`571-272-7822
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`Paper No. 12
`Entered: December 20, 2018
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`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 B1
`____________
`
`
`Before DEBRA K. STEPHENS, THOMAS L. GIANNETTI, and
`BART A. GERSTENBLITH Administrative Patent Judges.
`
`STEPHENS, Administrative Patent Judge.
`
`
`DECISION
`Denying Petitioner’s Request for Rehearing
`37 C.F.R. § 42.71
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`IPR2018-00476
`Patent 6,757,718 B1
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`INTRODUCTION
`
`Google LLC (“Petitioner”) filed a Petition requesting institution of
`inter partes review of claims 1–27 of U.S. Patent No. 6,757,718 (Ex. 1001
`(“’718 Patent”)). 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 ’718 Patent and therefore did not qualify as prior art under
`35 U.S.C. § 102(b) (Dec. 10–17).
`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 1–2, 8–15). 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
`
`
`1 Adam Cheyer and Luc Julia, Multimodal Maps: An Agent-based Approach,
`SRI International (dated June 9, 1995).
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`2
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`IPR2018-00476
`Patent 6,757,718 B1
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`panel, 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.).
`
`The Petition
`
`The Petition presents four grounds of challenge under 35 U.S.C.
`§ 103(a) (Pet. 2). All four grounds rely on Cheyer as the principal reference
`(id.). The Petition relies on Exhibit 1012 as representing Cheyer, throughout
`its obviousness analysis (id. at 2–3). 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. 3–4). The discussion appears
`directed to Exhibit 1012 (id.). The Petition relies on the June 1995 date on
`the first page of Exhibit 1012 (id. at 3 (citing Ex. 1012, 1)).
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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. at 3). The Petition further contends a paper by Moran
`(Ex. 1029) includes a citation to Cheyer and instructions on how to retrieve
`Cheyer (Pet. 3). 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 4 (citing Ex. 1030)). 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. 1021, 1–
`22)).
`
`The Decision Denying Institution
`
`The Decision Denying Institution addresses each of the Petition’s
`contentions regarding the public accessibility of Cheyer (Dec. 8–17). 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 14–15).
`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 (Dec. 14–15). The Decision further
`points out the discrepancy between the June 1995 date of Exhibit 1012 and
`the Lecture Notes version (Exhibit 1032) (id.). 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
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`Exhibit 1032 Lecture Notes version) were disseminated at the CMC/95
`conference” (id. at 12).
`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 15).
`Finally, the Decision addresses the SRI International web page (id. at
`15–17). 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 16).
`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.
`
`
`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
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`(id. at 3–6). As noted supra, this argument was considered at length in the
`Institution Decision and found insufficient (Dec. 15–17).
`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. 3–4)
`(Req. Reh’g 1). As discussed below, both 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.). We considered Exhibit 1030 in our
`Decision Denying Institution and concluded it was not persuasive proof of
`public accessibility of Cheyer (Dec. 15–16). 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 16–17 (citing Prelim. Resp. 28–29)).
`Petitioner has identified nothing that was overlooked or misapprehended in
`reaching that conclusion.
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`In its Rehearing Request, Petitioner contends 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 regarding the level of ordinary skill as 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,
`Petitioner identifies no support in the record for the assertion that Cheyer
`was actually available (see Ex. 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 Institution Decision, but found it unconvincing (Dec. 15–
`16). Petitioner proffered no testimony or other evidence (1) establishing that
`this version of Cheyer was publicly accessible on SRI’s web site or
`(2) comparing the portions of this version with those portions in
`Exhibit 1012 on which Petitioner relied in their obviousness grounds.
`
`
`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.
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`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
`“research aid” (id. at 9).
`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. 14–15 (citing Ex. 1029, 10 n.2)). 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 (id. at 15; see Pet. 3)).
`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 this page and how or if an ordinarily
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`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. 15). We also explained that this
`latter showing is of special importance here because Petitioner
`acknowledges that there were several different versions of Cheyer (id. at 12
`(citing Pet. 3)).
`
`
`
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`Petitioner’s Contention that “Controlling Case Law” Was
`Misapprehended
`In this alleged reason for rehearing, Petitioner 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. 14–15).
`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
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`recognizes, to be adequate, the roadmap must provide enough detail that an
`interested party “is reasonably certain to arrive at the destination” (id. at
`1350). In our Decision, we concluded Moran failed to do so (Dec. 15
`(“[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 that the web address in Moran would
`have led to Cheyer (Opp. 5). That Petitioner disagrees with our conclusion
`does not 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 website3 (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
`
`
`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.
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`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
`accessibility (id. at 12). 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. 16).
`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 (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.
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`(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.
`
`
`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,
`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.
`
` 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.
`
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` ORDER
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`Based on the foregoing, it is hereby:
`ORDERED that Petitioner’s Request for Rehearing is denied.
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`IPR2018-00476
`Patent 6,757,718 B1
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`PETITIONER:
`
`Naveen Modi
`Daniel Zeilberger
`Arvind Jairam
`PAUL HASTINGS LLP
`naveenmodi@paulhastings.com
`danielzeilberger@paulhastings.com
`arvindjairam@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
`
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