Trials@uspto.gov
`571-272-7822
`
`
` Paper No. 12
` Entered: December 20, 2018
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GOOGLE LLC,
`Petitioner,
`
`v.
`
`IPA TECHNOLOGIES INC.,
`Patent Owner.
`____________
`
`Case IPR2018-00474
`Patent 6,742,021 B1
`____________
`
`
`Before DEBRA K. STEPHENS, THOMAS L. GIANNETTI, and
`BART A. GERSTENBLITH Administrative Patent Judges.
`
`GERSTENBLITH, Administrative Patent Judge.
`
`
`DECISION
`Denying Petitioner’s Request for Rehearing
`37 C.F.R. § 42.71
`
`
`571-272-7822
`
`
` Paper No. 12
` Entered: December 20, 2018
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GOOGLE LLC,
`Petitioner,
`
`v.
`
`IPA TECHNOLOGIES INC.,
`Patent Owner.
`____________
`
`Case IPR2018-00474
`Patent 6,742,021 B1
`____________
`
`
`Before DEBRA K. STEPHENS, THOMAS L. GIANNETTI, and
`BART A. GERSTENBLITH Administrative Patent Judges.
`
`GERSTENBLITH, Administrative Patent Judge.
`
`
`DECISION
`Denying Petitioner’s Request for Rehearing
`37 C.F.R. § 42.71
`
`
`
`IPR2018-00474
`Patent 6,742,021 B1
`
`
`INTRODUCTION
`
`Google LLC (“Petitioner”) filed a Petition requesting institution of
`inter partes review of claims 1, 2, 5, 7–13, 15–20, 22–26, 72, 73, 76, 78–89,
`and 127–132 of U.S. Patent No. 6,742,021 B1 (“the ’021 patent”). Paper 1
`(“Pet.”). IPA Technologies Inc. (“Patent Owner”) timely filed a Preliminary
`Response. Paper 6 (“Prelim. Resp.”).
`In our Decision Denying Institution (Paper 7, “Dec.” or “Decision”),
`we denied the Petition as to all claims. We determined that Petitioner had
`failed to satisfy its burden of demonstrating a reasonable likelihood of
`showing, under 35 U.S.C. § 102(b), that its principal reference, Cheyer,1 was
`disseminated or publicly accessible prior to one year before the effective
`filing date of the ’021 patent and, therefore, did not qualify as prior art under
`35 U.S.C. § 102(b). Dec. 6–15.
`Petitioner timely filed a Request for Rehearing under 37 C.F.R.
`§ 42.71(d), requesting reconsideration of our decision not to institute trial.
`Paper 8 (“Req. Reh’g” or “Request”). Petitioner’s grounds for rehearing are
`that the Board’s decision denying institution (i) overlooked or
`misapprehended “central facts” presented by Petitioner allegedly showing
`Cheyer was publicly accessible, and (ii) misapprehended “controlling case
`law” as to the public availability of Cheyer. Id. at 3–15. With our
`authorization (Paper 9), Patent Owner filed an Opposition to Petitioner’s
`Request for Rehearing (Paper 10, “Opp.”), and Petitioner subsequently filed
`a Reply in Support of its Request for Rehearing (Paper 11, “Reply to Opp.”).
`Petitioner suggests that the Request be considered by an expanded panel,
`
`1 Adam Cheyer and Luc Julia, Multimodal Maps: An Agent-based Approach,
`SRI International (dated June 9, 1995).
`
`
`
`2
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`IPR2018-00474
`Patent 6,742,021 B1
`
`including the Chief Administrative Patent Judge of the Patent Trial and
`Appeal Board. Req. Reh’g 14–15.
`For the reasons provided below, we deny Petitioner’s Request.
`
` ANALYSIS
`The applicable standard for a request for rehearing whether to institute
`trial is set forth in 37 C.F.R. § 42.71(c), which provides in relevant part:
`“When rehearing a decision on petition, a panel will review the decision for
`an abuse of discretion.” Section 42.71(c), in turn, references 37 C.F.R.
`§ 42.71(d), which provides a request for rehearing “must specifically
`identify all matters the party believes the Board misapprehended or
`overlooked, and the place where each matter was previously addressed in a
`motion, an opposition, or a reply.” 37 C.F.R. § 42.71(d). The party
`challenging a decision bears the burden of showing the decision should be
`modified. Id.
`
`A. The Petition
`The Petition presents two grounds of challenge under 35 U.S.C
`§ 103(a). Pet. 4. Each ground relies on Cheyer as the principal reference.
`Id. The Petition relies on Exhibit 1012 as representing Cheyer, throughout
`its obviousness analysis. See, e.g., id. Exhibit 1012 itself bears no indicia of
`publication (e.g., a copyright notice or the name of a technical journal);
`rather, the first page merely bears the date June 9, 1995. Ex. 1012, 1.
`The Petition includes a brief discussion (less than two pages) of
`Cheyer’s status as a printed publication. Pet. 4–5. The discussion appears
`directed to Exhibit 1012. The Petition relies on the June 1995 date on the
`first page of Exhibit 1012. Id. at 4 (citing Ex. 1012, 1).
`
`
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`3
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`IPR2018-00474
`Patent 6,742,021 B1
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`
`The Petition contends that Cheyer was first published in May 1995, at
`the International Conference on Cooperative Multimodal Communication
`(CMC/95). Id. The Petition further contends a paper by Moran (Ex. 1029)
`includes a citation to Cheyer and instructions on how to retrieve Cheyer. Id.
`at 5. Referring to Exhibit 1030, the Petition also contends “a web page of
`the original assignee SRI International (‘SRI’) . . . archived by the Internet
`Archive, describes Cheyer, with respect to the CMC/95 conference, specifies
`‘24-26 May 1995’ as the date, and includes a link to download Cheyer.” Id.
`at 5 (citing Ex. 1030, 1). Finally, referring to Exhibit 1031, the Petition
`states “a full viewable copy of Cheyer was made available at SRI’s website
`at least as early as 1997.” Id. (citing Ex. 1031, 1–22).
`
`B. The Decision Denying Institution
`The Decision Denying Institution addresses each of the Petition’s
`contentions regarding the public accessibility of Cheyer. Dec. 6–15. For
`example, the Decision discusses at length the Petition’s main contention that
`Cheyer was published at the May 1995 CMC/95 conference. Id. at 9–11.
`The Decision notes that the “Lecture Notes” (Ex. 1032), relied on by
`Petitioner to establish a May 1995 publication date and the public
`accessibility of Cheyer, refer to a revised version of Cheyer, which
`Petitioner’s analysis fails to explain. Id. at 10–11. The Decision further
`points out the discrepancy between the June 1995 date of Exhibit 1012 and
`the Lecture Notes version. Id. at 10. Moreover, the Decision notes:
`“Petitioner fails to provide any testimonial or other direct evidence that
`copies of either version of Cheyer (the Exhibit 1012 version or the
`Exhibit 1032 Lecture Notes version) were disseminated at the CMC/95
`conference.” Id. at 11.
`
`
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`4
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`IPR2018-00474
`Patent 6,742,021 B1
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`
`The Decision also addresses at length Moran’s citation of Cheyer, and
`finds it unconvincing for several reasons, including that “Petitioner fails to
`provide testimonial or other evidence that the link provided in the [Moran]
`article actually worked at the relevant time period, what content was
`included at the linked website, how one would find Cheyer after selecting
`the link, or which version of Cheyer allegedly was accessible via the link.”
`Id. at 12–13.
`Finally, the Decision addresses the SRI International web page. Id. at
`13–15. The Decision concludes that the website evidence is insufficient
`proof of public accessibility:
`There is no evidence that whatever version of Cheyer (if any)
`was linked on the SRI website was ever downloaded, or that a
`search engine could have been used to find it. Thus, even if we
`were to assume that Cheyer was available online (i.e., technical
`availability), Petitioner fails to point to any persuasive evidence
`of public accessibility to the document or the SRI website.
`Id. at 14.
`It is against this background that Petitioner’s contention that the Board
`misapprehended or overlooked alleged evidence of public accessibility of
`Cheyer presented in the Petition must be examined.
`
`C. Petitioner’s Contention that “Central Facts” Were Overlooked
`In its Request, Petitioner does not contest the Board’s conclusion that
`the proofs it presented of Cheyer’s public availability at CMC/95 were
`insufficient. See generally Req. Reh’g. Rather, Petitioner now relies
`entirely on its assertion that Cheyer was publicly available on SRI’s website.
`Req. Reh’g 3–4. As noted supra, this argument was considered at length in
`the Decision Denying Institution and found insufficient. Dec. 13–15.
`
`
`
`5
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`IPR2018-00474
`Patent 6,742,021 B1
`
`
`As discussed below, both Cheyer and SRI’s website were considered
`in denying institution. Petitioner’s argument for rehearing relies mainly on
`two exhibits relating to the SRI website (Exhibits 1030 and 1031).
`Specifically, Petitioner first contends it
`explained that Cheyer was published “on the SRI website by at
`least 1997,” (Pet. at 5) based on two core points: (1) archived
`copies of SRI’s website in 1997 showing Cheyer was available
`for viewing (Ex. 1031) in addition to a link that was provided to
`download it (Ex. 1030); and (2) another pre-critical date
`publication (Ex. 1029, “Moran”), in which the inventors and
`other authors cited to Cheyer and directed the public to SRI’s
`website to review it (Pet. 4–5).
`Req. Reh’g 1. As discussed below, these exhibits were considered in
`denying institution.
`Petitioner argues Exhibit 1030, obtained from the Internet Archive’s
`Wayback Machine, lists Cheyer and includes a link allegedly for
`downloading Cheyer in 1997. Id. at 3. We considered Exhibit 1030 in our
`Decision and concluded it was not persuasive proof of public accessibility of
`Cheyer. Dec. 13–15. In reaching that conclusion, we credited Patent
`Owner’s argument that “Petitioner fails to proffer evidence that persons of
`ordinary skill in the art knew of SRI’s website, actually visited SRI’s
`website, or that the website was indexed, catalogued, or contained a search
`function.” Id. at 13–14 (citing Prelim. Resp. 28–29). Petitioner has
`identified nothing that was overlooked or misapprehended in reaching that
`conclusion.
`In its Rehearing Request, Petitioner contends that Exhibit 1030 is a
`page from SRI’s website containing a link for downloading a version of
`Cheyer. Req. Reh’g 3. In the Rehearing Request (but not in the Petition),
`Petitioner relies on generalized statements of the level of ordinary skill as
`
`
`
`6
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`IPR2018-00474
`Patent 6,742,021 B1
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`proof that SRI’s website would have been found by one of ordinary skill in
`the art. Id. at 6–8.
`Petitioner alleges our Decision “effectively hinges on the notion that a
`professional computer scientist or engineer directed to find an article on a
`section of a website would have been unable to do so with reasonable
`diligence.” Id. at 7–8. Petitioner’s argument fails for several reasons. First,
`it is a new argument not appropriately raised on rehearing. Second, there is
`no support in the record for the assertion that Cheyer was actually available
`(see Exhibits 2001 and 2002) or that an ordinarily skilled artisan would have
`been able to find Cheyer, only Petitioner’s speculation.2 Finally, this
`argument overlooks that the burden is on Petitioner, not the Board, to
`demonstrate a reasonable likelihood of prevailing on this issue.
`Likewise, we considered Exhibit 1031 (also from the Wayback
`Machine) in our Decision, but found it unconvincing. Dec. 13–15.
`Petitioner proffered no testimony or other evidence (1) establishing that this
`version of Cheyer was publicly accessible on SRI’s website or
`(2) comparing the portions of this version with those portions in
`Exhibit 1012 on which Petitioner relied in its obviousness grounds.
`Petitioner next argues “the Decision overlooked Moran’s status as a
`printed publication in 1997,” and thus, “Moran’s citation to Cheyer was not
`known only to its authors, but rather was disseminated to the public—
`including a [person of ordinary skill in the art]—at least as early as Moran’s
`publication in 1997.” Req. Reh’g 5. Petitioner relies on Moran as a
`
`2 Another new argument is Petitioner’s assertion that the copy of Cheyer
`“submitted with its petition” was downloaded using a link in Exhibit 1030.
`Req. Reh’g 3. No supporting testimony or other evidence for this new
`assertion is provided by Petitioner.
`
`
`
`7
`
`
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`IPR2018-00474
`Patent 6,742,021 B1
`
`“research aid.” Id. at 9–11. As noted in our Decision, Petitioner relies on a
`citation in Moran, in a footnote, to Cheyer in a document titled “Proc. of the
`International Conference on Cooperative Multimodal Communication
`(CMC/95),” from May 1995, and to a link to “http://www.ai.sri.com/∼oaa/ +
`‘Bibliography.’” Dec. 11–13 (citing Ex. 1029, 10; Pet. 5). First, the
`document cited in the Moran footnote was not provided by Petitioner. Nor
`does the Petition explain what the document is, or why this establishes
`Cheyer was “published” at the conference in May 1995. Moreover,
`Petitioner never explains the reason for the difference in dates between this
`reference and the June 1995 date of Exhibit 1012, which was relied upon in
`Petitioner’s obviousness grounds.
`Second, as noted also in our Decision, the alleged “instructions” on
`how to retrieve Cheyer included in Moran’s footnote citation did not
`persuade us that Cheyer was publicly accessible. Dec. 12–13. Importantly,
`we note Petitioner has not shown the link provided in the footnote worked,
`or that the link, which is to a “Bibliography” page (see Ex. 1029), provided
`Cheyer’s paper or a publicly accessible link to Cheyer’s paper. In particular,
`Petitioner does not provide a copy of this Bibliography page to show what
`actually was on that page, and how, or if, an ordinarily skilled artisan would
`have been able to access Cheyer’s paper from the Bibliography page.
`In our Decision, we noted Petitioner failed to provide testimonial or
`other evidence that the link provided in the article actually worked at the
`relevant time period, what content was included at the linked website, how
`one would find Cheyer after selecting the link, or which version of Cheyer
`allegedly was accessible via the link. Dec. 12–13. We also explained that
`
`
`
`8
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`IPR2018-00474
`Patent 6,742,021 B1
`
`this latter showing is of special importance here because Petitioner
`acknowledges that there were several different versions of Cheyer. Id. at 13.
`
`D. Petitioner’s Contention that “Controlling Case Law”
`Was Misapprehended
`This alleged reason for rehearing relies first on the Moran “research
`aid” argument, discussed supra, and the Federal Circuit’s decision in Blue
`Calypso, LLC v. Groupon, Inc., 815 F.3d 1331 (Fed. Cir. 2016). Req.
`Reh’g 8–11. Petitioner does not persuade us that we overlooked or
`misapprehended this argument or Blue Calypso in our Decision, for the
`reasons discussed above.
`Analogizing this case to Blue Calypso, Petitioner contends the
`Decision “ignored” that Moran is a “research aid” that “establishes public
`availability.” Id. at 9. As discussed supra, the citation in Moran was not
`“ignored;” rather, Petitioner’s arguments regarding Moran were considered.
`Dec. 11–13.
`The issue, however, is not whether Moran might have been a research
`aid leading to Cheyer, but whether the Moran article provides a “sufficient”
`roadmap. See Blue Calypso, 815 F.3d at 1350. As Blue Calypso itself
`recognizes, to be adequate, the roadmap must provide enough detail that an
`interested party “is reasonably certain to arrive at the destination.” Id. In
`our Decision, we concluded Moran failed to do so. Dec. 13 (“[T]he citation
`to Cheyer in Moran does not provide sufficient support to show a reasonable
`likelihood of establishing that Cheyer was disseminated or publicly
`accessible prior to March 17, 1998.”). As Patent Owner points out,
`Petitioner has provided no proof the web address in Moran would have led
`to Cheyer. Opp. 5. That Petitioner disagrees with our conclusion does not
`
`
`
`9
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`IPR2018-00474
`Patent 6,742,021 B1
`
`mean controlling case law was misapprehended and is not grounds for a
`rehearing.
`Petitioner concedes this point by not arguing that the link provided in
`Moran would lead directly to Cheyer, but that a person of ordinary skill
`could have located Cheyer on the SRI website.3 Req. Reh’g 7 (“[I]t is
`undisputed that Moran directed artisans to the same section of SRI’s website
`(www.ai.sri.com) to review Cheyer.”). As we discuss supra, no persuasive
`evidentiary support has been provided for this assertion, which in any case is
`new to the rehearing request and therefore, inappropriately raised. And
`regardless, as Patent Owner points out, the web address in Moran leads to a
`web page (“Bibliography”) under Open Agent Architecture (OAA), which is
`the subject of Moran. Opp. 5 (citing Ex. 2003).
`Petitioner’s second argument that we allegedly misapprehended case
`law is based on the Decision’s alleged “focus” on whether Cheyer was
`indexed or downloaded. Req. Reh’g 12–14. The gist of Petitioner’s
`argument is that indexing is not a requirement for showing public
`
`
`3 Petitioner contends that if trial were instituted, it would show that
`“Exhibit 1030 was two mouse clicks away from the URL Moran cited . . .
`and that Exhibit 1031 was two mouse clicks from there” (Req. Reh’g 15
`n.5). Petitioner’s contention confirms that Moran’s citation to Cheyer did
`not lead directly to the Exhibit 1030 version of Cheyer or Exhibit 1031.
`Similarly, Petitioner failed to include this argument in the Petition. The
`point here is that the facts presented in the Petition are not analogous to the
`example, provided in Blue Calypso, of a published article with an express
`citation to the potentially invalidating reference because (1) by Petitioner’s
`admission, the citation in Moran does not lead one expressly to Cheyer, and
`(2) no evidence was presented that one of ordinary skill in the art would
`have been led to Cheyer based on the citation in Moran.
`
`
`
`10
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`IPR2018-00474
`Patent 6,742,021 B1
`
`accessibility. Id. at 12–13. Petitioner further argues actual retrieval of a
`publication is not a requirement for public accessibility. Id. at 13.
`We disagree with Petitioner’s premise that the “focus” of the Decision
`is indexing or downloading. Those factors are mentioned in the Decision
`because the Federal Circuit discusses them in Blue Calypso. See Dec. 14.
`Our Decision considered the other factors mentioned in Blue Calypso as
`well, and found Petitioner did not provide sufficient evidence or testimony
`to satisfy any of those factors:
`In addressing the question of public accessibility of an online
`reference in Blue Calypso, the Federal Circuit noted that, even if
`it were assumed that the reference was available online prior to
`the critical date, the patent challenger failed to present (1) any
`evidence that the reference was viewed or downloaded, (2) any
`testimony evidence that one of ordinary skill in the art would
`have been independently aware of the webpage, and (3) any
`evidence that a query of a search engine before the critical date,
`using any combination of search words, would have led to the
`reference appearing in the search results. Id. at 1349–50. The
`factual situation here is not substantially different. Petitioner has
`not offered evidence on any of the indicia of public accessibility
`identified by the Federal Circuit in Blue Calypso.
`Id. Included in Blue Calypso are two factors (identified as factors 2 and 3)
`on which Petitioner provided no evidence. We, therefore, disagree with
`Petitioner that anything was misapprehended or overlooked in applying Blue
`Calypso to this case.
`
`E. Request for Expanded Panel
`Our governing statutes and regulations do not provide for parties to
`
`request, or panels to authorize, an expanded panel. See generally 35 U.S.C.
`§ 6; 37 C.F.R. §§ 41.1–42.412. The Chief Judge may consider panel
`expansions upon a “suggestion” from a judge, panel, or party. PTAB SOP 1,
`
`
`
`11
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`IPR2018-00474
`Patent 6,742,021 B1
`
`15; see also Apple Inc. v. Rensselaer Polytechnic Inst., Case IPR2014-
`00319, slip op. at 2 n.1 (PTAB Dec. 12, 2014) (Paper 20) (expanded panel)
`(per curiam).
`
`The standard operating procedure exemplifies some of the reasons for
`which the Chief Judge may expand a panel. PTAB SOP 1, 15 (§ III.M). For
`example, an expanded panel may be warranted “where appropriate, to secure
`and maintain uniformity of the Board’s decisions, e.g., in related cases
`ordinarily involving different three judge panels.” Id. (§ III.M.1).
`In this case, the acting-Chief Judge has considered Petitioner’s
`suggestion for an expanded panel, but has determined that an expanded
`panel is not warranted.
`
`III. CONCLUSION
`For the foregoing reasons, we are not persuaded that Petitioner has
`identified anything misapprehended or overlooked in our Institution
`Decision that would warrant a grant of rehearing.
`
`IV. ORDER
`Based on the foregoing, it is hereby:
`ORDERED that Petitioner’s Request for Rehearing is denied.
`
`
`12
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`IPR2018-00474
`Patent 6,742,021 B1
`
`For PETITIONER:
`
`Naveen Modi
`Daniel Zeilberger
`Arvind Jairam
`PAUL HASTINGS LLP
`naveenmodi@paulhastings.com
`danielzeilberger@paulhastings.com
`arvindjairam@paulhastings.com
`
`For PATENT OWNER:
`
`Steven Hartsell
`Alexander Gasser
`Sarah Spires
`SKIERMONT DERBY LLP
`shartsell@skiermontderby.com
`agasser@skiermontderby.com
`sspires@skiermontderby.com
`
`
`
`
`
`
`13
`
`
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