Trials@uspto.gov
`571-272-7822
`
`PUBLIC VERSION
`
`Paper 58
`Date: April 30, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`FIDELITY INFORMATION SERVICES, LLC,
`Petitioner,
`
`v.
`
`GROOVE DIGITAL, INC.,
`Patent Owner.
`____________
`
`IPR2019-00193
`Patent 9,454,762 B2
`____________
`
`Before BRYAN F. MOORE, NORMAN H. BEAMER, and
`STACY B. MARGOLIES, Administrative Patent Judges.
`
`BEAMER, Administrative Patent Judge.
`
`JUDGMENT
`Final Written Decision
`Determining Some Challenged Claims Unpatentable
`Denying Petitioner’s Motion to Exclude
`35 U.S.C. § 318(a)
`
`
`571-272-7822
`
`PUBLIC VERSION
`
`Paper 58
`Date: April 30, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`FIDELITY INFORMATION SERVICES, LLC,
`Petitioner,
`
`v.
`
`GROOVE DIGITAL, INC.,
`Patent Owner.
`____________
`
`IPR2019-00193
`Patent 9,454,762 B2
`____________
`
`Before BRYAN F. MOORE, NORMAN H. BEAMER, and
`STACY B. MARGOLIES, Administrative Patent Judges.
`
`BEAMER, Administrative Patent Judge.
`
`JUDGMENT
`Final Written Decision
`Determining Some Challenged Claims Unpatentable
`Denying Petitioner’s Motion to Exclude
`35 U.S.C. § 318(a)
`
`
`
`
`
`IPR2019-00193
`Patent 9,454,762 B2
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`
`I.
`INTRODUCTION
`On November 8, 2018, Fidelity Information Services, LLC
`(“Petitioner”) filed a Petition (Paper 2, “Pet.”) to institute an inter partes
`review of claims 2, 4–6, 10–13, 15–17, 21, 23, 26–28, 32, and 34 of U.S.
`Patent No. 9,454,762 B2 (Ex. 1001, “the ’762 patent”). On February 21,
`2019, Groove Digital, Inc. (“Patent Owner”) filed a Preliminary Response
`(Paper 6, “Prelim. Resp.”). Pursuant to a March 7, 2019 Order (Paper 7),
`Petitioner filed a Reply to the Preliminary Response (Paper 8), and Patent
`Owner filed a Sur-Reply (Paper 10).
`On May 3, 2019, applying the standard set forth in 35 U.S.C.
`§ 314(a), which requires demonstration of a reasonable likelihood that
`Petitioner would prevail with respect to at least one challenged claim, we
`instituted an inter partes review of the challenged claims. Paper 11
`(“Institution Dec.”). In the Institution Decision, we determined Petitioner
`demonstrated a reasonable likelihood that it would prevail as to the
`challenged claims, and we instituted trial on all claims and all grounds in the
`Petition. Institution Dec. 24.
`Following institution, Patent Owner filed a Response to the Petition
`(Paper 20, “PO Resp.”), Petitioner filed confidential and redacted versions of
`a Reply (Papers 34 and 37, “Pet. Reply”), and Patent Owner filed
`confidential and redacted versions of a Sur-Reply (Paper 42 and 43, “PO
`Sur-Reply”).1 In addition, Petitioner filed a Motion to Exclude a portion of
`the declaration of Samuel Gaidemak, one of the inventors of the ’762 patent.
`
`
`1 Citations to Petitioner’s Reply and Patent Owner’s Sur-Reply are to the
`confidential versions.
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`2
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`Paper 47 (directed to Ex. 2030 ¶ 46). Patent Owner filed an Opposition to
`the Motion (Paper 50), and Petitioner filed a Reply (Paper 52).
`On January 9, 2020, Patent Owner’s request for live testimony of Mr.
`Gaidemak during the oral hearing was granted. Paper 45. The oral hearing
`and inventor testimony took place on February 4, 2020. Confidential and
`non-confidential versions of the Transcript are included in the record as
`Papers 55 and 54, respectively.
`After considering the parties’ arguments and supporting evidence, we
`determine that Petitioner has proven by a preponderance of the evidence that
`claims 15–17, 21, 23, 26–28, 32, and 34 of the ’762 patent are unpatentable,
`but has not proven by a preponderance of the evidence that claims 2, 4–6,
`and 10–13 of the ’762 patent are unpatentable. 35 U.S.C. § 316(e) (2018).
`
`BACKGROUND
`
`II.
`A. The ’762 Patent
`The ’762 patent, titled “System And Method For The Delivery Of
`Content To A Networked Device,” issued September 27, 2016, from an
`application filed March 17, 2006, and claims priority from provisional
`application filed March 18, 2005. Ex. 1001, codes (54), (45), (22), (60).
`The parties have not submitted a copy of the March 18, 2005 provisional
`application; a copy, annotated with consecutive page numbers, has been
`added to the record. Ex. 3001.
`The ’762 patent describes distributing an advertisement to end users
`on a network by displaying an “applet (also known as an alert or
`notification)” on the desktop of a networked user device such as a computer,
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`PDA, or cell phone. Id. at 1:13–16, 5:16–18, 6:23–26. An example of such
`an applet is illustrated in Figure 1, reproduced below.
`
`
`Figure 1 illustrates virtual desktop 4 with applet 2 displayed in the lower
`right hand corner, containing product or brand logo 10. Id. at 5:25–28,
`5:54–56. Exemplary applets are described:
`Each applet may be designed to be uniform in nature and
`roughly 1.5 x 1.5 in. area, or alternatively, may be uniquely
`shaped or sized. . . .
`. . . .
`Although the applet does present itself to the user periodically,
`it is non-invasive in the sense that a user knows that it will be
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`presented, but does not take over the cursor or interrupt the
`user’s interaction with the active application.
`. . . .
`[The user] is merely notified by a non-obtrusive small sized
`applet 2 that is deployed in a predetermined location on the
`virtual desktop 4 and that does not interrupt that user's activities
`on the user’s device. . . .
`Id. at 3:16–18, 3:41–44, 6:23–26.
`The applets are presented to the user by means of an “applet
`application” residing on the user’s networked device, which is downloaded
`by a participating user via a network connection from a server (referred to as
`a “campaign deployment and tracking system” (CPT System 40 in Figure 3))
`that administers the advertisement distribution campaign. Id. at Fig. 3, 4:19–
`22, 6:27–31, 6:63–7:1. After the applet application is installed on the user
`device, specific advertisements and the like may be deployed from the server
`to the applet application and displayed in an applet — the particular selected
`advertisement is based on matching geographic and demographic
`information in a user database with advertisement delivery criteria — i.e.,
`“segmentation requirements,” such as zip code. Id. at Fig. 3 (“Match &
`Deploy System 62”), 3:25–36, 5:65–6:3, 11:17–20.
`While an applet is deployed, a user may select it (e.g., by “clicking”
`on it), thereby launching a browser with additional advertising content
`related to the applet, and optionally dismissing the displayed applet. Id. at
`Fig. 2, 3:55–63, 6:38–48.
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`B. Representative Claim
`Challenged claim 2 is an example of the subject matter of the
`challenged claims and is reproduced below, together with independent
`claim 1, from which it depends.2
`1. A system for delivering information to a networked device
`of a user, the system comprising:
`a microprocessor running a software application for
`delivering an applet application to the networked
`device and managing the delivery of the applet
`application to the networked device, wherein the
`applet application passively deploys one or more
`applets at a time of deployment,
`wherein the applet application provides for
`delivery of content to the networked device
`and a display of the content in a
`predetermined portion of a user display that
`is less than an entire display of the
`networked device, by the one or more
`applets,
`wherein the one or more applet is configured to
`deploy at least one of independent of or in
`conjunction with an internet browser
`window,
`wherein an internet browser is configured to
`deploy subsequent to deployment of the one
`or more applets based on at least one action
`or inaction of the user,
`wherein at least one of the applets is configured to
`become idle upon deployment of the internet
`browser, and
`
`2 Claim 1 is not challenged in this proceeding. For convenience of
`presentation, we adopt Petitioner’s organization of the “wherein” clauses of
`claim 1 into separate paragraphs. See Pet. 7–8.
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`wherein the deployment of the one or more applets
`is such that at the time of deployment of the
`one or more applets the user can continue to
`operate the networked device in a state prior
`to the deployment of the one or more
`applets;
`a first database coupled to the microprocessor and storing
`a first set of information relating to the user; and
`a second database coupled to the microprocessor and
`including a second set of information for
`comparison to the first set of information,
`wherein the microprocessor compares the first set of
`information to the second set of information to
`determine whether the content should be
`transmitted to the networked device for display by
`the one or more applets.
`The system according to claim 1, wherein the first
`database and the second database are portions of one
`database.
`Ex. 1001, 14:9–46.
`
`2.
`
`C. Prior Art Relied Upon
`Petitioner relies upon the following prior art references (Pet. 9–15,
`
`81):
`
`U.S. Patent Application Publication No. 2002/0083138 A1, June 27,
`2002, to Wilson et al. (“Wilson”). Ex. 1005.
`U.S. Patent Application Publication No. 2006/0085758 A1, Apr. 20,
`2006, to Backus (“Backus”). Ex. 1006.
`U.S. Patent Application Publication No. 2006/0053048 A1, Mar. 9,
`2006, to Tandetnik (“Tandetnik”). Ex. 1007.
`U.S. Patent Application Publication No. 2002/0120518 A1, Aug. 29,
`2002, to Carney et al. (“Carney”). Ex. 1018.
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`Petitioner also relies on the declarations of Craig Rosenberg (“Rosenberg
`Decl.”). Ex. 1003.
`
`D. Asserted Grounds of Unpatentability
`Petitioner challenges claims 2, 4–6, 10–13, 15–17, 21, 23, 26–28, 32,
`and 34 on the following grounds of unpatentability (Pet. 9, 79)3:
`
`Claim(s)
`2, 4–6, 10–13, 15–17, 21,
`23, 26–28, 32, 34
`2, 4–6, 10–13, 15–17, 21,
`23, 26–28, 32, 34
`
`References/Basis
`Wilson, Backus, Tandetnik
`
`35 U.S.C. §
`103(a)
`
`Wilson, Backus, Tandetnik, Carney 103(a)
`
`E. Real Parties in Interest
`Petitioner identifies Fidelity Information Services, LLC, and Fidelity
`National Information Services, Inc., as real parties in interest. Pet. 83.
`Patent Owner identifies itself as the real party in interest. Paper 15, 2.
`
`F. Related Matters
`The parties identify the following cases that may affect or be affected
`by a decision in this proceeding: Groove Digital, Inc. v. United Bank, 1:18-
`cv-00966 (E.D. Va.); Groove Digital, Inc. v. King.com, Ltd., 1:18-cv-00836
`(D. Del.); and Groove Digital, Inc. v. Jam City, Inc., 1:18-cv-01331 (D.
`Del.). Pet. 83; Paper 15, 2.
`In addition, Petitioner filed a Petition in IPR2019-00050, challenging
`claims 1, 3, 7–9, 14, 18–20, 22, 24–25, 29–31, 33, and 35–37 of the ’762
`
`3 The Leahy-Smith America Invents Act (“AIA”) included revisions to
`35 U.S.C. §§ 102 and 103 that became effective after the filing of the
`application for the ’762 patent. Therefore, we apply the pre-AIA versions of
`these sections.
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`patent. Fidelity Info. Servs., LLC v. Groove Digital, Inc., Case IPR2019-
`00050, Paper 2, 1 (PTAB Nov. 8, 2018) (Institution Decision).
`
`III. ANALYSIS
`
`A. Legal Standards — Obviousness
`A claim is unpatentable under 35 U.S.C. § 103(a) if the differences
`between the claimed subject matter and the prior art are such that the subject
`matter, as a whole, would have been obvious at the time the invention was
`made to a person having ordinary skill in the art to which said subject matter
`pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007).
`The question of obviousness is resolved on the basis of underlying
`factual determinations, including (1) the scope and content of the prior art;
`(2) any differences between the claimed subject matter and the prior art;
`(3) the level of skill in the art; and (4) where in evidence, so-called
`secondary considerations, including commercial success, long-felt but
`unsolved needs, failure of others, and unexpected results (“the Graham
`factors”).4 Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
`If the claimed subject matter cannot be fairly characterized as
`involving the simple substitution of one known element for another or the
`mere application of a known technique to a piece of prior art ready for the
`improvement, a holding of obviousness can be based on a showing that
`“there was an apparent reason to combine the known elements in the fashion
`claimed.” KSR, 550 U.S. at 418. Such a showing requires “some articulated
`
`
`4 Patent Owner does not rely on any evidence of secondary considerations.
`See generally PO Resp.; PO Sur-Reply.
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`reasoning with some rational underpinning to support the legal conclusion of
`obviousness.” Id. (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).
`In general, obviousness entails an inquiry that is “expansive and
`flexible” and takes into account “the inferences and creative steps that a
`person of ordinary skill in the art would employ” when presented with the
`teachings of the prior art. KSR, 550 U.S. at 415–18. Under this flexible
`approach, it can be important to identify “a reason that would have prompted
`a person of ordinary skill in the relevant field to combine the elements” in
`the way claimed. Takeda Chem. Ind., Ltd. v. Alphapharm Pty., Ltd., 492
`F.3d 1350, 1356–57 (Fed. Cir. 2007). Such reason may be found “explicitly
`or implicitly in market forces; design incentives; the interrelated teachings of
`multiple patents; any need or problem known in the field of endeavor at the
`time of invention and addressed by the patent; and the background
`knowledge, creativity, and common sense of the person of ordinary skill.”
`ZUP, LLC v. Nash Mfg., Inc., 896 F.3d 1365, 1371 (Fed. Cir. 2018) (internal
`quotations and citations omitted); see also KSR, 550 U.S. at 419–20.
`Moreover, “‘if a technique has been used to improve one device, and a
`person of ordinary skill in the art would recognize that it would improve
`similar devices in the same way, using the technique is obvious unless its
`actual application is beyond his or her skill.’” Unwired Planet, LLC v.
`Google Inc., 841 F.3d 995, 1003 (Fed. Cir. 2016) (quoting KSR, 550 U.S. at
`417).
`
`“[A] combination of familiar elements according to known methods is
`likely to be obvious when it does no more than yield predictable results.”
`KSR, 550 U.S. at 416. “[I]n many cases a person of ordinary skill will be
`able to fit the teachings of multiple patents together like pieces of a
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`puzzle. . . . A person of ordinary skill is also a person of ordinary creativity,
`not an automaton.” Id. at 420–421.
`“The test for obviousness is not whether the features of a secondary
`reference may be bodily incorporated into the structure of the primary
`reference . . . . Rather, the test is what the combined teachings of the
`references would have suggested to those of ordinary skill in the art.” In re
`Keller, 642 F.2d 413, 425 (CCPA 1981). “Combining the teachings of
`references does not involve an ability to combine their specific structures.”
`In re Nievelt, 482 F.2d 965, 968 (CCPA 1973).
`
`B. Level of Ordinary Skill in the Art
`Petitioner’s declarant opines:
`[A] person of ordinary skill in the art of the ’762 patent as of its
`filing date, would have been someone knowledgeable in
`computer systems, graphical user interfaces, and electronic
`alerts. . . . [T]hat person would have at least a Bachelor’s
`Degree in Computer or Electrical Engineering, Computer
`Science, Human Factors, or equivalent engineering discipline
`with a specialization in computer-human interaction and user
`interfaces, or equivalent training; and approximately three years
`of experience working on graphical user interfaces for computer
`systems, including experience with electronic alerts.
`Rosenberg Decl. ¶ 42. Patent Owner “adopts petitioner’s definition of the
`POSA.” PO Resp. 4.
`We find this agreed-to proposal consistent with the level of ordinary
`skill in the art reflected by in the disclosure of the ’762 patent and the prior
`art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir.
`2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995).
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`C. Claim Construction
`For an IPR based on a petition filed before November 13, 2018, as
`here, the Board interprets claims of an unexpired patent using the broadest
`reasonable construction in light of the specification of the patent in which
`they appear. See 37 C.F.R. § 42.100(b) (2018); Cuozzo Speed Techs., LLC
`v. Lee, 136 S. Ct. 2131, 2144–46 (2016) (upholding the use of the broadest
`reasonable interpretation standard). The broadest reasonable construction is
`an interpretation that corresponds with how the inventor describes his
`invention in the specification, i.e., an interpretation that is “consistent with
`the specification.” In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997)
`(citation and internal quotation marks omitted); see also In re Suitco Surface
`Inc., 603 F.3d 1255, 1259–60 (Fed. Cir. 2010). An inventor may provide a
`meaning for a term that is different from its ordinary meaning by defining
`the term in the specification with reasonable clarity, deliberateness, and
`precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). Otherwise,
`terms are given their ordinary and customary meaning, as would have been
`understood by one of ordinary skill in the art at the time of the invention.
`In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007.) We need
`only construe terms “that are in controversy, and only to the extent necessary
`to resolve the controversy.” Nidec Motor Corp. v. Zhongshan Broad Ocean
`Motor Co. Ltd., 868 F.3d 1013, 1017 (Fed. Cir. 2017).
`Petitioner states that it “applied the plain and ordinary meaning of the
`terms” of the claims.5 Pet. 9; see also Rosenberg Decl. ¶¶ 46, 47. However,
`
`5 Petitioner asserts an alternative obviousness ground, based on the
`combination of Wilson, Backus, Tandetnik, and Carney, “[i]f Patent Owner
`argues and/or the Board determines that the ‘comparing’ elements [of the
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`for the claim term “applet,” Petitioner proposes that the term be construed as
`defined in the statement in the ’762 patent that “the present invention
`provides an applet (also known as an alert or notification).” E.g., Pet. 23;
`Rosenberg Decl. ¶ 100; see Ex. 1001, 5:16–17. In its Preliminary Response,
`Patent Owner disputed construing “applet” as “an alert or notification” as
`“overbroad and unsupported.” Prelim. Resp. 3–10. We nevertheless
`concluded that “applet” should be construed as “an alert or notification.”
`Institution Dec. 11. Patent Owner has not pressed this issue post-institution.
`See generally, PO Resp. For the reasons explained in our Institution
`Decision, including the fact that the ’762 patent states that an applet is “also
`known as an alert or notification,” we adhere to this construction. Ex. 1001,
`5:17.
`
`For the claim terms “deploy,” “deploys,” and “deployment,” Patent
`Owner asserts that the ’762 patent “defines [those terms] as ‘launch for
`interaction with a user or make active for user interaction something that
`was previously inactive.’” PO Resp. 4 (citing Ex. 1001, Fig. 1, 3:1–6, 3:45–
`50, 4:34–40, 5:41–45, 6:48–49, 6:50–54). In fact, the ’762 patent contains
`no such definition, and it is not necessary to construe these terms in order to
`determine the patentability issues discussed below.
`
`The Prior Art Status of Backus and Tandetnik
`D.
`The applications for Tandetnik and Backus were filed September 7
`and October 18, 2004, respectively, and published March 9, 2006 and April
`
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`claims] should be construed to require ‘geotargeting’ to determine the
`content sent to the users. . . .” Pet. 79. We discuss this alternative ground in
`Section III.F. below.
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`20, 2006, respectively. Ex. 1007, code (22); Ex. 1006, code (22). The
`earliest priority date for the ’762 patent is the provisional application filing
`date, March 18, 2005. Ex. 1001, code (60). Thus, at most, Backus and
`Tandetnik would qualify as prior art under 35 U.S.C. § 102(e). However,
`Patent Owner asserts that the subject matter of the ’762 patent claims was
`conceived by August 13, 2004, and diligently reduced to practice, thus
`antedating the references. PO Resp. 29–59.
`Section 102(e) bars a patent where the claimed invention was
`described in “an application for patent, published under section 122(b), by
`another filed in the United States before the invention by the applicant for
`patent.” The date of invention is the date of reduction to practice “unless the
`. . . party can show that it was the first to conceive the invention and that it
`exercised reasonable diligence in later reducing that invention to practice.”
`Mahurkar v. C.R. Bard, Inc., 79 F.3d 1572, 1577 (Fed. Cir. 1996).
`Patent Owner contends that the inventors conceived of the invention
`prior to the filing dates of Tandetnik and Backus, and exercised reasonable
`diligence in later reducing that invention to practice. PO Resp. 29. For
`reduction to practice, in its Patent Owner Response, Patent Owner asserts
`that “[t]he invention was constructively reduced to practice with reasonably
`continuous diligence from at least prior to September 7, 2004, through actual
`reduction to practice January or February, 2005, and constructive reduction
`to practice on March 18, 2005,” — the filing date of the provisional
`application related to the ’762 patent. Id. at 34; Ex. 1001, code (60); Ex.
`3001, 1 (date stamp). In its Sur-Reply, Patent Owner clarifies that it “relies
`on the evidence relating to actual reduction to practice only in connection
`with diligence towards constructive reduction to practice on March 18,
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`2005”; and during the oral hearing, Patent Owner confirmed “we’re not
`claiming actual reduction to practice . . . . [n]ot an issue here.” PO Sur-
`Reply 21; Paper 55, 50:18–23. Patent Owner thus would tack together two
`phases of diligence: diligence towards actual reduction to practice from
`September 7, 2004 to February 2004 (notwithstanding that actual reduction
`to practice is not relied on), and diligence towards constructive reduction to
`practice from February 2004 to the filing of the provisional application. PO
`Resp. 34–48. There is no dispute that, in principle, a patent owner is entitled
`to rely on periods of diligence related to both actual and constructive
`reduction to practice to antedate references. Paper 55, 58:7–24. C.f., Gould
`v. Schawlow, 363 F.2d 908, 916 (C.C.P.A. 1966) (considering evidence of
`diligence towards actual reduction to practice from November 1957 to
`December 1958 and evidence of diligence towards constructive reduction to
`practice December 1958 to April 1959); and see ATI Techs. ULC v. Iancu,
`920 F.3d 1362, 1369, 1372–75 (Fed. Cir. 2019) (references antedated by
`showing of diligence towards actual reduction to practice up to the date of
`constructive reduction to practice).
`
`1. Motion To Exclude Inventor Testimony
`In support of antedating Backus and Tandetnik, Patent Owner relies
`on the declaration and oral hearing testimony of Samuel Gaidemak, a named
`inventor of the ’762 patent. PO Resp. 30–42, 48–59; Ex. 2030; Paper 55,
`7:15–35:23. Petitioner moves to exclude the portion of Mr. Gaidemak’s
`declaration comparing ’762 patent claims 1–13 to Patent Owner’s evidence
`of conception. Paper 47; Ex. 2030 ¶ 46, Table 1. Petitioner argues that Mr.
`Gaidemak is not qualified as an expert in the pertinent field of the invention,
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`and is not a person of ordinary skill the art as defined by the parties (which
`we have adopted as discussed above). Paper 47, 3–5. Petitioner also
`objected to portions of Mr. Gaidemak’s oral hearing testimony as improperly
`introducing new argument and evidence. Paper 55, 12:7–13:12, 18:8–23,
`21:3–22:23, 23:20–24:2, 28:13–29:3.
`We agree that Mr. Gaidemak is not qualified as an expert in the field,
`and does not fit the applicable description of a person of ordinary skill in the
`art. Nonetheless, although Mr. Gaidemak has admitted that he was not a
`“technology guy,” he nonetheless testified as to his familiarity and
`experience, from a marketing standpoint, with the browser, user interface,
`and database technology pertinent to the ’762 patent. Paper 55, 9:20–12:2,
`30:13–32:17. We are satisfied that Mr. Gaidemak has personal knowledge
`of at least some aspects of the claimed invention, including its alleged
`conception and diligence towards reduction to practice, and that his
`testimony is admissible to the extent it is helpful. See Verizon Servs. Corp.
`v. Cox Fibernet Va., Inc., 602 F.3d 1325, 1339-40 (Fed. Cir. 2010) (district
`court properly allowed testimony from the witnesses about the patents they
`invented based on their personal knowledge). In addition, the testimony
`elicited during the oral hearing was reasonably within the scope of our
`January 9, 2020 Order permitting live testimony of Mr. Gaidemak as to
`certain topics during the oral hearing. Paper 45. Therefore we overrule
`those objections.
`Because an inter partes trial is before factfinders rather than a jury,
`the risk that a decision will be unfairly affected by the admission of arguably
`unqualified testimony is far less than in a jury trial. See, e.g., E.E.O.C. v.
`Farmer Bros. Co., 31 F.3d 891, 898 (9th Cir. 1994). The Board is capable
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`of assessing the probative value of Mr. Gaidemak’s testimony and giving it
`proper weight, and we have done so here, as discussed further below.
`For the foregoing reasons, Petitioner’s Motion to Exclude is denied,
`and its objections during the oral hearing are overruled.
`
`2. Conception
`Patent Owner cites three documents (hereafter, the “conception
`documents”) as evidence of conception of the subject matter of the ’762
`patent claims: a document titled “Local Toast” with a footer that includes
`the date “8/13/2004” (Ex. 2003) (hereafter, “Local Toast”); a block diagram
`titled “Ugo Local Architecture” with metadata indicating a “Last Modified”
`date of “8/11/2004” (Ex. 2004) (hereafter, “Local Architecture”); and a
`document titled “Toast Architecture Addendum” with metadata indicating a
`“Last Modified” date of “8/13/2004” (Ex. 2005) (hereafter, “Toast
`Architecture Addendum”). PO Resp. 30–31.6 Both “Local Toast” and “Ugo
`Local” refer to a development project which Patent Owner asserts led to the
`inventions claimed in the ’762 patent. PO Resp. 30–31; Ex. 2030 ¶¶ 4, 6,
`46; see also Ex. 1001, Figs. 8, 9, 11 (“2005 Toast Web Site,” “2005 Toast
`Application,” “Toaster Administration Center”).
`Conception is the formation “in the mind of the inventor of a definite
`and permanent idea of the complete and operative invention, as it is
`therefore to be applied in practice.” Coleman v. Dines, 754 F.2d 353, 359
`(Fed. Cir. 1985) (quoting Gunter v. Stream, 573 F.2d 77, 80 (CCPA 1978))
`
`
`6 As discussed below, Patent Owner also relies on additional documents and
`testimony to corroborate conception. PO Resp. 30–34, 42–43; Exs. 2006–
`2018, 2040.
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`(emphasis omitted). Conception must include every feature or limitation of
`the claimed invention. Kridl v. McCormick, 105 F.3d 1446, 1449 (Fed. Cir.
`1997) (citing Davis v. Reddy, 620 F.2d 885, 889 (CCPA 1980)).
`“Conception must be proved by corroborating evidence which shows
`that the inventor disclosed to others his ‘complete thought expressed in such
`clear terms as to enable those skilled in the art’ to make the invention.”
`Coleman, 754 F.2d at 359 (quoting Field v. Knowles, 183 F.2d 593, 601
`(CCPA 1950)). However, “there is no final single formula that must be
`followed in proving corroboration.” Berry v. Webb, 412 F.2d 261, 266
`(CCPA 1969). Rather, the sufficiency of corroborative evidence is
`determined by the “rule of reason.” Price v. Symsek, 988 F.2d 1187, 1195
`(Fed. Cir. 1993); Berry, 412 F.2d at 266. Accordingly, a tribunal must make
`a reasonable analysis of all of the pertinent evidence to determine whether
`the inventor’s testimony is credible. Price, 988 F.2d at 1195. The tribunal
`must also bear in mind the purpose of corroboration, which is to prevent
`fraud, by providing independent confirmation of the inventor’s testimony.
`See Berry, 412 F.2d at 266, (“The purpose of the rule requiring
`corroboration is to prevent fraud.”); Reese v. Hurst, 661 F.2d 1222 (CCPA
`1981) (“[E]vidence of corroboration must not depend solely on the inventor
`himself.”).
`
`a) Date of Conception
`An initial issue is whether the record supports Patent Owner’s
`contention that the date of conception (as opposed to the subject matter that
`was conceived) is August 13, 2004. PO Resp. 30. The Local Toast
`document has the date, “8/13/2004,” in its footer. Ex. 2003. Mr. Gaidemak
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`testified that he inserted this date in the document at the time he completed it
`in accord with his practice. Ex. 2030 ¶ 7. The Local Architecture and Toast
`Architecture Addendum documents have “Last Modified” dates in their
`metadata of “8/11/2004” and “8/13/2004,” respectively. Exs. 2004, 2005.
`Mr. Gaidemak testified that the metadata printouts included in these latter
`two exhibits pertain to the associated documents. Ex. 2030 ¶¶ 8–9.
`Patent Owner also submits emails dated from July 22 through July 26,
`2004, exchanged between Mr. Gaidemak, co-inventor Paul Chachko, and
`Ravi Yadav, a director of the company employing the inventors, which
`broadly refer to, discuss, and schedule meetings relating to, the “Toast”
`concept, which Mr. Gaidemak testified pertain to the same subject matter as
`the conception documents. PO Resp. 31–33 (citing Exs. 2006–2011); Ex.
`2030 ¶¶ 10–15. These emails include references to various attachments (but
`do not include the attachments), and refer to the occurrence of a
`“brainstorming session” and other meetings, the use of browser technology,
`and the need for documentation and nondisclosure agreements. Id. In
`addition, Patent Owner submits different versions of the Local Toast
`document, also with dates in the footer, which dates span August 2–5, 2004,
`and which Mr. Gaidemak testified were also inserted by him at the time they
`were completed. PO Resp. 33–34 (citing Exs. 2013–2016, 2018); Ex. 2030
`¶¶ 17–22. Patent Owner also submits a prior version of the Local
`Architecture document. Ex. 2017.
`Petitioner states that it does not challenge the authenticity of any of
`these conception and conception-related documents, but nonetheless
`challenges the dates attributed to them by Patent Owner, based on lack of
`independent corroboration. Pet. Reply 12–14; Paper 55, 44:4–16. We take
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`from this that, other than the dates, Petitioner does not challenge that the
`documents are what they appear to be insofar as authorship and subject
`matter are concerned. Nor is there anything in the record to suggest
`otherwise. However, we agree with Petitioner that the record does not
`support an August 13, 2004 conception date.
`Regarding the Local Toast document and its earlier versions, we
`cannot accord any meaningful evidentiary weight to the dates inserted into
`the footers by Mr. Gaidemak. Other than Mr. Gaidemak, no witness or
`document independently corroborates any of these dates. “It is well
`established . . . that when a party seeks to prove conception through an
`inventor’s testimony the party must proffer evidence, ‘in addition to [the
`inventor’s] own statements and documents,’ corroborating the inventor’s
`testimony.” Apator Miitors ApS v. Kamstrup A/S, 887 F.3d 1293, 1295
`(2018). “Even under the ‘rule of reason’ analysis . . . the ‘evidence of
`corroboration must not depend solely on the inventor himself.’” Id. (quoting
`Cooper v. Goldfarb, 154 F.3d 1321, 1330 (Fed. Cir. 1998)). “Even the most
`credible inventor testimony is a fortiori required to be corroborated by
`independent evidence.” Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157,
`1171–72 (Fed. Cir. 2006); see also Brown v. Barbacid, 276 F.3d 1327, 1335
`(Fed. Cir. 2002) (“The Board did not err in holding that an inventor’s own
`unwitnessed documentation does not corroborate an
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