Paper No. 10
`
`Filed: August 14, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`___________________
`
`GOOGLE LLC,
`
`PETITIONER,
`
`V.
`
`IPA TECHNOLOGIES, INC.,
`
`PATENT OWNER.
`
`___________________
`
`Case No. IPR2018-00476
`U.S. Patent No. 6,757,718
`___________________
`
`
`PATENT OWNER’S OPPOSITION TO PETITIONER’S
`REQUEST FOR REHEARING UNDER 37 C.F.R. § 42.71(D)
`
`
`
`
`
`
`
`
`
`
`Filed: August 14, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`___________________
`
`GOOGLE LLC,
`
`PETITIONER,
`
`V.
`
`IPA TECHNOLOGIES, INC.,
`
`PATENT OWNER.
`
`___________________
`
`Case No. IPR2018-00476
`U.S. Patent No. 6,757,718
`___________________
`
`
`PATENT OWNER’S OPPOSITION TO PETITIONER’S
`REQUEST FOR REHEARING UNDER 37 C.F.R. § 42.71(D)
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`I.
`
`TABLE OF CONTENTS
`
`INTRODUCTION .......................................................................................... 1
`
`THE BOARD DID NOT OVERLOOK OR MISAPPREHEND
`II.
`ARGUMENTS THAT WERE NOT MADE IN THE PETITION ........................... 1
`
`A. Petitioner is Not Permitted to Raise New Arguments in the Request ............ 1
`
`B. The Record Does Not Establish Cheyer was Publicly Available on the
`SRI Website Before the Critical Date ............................................................ 2
`
`C. There are No Moran Arguments in the Petition to Overlook ........................ 5
`
`D. There are No POSITA Arguments in the Petition to Overlook ..................... 6
`
`III.
`
`THE DECISION FOLLOWS CONTROLLING PRECEDENT ................... 9
`
`A. Moran Is Not a Research Aid for Cheyer ...................................................... 9
`
`B. The Decision Properly Observed Petitioner’s Failure to Adduce
`Evidence of Indexing .................................................................................... 12
`
`C. Evidence of Downloading is Relevant to Dissemination and was
`Properly Considered by the Board ............................................................... 13
`
`PETITIONER’S “SUGGESTION” FOR REHEARING BY AN
`IV.
`EXPANDED PANEL IS IMPROPER AND NOT WARRANTED .......................14
`
`V.
`
`CONCLUSION ............................................................................................15
`
`
`
`
`
`
`
`
`
`i
`
`
`
`
`
`Cases
`
`TABLE OF AUTHORITIES
`
`Amazon.com et al. v. Personalized Media Communications, LLC,
`IPR2014-01533, Paper 16 (April 20, 2015) ........................................................... 7
`
`Blue Calypso, LLC v. Groupon, Inc.,
`815 F.3d 1131 (Fed. Cir. 2016) .................................................................... passim
`
`Cornell Univ. v. Hewlett-Packard Co.,
`2008 U.S. Dist. LEXIS 39343 (N.D.N.Y May 14, 2008) ....................................12
`
`DeSilva v. DiLeonardi,
`181 F.3d 865 (7th Cir. 1999).................................................................................. 7
`
`FedEx Corp. v. Intellectual Ventures II LLC,
`IPR2017-00729, Paper 1 (PTAB July 17, 2018) .................................................14
`
`Friendfinder Networks, Inc. et al. v. WAG Acquisition, LLC,
`IPR2015-01033, Paper 10 (PTAB Dec. 28, 2016) ................................................ 2
`
`Groupon, Inc. v. Blue Calypso, LLC,
`CBM2013-00033, Paper 51 (Dec. 17, 2014) .......................................................10
`
`In re Cronyn,
`890 F.2d 1158 (Fed. Cir. 1989) ............................................................................15
`
`Jazz Pharm., Inc. v. Amneal Pharm., Inc.,
`No. 2017-1671, 2018 U.S. App. LEXIS 19268 (Fed. Cir. July 13,
`2018)....................................................................................................................... 4
`
`Power Integrations, Inc. v. Semiconductor Components Industries, LLC,
`IPR2017-01903, Paper 11 (PTAB July 26, 2018) ................................................. 7
`
`RedMed Ltd. v. Fischer & Paykel Healthcare Ltd.,
`2016-01723, Paper 11 (PTAB Mar. 9, 2017)......................................................... 4
`
`SK Hynix Inc., et al. v. Netlist, Inc.,
`IPR2017-00649, Paper 9 (PTAB Dec. 4, 2017) .................................................... 2
`
`
`
`ii
`
`
`
`
`
`Sophos Ltd. et al. v. Fortinet, Inc.,
`IPR2015-00910, Paper 10 (PTAB Oct. 26, 2015) ................................................. 2
`
`SRI Int’l, Inc. v. Internet Sec. Sys.,
`511 F.3d 1186 (Fed. Cir. 2008) ............................................................................14
`
`Telit Wireless Solutions Inc. et al. v. M2M Solutions LLC,
`IPR2016-00055, Paper 13 (PTAB May 24, 2016) ................................................. 2
`
`Voter Verified, Inc. v. Premier Election Sols., Inc.,
`698 F.3d 1374 (Fed. Cir. 2012) ..................................................................... 12, 13
`
`Watson Labs, Inc. vs. United Therapeutics, Corp.,
`IPR2017-01622, Paper 9 (Jan. 11, 2018) .............................................................11
`
`
`
`
`
`
`
`
`
`
`
`iii
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`
`GLOSSARY OF TERMS
`
`
`
`Term
`
`Definition
`
`“Decision”
`
`“Patent Owner”
`
`“Petitioner”
`
`“Petition” or “Pet.”
`
`“POPR”
`
`“Request” or (“Req.”)
`
`Decision Denying Institution of Inter
`Partes Review dated July 20, 2018.
`(Paper 7).
`
`IPA Technologies Inc.
`
`Google LLC.
`
`Petition for Inter Partes Review of
`Claims 1-27 of U.S. Patent No.
`6,757,718 dated January 12, 2018
`(Paper 1).
`
`Patent Owner’s Preliminary Response
`dated May 4, 2018 (Paper 6).
`
`Request for Rehearing dated July 24,
`2018 (Paper 8).
`
`
`iv
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`
`
`
`
`I.
`
`INTRODUCTION
`
`Petitioner’s Request for Rehearing should be denied. The Board’s Decision
`
`denying institution of inter partes review did not “overlook” or “misapprehend”
`
`any arguments. To the contrary, the Decision correctly understood and considered
`
`the limited arguments presented in the Petition. The Request is an improper effort
`
`that reinforces the Petition’s failure to make a threshold showing that Cheyer
`
`qualifies as a printed publication—an issue on which Petitioner bears the burden to
`
`establish a reasonable likelihood of success. As the Board frequently warns, a
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`request for rehearing is not an opportunity for a party to re-argue its case, nor is it
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`an opportunity to supplement the record and to raise issues for the first time. The
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`Request violates all of these principles and fails to show an abuse of discretion.
`
`II. THE BOARD DID NOT OVERLOOK OR MISAPPREHEND
`ARGUMENTS THAT WERE NOT MADE IN THE PETITION
`
`A.
`
`Petitioner is Not Permitted to Raise New Arguments in the Request
`
`The Petition contains no legal argument or authority concerning the alleged
`
`printed publication status of Cheyer (see Pet. at 3-4). Nevertheless, the Request
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`brazenly attempts to introduce nearly fifteen pages of new arguments concerning
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`Cheyer’s alleged public availability on the SRI website—significantly more than
`
`the four sentences in the Petition. Notably, the Request fails to identify where in
`
`the Petition these arguments were originally made. The Board consistently rejects
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`new arguments not raised or developed in the petition and should do so here. See
`
`
`
`1
`
`
`
`
`
`Telit Wireless Solutions Inc. et al. v. M2M Solutions LLC, IPR2016-00055, Paper
`
`13 at 3, 5 (PTAB May 24, 2016) (“A request for rehearing is not an opportunity for
`
`a party to add new arguments, or bolster prior arguments that were found
`
`unpersuasive.”…“Petitioner attempts, belatedly, to provide explanation we found
`
`lacking in the original Petition.”); Sophos Ltd. et al. v. Fortinet, Inc., IPR2015-
`
`00910, Paper 10 at 4-5 (PTAB Oct. 26, 2015) (“we could not have overlooked or
`
`misapprehended arguments or evidence not presented and developed by
`
`[Petitioner] in the Petition.”). Because the Board is limited to the information
`
`presented in the petition, a petition that does not stand on its own must be denied.
`
`See SK Hynix Inc., et al. v. Netlist, Inc., IPR2017-00649, Paper 9 at 7 (PTAB Dec.
`
`4, 2017) (“Petitioner in this proceeding is limited to the arguments it makes in the
`
`Petition in this IPR not arguments made in another Petition or interpretations of
`
`those arguments (made in another Petition) in the Decision to Institute in another
`
`IPR.”); see also Friendfinder Networks, Inc. et al. v. WAG Acquisition, LLC,
`
`IPR2015-01033, Paper 10 at 3 (PTAB Dec. 28, 2016) (denying petitioner’s request
`
`for rehearing and stating “[t]he party seeking to introduce the reference 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
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`thus most likely to avail themselves of its contents.” (quotation omitted)).
`
`B.
`
`The Record Does Not Establish Cheyer was Publicly Available on the
`SRI Website Before the Critical Date
`
`
`
`2
`
`
`
`
`
`Petitioner continues to incorrectly argue that mere technical accessibility is
`
`sufficient for public availability, contending that the “Decision never addresses
`
`Exhibit 1031 even though the public could access this version of Cheyer on the AI
`
`section of SRI’s website in 1997.” (Req. at 3.) As an initial matter, Petitioner
`
`asserts that the Decision does not address Exhibit 1031. On the contrary, the Board
`
`summarized Petitioner’s arguments concerning the SRI website and explicitly
`
`referenced “Ex. 1031” before rejecting those arguments. (Decision at 15.)
`
`Moreover, the Decision states 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
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`independently aware of the webpage, and (3) any evidence that a query of a search
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`engine before the critical date, using any combination of search words, would have
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`led to the reference appearing in the search results.” (Decision at 16 (citing Blue
`
`Calypso, LLC v. Groupon, Inc., 815 F.3d 1131, 1349 (Fed. Cir. 2016) (emphasis
`
`added).) Hence, the Board considered Petitioner’s argument and determined that
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`even if Cheyer were technically available somewhere on the Internet, in light of
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`Blue Calypso, Petitioner failed to carry its burden for at least the reasons listed
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`above. Nor does Petitioner challenge the legion of cases establishing that technical
`
`accessibility alone is insufficient to satisfy the printed publication requirement.
`
`
`
`3
`
`
`
`
`
`(POPR at 30-31.)
`
`More importantly, Patent Owner submitted evidence showing that the only
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`version of Cheyer on the Internet Archive relied on by Petitioner is from July 5,
`
`2017, decades after the critical date. (POPR at 27-28; Exs. 2001 and 2002.)
`
`Petitioner ignores this damaging evidence.1 For this reason, Petitioner’s reliance on
`
`Jazz Pharm., Inc. v. Amneal Pharm., Inc., No. 2017-1671, 2018 U.S. App. LEXIS
`
`19268 (Fed. Cir. July 13, 2018) is misplaced. Jazz involved materials posted on the
`
`FDA website months before the critical date—a finding that the patent owner
`
`“does not challenge on appeal.” Id. at *17. Here, in contrast, Petitioner failed to
`
`establish technical accessibility, much less public availability before the critical
`
`date. Likewise, Petitioner’s reliance on RedMed Ltd. v. Fischer & Paykel
`
`Healthcare Ltd., 2016-01723, Paper 11 at 9 (PTAB Mar. 9, 2017) is inapplicable.
`
`The reference in RedMed was a manual created by the patent owner, who
`
`subsequently argued that it did not know what the terms “April 2004” and “Date
`
`Issued” meant in its own materials. That argument was not credited “coming from
`
`
`1 Petitioner’s new contention that Cheyer was “two mouse clicks” from the URL
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`cited in Moran is unsupported. (Req. at fn 5.) As best as can be discerned, all of the
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`purported links to Cheyer on the Internet Archive point to the same FTP address
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`shown in Ex. 2001 captured on July 5, 2017. (POPR at 27-28; Exs. 2001, 2002.)
`
`
`
`4
`
`
`
`
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`the party that produced the Manual and presumably knows when it was published.”
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`Id. at 8. Here, the meaning of terms in Patent Owner’s own documents are not at
`
`issue. Further, neither Mr. Cheyer nor SRI are parties to this IPR.
`
`C. There are No Moran Arguments in the Petition to Overlook
`
`The word “Moran” appears once in the entire Petition where Petitioner
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`asserts Moran contains a citation to Cheyer and alleged instructions on how to
`
`retrieve it. (Pet. at 3-4.) However, there is no identification or explanation of the
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`alleged instructions in the Petition. Had the web address in Moran actually
`
`contained instructions for retrieving Cheyer, Petitioner surely would have included
`
`that information in the Petition. It did not. Indeed, Patent Owner has already shown
`
`that the “Also http://www.ai.sri.com/~oaa/ + ‘Bibliography’” address does not
`
`contain any directions on how to retrieve Cheyer. (POPR at 40-42.) Further,
`
`Petitioner appears to mistakenly believe that the word “Also” in Moran means
`
`“Available at.” It does not. The web address points to a webpage concerning the
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`Open Agent Architecture (i.e., “OAA which matches the address link), which is
`
`the subject of Moran. (Ex. 2003.) Thus, “Also” is meant to direct readers to
`
`additional information on OAA, not Cheyer.
`
`Given the non-existence of any substantive argument, the Decision properly
`
`rejected the notion that Moran establishes “that Cheyer was ‘widely available’”
`
`prior to the critical date for “several reasons.” (Decision at 14-15.) Petitioner fails
`
`
`
`5
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`
`
`
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`to address the deficiencies identified by the Board, and instead improperly inserts
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`new arguments under the guise that the Board “overlooked several points relating
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`to Moran.” (Req. at 5.)
`
`First, Petitioner faults the Board for inadvertently omitting Mr. Sangkyu as a
`
`co-author of Moran, but this does not impact the Decision’s observation that
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`Moran only shows that co-authors of Moran were aware of Cheyer, especially
`
`considering Moran was based on work done in part by a contract between SRI and
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`ETRI, Mr. Sangkyu’s employer. (Ex. at 1029 at 10.) Further, nothing supports
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`Petitioner’s contention that Moran was “disseminated to the public —including a
`
`POSITA.” Neither the Petition nor the Request proffer evidence regarding whether
`
`the Moran co-authors, including Mr. Sangkyu, satisfy the definition of a POSITA.
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`Next, Petitioner contends the Decision “overlooked Moran’s relevance to a
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`POSITA’s knowledge of and ability to find Cheyer in 1997.” (Req. at 5.) The
`
`Petition’s only POSITA discussion is limited to educational and experience
`
`criteria, not how or why a POSITA would have knowledge of Moran, or even if
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`Moran is a “printed publication.” (Pet. at 5-6.) There is no showing or argument
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`about the audience for Moran, or whether it is a reference that would be sought
`
`after, or found, by POSITAs. (POPR at 42 and Section VII.C.)
`
`D. There are No POSITA Arguments in the Petition to Overlook
`
`Petitioner criticizes the Decision for not “mention[ing] the capabilities of a
`
`
`
`6
`
`
`
`
`
`POSITA or address[ing] the level of skill in the art in its analysis.” (Req. at 7.)
`
`Petitioner essentially faults the Board for not making factual findings sua sponte
`
`regarding the capabilities of a POSITA and how those capabilities impact the
`
`printed publication analysis, if at all, even though Petitioner presented no such
`
`evidence. See Amazon.com et al. v. Personalized Media Communications, LLC,
`
`IPR2014-01533, Paper 16 at 6 (April 20, 2015) (“Petitioner should not expect the
`
`Board to search the record and cull together the evidence necessary to support
`
`Petitioner’s arguments.”); Cf., DeSilva v. DiLeonardi, 181 F.3d 865, 866-67 (7th
`
`Cir. 1999) (“A brief must make all arguments accessible to the judges, rather than
`
`ask them to play archeologist with the record.”)). The Board recently rejected
`
`similar arguments. See Power Integrations, Inc. v. Semiconductor Components
`
`Industries, LLC, IPR2017-01903, Paper 11 at 6 (PTAB July 26, 2018) (“whether it
`
`‘would be reasonable to conclude’ that certain facts exist, Petitioner did not make
`
`these arguments in its Petition, and it was not error to fail earlier to draw these
`
`conclusions, and we decline to draw these conclusions now.”).
`
`Aside from not being in the Petition, Petitioner’s argument that a computer
`
`scientist would be able to find an article on a website is deeply flawed. First, as
`
`discussed above, the web address in Moran does not lead to Cheyer. Second, the
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`Federal Circuit addressed a similar situation in Blue Calypso where it upheld the
`
`Board’s finding of no printed publication:
`
`
`
`7
`
`
`
`
`
`[E]ven if the published article would have led a reader to the UMBC
`
`Department website, there is no evidence that it would have led a
`
`reader to Dr. Ratsimor’s personal website, which arguably housed the
`
`link to Ratsimor. For example, there is no evidence that UMBC
`
`Department’s website provided a link to Dr. Ratsimor’s webpage.
`
`Blue Calypso, 815 F.3d at 1350. Similarly, even if a reader arrived at the SRI page
`
`in the Moran citation, there is no evidence that it would have led to Mr. Cheyer’s
`
`website that arguably housed the link to Cheyer and there is no evidence of what
`
`existed before the critical date.
`
`Finally, Petitioner argues archiving by the Internet Archive is evidence of
`
`accessibility. First, Petitioner continues to ignore Patent Owner’s evidence that the
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`Internet Archive captured Cheyer in July 2017. (POPR at 27-28; Exs. 2001 and
`
`2002.) Second, as mentioned in the POPR and above, technical accessibility alone
`
`is not sufficient. (POPR at 30-31.) Merely because a document may exist “on a
`
`webpage in one corner of the vast world wide web,” that alone is not sufficient to
`
`show public accessibility. Blue Calypso, 815. F.3d at 1349. Finally, the Federal
`
`Circuit has rejected the argument that crawling alone is enough to infer and
`
`establish public accessibility. Id. (“Groupon argues that an internet search engine
`
`would have been able to locate the report. But that argument does not allow us to
`
`automatically infer that Dr. Ratsimor’s webpage was “indexed . . . (through search
`
`
`
`8
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`
`
`
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`engines or otherwise)” and thus locatable by a search engine. … The record is
`
`devoid of any evidence that a query of a search engine before the critical date,
`
`using any combination of search words, would have led to Ratsimor appearing in
`
`the search results.”).
`
`III. THE DECISION FOLLOWS CONTROLLING PRECEDENT
`
`A. Moran Is Not a Research Aid for Cheyer
`
`Petitioner admits that for Moran to serve as a research aid for Cheyer,
`
`Moran must lead a POSITA to Cheyer. (Req. at 9.) But the Petition and Request
`
`fail to articulate how a POSITA would have used any alleged guidance from
`
`Moran to find Cheyer. Petitioner only repeats the Petition’s conclusory allegation
`
`that the Moran citation is “unrebutted evidence that Moran ‘includes instructions
`
`on how to retrieve Cheyer.’” (Req. at 10-11) (emphasis added). Far from
`
`unrebutted, Patent Owner demonstrated that the cited webpage does not contain
`
`Cheyer, contained no search functionality, contained no reference to a
`
`“bibliography” anywhere on the page, various links on that webpage indicated
`
`restrictions on public accessibility, and no links on that page that one would click
`
`in search of a “bibliography” contain a copy of Cheyer. (POPR at 40-42.)
`
`Petitioner suggests that even though Moran directs a POSITA to a location
`
`within SRI’s Artificial Intelligence website that does not contain Cheyer (i.e.,
`
`www.ai.sri.com/~oaa/), Moran’s citation to SRI’s AI Center website itself
`
`
`
`9
`
`
`
`
`
`(www.ai.sri.com) is sufficient for a POSITA to find Cheyer via an unknown
`
`webpage somewhere within the SRI AI website. (Req. at 7-8.) The Board and
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`Federal Circuit rejected Petitioner’s assertion in Blue Calypso, which concerned
`
`the public accessibility of a reference available via the publications page of a
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`graduate student’s webpage (www.csee.umbc.edu/~oratsi2/publications) located
`
`within the webserver of the Univ. Maryland, Baltimore County (UMBC) Comp.
`
`Science & Elect. Engineering Department. Groupon, Inc. v. Blue Calypso, LLC,
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`CBM2013-00033, Paper 51 at 24-29 (Dec. 17, 2014). The Board held that even if a
`
`published article directed a POSITA to the department webserver (i.e.,
`
`www.csee.umbc.edu), this would not point a POSITA to a particular reference at a
`
`particular webpage within the department website when “insufficient evidence has
`
`been presented to establish the Department’s webserver contained an index or
`
`catalog, or any other tools for finding the [reference] based on the subject matter
`
`[or any other search indices] of the [reference].” Id. at 29; Blue Calypso, 815 F.3d
`
`at 1349 (Even if a published article encouraged a POSITA, “to do additional
`
`research on the UMBC Department’s website…there is no evidence that an
`
`interested party could navigate from that website to [the personal page], whether
`
`through a direct link or a chain of links, to access the [reference].”)
`
`Accordingly, Blue Calypso held that without evidence of search or
`
`navigation aids, a publication directing a POSITA to the computer department
`
`
`
`10
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`
`
`
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`website does not disclose or direct a POSITA to an article available within that
`
`website at a webpage otherwise unknown to POSITAs. Id. By the same logic,
`
`without evidence of search or navigation aids, Moran’s disclosure of SRI’s AI
`
`Center’s website (www.ai.sri.com) does not disclose or direct a POSITA to
`
`Cheyer, which is presently available at a location otherwise unknown to POSITAs
`
`(i.e., www.ai.sri.com/~cheyer/mmap.html). (Ex. 1030.) Even if Petitioner had (i)
`
`identified specific links or search aids within Moran or the SRI AI website that
`
`would have directed a POSITA to the specific webpage containing Cheyer,
`
`Petitioner needed to additionally show (ii) that any such search aids or links were
`
`available prior to the critical date, and (iii) that a POSITA could have used such
`
`aids or links to locate Cheyer using “reasonable diligence.” See Watson Labs, Inc.
`
`vs. United Therapeutics, Corp., IPR2017-01622, Paper 9 at 19-22 (Jan. 11, 2018)
`
`(denying institution as to a reference on European Union website where search
`
`tools were not shown to exist prior to the critical date, and where the search tools,
`
`to find a relevant reference, needed to be toggled to find only non-final directives).
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`The Petition and Request failed to show even one of the three requirements.
`
`Blue Calypso’s statement that a published article’s express citation to a
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`potentially invaliding reference “would similarly provide the necessary guidance,”
`
`does not affect or cure Moran’s incomplete and ineffectual citation to Cheyer
`
`because (i) just shortly before this statement, the Federal Circuit stated that “an
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`11
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`
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`adequate road map…should at least provide enough details from which…an
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`interested party is reasonably certain to arrive at the destination: the potentially
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`invalidating reference,” (ii) immediately before the statement, the Federal Circuit
`
`discussed the Bruckelmyer case, wherein it was undisputed that an issued patent
`
`assumes the existence of a corresponding patent application, and (iii) immediately
`
`after the statement, the Federal Circuit cited Cornell Univ. v. Hewlett-Packard Co.,
`
`which found that a published article was a research aid to an otherwise unpublished
`
`thesis when the citation included: “the thesis title, author name, institution,
`
`department, and even geographic location are provided, giving any reader the tools
`
`he would need to access the thesis.” Blue Calypso, 815 F.3d at 1350; Cornell Univ.
`
`v. Hewlett-Packard Co., 2008 U.S. Dist. LEXIS 39343, at *20-21 (N.D.N.Y May
`
`14, 2008). Since the Petition did not show that Moran’s citation to Cheyer
`
`provided the tools needed to access Cheyer, Moran is not a research aid.
`
`B.
`
`The Decision Properly Observed Petitioner’s Failure to Adduce
`Evidence of Indexing
`
`The Federal Circuit has repeatedly stated that “indexing is no more or less
`
`important in evaluating the public accessibility of online references than for those
`
`fixed in more traditional, tangible media.” Voter Verified, Inc. v. Premier Election
`
`Sols., Inc., 698 F.3d 1374, 1380 (Fed. Cir. 2012); Blue Calypso, 815 F.3d at 1349
`
`(same). The existence of a document, alone, “in one corner of the vast world wide
`
`web” is not sufficient to show that an interested researcher would be able to locate
`
`
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`12
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`
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`it without additional tools. Blue Calypso, 815 F.3d 1331 at 1349. Evidence of
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`proper indexing during the relevant timeframe allows one to infer that the
`
`reference in question could have been located. Thus, the Decision properly
`
`considered Petitioner’s lack of evidence in this regard.
`
`Relying on Voter Verified, Petitioner argues indexing is not an absolute
`
`requirement. In Voter Verified, the Federal Circuit did not require evidence of
`
`indexing where there was “unrebutted testimony in the record indicated that (1) the
`
`Risks Digest was well known to the community interested in [electronic voting
`
`technology], and by 1999 the Risks Digest contained more than 100 articles
`
`relating to electronic voting; (2) all submissions for publication in the Risks Digest
`
`are treated by the community as public disclosures; and (3) users can freely and
`
`easily copy Risks Digest content.” Voter Verified, 698 F.3d at 1380-81. By
`
`contrast, the Petition presents no testimonial evidence that (1) any portion of the
`
`SRI website was well-known to the interested community, (2) that submissions
`
`were treated like public disclosures, (3) the website contained articles relating to
`
`the relevant technology, or (4) that users could freely copy materials. Thus, the
`
`record does not permit the Board to ignore the Petition’s lack of indexing evidence.
`
`C. Evidence of Downloading is Relevant to Dissemination and was
`Properly Considered by the Board
`
`Contrary to Petitioner’s assertion, the Decision does not suggest evidence of
`
`downloading is a requirement to prove printed publication. “A given reference is
`
`
`
`13
`
`
`
`
`
`‘publicly accessible’ upon a satisfactory showing that such document has been
`
`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.” SRI Int’l, Inc. v. Internet Sec. Sys., 511 F.3d 1186, 1194 (Fed. Cir. 2008).
`
`Downloading is a form of dissemination, and the absence of evidence in the
`
`Petition supports the conclusion that Petitioner failed to meet its burden.
`
`Petitioner’s attempt to draw parallels to SRI (Req. at 13) is unavailing
`
`because, as shown by Patent Owner, the record shows, at best, that Cheyer may
`
`have been available on the SRI website after July 5, 2017. (POPR at 26-38.)
`
`IV. PETITIONER’S “SUGGESTION” FOR REHEARING BY AN
`EXPANDED PANEL IS IMPROPER AND NOT WARRANTED
`
`“An expanded panel is not favored and ordinarily will not be used.” See Std.
`
`Op. Proc. 1, Rev. 14, Section III. Only a judge, merits panel or an interlocutory
`
`panel may suggest the need for an expanded panel. Id., at Section III. C-D. Thus,
`
`the Board’s “governing statutes and regulations do not provide for parties to
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`request, or panels to authorize, an expanded panel,” making Petitioner’s request
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`improper. See FedEx Corp. v. Intellectual Ventures II LLC, IPR2017-00729, Paper
`
`1 at 3 (PTAB July 17, 2018).
`
`As shown above, the Decision complies with binding Federal Circuit
`
`precedent and numerous decisions by the Board. (See POPR at Section VII.)
`
`Further, the Federal Circuit has said “[t]he decision whether a particular reference
`
`
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`14
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`
`
`
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`is a printed publication must be approached on a case-by-case basis.” In re Cronyn,
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`890 F.2d 1158, 1161 (Fed. Cir. 1989) (internal quote omitted). Petitioner’s
`
`decision to not submit arguments and evidence in its Petition on a fundamental
`
`issue has resulted in a record devoid of factual issues or arguments to review.2
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`Petitioner’s “Internet Archive” rationale is a red herring because (1) the
`
`Petition contained no evidence supporting the arguments raised in the Request, (2)
`
`Internet Archive evidence in the record actually contradicts Petitioner’s position
`
`(see Section II(B), supra; POPR at 38-42), and (3) the cases cited by Petitioner
`
`were supported by declarations from Internet Archive officials, which is not the
`
`case here. See Elec. Arts Inc. v. White Knuckle IP, LLC, IPR2015-01595, Ex. 1010;
`
`Creston Elecs. Inc. v. Intuitive Building Controls, Inc., IPR2015-01379, Ex. 1009.
`
`V. CONCLUSION
`
`Petitioner’s rehearing request should be denied because it fails to identify any
`
`issues the Board misapprehended or overlooked or any abuse of discretion.
`
`
`
`
`2 The new argument regarding U.S. Patent 6,144,989 is unavailing because it is not
`
`in the Petition and its earliest priority date is after the critical date. (Req. at fn 5.)
`
`Nor does an inventor submitting his own work after the filing of his application
`
`show that the reference was publically available before the critical date. (Id.)
`
`
`
`15
`
`
`
`
`
`
`
`Dated: August 14, 2018
`
`
`Respectfully Submitted,
`
`/Steven W. Hartsell/
`Steven W. Hartsell (Reg. No. 58,788)
`SKIERMONT DERBY LLP
`1601 Elm St., Ste. 4400
`Dallas, Texas 75201
`P: 214-978-6600/F: 214-978-6601
`Lead Counsel for Patent Owner
`
`Alexander E. Gasser (Reg. No. 48,760)
`Sarah E. Spires (Reg. No. 61,501)
`SKIERMONT DERBY LLP
`1601 Elm St., Ste. 4400
`Dallas, Texas 75201
`P: 214-978-6600/F: 214-978-6621
`Back-Up Counsel for Patent Owner
`
`16
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. § 42.6(e), I certify that I caused to be served on the
`
`counsel for Patent Owner a true and correct copy of the foregoing Patent Owner’s
`
`Preliminary Response Under 35 U.S.C. § 313 and 37 C.F.R. § 42.107, by
`
`electronic means on August 14, 2018 at the following addresses of record:
`
`Daniel Zeilberger (65,349)
`PAUL HASTINGS LLP
`875 15th Street NW
`Washington, DC 20005
`PH-Google-IPA-IPR@paulhastings.com
`Telephone: 202-551-1993
`Facsimile: 202-551-0493
`Back-Up Counsel for Petitioner
`
`Arvind Jairam (62,759)
`PAUL HASTINGS LLP
`875 15th Street NW
`Washington, DC 20005
`PH-Google-IPA-IPR@paulhastings.com
`Telephone: 202-551-1887
`Facsimile: 202-551-0387
`Back-Up Counsel for Petitioner
`
`Respectfully Submitted,
`
`/Steven W. Hartsell/
`Steven W. Hartsell (Reg. No. 58,788)
`Lead Counsel for Patent Owner
`
`Naveen Modi (46,224)
`PAUL HASTINGS LLP
`875 15th Street NW
`Washington, DC 20005
`PH-Google-IPA-IPR@paulhastings.com
`Telephone: 202-551-1990
`Facsimile: 202-551-0490
`Lead Counsel for Petitioner
`
`
`
`
`
`Dated: August 14, 2018
`
`
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