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` Entered: April 15, 2019
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`Trials@uspto.gov
`571-272-7822
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`CELLCO PARTNERSHIP d/b/a VERIZON WIRELESS,
`Petitioner,
`v.
`BRIDGE AND POST, INC.,
`Patent Owner.
`____________
`
`Case IPR2018-00054
`Patent 8,862,747 B2
`____________
`
`
`
`Before JONI Y. CHANG, BARBARA A. PARVIS, and
`KEVIN C. TROCK, Administrative Patent Judges.
`
`CHANG, Administrative Patent Judge.
`
`
`
`FINAL WRITTEN DECISION
`Inter Partes Review
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
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`INTRODUCTION
`I.
`Cellco Partnership d/b/a Verizon Wireless (“Petitioner”) filed a
`Petition requesting an inter partes review of claims 1−9 (“the challenged
`claims”) of U.S. Patent No. 8,862,747 B2 (Ex. 1001, “the ’747 patent”).
`Paper 1 (“Pet.”). Bridge and Post, Inc. (“Patent Owner”) filed a Preliminary
`Response. Paper 6 (“Prelim. Resp.”). We concluded that Petitioner has
`established a reasonable likelihood that it would prevail with respect at least
`one claim, and we instituted this inter partes review proceeding as to
`claims 1−9 of the ’747 patent and all the grounds asserted by Petitioner.
`Paper 7 (“Dec.”), Paper 13.
`Subsequently, Patent Owner filed a Response (Paper 15, “PO Resp.”),
`and Petitioner filed a Reply (Paper 22, “Reply”). Patent Owner also filed a
`Motion to Exclude certain evidence (Paper 30, “Mot.”); Petitioner filed an
`Opposition to the Motion to Exclude (Paper 32, “Opp.”); and Patent Owner
`filed a Reply in Support of its Motion to Exclude (Paper 34, “Mot. Reply”).
`A transcript of the oral hearing held on January 17, 2019, has been entered
`into the record as Paper 39 (“Tr.”).
`This Decision is a final written decision under 35 U.S.C. § 318(a) as
`to the patentability of the challenged claims. For the reasons provided
`below, we conclude that Petitioner has demonstrated by a preponderance of
`the evidence that claims 1−9 of the ’747 patent are unpatentable.
`
`A. Related Matters
`The parties indicate that the ’747 patent is involved in Bridge and
`Post, Inc. v. Verizon Communications, Case No. 3:17-cv-00094 (E.D. VA)
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`and other proceedings. Pet. 1−2; Paper 4, 2−3. Petitioner also filed another
`petition requesting an inter partes review of claims 10−17 of the ’747
`patent. Pet. 1−2; Case IPR2018-00055, Paper 1.
`
`B. The ’747 Patent
`The ’747 patent claims priority to U.S. Provisional Patent Application
`No. 60/894,195 (Ex. 1003, “the ’195 provisional application”), which was
`filed on March 10, 2007. Ex. 1001, at [60]. The ’747 patent describes a
`method and system for tagging network traffic with user-relevant
`information using extensible fields in message headers. Id. at [54], 1:15−17.
`The ability to provide directed or targeted message delivery to users based
`on network access is important to content providers, such as online
`advertisers. Id. at 1:21−23. Figure 2 of the ’747 patent is reproduced below.
`
`
`Figure 2 above illustrates a client-server network including a network
`
`tagging component. Id. at 7:53−54. According to the ’747 patent, Figure 2
`shows a standard Internet Protocol (“IP”) based access system in which
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`client device 202 executing web browser 203 accesses a web site destination
`that has server computer 210 executing web server process 211. Id. at
`7:55−8:25. Client device 202 accesses network 208 through a
`telecommunication pathway provided by carrier network operation center
`(“NOC”) 204. Id. Server computer 210 provides web page content. Id.
`Ad server 212 generates advertisements to be displayed with the content. Id.
`Tag processor 206 generates a request identifier based on information
`associated with client computer 202 and the user. Id. at 8:26−28.
`Figure 3 of the ’747 patent is reproduced below.
`
`
`Figure 3 above is a flowchart illustrating a method of generating a
`request identifier. Id. at 4:5−6. At block 302, tag processor 206 intercepts
`the device identifier (e.g., the MAC address of client device 202). Id. at
`8:30−34. At block 304, tag processor 206 encodes the device identifier to
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`create a local user identifier, by using a standard one-way hash algorithm or
`any equivalent coding method that ensures adequate privacy. Id. at 8:38−40.
`At block 306, tag processor 26 obtains request instance information
`(e.g., time of the request), location information of client device 202
`(e.g., zip code, phone area code, or street address), and demographic
`information (e.g., gender, age, race, occupation of the user). Id. at 8:40−57.
`At block 308, tag processor 26 generates a request identifier by encrypting
`the local user identifier, instance information, location information, and
`demographic information. Id. at 57−60.
`
`C. Illustrative Claim
`Of the challenged claims, claim 1 is independent. Claims 2−9 depend
`directly or indirectly from claim 1. Claim 1 is illustrative:
`1. [1.0]1 A method of processing data sent from a user of a client
`computer over a network, comprising:
`[1.1 and 1.2] intercepting a request that is in a hypertext transport
`protocol (HTTP) format from the client computer to a server
`computer over the network
`[1.3] at a routing device within the network and coupled between
`the client and server computers, and prior to receipt by the server
`computer,
`[1.4] wherein the network is the World Wide Web portion of the
`Internet, and further
`[1.5] wherein the client computer is selected from the group
`consisting of: a personal computer, a mobile computing device,
`
`
`1 We use the same claim element reference numbers used by the parties.
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`a cellular phone, a personal digital assistant, a media playback
`device, and a gaming device;
`[1.6] extracting non-personal information about the user during
`a Media Access Control (MAC) layer process, wherein the
`non-personal information includes one or more of data related to
`the client computer, software on the client computer, information
`stored on the client computer regarding use of the client
`computer, and non-personal data associated with the user;
`[1.7] creating a unique device identifier associated with hardware
`and corresponding to the client computer from the non-personal
`information, wherein the unique identifier is based directly on at
`least one of a MAC address, port identifier, or hardcoded
`identifier embodied in software or hardware and assigned to the
`client computer;
`[1.8] generating a local user identifier for the client computer by
`performing a one-way hashing operation on the unique device
`identifier;
`[1.9 and 1.10] deriving instance information based on request
`timing information provided by the client computer, and
`geographic location and demographic information for the client
`computer from information provided by a remote authentication
`server on the network;
`[1.11] generating a request identifier associated with the
`intercepted request by combining and encrypting, in a tag process
`executed on the routing device, the local user identifier, instance
`information, and geographic
`location and demographic
`information in an alphanumeric string;
`[1.12] embedding the alphanumeric string in an extensible field
`of a packet within the request to generate a tagged request,
`wherein the extensible field comprises a portion of an HTTP
`header field of the packet that is normally unused or essentially
`left blank;
`[1.13] transmitting the tagged request to the server computer;
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`[1.14] providing appropriate decoding tools to the server
`computer to perform a decoding operation on the tagged request
`to decode the request identifier embedded in the HTTP
`extensible field; and
`[1.15] receiving a request to decode the tagged request from the
`server computer.
`Id. at 16:55–17:39 (bracketed matter and emphases added).
`
`
`
`D. Evidence Relied Upon
`Petitioner relies upon the references listed below (Pet. 3).
`Harada
`WO 00/73876 A2
`Dec. 7, 2000
`(Ex. 1004)2
`(Ex. 1005)3
`Roker
`WO 2006/081680 A1 Aug. 10, 2006
`Brijesh4
`US 2006/0265507 A1 Nov. 23, 2006
`(Ex. 1006)
`Candelore US 6,996,238 B2
`
`Feb. 7, 2006
`(Ex. 1007)
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`
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`2 Citations of Harada refer to the original page number at the bottom, center
`of each page.
`3 Citations of Roker refer to the original page number at the top, center of
`each page.
`4 Although Banga is listed as the first named inventor, Petitioner refers
`Exhibit 1006 as “Brijesh,” another named inventor. Pet. 3. For consistency,
`we refer Exhibit 1006 as “Brijesh” in this Decision.
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`E. Asserted Grounds of Unpatentability
`Petitioner asserts the following grounds of unpatentability (Pet. 3):
`
`Challenged Claims
`
`Basis
`
`References
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`1−9
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`1−9
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`§ 103(a)5 Harada, Roker, and Brijesh
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`§ 103(a) Harada, Roker, and Candelore
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`II. DISCUSSION
`A. Claim Construction
`The instant Petition was filed on October 11, 2017, prior to the
`effective date of the rule change that replaces the broadest reasonable
`interpretation (“BRI”) standard. See Changes to the Claim Construction
`Standard for Interpreting Claims in Trial Proceedings Before the Patent
`Trial and Appeal Board, 83 Fed. Reg. 51,340 (Oct. 11, 2018) (final rule)
`(“This rule is effective on November 13, 2018 and applies to all IPR, PGR
`and CBM petitions filed on or after the effective date.”). We, therefore,
`apply the BRI standard in this proceeding. Under this standard, claim terms
`in an unexpired patent are given their broadest reasonable construction in
`light of the specification of the patent in which they appear. 37 C.F.R.
`
`
`5 Because the claims at issue have a filing date prior to March 16, 2013, the
`effective date of the Leahy-Smith America Invents Act, Pub. L. No. 112-29,
`125 Stat. 284 (2011) (“AIA”), we apply the pre-AIA version of 35 U.S.C.
`§§ 102 and 103 in this Decision.
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`§ 42.100(b) (2017). And 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. In re Translogic Tech., Inc., 504
`F.3d 1249, 1257 (Fed. Cir. 2007).
`Neither party proposes any claim construction expressly. Pet. 4−5;
`Prelim. Resp. 10. Nevertheless, Patent Owner raises a claim construction
`issue implicitly in its argument that the cited references do not teach or
`suggest generating a request identifier in “a single alphanumeric string” and
`embedding it “within a single extensible field” of an HTTP header. PO
`Resp. 10, 19−27. In particular, Patent Owner interprets the claim terms “an
`alphanumeric string” and “an extensible field” to require a single
`alphanumeric string and a single extensible field. Id. at 10, 19−27.
`However, during oral hearing, Patent Owner conceded that “[i]t’s certainly
`the case that ‘a’ or ‘an’ traditionally in claim construction means one or
`more.” Tr. 41:13−42:2 (emphasis added).
`
`In any event, we agree with Petitioner (Reply 3−6) that “the words ‘a’
`or ‘an’ in a patent claim carry the meaning of ‘one or more,’” absent
`“extremely limited” exceptions. The United States Court of Appeals for
`Federal Circuit “has repeatedly emphasized that an indefinite article ‘a’ or
`‘an’ in patent parlance carries the meaning of ‘one or more’ in open-ended
`claims containing the transitional phrase ‘comprising.’” Baldwin Graphic
`Sys., Inc. v. Siebert, Inc., 512 F.3d 1338, 1342 (Fed. Cir. 2008); see also 01
`Communique Lab., Inc. v. LogMeIn, Inc., 687 F.3d 1292, 1297 (Fed. Cir.
`2012). Those exceptions arise “only where the [intrinsic evidence]
`necessitate[s] a departure from the rule,” by evincing “‘a clear intent’ to
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`limit ‘a’ or ‘an’ to ‘one.’” Baldwin Graphic, 512 F.3d at 1342−43. Here,
`the specification of the ’747 patent does not evince such a clear intent, as it
`indicates that the singular embodiment is merely illustrative and that “[t]he
`length and position of the RID tag within the HTTP header can be modified
`depending upon system constraints and requirements.” Ex. 1001, 9:20,
`35−37, 52, Fig. 5. Hence, in light of the specification, we interpret the claim
`term “an alphanumeric string” to mean “one or more alphanumeric strings”
`and interpret the claim term “an extensible field” to mean “one or more
`extensible fields.”
`
`B. Principles of Law on Obviousness
`A patent 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. 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 subject matter and the prior art;
`(3) the level of ordinary skill in the art; and (4) when in evidence, objective
`evidence of nonobviousness.6 Graham v. John Deere Co., 383 U.S. 1, 17–
`18 (1966).
`
`
`6 Neither party presents arguments regarding, or evidence allegedly
`constituting, objective evidence of nonobviousness in this proceeding.
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`C. Level of Ordinary Skill in the Art
`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)
`(quoting Custom Accessories, Inc. v. Jeffrey–Allan Indus., Inc., 807 F.2d
`955, 962 (Fed. Cir. 1986)). Petitioner’s declarant, Mr. Stephen Gray,
`testifies that a person of ordinary skill in the art “would have had an
`electrical engineering, computer engineering, or a computer science degree,
`or the equivalent knowledge gained through experience; and two years of
`experience in the design and implementation of client-server class
`computing system with at least some familiarity with online advertising.”
`Ex. 1008 ¶ 68.
`In its Response, Patent Owner proposes that such an artisan would
`have had “an associate’s or bachelor’s degree in computer or electrical
`engineering, computer science, or an equivalent degree, training, or
`experience, with at least two years of experience in network engineering and
`network applications engineering in a web-based environment.” PO Resp. 7.
`Patent Owner also argues that Petitioner’s definition is overly broad and
`vague, and not sufficiently tied to the challenged claims, and that Petitioner
`has not demonstrated that its expert, Mr. Gray, meets its definition. Id. at 6.
`However, Petitioner’s declarant, Mr. Gray, testifies that “[b]y
`February 2007, [he] would have been a person of at least ordinary skill in the
`art under either [Patent Owner’s] definition or my definition.” Ex. 1035
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`¶ 23. Moreover, Patent Owner’s declarant, Mr. Steve Smoot, testifies that
`there is no meaningful difference between the parties’ proposed definitions
`as to the opinions he has given in this proceeding. Ex. 1036, 45:7−18.
`We note that either assessment appears consistent with the level of
`ordinary skill in the art at the time of the invention as reflected in the prior
`art in this proceeding. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed.
`Cir. 2001). Our analysis in this Decision is supported by either assessment.
`
`D. Overview of the Asserted Prior Art
`
`Harada (Ex. 1004)
`Harada discloses a data transfer method performed at a proxy server,
`which includes intercepting a data request from a client computer that is
`directed to a target server, encrypting profile information, augmenting the
`data request by adding the encrypted profile information to the data request,
`and sending the augmented data request to the target server. Ex. 1004,
`Abstract. Figure 2 of Harada is reproduced below.
`
`As shown in Figure 2 of Harada, data request 211 from client 201 to
`web server 203 is intercepted at proxy server 202. According to Harada, the
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`user profile information is stored first at proxy server 202 in database 220.
`Id. at 5:13−15. When HTTP data request 211 is received by proxy server
`202 from client/browser 201, the user profile information from database 220
`is encapsulated in request 212 by adding HTTP headers containing the user
`profile information to the headers received in request 211, and then request
`212 is forwarded to web server 203. Id. at 5:15−19.
`
`Roker (Ex. 1005)
`
`Roker discloses a system and method for providing Internet content
`that is personalized and therefore more relevant to the individual user.
`Ex. 1005, 4:11−13. According to Roker, protection for users from ad ware,
`spy ware, cookies, web bugs and other invasive schemes are provided by the
`system. Id. at 4:23−24. Figure 2 of Roker is reproduced below.
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`Figure 2 above illustrates the manner in which network device 70
`interacts with user’s computer 10, service provider 20, and content provider
`40. Id. at 13:12−21. When user’s computer 10 makes an HTTP request, the
`message is sent to router 50. Id. Network device modifies the request and
`adds information from database 80, and then encodes the information. Id.
`The user information can be placed in additional headers in the outgoing
`request. Id. at 8:24−27. The encoded, modified request is then sent through
`the Internet 30 to content provider 40. Id. at 13:12−21. Service provider 20
`acts as a trusted keeper of information about the user, and removes
`identifiable information (“anonymizes”) from the user’s personal
`information before allowing it to leave service provider 20. Id. at 11:1−7.
`Network device 70 may apply several method to obscure the identity of the
`user’s profile and to ensure that acceptable levels of privacy are maintained.
`Id. at 17:26−28. Content provider 40 decodes the information, and reacts by
`transmitting an HTTP response. Id. at 13:12−21.
`Roker also uses a unique code, such as a static IP address, for
`accessing the user profile. Id. at 16:10−16. The purpose of the
`identification is to link the user’s Internet address to a static unique identifier
`for the authenticated user on the network. Id.
`
`Brijesh (Ex. 1006)
`Brijesh discloses a system and method for providing directed media to
`a user. Ex. 1006, Abstract, ¶ 21. Figure 2 of Brijesh is reproduced below.
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`Figure 2 of Brijesh shows computer network environment 200 that
`includes network access devices 110 coupled to network 130 via access
`point 210, a plurality of content providers 140, client relationship (“CR”)
`server 150, and media server 220. Id. ¶ 33. Media server 220 works with
`product owners 230, agencies 240, and collaterals 250. Id. Brijesh teaches
`that network access device 110 may comprise a device identifier (e.g., MAC
`address or any anonymous device identifier) which is used by CR server
`150. Id. ¶ 25. With the device identifier of network access device 110, CR
`server 150 obtains a corresponding user profile associated with the device
`identifier. Id. ¶ 59. After the information is analyzed, media server 220 then
`provides the directed media that is tailored to the user profile/preferences to
`content provider 140 and network access device 110. Id.
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`Candelore (Ex. 1007)
`
`Candelore discloses a “method and apparatus for generating keys to
`encrypt communication in a network using distinctive device identification.”
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`Ex. 1007, 1:36−38. “In an IP network, the invention makes use of the
`unique Media Access Control (MAC) address header information as the
`distinctive device identification.” Id. at 1:37−1:39. The MAC address is
`used as a unique identifier to generate unique keys to identify devices. Id.
`Figure 4 of Candelore is reproduced below.
`
`
`Figure 4 of Candelore above illustrates a flow chart of one of the
`embodiments. At block 405, the device identification is accessed. Id. at
`3:50−52. The device identification may be a distinctive device
`identification, such as the MAC address delivered as part of the header
`source address information of an IP message. Id. at 3:52−55. At block 410,
`data is encoded using a key generated using the device ID. Id. at 3:55−56.
`At block 415, the encoded data is transmitted in a message to a receiving
`device, the messaging including the device ID in its header. Id. at 3:56−58.
`At block 420, using the device ID from the header, the receiving device
`accesses the key. Id. at 3:59−60. At block 425, the receiving device
`decodes the encoded data of the message using the key. Id. at 3:63−65.
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`E. Obviousness Over Harada and Roker in combination with
`Brijesh or Candelore
`Petitioner asserts that claims 1−9 are unpatentable under 35 U.S.C.
`§ 103(a) as obvious over the combination of Harada, Roker, and Brijesh, and
`over the combination of Harada, Roker, and Candelore. Pet. 15–67.
`Petitioner relies on Brijesh to teach using a MAC address to create a device
`identifier and extracting the MAC address during a MAC-layer process, as
`required by Elements 1.6 and 1.7. Id. at 22−24, 31−35, 40−43. Petitioner
`presents Candelore as an alternative disclosure to Brijesh for teaching these
`claim elements, as well as “generating a local user identifier for the client
`computer by performing a one-way hashing operation on the unique device
`identifier,” as required by Element 1.8. Id. at 24−26, 62−67.
`Patent Owner opposes, arguing that: (1) Brijesh is not prior art;
`(2) Candelore is non-analogous art; (3) the asserted combinations do not
`teach or suggest certain claim limitations; (4) a person of ordinary skill in
`the art would not have been motivated to combine Candelore with Harada
`and Roker; (5) a person of ordinary skill in the art would not have combined
`the prior art teachings because Harada teaches away from non-personal
`information and the architectures of Harada and Roker teach away from the
`claimed subject matter; and (6) Petitioner’s obviousness analysis is
`insufficient. PO Resp. 8–66.
`Upon consideration of the parties’ contentions and supporting
`evidence, we determine that Petitioner has established by a preponderance of
`the evidence that claims 1−9 are obvious over the combination of Harada,
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`Roker, and Brijesh, and over the combination of Harada, Roker, and
`Candelore. We address each of the parties’ contentions in turn.
`
`Whether Brijesh is prior art to the challenged claims of the ’747 patent
`Petitioner asserts that Brijesh is prior art under §§ 102(a) and (e), as
`well as § 102(b). Pet. 12−14, 22−23. Specifically, Petitioner asserts that
`Brijesh is prior art under § 102(b) because Brijesh was published on
`November 23, 2006—more than one year prior to the actual filing date
`(March 10, 2008) of the ’747 patent. Id. As support, Petitioner contends
`that claims 1−9 are not entitled to the benefit of the filing date of the ’195
`provisional application. Id. In addition, Petitioner argues that, even if the
`challenged claims are entitled to the earlier priority date, Brijesh still
`qualifies as prior art under §§ 102(a) and (e) because: (1) Brijesh was filed
`on May 12, 2006, and published on November 23, 2006, prior to March 10,
`2007, the filing date of the ’195 provisional application; and (2) Brijesh and
`the ’747 patent have different inventive entities. Id.
`In this proceeding, Petitioner has the burden of persuasion to prove
`unpatentability by a preponderance of the evidence, which never shifts to
`Patent Owner, and Petitioner also has the initial burden of production.
`Dynamic Drinkware, LLC v. National Graphics, Inc., 800 F.3d 1375,
`1378−80 (Fed. Cir. 2015). We determine that Petitioner has satisfied the
`initial burden of production by arguing that Brijesh is prior art to the
`’747 patent under §§ 102(a), (b), and (e), and that claims 1−9 are
`unpatentable under § 103(a) as obvious over the combination of Harada,
`Roker, and Brijesh, as noted in the Institution Decision. Dec. 7−38.
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`As such, the burden of production has shifted to Patent Owner to
`argue or produce evidence that the asserted prior art combination does not
`render the challenged claims unpatentable, or Brijesh is not prior art to the
`’747 patent, by arguing that: (1) Brijesh is not prior art under § 102(a)
`because Brijesh is not “by others”; (2) Brijesh is not prior art under § 102(e)
`because Brijesh and the ’747 patent were commonly owned so that Brijesh is
`disqualified as prior art under § 103(c); and (3) Brijesh is not prior art under
`§ 102(b) because the challenged claims are entitled to the benefit of the
`filing date of the ’195 provisional application. Cf. Dynamic Drinkware, 800
`F.3d at 1380.
`Upon consideration of the parties’ contentions and supporting
`evidence in this entire trial record, we determine that Brijesh qualifies as
`prior art under §§ 102(a) and 102(b) as to the challenged claims of the
`’747 patent for the reasons set forth below. As such, it is not necessary for
`us to determine whether Brijesh qualifies as prior art under § 102(e).
`
`Brijesh is a printed publication “by others” under § 102(a)
`Petitioner argues that Brijesh is prior art under §§ 102(a) and (e)
`because: (1) Brijesh was filed and published prior to the earliest priority
`date, i.e., the filing date of the ’195 provisional application; and (2) Brijesh
`and the ’747 patent have different inventive entities. Pet. 22−23. Petitioner
`relies on Brijesh to teach using a MAC address to create a device identifier
`and extracting the MAC address during a MAC-layer process (Ex. 1006
`¶¶ 21, 25, 29−30, 35, 52, 58−61, 72). Pet. 22−24, 32−34.
`
`19
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`IPR2018-00054
`Patent 8,862,747 B2
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`Patent Owner does not dispute that Brijesh was filed and published
`
`prior to the filing date of the ’195 provisional application. See generally PO
`Resp. Rather, Patent Owner argues that Brijesh and the ’195 provisional
`application “were ‘commonly owned or subject to an obligation of
`assignment to the same person’ (see 35 U.S.C. § 103(c)) when the [’195]
`provisional [application] was filed on March 10, 2007.” Id. at 40−42.
`However, the prior art exclusion under § 103(c) applies to “[s]ubject
`matter developed by another person, which qualifies as prior art only under
`one or more of subsections (e), (f), and (g) of section 102 of this title.”
`35 U.S.C. § 103(c)(1) (emphasis added). The statutory exclusion does not
`apply to subject matter that qualifies as prior art under § 102(a).
`Section 102(a) recites “[a] person shall be entitled to a patent unless
`. . . (a) the invention was known or used by others in this country, or
`patented or described in a printed publication in this or a foreign country,
`before the invention thereof by the applicant for patent.” 35 U.S.C. § 102(a)
`(2010). “The significant words in § 102(a) are ‘known or used by others . . .
`before the invention thereof by the applicant.’” In re Land, 368 F.2d 866,
`878 (CCPA 1966). The relevant inquiry is what the evidence shows as to
`who invented the portions of Brijesh relied upon as prior art. See id. at
`879−80 n.11 (“[T]he proper subject of inquiry was . . . what the evidence
`showed as to who invented the subject matter disclosed by [the reference]
`which was relied on to support the rejection.”); In re DeBaun, 687 F.2d 459,
`462−63 (CCPA 1982) (“The only question . . . is whether appellant invented
`the relevant disclosure in the [prior art] patent.”).
`
`20
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`IPR2018-00054
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`
`Here, Patent Owner’s “common ownership” argument improperly
`conflates common ownership (who owns the patent rights) with inventive
`entity (who invented the subject matter). PO Resp. 39−42; Tr. 46:1−3. The
`court has “reject[ed] the premise that common ownership and copendency in
`themselves necessarily preclude consideration of a patent as a part of the
`prior art.” In re Fong, 378 F.2d 977, 980 (CCPA 1967). “A patent is ‘to
`another’ when the ‘inventive entities’ are different,” generally. Id.
`As Petitioner points out, the ’747 patent and Brijesh have different
`inventive entities. Pet. 23. In particular, the ’747 patent was issued to:
`Nitin Shan, Jasminder Banga, Miten Sampat, and Amul Patel. Ex. 1001, at
`[75]. Brijesh’s inventors are Jaz Banga7, Nitin Shah, Brijesh Patel, and
`Amul Patel. Ex. 1006, at [76]. Moreover, Patent Owner concedes that,
`although the ’747 patent and Brijesh have three overlapping inventors, Miten
`Sampat is not an inventor of Brijesh, and Brijesh Patel is not an inventor of
`the ’747 patent. PO Resp. 42; Ex. 2019, 37.
`The ’195 provisional application and Brijesh also have different
`inventive entities. Compare Ex. 1004, 4, 6, with Ex. 1006, at [76]. The ’195
`provisional application lists Nitin Shah and Jasminder Banga as the
`inventors, but not Brijesh Patel and Amul Patel. Ex. 1004, 4, 6. The fact
`that the ’195 provisional application names two of the four inventors of
`Brijesh does not show that the ’195 provisional application and Brijesh have
`the same inventive entity, as Patent Owner suggests (Tr. 50:19−20). See
`
`
`7 For purposes of this Decision, we consider Jaz Banga to be the same
`person as Jasminder Banga.
`
`21
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`Land, 368 F.2d at 880−81 (holding that Land, as sole inventor, and Roger, as
`sole inventor, were each “another” to Land and Rogers as joint inventors,
`despite the common ownership of the references and application on appeal).
` We recognize that “one’s own work is not prior art under § 102(a)
`even though it has been disclosed to the public in a manner or form which
`otherwise would fall under § 102(a).” In re Katz, 687 F.2d 450, 454 (Fed.
`Cir. 1982). “What is significant is . . . whether the portions of the reference
`relied on as prior art, and the subject matter of the claims in question,
`represent the work of a common inventive entity.” Riverwood Int’l Corp. v.
`R.A. Jones & Co., 324 F.3d 1346, 1356 (Fed. Cir. 2003); see also
`EmeraChem Holdings, LLC v. Volkswagen Grp. of America, Inc., 859 F.3d
`1341, 1345 (Fed. Cir. 2017).
`Here, Patent Owner proffers a Declaration of Nitin Shah, Ph.D., the
`first named co-inventor of the ’747 patent and the ’195 provisional
`application. Ex. 2009. However, Dr. Shah’s Declaration merely
`authenticates the evidence (i.e., certain employment agreements, prior
`litigation documents, and patent assignment agreement) that supports Patent
`Owner’s “common ownership” argument. Ex. 2009 ¶¶ 6−10; PO Resp.
`39−42. Significantly, Dr. Shah’s Declaration does not address who invented
`the subject matter disclosed in Brijesh, let alone contain a statement or
`explanation that Dr. Shah, himself, invented the portions of Brijesh relied
`upon as prior art. Ex. 2009 ¶¶ 6−10.
`The Federal Circuit has explained that “it was incumbent on appellant
`to provide satisfactory evidence, in light of the total circumstance of the
`case, that the reference reflected his own work.” EmeraChem, 859 F.3d at
`22
`
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`IPR2018-00054
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`1345−48 (citing DeBaun, 687 F.2d at 463) (holding that a naked assertion by
`the inventor is insufficient to demonstrate that the cited portions of the
`reference are not “by another” because the case law “does not stand for the
`proposition that a declaration alone is always sufficient to support an
`inventor’s claim to inventorship”); see also Allergan, Inc. v. Apotex Inc., 754
`F.3d 952, 968−970
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