 94-288 (Dec. 9, 1994)
`(Ex. 1010, “FCC 1994”); and
`National Science and Technology Council, Committee on
`Environment and Natural Resources, Working Group on Natural Disaster
`Information Systems, Subcommittee on Natural Disaster Reduction,
`Effective Disaster Warnings, November, 2000 (Ex. 1013, “NSTC”);
`Petitioner also relies on the Declaration of Art Botterell (Ex. 1003,
`“Botterell Decl.”) and the Declaration of Rajeev Surati, Ph.D. (Ex. 1005,
`“Surati Decl.”).
`E. The Asserted Grounds
`Petitioner asserts the following grounds of unpatentability (Pet. 31,
`
`37):
`
`References
`
`Basis
`
`FCC 1994, NSTC, and CAP 0.5
`
`§ 103(a)
`
`Rieger and NSTC
`
`§ 103(a)
`
`Claims Challenged
`1, 11–13, 42, 47, and
`57
`
`1, 11–13, 42, 47, and
`57
`
`
`
`II. ANALYSIS
`A. Obviousness Challenge Based on FCC 1994, NSTC, and CAP 0.5
`Petitioner relies on FCC 1994, NSTC, and CAP 0.5 in asserting
`claims 1, 11–13, 42, 47, and 57 would have been obvious. Pet. 31. With
`regard to CAP 0.5, Petitioner relies on CAP 0.5 as teaching or suggesting “a
`broadcast request interface configured for receiving a broadcast message
`record having a broadcast message, a defined broadcast target area, and a
`broadcast message originator identifier” as recited in independent claim 1.
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`Pet. 44–46. Petitioner also relies on CAP 0.5 in asserting independent
`method claim 42 is unpatentable. Pet. 50–51 (“The claimed method includes
`a receiving element (‘receiving a broadcast message…’), similar to the
`receiving element of claim 1 . . . These elements are obvious over FCC
`1994, NSTC, and CAP 0.5 for the same reasons that these elements are
`obvious in claim 1, discussed above.”). The remaining challenged claims
`depend from claims 1 and 42. Patent Owner argues that CAP 0.5 has not
`been shown to have been publicly accessible and does not qualify as prior
`art. Prelim. Resp. 16–23. If CAP 0.5 is not shown to qualify as prior art,
`there is a not a reasonable likelihood that the Petitioner will prevail in the
`challenge to claims 1, 11–13, 42, 47, and 57 based on FCC 1994, NSTC, and
`CAP 0.5.
`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 SRI International, in the context of a motion for summary
`judgment, a document on an FTP server was not shown to have been
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`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, theses deposited at a
`library “were not accessible to the public because they had not been either
`cataloged or indexed in a meaningful way.” In re Cronyn, 890 F.2d 1158,
`1161 (Fed. Cir. 1989).
`In addition to CAP 0.5 (Ex. 1007) itself, Petitioner relies on the
`following evidence to establish CAP 0.5 qualifies as prior art: (1) paragraphs
`46 and 47 of the Botterell Declaration (Ex. 1003); (2) a printout of a page
`from the Internet Archive (Ex. 1008); (3) a printout of comments posted to
`the website incident.com (Ex. 1015); and (4) a document published by the
`Partnership for Public Warning (Ex. 1021). Pet. 35–37. We do not find this
`evidence sufficient to establish the public accessibility of CAP 0.5.
`With regard to the Botterell Declaration (Ex. 1003), paragraph 46
`states:
`
`In or near June 2002 I published CAP 0.5 on
`www.incident.com, a website which I owned in the early 2000s
`and which was visited by a variety of interested parties from
`government (nationally and internationally), academia, and
`technology developers and providers. The internet archive
`capture at Ex. 1021 confirms my recollection that I uploaded
`CAP 0.5 in or near June 2002. This website had chat capabilities,
`which allowed viewers to comment on my posts. I found a
`record of comments posted to a page of incident.com on the
`internet archive database, “Wayback Machine,” and that record
`is attached as Exhibit 1015.
`
`
`This statement is insufficient to establish that CAP 0.5 was publicly
`accessible. First and foremost, Mr. Botterell does not assert, and his
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`statement does not contain, any facts which establish that CAP 0.5 was
`publicly accessible. Mr. Botterell does not state that the website was
`publicly accessible or that the materials, such as CAP 0.5, “published” on
`the website were publicly accessible or catalogued or indexed or searchable.
`
`With regard to Exhibits 1015 and 1021, these documents are alleged
`to be printouts from the Internet Archive, “Wayback Machine.”2 Exhibits
`1015 and 1021 fail to support the public accessibility of CAP 0.5. With
`regard to Exhibit 1015, the Petition states, “[m]any readers of the
`information posted on incident.com also contributed comments to the posts
`that were posted on the website, in addition of the original post by
`Mr. Botterell.” Pet. 36. Patent Owner argues, “Petitioner has not pointed to
`any comments that even purport to evidence user access or downloading of
`the CAP 0.5 document presented in Ex. 1007, let alone user access or
`downloading of the CAP 0.5 document prior to the relevant priority date.”
`Prelim. Resp. 20. We agree with Patent Owner that Exhibit 1015 does not
`support the public accessibility of CAP 0.5. (Ex. 1007).
`With regard to Exhibit 1021, the Petition states, “[t]he CAP 0.5
`document at Ex. 1007 is the document at the link on this archived page titled
`‘Data Dictionary’” but there is no evidence cited to support this statement.
`
`2 “The Internet Archive is a website that provides access to a digital library
`of Internet sites . . . The Internet Archive has created a service known as the
`Wayback Machine. The Wayback Machine makes it possible to surf more
`than 400 billion pages stored in the Internet Archive’s web archive. Visitors
`to the Wayback Machine can search archives by URL (i.e., a website
`address). If archived records for a URL are available, the visitor will be
`presented with a list of available dates. The visitor may select one of those
`dates, and then begin surfing on an archived version of the Web.”
`https://archive.org/legal.faq.php (last visited Sept. 19, 2017).
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`There is no evidence that the alleged link was active or that the linked
`document was CAP 0.5 (Ex. 1007). Therefore, Exhibits 1015 and 1021 do
`not support the public accessibility of CAP 0.5.
`With regard to Exhibit 1008, the Petition states, “[a] document
`published by the Partnership for Public Warning, a group having the purpose
`of advancing the goals set forth in NSTC, commented on CAP 0.5 and
`suggested actions that could be taken to improve CAP.” Pet. 36. In support,
`Petitioner cites to Exhibit 1008 at 34, 41. Id. at 36–37. Patent Owner
`argues:
`[B]oth [cited] sections of the PPW Report reference a document
`tilted “Common Alerting Protocol (v.0.5) Alert Message
`Format,” which is not the title of the CAP 0.5 reference relied
`upon by the Petitioner. The CAP 0.5 document of Ex. 1007 is
`tilted “Common Alerting Protocol (v 0.5a) Alert Message Data
`Dictionary.” The CAP document referenced in the PPW Report
`is not only a different document, but it also appears to pertain to
`a different version (version 0.5) of CAP [rather] than the version
`referenced in the CAP 0.5 document (version 0.5a). Therefore,
`the comments regarding “CAP” in the PPW Report are not
`comments pertaining to the CAP 0.5 document upon which
`Petitioner relies for Ground I.
`
`Prelim. Resp. 22–23. We agree with Patent Owner. Exhibit 1008 does not
`support the public accessibility of CAP 0.5.
`Petitioner does not present any evidence of the indexing and
`cataloging of CAP 0.5 or download or search capabilities related to the
`website or server from which Petitioner argues CAP 0.5 was accessible.
`Thus, the evidence in the Petition is insufficient to show that CAP 0.5 was
`publicly accessible as of the priority date of the ’938 patent. Petitioner,
`therefore, has not established that CAP 0.5 is prior art to the ’938 patent.
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`As CAP 0.5 has not been established to have been publicly accessible
`prior art, Petitioner has not established a reasonable likelihood that it would
`prevail in its challenge to claims 1, 11–13, 42, 47, and 57 based on FCC
`1994, NSTC, and CAP 0.5.
`B. Obviousness Challenge Based on Rieger and NSTC
`Petitioner asserts claims 1, 11–13, 42, 47, and 57 would have been
`obvious over Rieger and NSTC. Pet. 37–39, 54–62. Patent Owner argues
`Petitioner fails to show the cited art teaches or suggests the “validating”
`limitations of independent claims 1 and 42. Prelim. Resp. 48–57. We agree
`with Patent Owner.
`Claim 1 recites (emphasis added):
`validating the broadcast message record as a function [sic] one
`or more of the broadcast message originator identifier, the
`broadcast target area, and a broadcast message transmission
`network parameter associated with a broadcast transmission
`network adapted for broadcasting the message to at least a
`portion of the broadcast target area, said broadcast admission
`control module configured for generating a validated broadcast
`message record as a function of the validating.
`
`
`
`Petitioner’s entire presentation with regard to this element is:
`Third, meeting the validating element of claim 1, Rieger
`discloses storing “broadcast target areas” for broadcast agents
`and using those stored areas to validate a broadcast message
`record. As illustrated by the following excerpts from Rieger, the
`system in Rieger uses passwords to direct each user to a page that
`allows the user to post to only specified target areas. Some areas
`are geographically restricted, such that only some users are
`allowed to post messages to those areas. By restricting the area’s
`[sic] to which users are allowed to post, Rieger discloses the
`validating element of claim 1. (Ex. 1003 (Botterell Dec.) at ¶ 66;
`Ex. 1005 (Surati Dec.) at ¶¶ 70–71.)
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`• “Administrators of the communications system
`100 can restrict the nature of posting 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 posting of particular
`categories,
`e.g.,
`Governmental/Traffic,
`Governmental/Weather, to particular regions,
`while excluding all other users from posting
`these categories to the regions.” (Id. at ¶ 81.)
`• “The MASTER server’s 221 database contains
`global system information, such as the identities
`and addresses of the other servers, the master list
`of user names, passwords, and email addresses
`and so forth.” (Id. at ¶ 102.)
`• “Each entry in the UserMasterIndex 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. When a user attempts to log on to the
`communications system 200, the client tier 205
`passes the log-on name and password that have
`been entered to the system’s MASTER server
`211, which is also an HTTP server. The
`MASTER server 211 validates the information,
`and upon success, redirects the client tier to the
`USER server 215 that hosts the user, who has
`now been identified.” (Id. at ¶¶ 176–77.)
`• “‘Restricted’ system channels are assigned at the
`direction of system administrators, and are made
`available only to users who have positively
`identified themselves as relevant uses [sic] of the
`channel, e.g.,
`the “McLean VA Police
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`Emergency” channel. Restricted channels will
`generally have
`an
`associated broadcast
`region. . .” (Id. at ¶ 157.)
`
`Pet. 56–58. We have reviewed the cited passages and do not discern any
`teaching or suggestion of “validating the broadcast message record” or
`“generating a validated broadcast message record as a function of the
`validating” as recited in this element of claim 1. We do not agree with
`Petitioner that “[b]y restricting the area’s [sic] to which users are allowed to
`post, Rieger discloses the validating element of claim 1.” Pet. 57. The
`claim recites, “validating the broadcast message record.” The cited passages
`relate to validating the user’s log-on information and restricting the nature of
`the user’s posting by limiting the geographic areas into which the user can
`post. These passages do not relate to validating a broadcast message record.
`The claim recites, “generating a validated broadcast message record as
`a function of the validating.” The cited passages fail to teach or suggest this
`limitation and Petitioner provides no explanation or argument relating to this
`limitation.
`
`Patent Owner argues:
`[W]hen validation of a user in Rieger is performed, there is no
`posting and no posting “originator” (since the posting has not yet
`been created). Additionally, there would be no need in the
`system of Rieger to perform any validation of a posting made
`from the restricted channel based on a posting originator
`identifier because the user has already established that it is a
`trusted source by virtue of being previously authenticated to
`access the restricted channel.
`
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`Prelim. Resp. 51–52. We agree with Patent Owner. Thus, Petitioner has not
`shown a reasonable likelihood that it will prevail in establishing claim 1
`would have been obvious over Rieger and NSTC.
`
`Independent method claim 42 contains two “validating” steps. With
`regard to the first, the Petition states, “[t]he claimed method includes . . . a
`validating element (‘validating the authority of a broadcast message
`originator…’) similar to the validating element of claim 1 . . . . These
`elements are disclosed by Rieger by the same excerpts discussed above with
`respect to claim 1.” Pet. 60. The second validating step in claim 42 is,
`“validating the broadcast transmission network against a broadcast
`transmission network parameter.” With regard to this second “validating”
`step of claim 42, the Petition states, “Rieger teaches this validating step as
`explained above with respect to claim 1.” Pet. 61. Thus, Petitioner relies on
`its presentation with regard to the “validating” element of claim 1 as
`showing Rieger teaches or suggests the two “validating” steps of claim 42.
`As discussed above, we do not agree that Rieger teaches or suggests the
`“validating” element of claim 1. And, the two “validating” steps of claim 42
`are of different scope than the “validating” element of claim 1. Petitioner
`has failed to establish that Rieger teaches or suggests the two “validating”
`steps of claim 42. Therefore, Petitioner has not shown a reasonable
`likelihood that it will prevail in establishing claim 42 would have been
`obvious over Rieger and NSTC.
`
`Claims 1 and 42 are the only challenged independent claims.
`Challenged claims 11–13, 47, and 57 are dependent on claims 1 and 42. As
`a result of failing to establish that the cited art teaches or suggests all the
`limitations of claims 1 and 42, Petitioner has not shown a reasonable
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`likelihood that it will prevail in establishing claims 1, 11–13, 42, 47, and 57
`would have been obvious over Rieger and NSTC.
`III. CONCLUSION
`We have considered the other contentions and arguments of the
`parties in the Petition and Preliminary Response but, as the issues discussed
`above establish that the asserted challenges to the claims are not likely to
`prevail, we do not address the other contentions and arguments of the parties
`in this Decision.
`Petitioner has not established a reasonable likelihood it would prevail
`in showing that claims 1, 11–13, 42, 47, and 57 are unpatentable.
`
`
`IV. ORDER
`For the reasons given, it is:
`ORDERED that, pursuant to 35 U.S.C. § 314(a), an inter partes
`review is not instituted for claims 1, 11–13, 42, 47, and 57 of U.S. Patent
`No. 7,693,938 B2.
`
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`PETITIONER:
`Mark Abate
`Sarah Fink
`GOODWIN PROCTER LLP
`mabate@goodwinprocter.com
`sfink@goodwinprocter.com
`
`
`
`PATENT OWNER:
`
`Peter Chassman
`Robert Riddle
`Michael Forbes
`Matthew Gibson
`Amardeep Grewal
`REED SMITH LLP
`pchassman@reedsmith.com
`rriddle@reedsmith.com
`mforbes@reedsmith.com
`mgibson@reedsmith.com
`sgrewal@reedsmith.com
`
`
`
`
`
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