Paper 33
`Trials@uspto.gov
`Entered: December 10, 2018
`Tel: 571-272-7822
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`RPX CORP., ERICSSON INC., AND TELEFONAKTIEBOLAGET
`LM ERICSSON,
`Petitioner,
`v.
`IRIDESCENT NETWORKS, INC.,
`Patent Owner.
`_________________________
` Case IPR2017-01662
`Patent 8,036,119 B2
`
`
`
`
`
`
`
`Before THOMAS L. GIANNETTI, MATTHEW R. CLEMENTS, and
`SCOTT B. HOWARD, Administrative Patent Judges.
`HOWARD, Administrative Patent Judge.
`
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`
`
`
`Trials@uspto.gov
`Entered: December 10, 2018
`Tel: 571-272-7822
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`RPX CORP., ERICSSON INC., AND TELEFONAKTIEBOLAGET
`LM ERICSSON,
`Petitioner,
`v.
`IRIDESCENT NETWORKS, INC.,
`Patent Owner.
`_________________________
` Case IPR2017-01662
`Patent 8,036,119 B2
`
`
`
`
`
`
`
`Before THOMAS L. GIANNETTI, MATTHEW R. CLEMENTS, and
`SCOTT B. HOWARD, Administrative Patent Judges.
`HOWARD, Administrative Patent Judge.
`
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`
`
`
`
`IPR2017-01662
`Patent 8,036,119 B2
`INTRODUCTION
`I.
`RPX Corp., Ericsson Inc., and Telefonaktiebolaget LM Ericsson
`(collectively “Petitioner”) filed a Petition (Paper 1, “Pet.”) to institute an
`inter partes review of claims 1−16 of U.S. Patent No. 8,036,119 B2
`(Ex. 1001, “the ’119 patent”) pursuant to 35 U.S.C. §§ 311–19. Iridescent
`Networks, Inc. (“Patent Owner”) filed a Patent Owner Preliminary
`Response. Paper 7 (“Prelim. Resp.”). We instituted an inter partes review
`of claims 1–16 on all grounds of unpatentability alleged in the Petition.
`Paper 9 (“Institution Decision” or “Inst. Dec.”).
`After institution of trial, we authorized Petitioner to file supplemental
`information. Paper 18. Patent Owner filed a Patent Owner Response. Paper
`21 (“PO Resp.”). Petitioner filed a Reply. Paper 26 (“Reply”). The Board
`filed a transcript of the Oral Hearing held on September 24, 2018. Paper 32
`(“Tr.”).
`Petitioner relies on Declarations by Narasimha Reddy, Ph.D.
`(Ex. 1025, 1040) and George Foti (Ex. 1032). Patent Owner relies on a
`Declaration by Dr. Jacob Sharony. Ex. 2001.
`The Board has jurisdiction under 35 U.S.C. § 6(b). This Final Written
`Decision issues pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73. For
`the reasons that follow, we determine that Petitioner has shown by a
`preponderance of the evidence that challenged claims 1–16 are unpatentable.
`Related Proceedings
`A.
`The parties indicate that the ’119 patent is being asserted in the
`following action: Iridescent Networks, Inc. v. AT&T Inc., No. 6:16-CV-
`01003 (E.D. Tex.). Pet. 5; Paper 5, 1. In addition, Patent Owner states that
`the ’119 patent is also the subject of another petition for inter partes review:
`
`2
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`IPR2017-01662
`Patent 8,036,119 B2
`RPX Corp. v. Iridescent Networks, Inc., Case IPR2017-01661. Paper 5, 1.
`Additionally, a related patent, U.S. Patent No. 7,639,612, is the subject of
`inter partes review in RPX Corp. v. Iridescent Networks, Inc., Case
`IPR2018-00254.
`The ’119 Patent
`B.
`The ’119 patent relates to a method “of providing guaranteed
`bandwidth on demand for an end user and/or enterprise.” Ex. 1001, 1:19–
`22. The ’119 patent states that it “tak[es] a distributed approach to handling
`bearer packets, with a physically separated controller and managed portal
`platform.” Id. at 4:64–66. “The Controller handles signaling, routing,
`dynamic bandwidth admission control, codec (video and/or voice)
`negotiation, end-to-end quality assurance, session management, subscriber
`data, billing, provisioning and associated operational functions” while the
`“Portal handles the packet bearer transport with the admission control and
`routing instructions given by the separate physical Controller.” Id. at 4:66–
`5:6.
`
`An example of the architecture of the ’119 patent is shown in a
`version of Figure 7 below which has been annotated by Petitioner.
`
`
`
`3
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`IPR2017-01662
`Patent 8,036,119 B2
`Pet. 2. The above version of Figure 7 of the ’119 patent “is a diagram of a
`Controller and Portal Solution in the Access Network” which has been
`annotated by Petitioner to highlight various elements including the
`originating end-point, the portal, the controller, the control path, and the
`terminating end-point. Ex. 1001, 4:29–30; Pet. 2.
`The Challenged Claims
`C.
`Petitioner challenges claims 1–16. Claims 1 and 13 are independent.
`Claim 1 is illustrative of the challenged claims and is reproduced below:
`1. A method for providing bandwidth on demand
`comprising:
`receiving, by a controller positioned in a network, a
`request for a high quality of service connection supporting any
`one of a plurality of one-way and two-way traffic types between
`an originating end-point and a terminating endpoint, wherein the
`request comes from the originating end-point and includes at
`least one of a requested amount of bandwidth and a codec;
`determining, by the controller, whether the originating
`end-point is authorized to use the requested amount of bandwidth
`or the codec and whether the terminating end-point can be
`reached by the controller;
`directing, by the controller, a portal that is positioned in
`the network and physically separate from the controller to
`allocate local port resources of the portal for the connection;
`negotiating, by the controller, to reserve far-end resources
`for the terminating end-point; and
`providing, by the controller to the portal, routing
`instructions for traffic corresponding to the connection so that the
`traffic is directed by the portal based only on the routing
`instructions provided by the controller, wherein the portal does
`not perform any independent routing on the traffic, and wherein
`the connection extending from the originating end-point to the
`terminating end-point is provided by a dedicated bearer path that
`includes a required route supported by
`the portal and
`
`4
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`IPR2017-01662
`Patent 8,036,119 B2
`dynamically provisioned by the controller, and wherein control
`paths for the connection are supported only between each of the
`originating and terminating end-points and the controller and
`between the portal and the controller.
`Ex. 1001, 7:43–8:7.
`Asserted Grounds of Unpatentability
`D.
`We instituted trial based on the following grounds of unpatentability:
`References
`Basis1 Challenged Claim(s)
`QBone,2 Surdila,3 and Li4
`§ 103(a) 1–8 and 11
`QBone, Surdila, Li, and Requena5
`§ 103(a) 10 and 13–15
`QBone, Surdila, Li, and Chen6
`§ 103(a) 9 and 12
`QBone, Surdila, Li, Requena, and Pillai7 § 103(a) 16
`
`Inst. Dec. 35.
`
`
`1 The Leahy-Smith America Invents Act (“AIA”) included revisions to
`35 U.S.C. § 100 et seq. effective on March 16, 2013. Because the ’119
`patent issued from an application filed before March 16, 2013, we apply the
`pre-AIA versions of the statutory bases for unpatentability.
`2 Ben Teitelbaum & Phil Chimento, QBONE BANDWIDTH BROKER
`ARCHITECTURE, WORK IN PROGRESS (last modified Feb. 28, 2000) (Ex.
`1017, “QBone”).
`3 U.S. 2002/0181462 A1 (published Dec. 5, 2002) (Ex. 1014, “Surdila”).
`4 PCT Publication No. WO 2005/101730 A1 (published Oct. 27, 2005)
`(Ex. 1026, “Li”). Petitioner provides an English language translation of Li
`(Ex. 1023), along with a declaration attesting to the accuracy of the
`translation (Ex. 1027).
`5 U.S. 2002/0181495 A1 (published Dec. 5, 2002) (Ex. 1018, “Requena”).
`6 U.S. 6,487,170 B1 (issues Nov. 26, 2002) (Ex. 1019, “Chen”).
`7 U.S. 2003/0133552 A1 (published July 17, 2003) (Ex. 1011, “Pillai”).
`
`5
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`IPR2017-01662
`Patent 8,036,119 B2
`II. ANALYSIS
`A. Claim Construction
`In an inter partes review, claim terms in an unexpired patent are
`interpreted according to their broadest reasonable construction in light of the
`specification of the patent in which they appear. 37 C.F.R. § 42.100(b)
`(2016);8 Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2142–46 (2016).
`Consistent with that standard, claim terms are given their ordinary and
`customary meaning, as would be understood by one of ordinary skill in the
`art in the context of the entire disclosure. See In re Translogic Tech., Inc.,
`504 F.3d 1249, 1257 (Fed. Cir. 2007). There are, however, two exceptions
`to that rule: “1) when a patentee sets out a definition and acts as his own
`lexicographer,” and “2) when the patentee disavows the full scope of a claim
`term either in the specification or during prosecution.” Thorner v. Sony
`Computer Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012).
`If an inventor acts as his or her own lexicographer, the definition must
`be set forth in the specification with reasonable clarity, deliberateness, and
`precision. Renishaw PLC v. Marposs Societa’ per Azioni, 158 F.3d 1243,
`1249 (Fed. Cir. 1998). “Although it is improper to read a limitation from the
`specification into the claims, claims must be read in view of the specification
`of which they are a part.” Microsoft Corp. v. Multi-Tech Sys., Inc., 357 F.3d
`
`
`8 Per recent regulation, the Board will apply the Phillips claim construction
`standard to petitions filed on or after November 13, 2018. See Changes to
`the Claim Construction Standard for Interpreting Claims in Trial
`Proceedings Before the Patent Trial and Appeal Board, 83 Fed. Reg. 51340
`(Oct. 11, 2018) (to be codified at 37 C.F.R. pt. 42). Because Petitioner filed
`its petition before November 13, 2018, we apply the BRI standard.
`
`6
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`IPR2017-01662
`Patent 8,036,119 B2
`1340, 1347 (Fed. Cir. 2004); In re Van Geuns, 988 F.2d 1181, 1184 (Fed.
`Cir. 1993).
`
`1.
`
`“Directing, by the Controller, . . . [a Portal] . . . to
`Allocate Local Port Resources of the Portal”
`Petitioner proposes a construction for the “directing, by the controller,
`. . . [a portal] . . . to allocate local port resources of the portal” step recited in
`claims 1 and 13. Pet. 13–14. According to Petitioner, the directing step
`“include[s] at least sending an allocation instruction from the controller to
`the portal, where the allocation instruction results in the portal allocating
`physical and/or logical elements of the portal.” Id. at 14 (emphasis omitted)
`(citing Ex. 1025 ¶¶ 51–55). In our Institution Decision, we determined that
`“directing, by the controller, . . . [a portal] . . . to allocate local port resources
`of the portal,” does not require an express construction. Inst. Dec. 7–8.
`Patent Owner “accepts Petitioner’s proposed constructions without
`prejudice, but reserves its right to present evidence and arguments as to a
`proper or different construction of the claim terms within the meaning of the
`‘119 Patent should such become necessary at trial.” PO Resp. 11–12.9
`Having considered the evidence presented, we conclude that no
`express claim construction of this limitation is necessary to resolve the
`issues presented in this trial. 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.”).
`
`
`9 Although Patent Owner purported to reserve its right to present evidence
`and argument regarding a “proper or different construction,” (PO Resp. 11–
`12), by not doing so in the Patent Owner’s Response Patent Owner waived
`its ability to argue an alternative claim construction (see Paper 10, 3).
`
`7
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`IPR2017-01662
`Patent 8,036,119 B2
`“A Required Route . . . Dynamically
`2.
`Provisioned by the Controller”
`Although neither party explicitly proposed a construction for this
`term, we noted in our Institution Decision that Patent Owner’s argument on
`this limitation turned on a particular construction:
`Although Patent Owner does not request an express
`construction of the claim limitation “a required route supported
`by the portal and dynamically provisioned by the controller,” as
`recited in claims 1 and 13, Patent Owner’s arguments regarding
`that limitation are premised upon a construction that precludes
`“exclusively using pre-calculated and pre-computed paths.”
`Inst. Dec. 8 (citing Prelim. Resp. 29–33).
`Patent Owner made similar arguments in Iridescent Networks, Inc. v.
`AT&T Inc., No. 6:16-CV-01003 (E.D. Tex.) (“AT&T”). Ex. 1030, 12–13.
`In AT&T, “[t]he parties dispute whether ‘dynamically provisioned by the
`controller’ means the provisioning occurs in response to a request, or
`whether there can be a connection set up in advance as part of the end-to-end
`connection.” Ex. 1030, 12. The Magistrate Judge in AT&T rejected Patent
`Owner’s argument, deciding that the claim and specification does not
`“exclude the use of pre-existing connections, so long as such connections are
`provided to an end-point in response to a request” and “construe[d] the term
`‘dynamically provisioned by the controller’ to mean ‘provisioned to an end-
`point by the controller in response to the request.’” Id. at 13. Neither party
`objected to the Magistrate Judge’s claim construction. See Ex. 1031.
`After reviewing this history, we concluded in our Institution Decision
`that “the broadest reasonable interpretation of the claim must be broad
`enough to encompass the claim construction in [AT&T]” and construed the
`phrase “a required route supported by the portal and dynamically
`
`8
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`IPR2017-01662
`Patent 8,036,119 B2
`provisioned by the controller,” as recited in claims 1 and 13, to
`“encompass[] any route provisioned to an endpoint by the controller in
`response to the request and, specifically, not precluding the use of pre-
`defined paths made available to particular end-points in response to
`particular requests.” Inst. Dec. 9.
`Patent Owner did not address our preliminary claim construction in its
`post-institution filings. See PO Resp. 11–12. Petitioner argues that our
`preliminary construction was correct. Reply 13–16.
`“The broadest reasonable interpretation of a claim term may be the
`same as or broader than the construction of a term under the Phillips
`standard.” Facebook, Inc. v. Pragmatus AV, LLC, 582 F. App’x 864, 869
`(Fed. Cir. 2014) (non-precedential). “In many cases, the claim construction
`will be the same under [both] standards.” In re CSB-System Int’l, Inc., 832
`F.3d 1335, 1341 (Fed. Cir. 2016). However, the broadest reasonable
`construction “cannot be narrower” than the construction under the Phillips
`standard used by district courts. Facebook, 582 F. App’x at 869.
`We have further considered our construction in light of the arguments
`and evidence adduced at trial. In light of the foregoing, and for the reasons
`stated in our Institution Decision, we maintain our determination based on
`the full record. See Inst. Dec. 8–11.
`Legal Principles of Obviousness
`B.
`An invention is not patentable “if the differences between the subject
`matter sought to be patented and the prior art are such that the subject matter
`as a whole would have been obvious at the time the invention was made to a
`person having ordinary skill in the art to which said subject matter pertains.”
`35 U.S.C. § 103(a). The question of obviousness is resolved on the basis of
`
`9
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`IPR2017-01662
`Patent 8,036,119 B2
`underlying factual determinations including the following: (1) the scope and
`content of the prior art; (2) any differences between the claimed subject
`matter and the prior art; (3) the level of skill in the art; and, (4) where in
`evidence, objective evidence of nonobviousness such as commercial
`success, long-felt but unsolved needs, and failure of others.10 Graham v.
`John Deere Co., 383 U.S. 1, 17−18 (1966). When evaluating a combination
`of teachings, we also must “determine whether there was an apparent reason
`to combine the known elements in the fashion claimed by the patent at
`issue.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (citing In re
`Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). We analyze the grounds based
`on obviousness in accordance with the above-stated principles.
`Level of Ordinary Skill in the Art
`C.
`In determining the level of ordinary skill in the art, various factors
`may be considered, including the “type of problems encountered in the art;
`prior art solutions to those problems; rapidity with which innovations are
`made; sophistication of the technology; and educational level of active
`workers in the field.” In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995)
`(citing Custom Accessories, Inc. v. Jeffrey-Allan Indus., Inc., 807 F.2d 955,
`962 (Fed. Cir. 1986)). In a given case, “one or more factors may
`predominate.” Id.
`Petitioner’s expert, Dr. Reddy, testifies that
`one of ordinary skill in the art would include someone who has a
`B.S. degree in Electrical Engineering, Computer Engineering,
`Computer Science, or equivalent training, as well as two to three
`
`
`10 Neither Petitioner nor Patent Owner addresses objective evidence of
`non-obviousness.
`
`10
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`IPR2017-01662
`Patent 8,036,119 B2
`years of technical experience in the field of packet-switched
`networking, such as Internet, local area, and wide area networks.
`Ex. 1025 ¶ 4. In the Institution Decision, we adopted Petitioner’s definition
`of the level of ordinary skill in the art. Inst. Dec. 12.
`Neither Patent Owner nor Petitioner addresses the level of skill in
`their post-institution papers. Moreover, Patent Owner’s declarant,
`Dr. Sharony, adopts Petitioner’s proposed level of ordinary skill in the art
`for his testimony. See Ex. 2001 ¶ 18.
`Based on the complete record, we see no reason to modify our
`preliminary determination of the level of ordinary skill in the art.
`D. Whether QBone is a Printed Publication
`As a preliminary matter, we must determine whether QBone is a prior
`art printed publication. Petitioner makes two arguments supporting its
`contention that QBone is a prior art printed publication: (1) QBone was
`published by the USPTO as part of the Surdila file history, and (2) QBone
`was publically accessible at the Internet2 website. Pet. 9–10; Reply 2–9.
`Patent Owner disputes the point. PO Resp. 12–19.
`Having considered all of the evidence regarding the facts and the
`circumstances surrounding the public accessibility of QBone, and in view of
`the relevant case law, we find Petitioner has met its burden of showing that
`QBone was publicly accessible more than a year before May 2, 200611 and,
`therefore, are persuaded that QBone (Exhibit 1017) is a printed publication.
`
`
`11 Neither Petitioner nor Patent Owner addresses the effective filing date or
`date of invention of claims. For purposes of this Decision, we have used the
`filing date of the Provisional Application No. 60/796,660, from which the
`’119 patent claims priority. Ex. 1001, [60], 1:11–15.
`
`11
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`IPR2017-01662
`Patent 8,036,119 B2
`1. Petitioner’s Argument
`Petitioner argues QBone is a prior art printed publication. Pet. 9–10.
`Petitioner argues QBone was discussed in and incorporated by reference into
`Surdila. Pet. 9 (citing Ex. 1014 ¶ 25). Specifically, under a heading titled
`“QBone Working Group Architecture” (Ex. 1014 ¶ 24), Surdila states:
`A working group known as the QBone Working Group has
`defined, as part of the Internet 2 initiative, an architecture for
`coordinating bandwidth requirements across multiple networks
`at the transport level. The QBone group has published a
`description of the architecture in a paper entitled “QBone
`Bandwidth Broker Architecture” found at http://www.internet2.
`edu/qos/qbone/papers/sibbs/, and this paper is incorporated by
`reference in its entirety herein. This paper defines the
`functionality of a Bandwidth Broker (BB) and contains a brief
`specification of a BB protocol which is to be introduced in Phase
`2 of the QBone implementation program.
`Ex. 1014 ¶ 25 (emphasis added). We note that the URL no longer works.
`See Ex. 2002.
`Petitioner argues that on April 24, 2001, a copy of QBone was filed
`with the United Stated Patent & Trademark Office along with the Surdila
`application. Pet. 9–10 (citing Ex. 1015, 91–120; Ex. 1016). Petitioner
`further argues Surdila was published on December 5, 2002 and, on that date,
`the Surdila file history, including QBone, was publicly accessible. Id. at 10
`(citing Ex. 1025 ¶ 68). Petitioner further argues QBone “could be located by
`a [person of ordinary skill in the art] in a variety of ways, including directly
`searching the USPTO application database as well as by using the USPTO
`classification system to locate the Surdila reference” which “would lead a
`[person of ordinary skill in the art] to the QBone reference.” Id. (citing Ex.
`1025 ¶ 69).
`
`12
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`IPR2017-01662
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`In further support of its publication by the PTO argument, Petitioner
`argues “[o]ne of the PTO’s functions is ‘dissemination of patent
`information.’” Reply 6 (quoting Ex. 1041). According to Petitioner, “[f]ile
`histories are an integral part of ‘patent information,’ and thus fall under the
`PTO’s dissemination function.” Id. Therefore, Petitioner argues, because
`QBone was a part of the Surdila file history—and incorporated by
`referenced into Surdila—the PTO’s dissemination function applies to
`QBone. Id. at 6–7 (citing Duodecad IT Services Luxembourg S.À.R.L. v.
`WAG Acquisition, LLC, IPR2015-01036, Paper 17 (Oct. 20, 2016)).
`Petitioner further argues it is irrelevant “that the URL link cited in
`Surdila’s publication is now ‘broken.’” Reply 7. According to Petitioner,
`“[t]he inclusion of the link in Surdila’s description does not direct a [person
`of ordinary skill in the art] away from the [file history], but rather
`demonstrates that Surdila provided multiple avenues for accessing QBone.”
`Id. Petitioner further argues, “Surdila states that QBone (Ex. 1017 itself) is
`‘incorporated by reference in its entirety’” and “an incorporated document
`would have been ‘part of the application’ and ‘part of the [file history].’” Id.
`at 7–8 (citing Ex. 1014 ¶ 25; Ex. 1038, 76:2–4, 77:5–78:9).
`Petitioner argues this case is just like Bruckelmyer v. Ground Heaters,
`Inc., 445 F.3d 1374, 1376-79 (Fed. Cir. 2006), which, according to
`Petitioner, held that “a Canadian patent application in the [file history] was
`deemed publicly accessible because of the corresponding published patent.”
`Id. at 8. More specifically, Petitioner argues:
`Surdila, like the patent in Bruckelmyer, is a published
`patent document. It is “more informative of the content” of
`Surdila’s FH than a mere abstract. As demonstrated in the
`Petition, Surdila is “classified and indexed,” and therefore
`
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`provides a roadmap that would have allowed a POSITA to locate
`Surdila’s FH.
`Id. at 9 (citing Pet. 10). Additionally, Petitioner argues that Surdila’s
`incorporation by reference provides the necessary guidance for a person of
`ordinary skill in the art to find Surdila and its file history. Id.
`Following our Institution Decision, we authorized Petitioner to file as
`supplemental information a declaration from one of the named inventors on
`Surdila, George Foti, and supporting documents for that declaration.
`Paper 18; Exs. 1032–1035. Petitioner argues the supplemental information
`further establishes that QBone is a printed publication. Reply 2–5.
`Specifically, Petitioner argues that the testimony of Mr. Foti establishes that
`the QBone architecture “was well-known and publicly discussed by” people
`of ordinary skill in the art prior to 2006, and that papers relating to the
`QBone architecture were “housed on the Internet2 website[], were freely
`available to any interested party free of charge[,] and were easily accessible
`by keyword searching through a search engine, or by navigating to the
`relevant topic via links in the Internet2 webpage.” Reply 3 (quoting Ex.
`1032 ¶ 9). Mr. Foti further testifies that prior to the filing of Surdila (April
`24, 2001), he accessed QBone from the Internet2 website:
`Leading up to the filing of my patent application (ERIC-
`1014), we accessed from Internet2’s website an article titled
`“QBone Bandwidth Broker Architecture” by Ben Teitelbaum
`and Phil Chimento. I have reviewed a copy of ERIC-1017. I
`confirm that ERIC-1017 is a copy of the printout we provided for
`submission to the United States Patent and Trademark Office
`with the patent application (ERIC-1014).
`Ex. 1032 ¶ 10. Petitioner further argues that besides being located on the
`Internet2 website, a person of ordinary skill in the art could have easily
`
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`IPR2017-01662
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`accessed QBone by keyword searching with a search engine. Reply 4–5
`(citing Ex. 1032 ¶¶ 5–8).
`Patent Owner’s Arguments
`2.
`Patent Owner argues QBone is not a printed publication. PO Resp.
`12–19. First, Patent Owner argues that the June 19, 2000 date in the footer
`of Exhibit 1017 (QBone) merely references the date the article was printed
`by Mr. Foti, not the “date the contents of the QBone reference were publicly
`available to persons of skill in the art.” Id. at 14. Patent Owner further
`argues that the date on which Mr. Foti was in possession of a copy of QBone
`is not the question; instead, “the question is whether QBone is a prior art
`printed publication under 35 U.S.C. § 102(a).” Id. Patent Owner argues
`Petitioner’s evidence, at best, shows only that one person was in
`possession of the QBone reference and completely fails to show
`QBone was disseminated or otherwise made available to the
`extent that persons interested and ordinarily skilled in the subject
`matter or art, exercising reasonable diligence, could locate the
`reference.
`Id. at 14–15.
`Second, Patent Owner argues “even if internet publication was
`considered, it would fail because the hyperlink to QBone provided in Surdila
`is currently broken and there is no evidence that it worked on December 5,
`2002 (Petitioners’ alleged publication date).” Id. at 15 (citation omitted).
`Patent Owner further argues the only evidence that QBone was ever
`available on the internet was a printout of a website obtained from the
`Internet Archive on January 10, 2017. Id. (citing Ex. 1024). Although
`“[t]he printout is allegedly an archived copy of how the website at the URL
`address: http://qbone.internet2.edu/bb/bboutline2.html appeared on April
`13, 2001,” Patent Owner argues there is “no direct, competent evidence from
`
`15
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`IPR2017-01662
`Patent 8,036,119 B2
`anyone with personal knowledge of the website, Internet Archive, who can
`verify that the allegedly archived copy of the QBone reference is what
`Petitioner purports [it] to be and without that evidence, the document cannot
`be considered.” Id.; see also id. at 15–17 (discussing cases regarding the
`authenticity of Internet Archive printouts). In addition to challenging the
`authenticity of QBone, Patent Owner also asserts it is inadmissible hearsay.
`Id. at 18–19.
`Admissibility of QBone Articles (Exhibits 1017 and 1024)
`3.
`Before addressing the substance of the printed publication argument,
`we address the evidentiary objections in the Patent Owner’s Response.
`Patent Owner objects to the admissibility of QBone (Exhibit 1017) because
`“Petitioner has completely failed to prove Exhibit 1017 is authentic under
`Fed. R. Evid. 901” and that “the exhibit is impermissible hearsay for which
`no exception applies under Fed. R. Evid. 801 and 802.” PO Resp. 19.
`Patent Owner similarly objects to the Internet Archive version of
`QBone, Exhibit 1024: “Petitioner offers no direct, competent evidence from
`anyone with personal knowledge of the website, Internet Archive, who can
`verify that the allegedly archived copy of the QBone reference is what
`Petitioner purports [it] to be and without that evidence, the document cannot
`be considered.” Id. at 15; see also id. at 15–18 (discussing cases excluding
`Internet Archive documents). Patent Owner also argues that Exhibit 1024 is
`inadmissible hearsay. Id. at 18–19.
`The Office has prescribed rules regarding objections to exhibits and
`motions to exclude them:
`(b) Other evidence. For evidence other than deposition
`evidence:
`
`16
`
`
`
`IPR2017-01662
`Patent 8,036,119 B2
`(1) Objection. Any objection to evidence submitted
`during a preliminary proceeding must be filed within ten
`business days of the institution of the trial. Once a trial has been
`instituted, any objection must be filed within five business days
`of service of evidence to which the objection is directed. The
`objection must identify the grounds for the objection with
`sufficient particularity to allow correction in the form of
`supplemental evidence.
`(2) Supplemental evidence. The party relying on evidence
`to which an objection is timely served may respond to the
`objection by serving supplemental evidence within ten business
`days of service of the objection.
`(c) Motion to exclude. A motion to exclude evidence must
`be filed to preserve any objection. The motion must identify the
`objections in the record in order and must explain the objections.
`The motion may be filed without prior authorization from the
`Board.
`37 C.F.R. § 42.64(b), (c). Additionally, our Rules require that “[e]ach . . .
`motion must be filed as a separate paper.” 37 C.F.R. § 42.22(a) (emphasis
`added).
`Although Patent Owner objected to Exhibit 1017 (QBone) and Exhibit
`1024 (Internet Archive version of QBone) as required by our rules (see
`Paper 12), Patent Owner did not preserve those objections by filing a motion
`to exclude as a separate paper. Instead, Patent Owner simply repeated its
`objections in the Patent Owner’s Response. PO Resp. 19. Because Patent
`Owner did not comply with the rules regarding a motion to exclude and has
`not sufficiently demonstrated—or even argued—why we should waive or
`suspend our requirement for a separate motion to exclude (see 37 C.F.R.
`§ 42.5(b)), we determine Patent Owner waived its objections to the
`admissibility of Exhibits 1017 and 1024.
`
`17
`
`
`
`IPR2017-01662
`Patent 8,036,119 B2
`Printed Publication Analysis
`4.
`“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.’” In re Cronyn, 890 F.2d 1158, 1160 (Fed. Cir.
`1989). The determination of whether a given reference qualifies as a prior
`art “printed publication” involves a case-by-case inquiry into the facts and
`circumstances surrounding the reference’s disclosure to members of the
`public. In re Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004). “Because
`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’ bar under
`35 U.S.C. § 102(b).” In re Hall, 781 F.2d 897, 898–99 (Fed. Cir. 1986); see
`also SRI Int’l, Inc. v. Internet Sec. Sys., 511 F.3d 1186, 1194 (Fed. Cir.
`2008) (quoting Hall). “A reference will be considered publicly accessible if
`it was ‘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.’” Blue Calypso, LLC v. Groupon, Inc.,
`815 F.3d 1331, 1348 (Fed. Cir. 2016) (quoting Kyocera Wireless Corp. v.
`ITC, 545 F.3d 1340, 1350 (Fed. Cir. 2008)). As the cases make clear, a
`document may be a printed publication based on either (1) actual
`dissemination to people of ordinary skill in the art or (2) being made
`available to the extent that persons interested and ordinarily skilled in the
`subject matter or art, exercising reasonable diligence, can locate it.
`
`18
`
`
`
`IPR2017-01662
`Patent 8,036,119 B2
`Whether a publication that was not disseminated was still “accessible
`to the public” frequently turns on whether the reference was “cataloged or
`indexed in a meaningful way.” Cronyn, 890 F.2d at 1160–61 (distinguishing
`between an alphabetical list of authors and titles with a “library’s general
`practice for indexing, cataloging, and shelving”). If a publication is “neither
`distributed nor indexed,” other factors that might be analyzed include the
`length of time it was “exhibited,” the expertise of the audience, and
`“reasonable expectations that the material displayed would not be copied.”
`Klopfenstein, 380 F.3d at 1350. Additionally, a document may be a printed
`publication if there is a road map that would direct a person of ordinary skill
`in the art to the document. See Bruckelmyer, 445 F.3d at 1379; Blue
`Calypso, 815 F.3d at 1350 (“We have previously recognized that the
`presence of a ‘research aid’ can also establish public accessibility.”).
`In determining whether a documen
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