throbber
Paper No. 7
`Trials@uspto.gov
`Entered: August 10, 2017
`571-272-7822
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`FEDEX CORPORATION,
`Petitioner,
`
`v.
`
`INTELLECTUAL VENTURES II LLC,
`Patent Owner.
`____________
`
`Case IPR2017-00859
`Patent 9,047,586 B2
`____________
`
`
`Before DAVID C. MCKONE, BARBARA A. PARVIS, and
`JOHN A. HUDALLA, Administrative Patent Judges.
`
`PARVIS, Administrative Patent Judge.
`
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`

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`Patent 9,047,586 B2
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`
`I. INTRODUCTION
`
`A. Background
`FedEx Corporation (“Petitioner”) filed a Petition (Paper 2, “Pet.”) to
`institute an inter partes review of claims 7, 8, 12, 13, 16, 18, and 19 of U.S.
`Patent No. 9,047,586 B2 (Ex. 1001, “the ’586 patent”). Petitioner indicates
`that FedEx Corp., FedEx Corporate Services, Inc., Federal Express
`Corporation, FedEx Ground Package System, Inc., FedEx Freight, Inc.,
`FedEx Custom Critical, Inc., FedEx Office and Print Services, Inc., and
`GENCO Distribution System, Inc., are real parties in interest. Pet. 82–83.
`Intellectual Ventures II LLC (“Patent Owner”), filed a Preliminary Response
`(Paper 6, “Prelim. Resp.”). Upon consideration of the Petition and
`Preliminary Response, we conclude, under 35 U.S.C. § 314(a), that
`Petitioner has established a reasonable likelihood that it would prevail with
`respect to claims 7, 8, 12, and 13, but not as to claims 16, 18, and 19.
`Accordingly, we institute an inter partes review of claims 7, 8, 12, and 13 of
`the ’586 patent.
`
`B. Related Matters
`The parties indicate that the ’586 patent has been asserted in
`Intellectual Ventures II LLC v. FedEx Corp., No. 2:16-cv-980 (E.D. Tex.).
`Pet. 83; Paper 4, 1.
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`C. Evidence Relied Upon
`Petitioner relies on the following prior art:
`AMERICAN NATIONAL STANDARD FOR MATERIAL HANDLING—UNIT
`LOADS AND TRANSPORT PACKAGES—TWO-DIMENSIONAL SYMBOLS, ANSI
`10.8.3M-1996 (1996) (Ex. 1002, “ANSI”).
`U.S. Patent No. 5,298,731, issued Mar. 29, 1994 (Ex.1003, “Ett”).
`GUIDE TO BAR CODING WITH UPS FOR CUSTOMERS GENERATING BAR
`CODE LABELS, VERSION III (Ex. 1004, “UPS”).
`
`
`
`
`
`
`
`Petitioner also relies on the Declaration of Mr. Mark Reboulet.
`(Ex. 1005, “Reboulet Decl.”).
`Patent Owner relies on the Declaration of Daniel W. Engels, Ph.D.
`(Ex. 2002, “Engels Decl.”).
`
`
`D. The Asserted Grounds
`Petitioner asserts the following grounds of unpatentability (Pet. 4):
`Reference(s)
`Basis
`Claim(s) Challenged
`ANSI and Ett
`§ 103(a)
`7, 8, 12, 13, 16, 18, and 19
`
`ANSI and UPS
`
`§ 103(a)
`
`7, 12, 16, 18, and 19
`
`ANSI, UPS, and Ett
`
`§ 103(a)
`
`8 and 13
`
`
`E. The ’586 Patent
`The ’586 patent describes a method of tagged bar code data
`interchange that includes creating electronic and/or printed documents with
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`tagged bar coded information. Ex. 1001, [57]. Figure 2, reproduced below,
`illustrates an example:
`
`
`
`Figure 2 is a pictorial representation of a document containing tagged bar
`codes. Id. at. 4:1–2. According to the ’586 patent, function key tags identify
`data fields. Id. at 5:31–33.
`Claim 7, reproduced below, is illustrative of the invention:
`7.
`A computer-readable storage device storing
`computer executable instructions that are executable by a
`computer system to cause the computer system to perform
`operations for data interchange, the operations comprising:
`creating an electronic document having a plurality of bar
`codes, wherein the plurality of bar codes encode
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`
`respective data tags and data items, and wherein at
`least one of the data tags includes an identifier
`identifying one of the data items;
`sending the electronic document for decoding of a first one
`of the plurality of bar codes to recover a first data
`tag and a first data item.
`Ex. 1001, 10:29–40.
`
`A.
`
`II. ANALYSIS
`Claim Construction
`1. Principles of Law
`We interpret claims of an unexpired patent using the 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, 2144–45 (2016). In applying a broadest reasonable
`construction, claim terms generally 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).
`Limitations with the language “means” or “means for” are presumed
`to invoke 35 U.S.C. § 112 ¶ 6.1 See Williamson v. Citrix Online, LLC, 792
`F.3d 1339, 1348–49 (Fed. Cir. 2015) (en banc in relevant part) (“use of the
`word ‘means’ creates a presumption that § 112, ¶ 6 applies”); see also In re
`
`
`1 Section 4(c) of the Leahy-Smith America Invents Act, Pub. L. No. 112–29,
`125 Stat. 284 (2011) (“AIA”) re-designated 35 U.S.C. § 112 ¶ 6, as
`35 U.S.C. § 112(f). Because the ’586 patent has a filing date before
`September 16, 2012, the effective date of § 4(c) of the AIA, we will refer to
`the pre-AIA version of 35 U.S.C. § 112.
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`Donaldson Co., 16 F.3d 1189, 1193 (Fed. Cir. 1994) (“[P]aragraph six
`applies regardless of the context in which the interpretation of means-plus-
`function language arises, i.e., whether as part of a patentability
`determination in the PTO or as part of a validity or infringement
`determination in a court.”). The sixth paragraph of 35 U.S.C. § 112 provides
`that “[a]n element in a claim for a combination may be expressed as a means
`or step for performing a specified function without the recital of structure,
`material, or acts in support thereof, and such claim shall be construed to
`cover the corresponding structure, material, or acts described in the
`specification and equivalents thereof.” Where a challenged claim contains a
`means-plus-function limitation under 35 U.S.C. § 112, sixth paragraph, the
`Petitioner “must identify the specific portions of the specification that
`describe the structure, material, or acts corresponding to each claimed
`function.” 37 C.F.R. § 42.104(b)(3).
`
`
`2. Means-plus-function limitations (Claim 16)
`We turn to Petitioner’s identification of the recited function and the
`specific portions of the Specification that describe the structure, material, or
`acts corresponding to each claimed function under 37 C.F.R. § 42.104(b)(3)
`for the means-plus-function limitations recited in claim 16. Pet. 10–11.
`Patent Owner disputes Petitioner’s proposals. Prelim. Resp. 10–17. Our
`determination not to institute on claim 16 hinges on structure for the “means
`for decoding the plurality of bar codes to recover the respective data tags and
`data items” (“decoding means”) recited in claim 16. See infra § B.2.e.
`Accordingly, we need not discuss fully the parties’ remaining means-plus-
`function contentions.
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`To explain our analysis with respect to the decoding means recited in
`claim 16, we first discuss certain of Petitioner’s contentions regarding the
`immediately preceding limitation, i.e., “means for receiving an electronic
`document comprising a plurality of bar codes.” Petitioner asserts that a
`“computer” and “software application” are structures corresponding to that
`receiving means limitation. Pet. 11 (citing Ex. 1001, 5:14–18, Fig. 7).
`Consistent with Petitioner’s contentions (id.), the ’586 patent Specification
`describes that a receiver opens the received electronic document “in a
`window on their computer.” Ex. 1001, 5:14–15 (emphasis added).
`Turning now to the decoding means, both parties identify the parsing
`and data cache application that identifies scanned bar coded data as at least
`part of the structure corresponding to the function of “decoding the plurality
`of bar codes to recover the respective data tags and data items,” recited in
`claim 16. Pet. 11 (citing Ex. 1001, 5:40–42, Figs. 6, 9); Prelim. Resp. 16
`(citing Ex. 1001, 3:37–47, 4:43–49, 5:40–48, 5:57–67, 10:19–20, 10:52–56;
`Ex. 2002, 5:61–63). According to the ’586 patent Specification, the same
`computer used by the receiver to open the received electronic document also
`performs that parsing, caching, and identifying the document. Ex. 1001,
`5:14–48. Patent Owner identifies additional hardware, i.e., a bar code
`scanner or reader (Prelim. Resp. 15–16), but we need not address these
`additional contentions to explain why we conclude that Petitioner’s
`contentions are deficient.
`Instead, our conclusion (see infra § B.2.d) pertains to Petitioner’s
`failure to show the algorithm performed by the decoding means. The
`corresponding structure for a computer-implemented limitation must be
`more than simply a general purpose computer or controller. “[T]he
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`corresponding structure for a § 112 ¶ 6 claim for a computer-implemented
`function is the algorithm disclosed in the specification.” Aristocrat Techs.
`Austl. Party Ltd. vs. Int’l Game Tech., 521 F.3d 1328, 1333 (Fed. Cir. 2008)
`(quoting Harris Corp. v. Ericsson Inc., 417 F.3d 1241, 1249 (Fed. Cir.
`2005)). Petitioner points to the parsing and data cache application residing
`on the receiver’s computer as part of the structure corresponding to the
`decoding means. Pet. 10–11. Petitioner additionally acknowledges that the
`“‘parsing and data cache application’ of the ’586 patent ‘use[s] logic and
`computer routines.’” Id. at 56 (citing Ex. 1001, 5:41–44).
`Petitioner, however, falls short in its claim construction analysis by
`not including the algorithm described in the ’586 patent Specification as part
`of the structure corresponding to the decoding means. Pet. 10–11, 55–57.
`The portion of the ’586 patent Specification identified by Petitioner, along
`with the algorithm that immediately follows, is reproduced below.
`In step 126, the receiver scans tagged bar codes in
`electronic document “A” 103. The scanned tagged bar coded
`data is parsed and sent to a data cache, as shown in FIG. 6. In
`step 127, the parsing and data cache application use logic and
`computer routines to identify the scanned bar coded data by
`‘function key tag[,”] match the scanned bar coded data to the
`appropriate field in electronic document “B” 122, strip the
`‘function key tag[,”] and input the stripped bar coded data into
`the appropriate field in electronic document “B” 122.
`Ex. 1001, 5:40–48 (emphasis added).
`Petitioner’s claim construction analysis is silent with respect to the
`algorithm disclosed in the ’586 patent Specification. However, the
`corresponding structure for the decoding means includes the algorithm
`disclosed in the Specification, which is italicized in the quotation above. See
`Aristocrat, 521 F.3d at 1333. Thus, we agree with Petitioner that the
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`corresponding structure includes the receiver’s computer and the parsing and
`data cache application, but we also determine that the corresponding
`structure includes the algorithm, italicized above. We need not provide
`further analysis of the parties’ contentions regarding the means-plus-
`function limitations recited in claim 16 because we determine Petitioner has
`not shown sufficiently that the asserted prior art teaches the corresponding
`structure for the “means for decoding” as properly construed. See infra
`§ B.2.e.
`
`B. Asserted Grounds of Unpatentability
`A claim is unpatentable under 35 U.S.C. § 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.” We resolve the question of obviousness on the basis of
`underlying factual determinations, including: (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) objective evidence of
`nonobviousness, i.e., secondary considerations.2 See Graham v. John Deere
`Co., 383 U.S. 1, 17–18 (1966).
`
`
`
`2 The record does not include allegations or evidence of objective indicia of
`nonobviousness.
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`
`1. Level of Skill in the Art
`Petitioner contends that a person of ordinary skill in the art “would
`have held at least a Bachelor’s Degree in Electrical Engineering, Computer
`Engineering, Supply Chain or Logistics Management, or the industry
`equivalent thereof, and approximately two or more years of industry
`experience in the field of bar code technology, or the academic equivalent
`thereof.” Pet. 9. Petitioner bases its argument on the testimony and
`experience of Mr. Reboulet. Id. (citing Ex. 1005 ¶¶ 56–60). Patent Owner
`does not challenge Petitioner’s statement at this stage of the proceeding. See
`Prelim. Resp. 9. For purposes of this Decision, we adopt Petitioner’s
`statement of the level of skill in the art.
`
`
`2. Alleged Obviousness over ANSI and Ett
`Petitioner contends that claims 7, 8, 12, 13, 16, 18, and 19 would have
`been obvious over the combination of ANSI and Ett. Pet. 30–64. For the
`reasons given below, Petitioner has demonstrated a reasonable likelihood
`that it would prevail with respect to its challenge of claims 7, 8, 12, and 13,
`but has not demonstrated a reasonable likelihood it would prevail with
`respect to its challenge of claims 16, 18, and 19.
`
`
`a. Overview of ANSI
`ANSI describes using two-dimensional symbols in conjunction with
`unit loads and transport packages to convey data between trading partners.
`Ex. 1002 § 1.1. Figure 17, reproduced below, illustrates an example:
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`Figure 17 is a pictorial representation of a label complying with ANSI
`standard encoding “Formats ‘01’ and ‘06’ using a MaxiCode symbol for
`automated sortation/tracking.” Id. § 7.8. In the example set forth in Figure
`17, carrier data (i.e., data Format “01”) are combined with Data Identifier
`data (data Format “06”). Id.
`
`
`b. Overview of Ett
`Ett describes a data processing system for combining alphanumeric
`data streams into a bar code representation. Ex. 1003, [57]. Figure 1,
`reproduced below, illustrates an example:
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`Figure 1 is a block diagram of system comprising general purpose
`computer 20, display 18, keyboard 20, scanner 21, printer 22, and
`memory 12. Id. at 3:43–47. According to Ett, Bar Code Generator code 48,
`Bar Code Interpreter code 50, and Bar Code Reading code 52 reside in
`memory 12. Id. at 4:9–15. To generate and print combined bar codes,
`character data is entered using keyboard 20 and binary data is entered by a
`binary input channel. Id. at 4:16–20. The inputs are converted to binary
`sequences, with one binary stream representing bar widths and space widths,
`and the other stream representing bar heights. Id. at 4:20–25. The two
`streams are stored in memory 12.
`Ett further describes that Bit Graphic Code Module 46 or Printer
`Control Code Module 48 uses stored bit data to generate bit maps
`representing bars and spaces in the bar code thereby creating a combined bar
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`code pattern. Id. at 4:31–39. When the combined bar code pattern is
`completed, it is sent as a graphic bit stream to the printer according to the
`format required by the printer. Id. at 4:40–44.
`
`
`c. Claim 7
`Regarding claim 7, Petitioner relies on ANSI for most of the
`limitations of the claim, but points to Ett’s teachings for the preamble and
`other computer-implemented features. Pet. 30–42. For instance, Petitioner
`points to ANSI’s teaching of its bar code encoding a Data Identifier and a
`data element for “wherein the plurality of bar codes encode respective data
`tags and data items,” recited in claim 7. Pet. 36. Petitioner provides
`annotations to ANSI’s figures highlighting these elements (Pet. 35–38), such
`as the example illustrated below.
`
`Figure M above is a portion of Section 7.8 of ANSI that Petitioner has
`annotated to show the Data Identifier “K” in green and the Data Element
`
`
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`“MH80312” in orange. Pet. 37. Figure 17 reproduced above (see supra
`§ B.2.a) illustrates the label having two bar codes in this same representative
`example. Ex. 1002 § 7.8.
`For “wherein at least one of the data tags includes an identifier
`identifying one of the data items,” recited in claim 7, Petitioner contends
`“ANSI defines a Data Identifier as ‘[a] specified character, or string of
`characters, that defines the intended use of the data element that follows.”
`Pet. 39 (citing Ex. 1002 § 3.18). Petitioner again points to the same example
`and contends, “the Data Identifier ‘K’ defines the intended use of the data
`element ‘MH80312’ as a ‘Customer’s P.O. Number.’” Id. (citing
`Ex. 1005 ¶ 149).
`Patent Owner disputes that Petitioner has shown that the combination
`of ANSI and Ett teaches an electronic document having a plurality of bar
`codes. Prelim. Resp. 30–39, 44. Patent Owner also disputes that Petitioner
`has provided sufficient reasons to combine the teachings of ANSI and Ett.
`Id. at 39–43.
`We turn to Patent Owner’s first dispute, i.e., that Petitioner has not
`shown sufficiently a teaching of an electronic document having a plurality of
`bar codes recited in claim 7. Patent Owner, more specifically, contends that
`ANSI pertains exclusively to printed labels, which are not electronic
`documents. Prelim. Resp. 31 (citing Ex. 1002; 2002 ¶¶ 61–62). Patent
`Owner then contends that Ett pertains to a single bar code and “teaches away
`from a document with ‘a plurality of bar codes.’” Id. at 31–33 (citing
`Ex. 1003; Ex. 2002 ¶¶ 86–87, 95–98). Patent Owner further contends Ett’s
`computer-implementation teachings are deficient based on the declaration
`testimony of Dr. Engels. Id. at 34–39 (citing Ex. 2001 ¶¶ 51–52, 67–77).
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`Regarding Patent Owner’s contention that ANSI pertains exclusively
`to printed labels (id. at 31), as discussed above (see supra § B.2.a), ANSI is
`directed to using two-dimensional symbols in conjunction with unit loads
`and transport packages to convey data between trading partners. Ex. 1002
`§ 1.1. Consistent with Petitioner’s contentions (Pet. 35–38), ANSI teaches a
`reading system that “acquire[s] and convert[s] light from the symbol
`elements, e.g., bars and spaces, of a symbol into electrical signals”
`(Ex. 1002 § 3.42) and “performs the algorithm to interpret the signals into
`meaningful data” (id. § 3.20). Additionally, ANSI teaches that an
`“electronic data interchange,” which is “communication of data between
`business trading partners” is accomplished in a standard format and syntax.
`Id. § 3.21. We are persuaded that ANSI’s label incorporates all of the
`features recited as being part of the claimed electronic document, albeit
`without an express disclosure that the label is in electronic form.
`Regarding Patent Owner’s contention that Ett pertains to a single bar
`code (Prelim. Resp. 31–33), Petitioner points to ANSI for this teaching. For
`instance, Petitioner provides annotations to Figure 17 of ANSI, reproduced
`below:
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`This annotated version of Figure 17, in which Petitioner identifies two bar
`codes, is sufficient at this stage to teach the recited “plurality of bar codes.”
`See Pet. 33. Patent Owner’s contentions pertain to each reference
`considered individually, rather than the combined teachings of ANSI and
`Ett, relied upon by Petitioner.
`Regarding Dr. Engels’ testimony that Ett’s computer-implementation
`teachings are deficient (Prelim. Resp. 34–39 (citing Ex. 2001 ¶¶ 51–52, 67–
`77), Mr. Reboulet testifies regarding these same computer-implemented
`teachings of Ett, as understood by a person having ordinary skill in the art,
`as well as the teachings of ANSI (Pet. 32–35 (citing Ex. 1005 ¶¶ 136–40).
`“The Board’s decision will take into account a patent owner preliminary
`response . . . including any testimonial evidence,” however “a genuine issue
`of material fact created by such testimonial evidence will be viewed in the
`light most favorable to petitioner solely for purposes of deciding whether to
`institute an inter partes review.” See 37 C.F.R. § 42.108. On this record,
`we determine that the conflicts between Mr. Reboulet’s testimony and
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`Dr. Engels’ testimony create a genuine issue of material fact about how a
`person of ordinary skill in the art would have understood Ett’s teachings,
`which for purposes of this Decision only, we view in the light most
`favorable to Petitioner. After consideration of the Petition and Preliminary
`Response, and the evidence cited therein, we are persuaded that Petitioner
`has provided sufficient showing of the disputed recitation of claim 7 for
`institution of trial.
`We now turn to Patent Owner’s second dispute, i.e., that Petitioner
`has not shown sufficient reasons to combine the teachings of ANSI and Ett.
`Prelim. Resp. 32, 39–43. More specifically, Patent Owner contends that Ett
`teaches away from creating or printing a document having a plurality of bar
`codes. See, e.g., id. at 42 (citing Ex. 2002 ¶¶ 86–94). For instance, Patent
`Owner contends “Ett’s system is specifically designed to take information
`that would have [been] encoded in two bar codes and, instead, encode that
`information into one bar code pattern to conserve physical space.” Id. at 43
`(citing Ex. 1003, 1:27–43’ Ex. 2002 § XI). On this record, however, Ett’s
`technique does not criticize, discredit, or otherwise discourage the use of
`Ett’s electronic encoding of bar codes in accordance with ANSI. See DePuy
`Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1327 (Fed.
`Cir. 2009) (“A reference does not teach away, however, if it merely
`expresses a general preference for an alternative invention but does not
`‘criticize, discredit, or otherwise discourage’ investigation into the invention
`claimed.”) (quoting In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004)).
`Thus, we do not agree with Patent Owner that Ett teaches away from
`documents with multiple bar codes.
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`
`Patent Owner also contends that Petitioner’s assertions are
`conclusory. See, e.g., Prelim. Resp. 39. Petitioner asserts, “ANSI
`contemplates creating bar codes to be printed as labels” and “Ett
`contemplates creating ‘bit maps’ including electronic representations of bar
`codes.” Pet. 29 (citing Ex. 1005 ¶¶ 117–121). Petitioner, then, asserts that
`“a skilled artisan would have found it obvious and straightforward to employ
`the system of Ett to create and print the bar codes and labels disclosed in
`ANSI.” Id. Petitioner characterizes its proposed combination as “yield[ing]
`predicatable results.” Id. On this record, therefore, even after consideration
`of Patent Owner’s contentions and evidence cited therein, we are persuaded
`that Petitioner’s reasoning is sufficient for institution of trial.
`Having reviewed the Petition and Preliminary Response, and the
`evidence cited therein, based on the record before us at this juncture,
`Petitioner has established a reasonable likelihood that it would prevail with
`respect to claim 7 as obvious over ANSI and Ett.
`
`
`d. Claims 8, 12, and 13
`At this juncture, Patent Owner does not argue any of claims 8, 12, and
`13 separately. See generally Prelim. Resp. On this record, we are persuaded
`that Petitioner has provided sufficient showing for claims 8, 12, and 13 for
`institution of trial.
`Having reviewed the Petition and Preliminary Response, and the
`evidence cited therein, based on the record before us at this juncture,
`Petitioner has established a reasonable likelihood that it would prevail with
`respect to claims 8, 12, and 13 as obvious over ANSI and Ett.
`
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`e. Claim 16
`As discussed above (see supra § II.A.2), we agree with Petitioner that
`the corresponding structure includes the receiver’s computer and the parsing
`and data cache application, but we also determine that the corresponding
`structure includes the algorithm, italicized below.
`In step 126, the receiver scans tagged bar codes in
`electronic document “A” 103. The scanned tagged bar coded
`data is parsed and sent to a data cache, as shown in FIG. 6. In
`step 127, the parsing and data cache application use[s] logic and
`computer routines to identify the scanned bar coded data by
`‘function key tag[,”] match the scanned bar coded data to the
`appropriate field in electronic document “B” 122, strip the
`‘function key tag[,”] and input the stripped bar coded data into
`the appropriate field in electronic document “B” 122.
`Ex. 1001, 5:40–48 (emphasis added).
`Based on the record before us, we are not persuaded by Petitioner’s
`contentions that the combination of ANSI and Ett teaches the structure
`corresponding to the “means for decoding the plurality of bar codes to
`recover the respective data tags and data items,” as properly construed.
`More specifically, Petitioner points to ANSI’s and Ett’s teachings of a
`reading station and scanners, as well as Ett’s teaching of “processing
`algorithms . . . well known in the art.” Pet. 55–56. Petitioner also contends
`“the ‘scanners’ taught by ANSI and Ett are the same as or substantially
`equivalent to the ‘bar code scanner’ alleged by Patent Owner.” Id. at 57.
`Petitioner, however, does not show sufficiently where ANSI or Ett teaches
`the algorithm disclosed in the ’586 patent Specification or its equivalent.
`See Pet. 55–58.
`On this record, Petitioner has not established a reasonable likelihood
`that it would prevail with respect to claim 16 as obvious over ANSI and Ett.
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`f. Claims 18 and 19
`Each of claims 18 and 19 depends directly from claim 16. For these
`claims, Petitioner does not provide any argument or evidence overcoming
`the deficiency noted above for claim 16. For the reasons given, on this
`record, Petitioner has not established a reasonable likelihood that it would
`prevail with respect to claims 18 and 19 as obvious over ANSI and Ett.
`
`
`3. Alleged Obviousness over ANSI and UPS
`Petitioner contends that claims 7, 12, 16, 18, and 19 would have been
`obvious over ANSI and UPS. Pet. 71–81. Petitioner also contends that
`claims 8 and 13 would have been obvious over ANSI, UPS, and Ett. Id. at
`81–82. For the reasons given below, Petitioner has not demonstrated a
`reasonable likelihood that it would prevail with respect to either of these
`challenges.
`
`
`a. Overview of UPS
`UPS describes specifications to follow when “generating your own
`bar code and MaxiCode labels.” Ex. 1004, 3. In particular, UPS provides
`recommended label formats. Id. at 18.
`
`
`b. Is UPS a Printed Publication?
`Petitioner contends “UPS is a printed publication authored and
`published by UPS in January 1996.” Pet. 64 (citing Ex. 1004, 45).
`Petitioner, additionally, submits deposition testimony of Mr. Lewis taken in
`another proceeding, i.e., Bartex Research, LLC v. FedEx Corp., No. 6:07-cv-
`00385 (E.D. Tex.). Id.
`
`20
`
`

`

`IPR2017-00859
`Patent 9,047,586 B2
`
`
`Patent Owner contends “Petitioner has not made a preliminary
`showing that UPS was publicly accessible before May 30, 2001,” because
`“[t]he only evidence Petitioner offers to support its assertion that UPS was
`publicly available is the 8-year old Lewis Transcript from an unrelated
`litigation.” Prelim. Resp. 20. Patent Owner further contends that Petitioner
`has not established that the transcript relates to UPS because Petitioner did
`not submit the exhibit that was the subject of Mr. Lewis’ deposition
`testimony. Id. at 20–22.
`Based on the record, we are not persuaded that Petitioner has made a
`sufficient showing that UPS qualifies as a prior art printed publication. The
`last page of UPS includes the following: “01880273 REV. 1/96 50M.”
`Ex. 1004, 47. Although “1/96” appears to be the date January 1996, the
`annotation itself does not indicate that the document was disseminated on
`that date. Additionally, the deposition testimony from Bartex that Petitioner
`relies on (Pet. 64 (citing Ex. 1012, 58–60)) pertains to “Exhibit 4” (Ex.
`1012, 58–60), which has not been submitted in the instant proceeding. On
`this record, we have no way to determine if UPS is the same as “Exhibit 4,”
`and Petitioner fails to establish as much. Thus, Mr. Lewis’ testimony
`regarding “Exhibit 4” is not persuasive evidence that UPS was publicly
`disseminated. In the absence of any other evidence of publication, we
`determine Petitioner has not established that UPS qualifies as a prior art
`printed publication.
`
`
`c. Claims 7, 12, 16, 18, and 19 (ANSI and UPS)
`Petitioner relies on UPS for teaching certain limitations in claims 7
`and 16. Pet. 71–77, 78–81. Because Petitioner has not shown sufficiently
`
`21
`
`

`

`IPR2017-00859
`Patent 9,047,586 B2
`
`that UPS is prior art, Petitioner’s contentions are deficient. Id. Petitioner’s
`contentions for dependent claims 12, 18, and 19, do not remedy the
`aforementioned deficiency. Id. at 78, 81.
`Accordingly, having reviewed the Petition and Preliminary Response,
`and the evidence cited therein, Petitioner has not established a reasonable
`likelihood that it would prevail with respect to claims 7, 12, 16, 18, and 19
`as obvious over ANSI and UPS.
`
`
`d. Claims 8 and 13 (ANSI, UPS, and Ett)
`Each of claims 8 and 13 depends from claim 7 and Petitioner’s
`contentions for claims 8 and 13 do not remedy the deficiencies noted above
`with respect to claim 7. Accordingly, on this record, Petitioner has not
`established a reasonable likelihood that it would prevail with respect to
`claims 8 and 13 as obvious over ANSI, UPS, and Ett.
`
`
`III. CONCLUSION
`Petitioner has established a reasonable likelihood that claims 7, 8, 12,
`and 13 are unpatentable, but not claims 16, 18, and 19. We have not made a
`final decision on the patentability of any claim or the construction of any
`claim term.
`
`
`IV. ORDER
`For the reasons given, it is:
`ORDERED that inter partes review is instituted on the ground that
`claims 7, 8, 12, and 13 are unpatentable, under 35 U.S.C. § 103(a), over
`ANSI and Ett;
`
`22
`
`

`

`IPR2017-00859
`Patent 9,047,586 B2
`
`
`FURTHER ORDERED that the trial is limited to the ground identified
`above, and no other ground is authorized; and
`FURTHER ORDERED that pursuant to 35 U.S.C. § 314(a), inter
`partes review of U.S. Patent No. 8,494,581 B2 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.
`
`23
`
`

`

`IPR2017-00859
`Patent 9,047,586 B2
`
`PETITIONER:
`
`Jeffrey A. Berkowitz
`Gracie Mills
`Michael V. Young, Sr.
`Daniel Tucker
`Alexander Boyer
`Bradford Schulz
`FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLP
`jeffrey.berkowitz@finnegan.com
`gracie.mills@finnegan.com
`michael.young@finnegan.com
`daniel.tucker@finnegan.com
`alexander.boyer@finnegan.com
`bradford.schulz@finnegan.com
`
`PATENT OWNER:
`
`Andrew G. Heinz
`Kevin K. McNish
`DESMARAIS LLP
`aheinz@desmaraisllp.com
`kkm-ptab@desmaraisllp.com
`
`Tim R. Seeley
`James R. Hietala
`INTELLECTUAL VENTURES
`tim@intven.com
`jhietala@intven.com
`
`
`
`24
`
`

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