`
`UNITED STATES PATENT AND TRADEMARK OFFICE
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`_________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_________________
`
`GOOGLE LLC
`Petitioner
`
`v.
`
`IPA TECHNOLOGIES INC.
`Patent Owner
`
`_________________
`
`IPR2018-00476
`Patent No. 6,757,718
`_________________
`
`PETITIONER’S REPLY IN SUPPORT OF
`ITS REQUEST FOR REHEARING AND
`SUGGESTION FOR REHEARING BY AN EXPANDED PANEL
`
`
`
`IPR2018-00476
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`TABLE OF CONTENTS
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`I.
`IPA Ignores the Evidence, Including Exhibit 1031 ......................................... 1
`IPA Ignores the Law, Including the GoPro Decision ..................................... 3
`II.
`IPA Is Incorrect on the Rules for Expanded Panels ........................................ 4
`III.
`IV. Google Did Not Raise New Arguments on Rehearing .................................... 5
`V.
`Conclusion ....................................................................................................... 5
`
`
`
`
`
`
`
`i
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`
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`TABLE OF AUTHORITIES
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`IPR2018-00476
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` Page(s)
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`Cases
`Blue Calypso, LLC v. Groupon, Inc.,
`815 F.3d 1331 (Fed. Cir. 2016) ............................................................................ 2
`Electronic Arts Inc. v. White Knuckle IP, LLC,
`IPR2015-01595, Paper No. 38 (Jan. 12, 2017) ..................................................... 2
`FedEx Corp. v. Intellectual Ventures II LLC,
`IPR2017-00729, Paper No. 40 (July 17, 2018) .................................................... 5
`GoPro Inc. v. Contour IP Holding LLC,
`Nos. 2017-1894, 2017-1936, 2018 WL 3596007 (Fed. Cir. July 27,
`2018) ................................................................................................................. 3, 4
`SDI Technologies, Inc. v. Bose Corp.,
`IPR2014-00343, Paper No. 32 (June 11, 2015) .................................................... 1
`SRI International Inc. v. Internet Sec. Sys., Inc.,
`511 F.3d 1186 (Fed. Cir. 2008) ............................................................................ 4
`Other Authorities
`Patent Trial and Appeal Board, Standard Operating Procedure 1, Rev.
`14 ........................................................................................................................... 5
`
`
`
`
`
`
`
`ii
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`
`
`IPR2018-00476
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`Petitioner Google LLC (“Google”) submits this reply to Patent Owner IPA
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`Technologies Inc.’s (“IPA”) opposition (“Opposition”) to Google’s Request for
`
`Rehearing, as authorized by the Board in its August 24, 2018 e-mail.
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`I.
`
`IPA IGNORES THE EVIDENCE, INCLUDING EXHIBIT 1031
`IPA’s Opposition does not address one of the two core points of Google’s
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`Request for Rehearing—that Cheyer was publicly available on the SRI website in
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`substantially identical form as both a PDF article (Ex. 1030) and as a webpage (Ex.
`
`1031). (See, e.g., Reh’g Req. at 1, 3-6; Pet. (Paper No. 1) at 3-4.) IPA contends
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`that “the only version of Cheyer on the Internet Archive relied on by Petitioner is
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`from July 5, 2017.” (Reh’g Opp’n at 4.) However, IPA does not—and cannot—
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`dispute that Exhibit 1031 is an archived copy of Cheyer or that it was available on
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`SRI’s website as early as 1997, made evident by the Internet Archive URL on the
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`face of Exhibit 1031. (Reh’g Req. at 3; Pet. at 4 (citing SDI Techs., Inc. v. Bose
`
`Corp., IPR2014-00343, Paper No. 32 at 14 (June 11, 2015)); Ex. 1031 at 1.)
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`Rather than address the webpage version of Cheyer that was indisputably
`
`available pre-critical date, IPA focuses on the purported difficulty in retrieving the
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`PDF version of Cheyer linked on the SRI website, arguing that the link to
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`download Cheyer only worked as of 2017. (See Reh’g Opp’n at 4-5.) But even as
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`to this argument, IPA has no response to the fact that Exhibit 1030 contained a link
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`to download Cheyer in 1997. In any event, however, IPA’s Opposition fails to
`
`
`
`1
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`
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`IPR2018-00476
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`address Google’s main contention regarding the webpage version of Cheyer: “[A]
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`full viewable copy of Cheyer was made available at SRI’s website at least as early
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`as 1997.” (Reh’g Req. at 3 (quoting Pet. at 4).)
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`In addition, as Google explained in its Petition and its Request for
`
`Rehearing, not only has “[d]ocumentary evidence generated by the Wayback
`
`Machine generally [] been accepted as prior art,” Elec. Arts Inc. v. White Knuckle
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`IP, LLC, IPR2015-01595, Paper No. 38 at 11-12 (Jan. 12, 2017), but published
`
`articles such as Moran1 (Ex. 1029) can also establish the public availability of
`
`other references (such as Cheyer) when “they provide a skilled artisan with a
`
`sufficiently definite roadmap leading to” the other reference. (Pet. at 3-4; Reh’g
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`Req. at 1-2, 9-11.) See Blue Calypso, LLC v. Groupon, Inc., 815 F.3d 1331, 1350
`
`(Fed. Cir. 2016). While IPA asserts that it is “deeply flawed” for Google to suggest
`
`that “a computer scientist would be able to find an article on a website” (Reh’g
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`Opp’n at 7)2, this is the type of issue that can and should be developed during trial.
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`For instance, IPA argues that “nothing supports Petitioner’s contention that Moran
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`was ‘disseminated to the public —including a POSITA.’” (Reh’g Opp’n at 6.) Yet
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`1 Moran is entitled “Multimodal User Interfaces in the Open Agent Architecture”
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`which is the subject of the ’718 patent. (Ex. 1029 at 3; Ex. 1002 at ¶¶ 39, 41.)
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`2 Although IPA makes this assertion in a section of its Opposition regarding a
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`POSITA, IPA does not dispute the definition of a POSITA. (Reh’g Opp’n at 6-9.)
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`
`
`2
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`
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`IPR2018-00476
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`Google submitted evidence of such (see, e.g., Pet. at 3 (citing Ex. 1029 at 1
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`(showing that Moran was published in the proceedings of the “1997 International
`
`Conference on Intelligent User Interfaces,” a pre-critical date conference in
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`January 1997), 2 (showing that Moran was assigned a 1997 copyright date,
`
`assigned an ISBN number, was available for order, was received at MIT’s libraries
`
`by March 14, 1997, and granted “permission to make digital or hard copies …
`
`without fee”))), and the Board did not find otherwise in its Institution Decision.3
`
`II.
`
`IPA IGNORES THE LAW, INCLUDING THE GOPRO DECISION
`Several days after Google filed its Request for Rehearing, but before IPA
`
`filed its Opposition, the Federal Circuit issued its decision in GoPro Inc. v.
`
`Contour IP Holding LLC, Nos. 2017-1894, 2017-1936, 2018 WL 3596007 (Fed.
`
`Cir. July 27, 2018). In GoPro, the Federal Circuit vacated and remanded a Board
`
`decision finding a product catalog was not a printed publication, noting “[t]he case
`
`law regarding accessibility is not as narrow as the Board interprets it.” Id. at *3.
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`The Federal Circuit explained that whether a publication was publicly
`
`accessible does not hinge on whether there was “evidence that someone ordinarily
`
`skilled in the art actually attended [a conference].” See id. at *4 (emphasis added).
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`3 While Moran is not an asserted reference here, the question of whether Moran
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`qualifies as a printed publication is explicitly at issue in other IPRs. See, e.g.,
`
`IPR2018-00734, -00791, -00792, -00793, -00794.
`
`
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`3
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`
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`IPR2018-00476
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`Rather, the Federal Circuit emphasized that the “reasonable diligence” required
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`focuses on whether a skilled artisan “should have been aware” of the conference.
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`Id. (emphasis added). Contrary to this standard, the Decision here relied on Patent
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`Owner’s arguments about whether Cheyer was actually downloaded or viewed:
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`“There is no evidence that whatever version of Cheyer (if any) was linked on the
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`SRI website was ever downloaded, or that a search engine could have been used to
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`find it.” (Decision at 16 (emphasis added).) Neither IPA’s argument nor the
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`Decision addresses the controlling question of whether a skilled artisan—here, a
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`computer scientist or engineer (Reh’g Req. at 6-8; Ex. 1002 at ¶ 14)—exercising
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`reasonable diligence should have been aware of SRI’s website where Cheyer was
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`readily available to the public. Applying the standard as the Federal Circuit did in
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`GoPro, a skilled artisan exercising “reasonable diligence” looking for information
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`on multi-modal interfaces would have investigated SRI’s website and been capable
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`of finding Cheyer, especially given Moran’s express direction to that same website
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`and SRI’s status as a “well-known institution.” See SRI Int’l Inc. v. Internet Sec.
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`Sys., Inc., 511 F.3d 1186, 1197 (Fed. Cir. 2008).
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`Thus, GoPro further supports Google’s contention that the Board
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`misapprehended or overlooked key facts supporting Cheyer’s public accessibility.
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`III.
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`IPA IS INCORRECT ON THE RULES FOR EXPANDED PANELS
`In its Request for Rehearing, “Google suggest[ed] that an expanded panel”
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`
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`4
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`
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`IPR2018-00476
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`consider its request. (Reh’g Req. at 14.) This suggestion is explicitly supported by
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`this Board’s operating procedures, which specify “a party in a[n] AIA Review may
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`suggest the need for an expanded panel.” Std. Op. Proc. 1, Rev. 14, Section III.C.
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`IPA argues that Google’s suggestion was improper (Reh’g Opp’n at 14),
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`citing FedEx Corp. v. Intellectual Ventures II LLC, IPR2017-00729, Paper No. 40
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`at 3 (July 17, 2018).4 IPA’s analysis of FedEx is flawed. In FedEx, the Board
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`explained that “governing statutes and regulations do not provide for parties to
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`request an expanded panel.” FedEx, IPR2017-00729, Paper No. 40 at 3 (emphasis
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`added). But just a few sentences later, the Board explained that “[t]he Chief Judge
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`may consider panel expansions upon a ‘suggestion’ from a judge, panel, or party.”
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`Id. (emphasis added).
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`IV. GOOGLE DID NOT RAISE NEW ARGUMENTS ON REHEARING
`IPA argues that Google’s Request for Rehearing contains “new arguments”
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`because it cites new legal authority. (Reh’g Opp’n at 1-2.) But any newly cited
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`cases only went to help explain why the Decision misapprehended or overlooked
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`reasons why Cheyer qualifies as a printed publication.
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`V. CONCLUSION
`For the reasons above as well as those in its Request for Rehearing, Google
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`respectively requests reconsideration and institution of trial in this proceeding.
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`4 IPA incorrectly cites Paper No. 1. Paper No. 40 is the Board’s rehearing decision.
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`5
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`
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`Dated: August 31, 2018
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`
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`
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`Respectfully submitted,
`
`By: /Naveen Modi/
` Naveen Modi (Reg. No. 46,224)
`
`
`
`
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`IPR2018-00476
`
`
`
`6
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`
`
`IPR2018-00476
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`CERTIFICATE OF SERVICE
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`I hereby certify that on August 31, 2018, I caused a true and correct copy of
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`the foregoing Petitioner’s Reply in Support of Its Request for Rehearing and
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`Suggestion for Rehearing by an Expanded Panel to be served on the Patent Owner
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`at the following counsel of record:
`
`Steven W. Hartsell
`Alexander E. Gasser
`Sarah E. Spires
`Skiermont Derby LLP
`IPA_SDTeam@skiermontderby.com
`
`
`
`
`
`By: /Naveen Modi/
` Naveen Modi (Reg. No. 46,224)
`
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