Trials@uspto.gov
`571.272.7822
`
`Paper No. 13
`Entered: November 1, 2019
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`DROPBOX, INC.,
`Petitioner,
`
`v.
`
`WHITSERVE LLC,
`Patent Owner.
`____________
`
`IPR2019-01018
`Patent 8,812,437 B2
`____________
`
`
`
`Before KALYAN K. DESHPANDE, MICHELLE N. WORMMEESTER,
`and SCOTT RAEVSKY, Administrative Patent Judges.
`
`WORMMEESTER, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`571.272.7822
`
`Paper No. 13
`Entered: November 1, 2019
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`DROPBOX, INC.,
`Petitioner,
`
`v.
`
`WHITSERVE LLC,
`Patent Owner.
`____________
`
`IPR2019-01018
`Patent 8,812,437 B2
`____________
`
`
`
`Before KALYAN K. DESHPANDE, MICHELLE N. WORMMEESTER,
`and SCOTT RAEVSKY, Administrative Patent Judges.
`
`WORMMEESTER, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`IPR2019-01018
`Patent 8,812,437 B2
`
`
`I. INTRODUCTION
`Dropbox, Inc. (“Petitioner”) filed a Petition (Paper 3, “Pet.”)
`requesting inter partes review of claims 1–20 of U.S. Patent
`No. 8,812,437 B2 (Ex. 1001, “the ’437 patent”). WhitServe LLC (“Patent
`Owner”) filed a Preliminary Response. Paper 8 (“Prelim. Resp.”). We have
`jurisdiction under 35 U.S.C. § 314 and 37 C.F.R. § 42.4(a). Under
`35 U.S.C. § 314(a), an inter partes review may not be instituted “unless . . .
`there is a reasonable likelihood that the petitioner would prevail with respect
`to at least 1 of the claims challenged in the petition.” For the reasons that
`follow, we exercise our discretion under 35 U.S.C. § 314(a) to deny
`institution of inter partes review.
`
`
`II. BACKGROUND
`A. Related Matters
`The parties identify one related district court case, which Petitioner
`asserts has been dismissed. Paper 6, 2 (Patent Owner’s Submission of
`Mandatory Notice Information); Paper 7, 1 (Petitioner’s Updated Mandatory
`Notices). The parties also identify a second petition (see IPR2019-1019,
`Paper 2) requesting inter partes review of the same claims challenged here.
`Paper 7, 1; Prelim. Resp. 33.
`
`
`B. Asserted Grounds of Unpatentability
`Petitioner challenges claims 1–20 of the ’437 patent on the following
`grounds. Pet. 6, 17–61.
`
`2
`
`
`
`35 U.S.C. §
`103
`
`Reference(s)
`Amstein1
`
`IPR2019-01018
`Patent 8,812,437 B2
`
`
`Claims Challenged
`1–5, 8, 10, 11, 13, 15, 16,
`18–20
`Amstein, Chang2
`103
`6, 7, 12, 14
`Amstein, Elgamal3
`103
`9, 17
`In support of its arguments, Petitioner relies on a Declaration of Dr. Todd
`Mowry (Ex. 1002). See id.
`
`
`III. DISCUSSION
`Discretionary Denial under 35 U.S.C. § 314(a)
`In its Preliminary Response, Patent Owner argues that we should
`exercise our discretion under 35 U.S.C. § 314(a) to deny the instant Petition
`“because it is redundant to IPR2019-01019 in that the grounds in the other
`petition rely on the same primary reference (i.e., Amstein) as those presented
`herein.” Prelim. Resp. 34.
`We subsequently issued an order in each proceeding, requiring that
`Petitioner provide a ranking of the two petitions that identifies the order in
`which it wishes the Board to consider the merits. Paper 10, 4–5. We further
`requested that Petitioner provide a succinct explanation of the differences
`between the petitions, why the differences are material, and why the Board
`should exercise its discretion to consider institution on both petitions. See
`id. Additionally, we authorized Patent Owner to respond. Id. Pursuant to
`our order, Petitioner filed a Notice Ranking Petitions (Paper 11, “Notice”),
`and Patent Owner filed a Response (Paper 12, “Response”).
`
`
`1 Amstein, U.S. Patent No. 5,793,966, issued Aug. 11, 1998 (Ex. 1013).
`2 Chang, U.S. Patent No. 6,219,700 B1, issued Apr. 17, 2001 (Ex. 1015).
`3 Elgamal, U.S. Patent No. 5,657,390, issued Aug. 12, 1997 (Ex. 1016).
`
`3
`
`
`
`IPR2019-01018
`Patent 8,812,437 B2
`
`
`In its Notice, Petitioner ranks the petition in IPR2019-01019 first.
`Notice 5. In IPR2019-01019, we institute an inter partes review of
`claims 1–20 of the ’437 patent based on our conclusion that Petitioner has
`established a reasonable likelihood of prevailing in demonstrating the
`unpatentability of at least one challenged claim. Accordingly, all the
`challenged claims in both proceedings are subject to an inter partes review
`in IPR2019-01019.
`Under § 314(a), the Director has discretion to deny institution of an
`inter partes review. See 37 C.F.R. § 42.4(a) (“The Board institutes the trial
`on behalf of the Director.”); Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct.
`2131, 2140 (2016) (“[T]he agency’s decision to deny a petition is a matter
`committed to the Patent Office’s discretion.”); SAS Inst. Inc. v. Iancu, 138 S.
`Ct. 1348, 1356 (2018) (“[Section] 314(a) invests the Director with discretion
`on the question whether to institute review . . . .” (emphasis omitted));
`Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016)
`(“[T]he PTO is permitted, but never compelled, to institute an IPR
`proceeding.”). In this context, the Office Patent Trial Practice Guide, July
`2019 Update (“Trial Practice Guide Update”),4 states,
`There may be other reasons besides the “follow-on” petition
`context where the “effect . . . on the economy, the integrity of the
`patent system, the efficient administration of the Office, and the
`ability of the Office to timely complete proceedings,” 35 U.S.C.
`§ 316(b), favors denying a petition even though some claims
`meet the threshold standards for institution under 35 U.S.C.
`§§ 314(a), 324(a).
`Trial Practice Guide Update 25.
`
`
`4 Available at https://www.uspto.gov/patents-application-process/patent-
`trial-and-appeal-board/trial-practice-guide-july-2019-update.
`
`4
`
`
`
`IPR2019-01018
`Patent 8,812,437 B2
`
`
`Here, Petitioner argues that we should institute inter partes review on
`a second petition, namely, the instant Petition, because there are material
`differences between the two petitions. According to Petitioner, (1) the
`number and specificity of the claims require multiple petitions; (2) Patent
`Owner may dispute certain teachings of Amstein, the asserted primary
`reference in both cases; and (3) Patent Owner may dispute whether Mantha
`and Glenn, the asserted secondary references in IPR2019-01019, qualify as
`prior art. Notice 1–4. Petitioner further argues that denial of either petition
`based on the July 2019 Trial Practice Guide Update, which provides for the
`ranking of multiple petitions, would be unfair. Id. at 4–5; Trial Practice
`Guide Update 27–28. We address these arguments in turn.
`
`
`A. Number and Specificity of Claims
`Petitioner argues that “the number and specificity of the claims
`require multiple petitions to sufficiently address non-duplicative grounds.”
`Notice 2 (emphasis and capitalization omitted). Petitioner also asserts that
`“[t]he ’437 Patent includes 20 claims totaling 1418 words,” and further
`argues that, “[d]ue to the length and complexity of the claims, two petitions
`were required to sufficiently address the relevant issues.” Id. Patent Owner
`responds that this “justification is merely an unsupported conclusion and
`should be rejected” because “Petitioner does not give any explanation or
`analysis regarding the ‘[s]pecificity’ or ‘complexity’ of the claims.”
`Response 2. Patent Owner adds that “the ‘totaling 1418 words’ does not
`
`5
`
`
`
`IPR2019-01018
`Patent 8,812,437 B2
`
`itself speak as to the ‘length’ of the claims, as Petitioner provides neither
`comparison nor explanation thereof.” Id.
`We agree with Patent Owner. Petitioner does not provide any
`meaningful explanation as to why the number, specificity, length, or
`complexity of the claims of the ’437 patent justifies our review of both
`petitions. Moreover, as discussed further below, we note that Petitioner
`already asserts grounds in IPR2019-01019 that are presented in the instant
`case, IPR2019-01018. See infra Part III.B. This duplication of challenges
`undermines Petitioner’s argument that the number, specificity, length, or
`complexity of the claims requires two petitions.
`
`
`B. Potential Dispute as to Certain Teachings of Amstein
`Petitioner further argues that the instant Petition “shows the
`challenged independent claims would have been obvious over Amstein
`alone,” whereas the petition in IPR2019-01019 “shows, based on a different
`reading of Amstein, how the claims would have been obvious over Amstein,
`Mantha, and Glenn.” Notice 2. In particular, Petitioner asserts,
`[I]n IPR2019-01018, the Petition shows that Amstein teaches to
`a person of ordinary skill in the art all the features of the
`challenged independent claims. But because Patent Owner may
`challenge whether Amstein teaches downloading a copy of saved
`documents from a server, Petitioner also filed the -01019 Petition
`with Mantha, which expressly discloses saving a web page to a
`local hard drive, and thus shows storing a “backup copy” at an
`“onsite location.” Likewise, because Patent Owner may
`challenge whether to a person of ordinary skill Amstein teaches
`remote servers accessible by system administrators, Petitioner
`included Glenn in the -01019 Petition, because Glenn expressly
`discloses that a web server can be operated by a third party, and
`thus shows “a central computer managed by a third party.”
`
`6
`
`
`
`IPR2019-01018
`Patent 8,812,437 B2
`
`Id. at 2–3. According to Petitioner, “because Mantha and Glenn expressly
`disclose features that Patent Owner may attempt to challenge as being taught
`by Amstein, institution of both petitions is warranted.” Id. at 3.
`We disagree. Petitioner presents at least two alternative grounds of
`obviousness for every challenged claim in IPR2019-01019. Regarding
`independent claims 1, 10, and 19, for example, Petitioner relies not only on
`the combination of Amstein, Mantha, and Glenn, but also on Amstein alone.
`See, e.g., IPR2019-01019, Paper 2 at 18–19 (“Amstein and Mantha teach the
`recited ‘onsite backup.’ . . . To the extent that Amstein does not explicitly
`teach this, Mantha teaches it.”); id. at 19 (“Amstein, Mantha, and Glenn
`teach[] that the recited ‘internet-based data processing systems’ are ‘third
`party . . . processing systems.’ . . . To the extent that the Amstein [reference]
`does not explicitly recite a ‘third party,’ Glenn teaches this.”); id. at 22 (“To
`the extent Amstein does not explicitly disclose that the server is managed by
`a ‘third party,’ Glenn teaches it.”); id. at 31 (“To the extent a ‘backup copy’
`requires something more than ‘local’ storage, e.g., that the retrieved
`document be stored in non-volatile memory in or attached to the client
`computer and that Amstein does not explicitly disclose this, Mantha teaches
`it.”); id. at 38 (“To the extent Amstein does not explicitly disclose an ‘onsite
`location,’ Mantha discloses this.”). Likewise, for dependent claims 2–5, 8,
`11, 13, 15, 16, 18, and 20, Petitioner relies not only the combination of
`Amstein, Mantha, and Glenn, but also on Amstein alone. See id. at 39–44,
`49–52, 56–57. As such, for claims 6, 7, 12, and 14, which depend directly
`or indirectly from claims 1 or 10, Petitioner relies not only on the
`combination of Amstein, Mantha, Glenn, and Chang, but also on the
`combination of Amstein and Chang. See id. at 57–63. Similarly, for
`
`7
`
`
`
`IPR2019-01018
`Patent 8,812,437 B2
`
`claims 9 and 17, which depend from claims 1 or 10, Petitioner relies not
`only on the combination of Amstein, Mantha, Glenn, and Elgamal, but also
`on the combination of Amstein and Elgamal. See id. at 63–67. Thus,
`Petitioner asserts additional obviousness grounds in IPR2019-01019, which
`Petitioner acknowledges are presented in the instant case. See, e.g., Pet. 6
`(summary of asserted grounds in the instant case); Notice 2 (“In IPR2019-
`01018, the Petition shows the challenged independent claims would have
`been obvious over Amstein alone.”). That the petition in IPR2019-01019
`already includes grounds presented in the instant Petition undermines
`Petitioner’s argument that Patent Owner’s potential dispute as to certain
`teachings of Amstein requires two petitions.
`
`C. Potential Dispute as to Whether Mantha and Glenn Qualify as Prior Art
`Petitioner further argues that “Patent Owner may attempt to antedate
`Mantha” and “swear behind Glenn or challenge when Glenn was publicly
`available.” Notice 3–4. In its Response, Patent Owner counters that “a
`petitioner must always weigh the pros and cons of using §§ 102(e) or
`102(a)–(b) prior art where a patent owner can swear behind the reference
`and Patent Owner has a right to challenge prior art.” Response 3.
`Although “the Board recognizes that there may be circumstances in
`which more than one petition may be necessary, including, for example, . . .
`when there is a dispute about priority date requiring arguments under
`multiple prior art references,” we find that the particular circumstances here
`do not necessitate more than one petition. See Trial Practice Guide
`Update 26. As discussed above, for all the challenged claims in IPR2019-
`01019, which involve potential challenges as to whether Mantha and Glenn
`
`8
`
`
`
`IPR2019-01018
`Patent 8,812,437 B2
`
`qualify as prior art, Petitioner already provides alternative grounds, which
`Petitioner acknowledges are presented in the instant case and cannot be
`challenged on the same basis. See supra Part III.B; see also, e.g., Notice 2
`(“In IPR2019-01018, the Petition shows the challenged independent claims
`would have been obvious over Amstein alone.”); id. at 4 (“[I]t is appropriate
`for the Board to consider both the -01019 Petition including Mantha and the
`-01018 Petition, which does not rely on Mantha.”); id. (“[Patent Owner]
`refused to stipulate that Glenn qualifies as prior art . . . . Thus, for this
`additional reason, institution of both petitions is warranted.”). For these
`reasons, we are unpersuaded by Petitioner’s argument that Patent Owner’s
`potential dispute as to whether Mantha and Glenn qualify as prior art
`requires two petitions.
`
`
`D. Fairness
`Lastly, Petitioner asserts that, “[a]t the time the petitions were filed,
`the Board’s Trial Practice Guide July 2019 Update had not been released,
`nor was the PTAB’s petition-ranking policy applicable to all petitions,” and
`further argues that “[i]f it was, [Petitioner] might have structured its petitions
`differently.” Notice 5. According to Petitioner, “given that [it] did not have
`notice before filing that ranking its petitions would be required, both the
`Administrative Procedure[] Act and due process weigh against denying
`institution of one of these petitions under 35 U.S.C. §§ 314(a) or 325(d).”
`Id. Petitioner adds that “[t]hese two petitions do not constitute an abuse of
`the IPR process because no petition previously filed by any petitioner has
`challenged the ’437 patent.” Id.
`
`9
`
`
`
`IPR2019-01018
`Patent 8,812,437 B2
`
`
`Petitioner’s argument is unpersuasive. The petition in IPR2019-
`01019 already presents grounds that are presented in the instant Petition.
`See supra Part III.B. Although Petitioner “did not have notice before filing
`that ranking its petitions would be required,” we have authorized Petitioner
`after its filing and before our decisions on institution in both cases to provide
`a ranking and explanation as to why a second petition should be instituted.
`Accordingly, we are not persuaded that the Administrative Procedure Act
`and due process concerns weigh against denying institution of this Petition.
`Further, even where “no petition previously filed by any petitioner has
`challenged the ’437 patent,” we determine, after weighing the totality of
`evidence before us, that exercising our discretion under 35 U.S.C. § 314(a)
`to deny this Petition is appropriate. As explained in our order requesting
`Petitioner’s Notice Ranking Petitions, in exercising our discretion, we
`consider the integrity of the patent system, the efficient administration of the
`Office, and the ability of the Office to timely complete proceedings. See
`Paper 10, 2; Trial Practice Guide Update 25. We determine that the integrity
`of the system is sufficiently served by instituting inter partes review of all
`challenged claims of the ’437 patent in IPR2019-01019. See Gen. Plastic
`Indus. Co. v. Canon Kabushiki Kaisha, IPR2016-01357, Paper 19 at 16
`(PTAB Sep. 6, 2017) (Decision on Request for Rehearing) (precedential)
`(“[W]e are mindful of the goals of the AIA—namely, to improve patent
`quality and make the patent system more efficient.”); Trial Practice Guide
`Update 22–23. Grounds presented in the instant Petition would still survive
`even if Mantha and Glenn are disqualified as prior art. Accordingly, the
`differences identified by Petitioner between the Petition here and the petition
`in IPR2019-01019 are not sufficiently material and in dispute to support the
`
`10
`
`
`
`IPR2019-01018
`Patent 8,812,437 B2
`
`inefficiencies and costs associated with instituting an additional inter partes
`review. Cf. Gen. Plastic, Paper 19 at 16–17 (recognizing the “potential for
`abuse of the review process by repeated attacks on patents”).
`We note separately that Petitioner provides an additional “obvious to
`try” argument as part of its analysis in the instant case, which it does not
`provide in IPR2019-01019. For example, regarding the limitation “backup
`copy,” Petitioner argues in both cases that “Amstein teaches that the client
`machine [client computer] may initiate a ‘procedure to retrieve a document
`and the associated document meta information [backup copy of a data
`record] from the server machine’ via the Get Document API.” Pet. 29
`(emphases omitted); IPR2019-01019, Paper 2 at 30. In the instant case,
`Petitioner further argues that “a ‘backup copy’ . . . would have been obvious
`over Amstein” because “backing up data by storing it in non-volatile
`memory would have been one of a limited number of choices and obvious to
`try.” Pet. 30. Petitioner omits this “obvious to try” argument in IPR2019-
`01019, relying instead on Mantha as an alternative reference for teaching the
`recited “backup copy.” IPR2019-01019, Paper 2 at 31. Such differences
`between the two cases, however, also are not sufficiently material and in
`dispute to support the inefficiencies and costs associated with instituting an
`additional inter partes review.
`In view of the foregoing, we exercise our discretion under 35 U.S.C.
`§ 314(a) to deny institution of review in IPR2019-01018.
`
`
`IV. CONCLUSION
`For the foregoing reasons, based on a balanced assessment of the
`circumstances of this case, we exercise our discretion under 35 U.S.C. § 314
`
`11
`
`
`
`IPR2019-01018
`Patent 8,812,437 B2
`
`to deny the instant Petition requesting institution of inter partes review of
`the ’437 patent.
`
`
`V. ORDER
`
`Accordingly, it is
`ORDERED that the Petition is denied as to all challenged claims of
`the ’437 patent, and no trial is instituted in this case.
`
`
`PETITIONER:
`
`Monica Grewal
`Yvonne Lee
`Ronald Iraelsen
`WILMER CUTLER PICKERING HALE AND DORR LLP
`monica.grewal@wilmerhale.com
`yvonne.lee@wilmerhale.com
`greg.israelsen@wilmerhale.com
`
`
`PATENT OWNER:
`
`Michael Kosma
`Stephen Ball
`WHITMYER IP GROUP LLC
`mkosma@whipgroup.com
`sball@whipgroup.com
`
`
`12
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
