Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`
`
`Paper 7
`Entered: July 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 IPR2018-00476
`Patent 6,757,718
`____________
`
`
`
`Before DEBRA K. STEPHENS, THOMAS L. GIANNETTI, and
`BART A. GERSTENBLITH Administrative Patent Judges.
`
`STEPHENS, Administrative Patent Judge.
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314(a)
`
`
`571-272-7822
`
`
`
`
`
`
`
`Paper 7
`Entered: July 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 IPR2018-00476
`Patent 6,757,718
`____________
`
`
`
`Before DEBRA K. STEPHENS, THOMAS L. GIANNETTI, and
`BART A. GERSTENBLITH Administrative Patent Judges.
`
`STEPHENS, Administrative Patent Judge.
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314(a)
`
`
`
`Case IPR2018-00476
`Patent 6,757,718
`
`
`I.
`
`INTRODUCTION
`
`A.
`
`Background
`
`Google LLC (“Petitioner”) filed a Petition (Paper 1 (“Pet.”))
`
`requesting an inter partes review of claims 1–27 of U.S. Patent No.
`
`6,757,718 (Ex. 1001 (hereinafter “’718 Patent”)) (35 U.S.C. § 311). IPA
`
`Technologies, Inc. (“Patent Owner”) timely filed a Preliminary Response
`
`(Paper 6 (“Prelim. Resp.”)) to the Petition. The standard for instituting an
`
`inter partes review is set forth in 35 U.S.C. § 314, which provides as
`
`follows:
`
`(a) THRESHOLD.—The Director may not authorize an inter partes
`review to be instituted unless the Director determines that the
`information presented in the petition filed under section 311 and
`any response filed under section 313 shows that there is a
`reasonable likelihood that the petitioner would prevail with
`respect to at least 1 of the claims challenged in the petition
`
`(35 U.S.C. § 314(a)).
`
`Petitioner challenges claims 1–27 as unpatentable under 35 U.S.C.
`
`§ 103(a) (Pet. i–ii). Generally, Patent Owner contends that the Petition
`
`should be denied as to all challenged claims (Prelim. Resp. 1–43).
`
`Upon consideration of the arguments and evidence presented in the
`
`Petition and the Preliminary Response, we are not persuaded Petitioner has
`
`established a reasonable likelihood that it would prevail in its challenge to
`
`claims 1–27 of the ’718 Patent because Petitioner does adequately show the
`
`relied upon evidence was publicly available prior to the critical date of the
`
`’718 Patent. Accordingly, we decline to institute an inter partes review of
`
`claims 1–27 of the ’718 Patent.
`
`
`
`
`2
`
`
`
`Case IPR2018-00476
`Patent 6,757,718
`
`
`B.
`
`Related Proceedings
`
`Petitioner indicates that the ’718 Patent is at issue in the following
`
`patent infringement claims:
`
`IPA Technologies Inc. v. NVIDIA Corporation, No. 1:17-cv-00287,
`
`which was filed in the U.S. District Court for the District of Delaware;
`
`IPA Technologies Inc. v. Sony Electronics Inc., No. 1:17-cv-00055,
`
`which was filed in the U.S. District Court for the District of Delaware;
`
`IPA Technologies Inc. v. Amazon.com, No. 1:16-cv-01266, which was
`
`filed in the U.S. District Court for the District of Delaware;
`
`IPA Technologies Inc. v. DISH Network Corporation, No. 1:16-cv-
`
`01170, which was filed in the U.S. District Court for the District of
`
`Delaware; and
`
`DISH Network Corporation et al. v. IPA Technologies Inc., IPR2018-
`
`00351,1 which was filed in the Patent Trial and Appeal Board (Pet. 1).
`
`C.
`
`Real Parties in Interest
`
`The Petition identifies “Google LLC” as the sole real party in interest
`
`(Pet. 1). Patent Owner states that the real party in interest is “IPA
`
`Technologies Inc., which is a wholly owned subsidiary of Wi-LAN
`
`Technologies Inc. (a Delaware corporation), which is a wholly owned
`
`subsidiary of Wi-LAN Inc. (a Canadian corporation), which is a wholly
`
`owned subsidiary of Quarterhill Inc. (a Canadian corporation publicly traded
`
`on the TSX and NASDAQ)” (Paper 4, 2).
`
`
`1 For completeness, the Board notes the termination of the related
`proceeding challenging the ’718 Patent in IPR2018-00351, since the filing of
`the instant Petition.
`
`
`
`3
`
`
`
`Case IPR2018-00476
`Patent 6,757,718
`
`
`D.
`
`The ’718 Patent
`
`The ’718 Patent, titled “Mobile Navigation of Network-Based
`
`Electronic Information Using Spoken Input,” issued Jun. 29, 2004
`
`(Ex. 1001, Title). The ’718 Patent describes a technique for “navigating an
`
`electronic source [through] spoken language where a portion of the data link
`
`between a mobile information appliance of the user and the data source
`
`utilizes wireless communication”, (id. at Abstract). Figure 6 of the
`
`’718 Patent illustrates “a community of distributed, collaborating electronic
`
`agents” using an exemplary Open Agent ArchitectureT M (OAA®) software
`
`platform for constructing the electronic navigation system (id. at 3:46–48,
`
`13:15–19, 14:27–30) and is reproduced below.
`
`As shown in Figure 6, facilitator 600 communicates with a plurality of
`
`Agents (610, 620, 630, 640, 650, 660, 670) (id. at 13:15–19, 14:27–50).
`
`
`
`
`
`4
`
`
`
`Case IPR2018-00476
`Patent 6,757,718
`
`Facilitator 600 receives voice requests by user interface (UI) agent 650,
`
`which in turn asks natural language (“NL”) agent 620 and speech
`
`recognition agent 610 for an interpretation of the query (id. at 14:30–36).
`
`NL agent 620 and speech recognition agent 610 return the interpretation to
`
`facilitator 600 in an Interagent Communication Language (“ICL”) format
`
`(id.). The facilitator 600 then routes the ICL query information to
`
`appropriate agents, like video-on-demand database agent 640, to execute the
`
`request and retrieve the video content, and upon the retrieval of the desired
`
`content, facilitator 600 invokes UI agent 650 to display the video content (id.
`
`at 14:37–50). Facilitator 600 also processes other spoken requests, including
`
`exemplary weather and stock quotes, by invoking alternate agents like web
`
`database 630 to access an appropriate website (id. at 14:51–55). Similarly,
`
`facilitator 600 returns the desired query result by invoking the appropriate
`
`agent to execute the specific request (id. at 14:55–67).
`
`According to the ’718 Patent, the advantage of employing OAA-based
`
`navigation is in the integration, control, and connectivity of electronic home
`
`appliances (id. at 15:1–3). The OAA NL system allows greater ease and
`
`flexibility to provide user access to additional service agents (id. at 15:3–12).
`
`E.
`
`Illustrative Claim
`
`Of the challenged claims, claims 1, 10, and 19 are independent claims.
`
`Claims 2–9 depend, directly or indirectly from claim 1; claims 11–18
`
`depend directly or indirectly from claim 10; and claims 20–27 depend
`
`directly or indirectly from claim 19 (Ex. 1001, claims 1–27). Claim 1,
`
`reproduced below, is illustrative:
`
`
`
`5
`
`
`
`Case IPR2018-00476
`Patent 6,757,718
`
`
`A method for speech-based navigation of an electronic data
`1.
`source located at one or more network servers located remotely from a
`user, wherein a data link is established between a mobile information
`appliance of the user and the one or more network servers, comprising
`the steps of:
`
`(a) receiving a spoken request for desired information from the
`user utilizing the mobile information appliance of the user,
`wherein said mobile information appliance comprises a portable
`remote control device or a set-top box for a television;
`
`(b) rendering an interpretation of the spoken request;
`
`(c) constructing a navigation query based upon the
`interpretation;
`
`(d) utilizing the navigation query to select a portion of the
`electronic data source; and
`
`(e) transmitting the selected portion of the electronic data
`source from the network server to the mobile information
`appliance of the user.
`
`(Ex. 1001, claim 1).
`
`F.
`
`The References
`
`Petitioner relies upon the following references (Pet. v):
`
`Reference
`
`Patent Number Exhibit
`
`Cheyer et al., Multimodal Maps: An Agent-
`based Approach, SRI International (June 9,
`1995) (hereinafter “Cheyer”)
`Shwartz et al. (hereinafter “Shwartz”)
`Johnson
`Thrift et al. (hereinafter “Thrift”)
`Dureau
`Simmers
`
`
`
`10122
`
`1013
`US 5,197,005 A
`1014
`US 5,748,974 A
`US 6,188,985 B1 1015
`US 6,345,389 B1 1016
`US 5,841,431 B1 1017
`
`
`2 Adam Cheyer and Luc Julia, Multimodal Maps: An Agent-based Approach,
`SRI International (dated June 9, 1995).
`
`
`
`6
`
`
`
`Case IPR2018-00476
`Patent 6,757,718
`
`
`
`
`G.
`
`The Asserted Grounds
`
`Petitioner challenges claims 1–27 of the ’718 Patent on the following
`
`grounds (Pet. i–ii):
`
`Ground
`
`Claims
`
`Basis
`
`References
`
`1
`
`2
`
`3
`
`4
`
`1–4, 6, 8–10, 12,
`13, 15, 17–19, 21,
`22, 24, 26 and 27
`
`§ 103(a) Cheyer, Shwartz, and Thrift
`
`2, 11, and 20
`
`§ 103(a)
`
`4, 13, and 22
`
`§ 103(a)
`
`5, 7, 14, 16, 23,
`and 25
`
`§ 103(a)
`
`Cheyer, Shwartz, Thrift, and
`Dureau
`Cheyer, Shwartz, Thrift, and
`Johnson
`Cheyer, Shwartz, Thrift, and
`Simmers
`
`
`
`II. CLAIM CONSTRUCTION
`
`In an inter partes review, claim terms in an unexpired patent are given
`
`their broadest reasonable construction in light of the specification of the
`
`patent in which they appear (see Office Patent Trial Practice Guide, 77 Fed.
`
`Reg. 48,756, 48,766 (Aug. 14, 2012); 37 CFR § 42.100(b)). 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 (In re
`
`Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007)). An inventor
`
`may rebut that presumption by providing a definition of the term in the
`
`specification with reasonable clarity, deliberateness, and precision (In re
`
`Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994)). In the absence of such a
`
`definition, limitations are not to be read from the specification into the
`
`claims (In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993)).
`
`
`
`7
`
`
`
`Case IPR2018-00476
`Patent 6,757,718
`
`
`In view of our analysis, we determine that no claim terms require
`
`express construction at this stage (see Vivid Techs., Inc. v. Am. Sci. & Eng’g,
`
`Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (Only terms in controversy need to
`
`be construed, and only to the extent necessary to resolve the controversy)).
`
`III. ANALYSIS
`
`A. Overview
`
`“A petitioner in an inter partes review may request to cancel as
`
`unpatentable 1 or more claims of a patent only on a ground that could be
`
`raised under section 102 or 103 and only on the basis of prior art consisting
`
`of patents or printed publications” (35 U.S.C. § 311(b) (emphasis added);
`
`see also 37 C.F.R. § 42.104(b)(2)). Each of Petitioner’s challenges to
`
`claims 1–27 relies, at least in-part, on Cheyer (Pet. 2). Thus, Petitioner has
`
`the burden to establish in its Petition a reasonable likelihood of showing that
`
`Cheyer is a “printed publication” within the meaning of 35 U.S.C. §§ 102(b)
`
`and 311(b) (35 U.S.C. § 314(a); see In re Wyer, 655 F.2d 221, 227 (CCPA
`
`1981) (“[W]hether information is printed, handwritten, or on microfilm or a
`
`magnetic disc or tape, etc., the one who wishes to characterize the
`
`information, in whatever form it may be, as a ‘printed publication’ . . .
`
`should produce sufficient proof of its dissemination or that it has otherwise
`
`been available and accessible to persons concerned with the art to which the
`
`document relates and thus most likely to avail themselves of its contents.”
`
`(emphasis added))).
`
`“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.,
`
`
`
`8
`
`
`
`Case IPR2018-00476
`Patent 6,757,718
`
`815 F.3d 1331, 1348 (Fed. Cir. 2016) (quoting Kyocera Wireless Corp. v.
`
`Int’l Trade Comm’n, 545 F.3d 1340, 1350 (Fed. Cir. 2008))). The status of a
`
`reference as a printed publication is a legal conclusion “based on underlying
`
`factual determinations” (id. (citing In re Lister, 583 F.3d 1307, 1311 (Fed.
`
`Cir. 2009))).
`
`The Federal Circuit recently addressed the requirement of public
`
`accessibility, specifically in connection with materials distributed at
`
`conferences or meetings (Medtronic, Inc. v. Barry, 891 F.3d 1368, 1380–83
`
`(Fed. Cir. 2018)). After reviewing the pertinent case law, the Court outlined
`
`the factors that should be considered:
`
`As relevant to this case, the size and nature of the meetings and
`whether they are open to people interested in the subject matter
`of the material disclosed are important considerations. Another
`factor is whether there is an expectation of confidentiality
`between the distributor and the recipients of the materials. Even
`if there is no formal, legal obligation of confidentiality, it still
`may be relevant to determine whether any policies or practices
`associated with a particular group meeting would give rise to an
`expectation that disclosures would remain confidential
`
`(id. at 1382).
`
`B. Cheyer
`
`Cheyer is a paper titled “Multimodal Maps: An Agent-based
`
`Approach” (Ex. 1012, 1). The identified authors are Adam Cheyer and Luc
`
`Julia (id.). Both authors are also listed as inventors on the ’718 Patent
`
`(Ex. 1001, [75]). The first page of Exhibit 1012 bears the date “June 9,
`
`1995” (Ex. 1012, 1).
`
`Petitioner contends that Cheyer qualifies as prior art under 35 U.S.C.
`
`§ 102(b) because it “was published several times years before the earliest
`
`effective filing date of the ’718 patent” (Pet. 3). Petitioner asserts that “the
`
`
`
`9
`
`
`
`Case IPR2018-00476
`Patent 6,757,718
`
`earliest effective filing date of the ’718 Patent is March 17, 1999, which is
`
`the filing date of three provisional applications to which the ’718 Patent
`
`claims priority” (id. (citing Ex. 1001, [60])). Further, Petitioner contends
`
`that Cheyer was first published in May 1995, at the International Conference
`
`on Cooperative Multimodal Communication (“the CMC/95 conference”)
`
`(id.).
`
`In response, Patent Owner contends that Petitioner fails to make “a
`
`threshold showing” that Cheyer was disseminated or publicly accessible and,
`
`therefore, fails to demonstrate that Cheyer is a printed publication (Prelim.
`
`Resp. 11). Additionally, Patent Owner asserts that the effective filing date
`
`of the ’718 Patent is January 5, 1999 because the ’718 Patent claims priority
`
`to U.S. Patent Application No. 09/225,198, which was filed on January 5,
`
`1999 (id. at 15 (citing Ex. 1001, [63])). Thus, Patent Owner contends that
`
`the critical date under 35 U.S.C. § 102(b) is January 5, 1998 (id.).
`
`We need not determine whether the ’718 Patent’s earliest effective
`
`filing date is January 5 or March 17 of 1999 because, as explained below,
`
`Petitioner has failed to satisfy its burden of demonstrating a reasonable
`
`likelihood of showing that Cheyer was disseminated or publicly accessible
`
`prior to March 17, 1998, the critical date under Petitioner’s theory of
`
`priority.
`
`C. Status of Cheyer as a Printed Publication
`
`We note that, as Patent Owner observes, Petitioner provides no
`
`testimonial evidence in support of its claim that Cheyer was publicly
`
`available in May 1995 (Prelim. Resp. 17 (citing Pet. 3–4), 21–26). In
`
`particular, Petitioner offers no testimony or other direct evidence that Cheyer
`
`was available at the CMC/95 conference. Petitioner presents no evidence on
`
`
`
`10
`
`
`
`Case IPR2018-00476
`Patent 6,757,718
`
`the factors specific to meetings and conferences highlighted by the Federal
`
`Circuit in Medtronic, supra. Based entirely on documents with no
`
`testimonial support, Petitioner advances several arguments as to why Cheyer
`
`qualifies as prior art (Pet. 3–4). We address each.
`
`1.
`
`June 9, 1995 Date
`
`Petitioner points to the first page of Cheyer, which bears a date of
`
`“June 9, 1995” (id. at 3 (citing Ex. 1012, 1)). Petitioner, however, does not
`
`assert that Cheyer was disseminated or otherwise made available in
`
`June 1995 and does not appear to rely upon this date (see id. at 3–4).
`
`Instead, Petitioner asserts that Cheyer was “initially published in May 1995”
`
`(id. at 3). Patent Owner responds that “Petitioner provides no evidence
`
`explaining the meaning of the date on the face of the reference—much less
`
`evidence establishing Cheyer’s dissemination or public accessibility as of
`
`that date” (Prelim. Resp. 17).
`
`We agree with Patent Owner. Petitioner does not argue that Cheyer
`
`was published, disseminated, or otherwise made available in June 1995.
`
`Indeed, Petitioner does not appear to rely on the June 1995 date (see, e.g.,
`
`Pet. 3 (noting that Cheyer has a June 1995 date, but arguing that it was
`
`“initially published in May 1995”)). Regardless, Petitioner fails to provide
`
`any indication of the significance of the June 1995 date, or what, if any,
`
`purpose the June 1995 date should serve in our consideration of the issue of
`
`whether Cheyer was published at the CMC/95 conference. Even if
`
`Petitioner had argued that Cheyer was published in June 1995, however, the
`
`date on the document, in and of itself, would not provide sufficient factual
`
`support for such a finding. Accordingly, the June 9, 1995, date alone does
`
`
`
`11
`
`
`
`Case IPR2018-00476
`Patent 6,757,718
`
`not suffice to show a reasonable likelihood of establishing that Cheyer was
`
`disseminated or publicly accessible prior to March 17, 1998.
`
`2.
`
`Alleged Publication During the CMC/95 Conference
`
`As noted previously, Petitioner contends that Cheyer “was actually
`
`initially published in May 1995 at the First International Conference on
`
`Cooperative Multimodal Communication (CMC/95)” (Pet. 3). In support,
`
`Petitioner points to Exhibit 1032 (“Lecture Notes”), which Petitioner
`
`contends is a book “intended to document the papers released at the May
`
`1995 [CMC/95] conference” (id.). Petitioner asserts that Exhibit 1032
`
`“itself includes a version of Cheyer (with minor revisions), [and] indicates
`
`that Cheyer was published in 1995 at the CMC/95 conference” (id. (citing
`
`Ex. 1032, 5, 6, 9–193)). Patent Owner responds that the Lecture Notes fail to
`
`establish that Cheyer was publicly accessible prior to the critical date
`
`(Prelim. Resp. 21–26).
`
`We agree with Patent Owner for several reasons. First, Petitioner
`
`acknowledges that the Lecture Notes contain a revised version of Cheyer
`
`(Pet. 3). Petitioner concedes that the Lecture Notes version has “minor
`
`revisions,” but fails to identify those revisions (id.). As Patent Owner points
`
`out, Petitioner provides no comparison of the Lecture Notes version with the
`
`version allegedly “published” at the CMC/95 conference (Prelim. Resp. 23).
`
`Additionally, the version of Cheyer in the Lecture Notes does not contain the
`
`June 9, 1995 date appearing on the first page of Exhibit 1012 (Ex. 1032, 9;
`
`contra Ex. 1012, 1). Thus, there is an inconsistency between these two
`
`versions as to an element of proof of publication relied on by Petitioner.
`
`
`3 Citations to Exhibit 1032 are to the pages of the Exhibit as opposed to the
`pages of the Lecture Notes.
`
`
`
`12
`
`
`
`Case IPR2018-00476
`Patent 6,757,718
`
`
`Second, the Preface of the Lecture Notes states that it “contains
`
`revised versions of seventeen selected papers from the [CMC/95 conference]
`
`. . . . Three of these papers were presented by invited speakers; those by
`
`Mark Maybury, Bonnie Webber, and Kent Wittenburg” (Ex. 1032, 6
`
`(emphasis added)). The import of this statement in the Preface is: (1) the
`
`version of Cheyer included in the Lecture Notes is revised (as Petitioner
`
`acknowledges) from whatever version existed previously; and (2) the
`
`statement that the papers are “from” the conference does not indicate that
`
`they were disseminated at the conference. Rather, the Preface itself
`
`contradicts Petitioner’s claim that Cheyer was presented at the conference.
`
`Specifically, the Preface indicates that only three papers were presented,
`
`Cheyer not being one of them (id.). Thus, we agree with Patent Owner that
`
`the Lecture Notes “merely show that, at best, some prior version of Cheyer
`
`was accepted by the program committee, not that it was presented, published
`
`or otherwise distributed” at the CMC/95 conference (Prelim. Resp. 22).
`
`Third, as noted supra, 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. Accordingly, the Lecture Notes,
`
`absent corroborating evidence, do not provide support sufficient to show a
`
`reasonable likelihood of establishing that Cheyer was disseminated or
`
`publicly accessible prior to March 17, 1998.4
`
`
`4 Although Petitioner does not rely upon the version of Cheyer included in
`the Lecture Notes, for completeness we note that the Lecture Notes contain a
`Library of Congress stamp with a date of May 15, 1998, which is later than
`the March 17, 1998 critical date we have accepted for purposes of this
`
`
`
`13
`
`
`
`Case IPR2018-00476
`Patent 6,757,718
`
`
`3.
`
`Citation in Moran
`
`Petitioner contends that a paper by Moran et al. (hereinafter “Moran”
`
`(Ex. 1029)), which was published allegedly in 1997 is evidence that Cheyer
`
`was “widely available” more than a year before the alleged critical date
`
`(Pet. 3 (citing Ex. 1029, 1, 2, 105)). According to Petitioner, the Moran
`
`paper includes a citation to Cheyer with “instructions on how to retrieve
`
`Cheyer.” (id.).
`
`We disagree for several reasons. First, the citation of Cheyer in the
`
`Moran paper (Ex. 1029, 10 n.2), in and of itself, indicates only that the
`
`authors of Moran were aware of Cheyer at the time of the Moran article.
`
`That is understandable because two of the authors of Cheyer—Adam Cheyer
`
`and Luc Julia—are also co-authors of Moran (compare Ex. 1029, 3 with
`
`Ex. 1012, 1, and Ex. 1029, 10 n.2). Thus, the citation establishes only that
`
`those individuals were aware of their own paper. That, however, does not
`
`support Petitioner’s allegation that Cheyer was “widely available” to others
`
`in the art.
`
`Next, the citation to Cheyer in Moran states that Cheyer was “[i]n
`
`Proc. of the International Conference on Cooperative Multimodal
`
`Communication (CMC/95)” (Ex. 1029, 10 n.2). Petitioner, however, does
`
`not explain why this establishes the paper was “published” at the conference
`
`in May 1995. For example, no evidence is proffered that the proceedings
`
`were available at the conference or even afterward (id.).
`
`
`Decision. Accordingly, the version of Cheyer in the Lecture Notes does not
`qualify as prior art.
`5 Citations to Exhibit 1029 are to the pages of the Exhibit as opposed to the
`pages of the Paper.
`
`
`
`14
`
`
`
`Case IPR2018-00476
`Patent 6,757,718
`
`
`In addition, the citation refers to a date of “May 1995,” which was the
`
`date of the conference (id.). But this date does not align with the June 9,
`
`1995 date on the first page of the Exhibit 1012 version of Cheyer relied on
`
`by Petitioner (see discussion supra).
`
`Finally, the alleged “instructions” on how to retrieve Cheyer, included
`
`in the citation in Moran, do not persuade us that Cheyer was publicly
`
`accessible (Pet. 3 (citing Ex. 1029, 106)). In particular, Petitioner fails 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. This latter showing
`
`is of special importance here, where Petitioner acknowledges that there were
`
`several different versions of Cheyer.
`
`Accordingly, the 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.
`
`4.
`
`SRI International Web Page
`
`Petitioner contends Exhibit 1030 is “a web page of the original
`
`assignee SRI International (‘SRI’) . . . archived by the Internet Archive”
`
`(Pet. 4 (citing Ex. 1030, 1)). Petitioner further contends the SRI web page
`
`“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.). Petitioner also asserts that the URL shows that the page was available
`
`in 1997 and “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)). Thus,
`
`
`6 Petitioner cites Ex. 1029, “68” which corresponds to Ex. 1029, 10.
`
`
`
`15
`
`
`
`Case IPR2018-00476
`Patent 6,757,718
`
`Petitioner contends that “Cheyer was publicly disseminated at the CMC/95
`
`conference in 1995 and was in any event made available on the SRI website
`
`by at least 1997” (id.).
`
`In response, Patent Owner argues that the Internet Archived SRI
`
`website does not establish either technical or public accessibility of Cheyer
`
`prior to the critical date (Prelim. Resp. 26–27). Patent Owner contends that
`
`Petitioner fails to proffer evidence supporting Petitioner’s allegation that the
`
`Internet Archive link would have led to the version of Cheyer reproduced as
`
`Exhibit 1012 (id. at 27). Additionally, Patent Owner asserts 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 28–29).
`
`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 (Blue Calypso, 815 F.3d 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. 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,
`
`
`
`16
`
`
`
`Case IPR2018-00476
`Patent 6,757,718
`
`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. Accordingly, even
`
`assuming that Cheyer was technically available through SRI’s webpage prior
`
`to March 17, 1998, Petitioner fails to show a reasonable likelihood of
`
`establishing that Cheyer was publicly accessible prior to that date.
`
`
`
`II. CONCLUSION
`
`For the foregoing reasons, on this record, we are not persuaded that
`
`the Petition establishes a reasonable likelihood that Petitioner would prevail
`
`in showing that claims 1–27 of the ’718 Patent are unpatentable.
`
`
`
`III. ORDER
`
`Based on the foregoing, it is hereby:
`
`ORDERED that the Petition is denied; and
`
`FURTHER ORDERED that no inter partes review is instituted.
`
`
`
`17
`
`
`
`
`
`
`
`Case IPR2018-00476
`Patent 6,757,718
`
`PETITIONER:
`
`Naveen Modi
`Daniel Zeilberger
`Arvind Jairam
`PAUL HASTINGS LLP
`naveenmodi@paulhastings.com
`danielzeilberger@paulhastings.com
`arvindjairam@paulhastings.com
`PH-Google-IPA-IPR@paulhastings.com
`
`
`
`
`PATENT OWNER:
`
`Steven W. Hartsell
`Alexander E. Gasser
`Sarah E. Spires
`SKIERMONT DERBY LLP
`shartsell@skiermontderby.com
`agasser@skiermontderby.com
`sspires@skiermontderby.com
`IPA_SDTeam@skiermontderby.com
`
`
`
`
`
`
`
`
`18
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
