`
`Filed on behalf of William Grecia
`By: Isaac Rabicoff (isaac@rabilaw.com)
`Reg. No. 74,147
`Rabicoff Law LLC
`73 W Monroe St
`
`Chicago, IL 60603
`(773) 669-4590
`Kenneth Matuszewski (kenneth@rabilaw.com)
`Reg. No. 74,791
`Rabicoff Law LLC
`
`
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`_____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`____________
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`ADOBE SYSTEMS INCORPORATED
`Petitioner
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`v.
`
`WILLIAM GRECIA
`Patent Owner
`_____________
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`Case No.: IPR2018-00419
`Patent 8,533,860
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`PATENT OWNER'S PRELIMINARY RESPONSE
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`EWS-005502
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`Early Warning Services 1034
`IPR of U.S. Pat. No. 8,887,308
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`INTRODUCTION
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`Petitioner, Adobe Systems Incorporated (hereinafter, “Adobe”), admits
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`I.
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`
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`that its Petition recycles a petition previously denied by this Board: the only
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`difference between the two petitions is that Petitioner adds one reference here.
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`Petition, 3-4 (“While this petition relies on some prior art references already
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`presented to the Board in MasterCard’s petition in IPR2017-00791, all
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`proposed grounds in this petition rely on the Venkataramu reference . . . .”).
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`
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`Patent Owner, William Grecia, respectfully requests that the Board
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`deny institution under 35 U.S.C. § 325(d) because Adobe failed to introduce
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`evidence showing that the sole new prior art reference—Venkataramu—was
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`publicly accessible as of the critical date.
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`II.
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`FACTS
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`
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`The following facts are taken from the Petition:
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`1.
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`As of October 2, 2008, a student project report by Ramya
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`Venkataramu titled “Analysis and Enhancement of Apple’s FairPlay Digital
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`Rights Management,” (hereinafter, the “Venkataramu Report”), was stored on
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`the San Jose State University web server. Petition, 36 (citing Ex. 1024).
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`2.
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`A book citing the Venkataramu Report titled Handbook of
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`Research on Secure Multimedia Distribution, by Shiguo Lian and Yan Zhang,
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`EWS-005503
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`(hereinafter, the “Shiguo Lian Book”), has a 2009 copyright notice date. Ex.
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`1015.
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`3.
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`A Library of Congress Online Catalog states that the Shiguo Lian
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`Book was “Published/Created” in 2009. Ex. 1022.
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`III. ARGUMENT
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`A.
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`Legal Framework
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`
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`Pre-AIA law governs the Petition, and states “[a] person shall be
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`entitled to a patent unless . . . b) the invention was . . . described in a printed
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`publication in this . . . country . . . more than one year prior to the date of the
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`application for patent in the United States . . . .” 35 U.S.C. § 102(b) (1952).
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`
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`“To qualify as a printed publication, a reference ‘must have been
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`sufficiently accessible to the public interested in the art.’” Blue Calypso, LLC
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`v. Groupon, Inc., 815 F.3d 1331, 1348 (Fed. Cir. 2016) (quoting In re Cronyn,
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`890 F.2d 1158, 1160 (Fed. Cir. 1989)). “A reference will be considered
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`publicly accessible if it was ‘disseminated or otherwise made available to the
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`extent that persons interested and ordinarily skilled in the subject matter or art
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`exercising reasonable diligence, can locate it.’” Id. (quoting Kyocera Wireless
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`Corp. v. Int’l Trade Comm’n, 545 F.3d 1340, 1350 (Fed. Cir. 2008)).
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`EWS-005504
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`Finally, “[p]ublic accessibility is a legal conclusion based on
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`underlying factual determinations.” Voter Verified, Inc. v. Premier Election
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`Solutions, Inc., 698 F.3d 1374, 1380 (Fed. Cir. 2012).
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`B. Adobe Fails to Prove that the Venkataramu Report Was Publicly
`Accessible Before the Critical Date of March 21, 2009.
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` Adobe asserts the Venkataramu Report was publicly accessible
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`because it was saved on a web server on October 2, 2008. Ex. 1024 (Butler
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`Aff.), ¶ 5 (“The Internet Archive assigns a URL on its site to the archived
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`files”); see also id., Ex. A (displaying a copy of a printout showing an archived
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`file dated October 2, 2008).
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`
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`A student’s paper saved on the Internet is not a “printed publication”
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`under section 102(b). Blue Calypso, 815 F.3d at 1348. In Blue Calypso, the
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`Federal Circuit affirmed the PTAB’s determination that the petitioner failed
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`to establish “that an interested party exercising reasonable diligence would
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`have located [the reference].” Id. at 1349.
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`Mere presence on a web server was not enough, and the Federal Circuit
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`noted that the petitioner failed to produce evidence showing that the student
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`paper was viewed or downloaded, or that one of ordinary skill “would be
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`independently aware of the web address” where the paper was posted. Id.
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`The Blue Calypso petitioner argued that a search engine would have
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`uncovered the paper, but the Federal Circuit confined itself to the record. Id.
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`EWS-005505
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`at 1350. (“The record is devoid of any evidence that a query of a search engine
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`before the critical date, using any combination of search words, would have
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`led to [the reference] appearing in the search results.”).
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`Here, Adobe’s only evidence is a single private web server backup.
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`Such evidence lacks the necessary basis to hold that one of ordinary skill,
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`exercising reasonable diligence, would have located the Venkataramu Report
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`before the critical date, March 21, 2009. Adobe also does not show that the
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`Venkataramu Report was viewed or downloaded before March 21, 2009.
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`Petition, 36. Nor does Adobe show or attempt to show that an interested party
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`would have been independently aware of the San Jose State University
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`website as of March 21, 2009. Id. Adobe further fails to produce evidence
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`showing that before March 21, 2009, one of ordinary skill could have—with
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`reasonable diligence—discovered the Venkataramu Report through queries in
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`a search engine. Id.
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`The Federal Circuit rejected the argument that a reference must be
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`searchable on the Internet as an “absolute prerequisite.” Voter Verified, 698
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`F.3d at 1380. In Voter Verified, the Federal Circuit affirmed the district court’s
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`holding that the reference was publicly accessible before the critical date and
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`therefore prior art under section 102(b). Id. Although the record there failed
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`to establish that the reference was searchable on the Internet, the Federal
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`EWS-005506
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`Circuit held that the “ultimate question” was whether the reference would
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`have been accessible to one of ordinary skill upon a reasonably diligent
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`search. Id. The record also included unrebutted testimony that the reference
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`was posted on a website “well known to the community interested” in the field
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`of invention. Id. at 1380-81. Users of the website could also copy its contents.
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`Id.
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`
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`Here, there is no evidence in the record regarding the San Jose State
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`University website. As a result, the record Adobe produced does not provide
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`a basis to determine that one of ordinary skill in the art “would have been
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`independently aware” of the San Jose State University website “as a
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`prominent forum for discussing such technologies.” Voter Verified, 698 F.3d
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`at 1381.
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`
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`In sum, Adobe failed to produce evidence sufficient to show the
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`Venkataramu Report was publicly accessible before the critical date of March
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`21, 2009. Therefore, the Venkataramu Report does not qualify as prior art
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`under section 102(b).
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`C. Adobe Fails to Prove that the Shiguo Lian Book Was Publicly
`Accessible Before the Critical Date of March 21, 2009.
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`
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`Adobe produced no evidence in its petition supporting the assertion that
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`the Shiguo Lian Book, which cites Venkataramu, was “published on February
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`26, 2009 . . . .” Petition, 36 n.4. Instead, Adobe included a cover page from
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`EWS-005507
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`the Shiguo Lian Book, which bears a 2009 copyright notice, Ex. 1015, and a
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`printed copy of a Library of Congress Online Catalog showing the Shiguo
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`Lian Book was “Published/Created” in 2009. Ex. 1022.
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`
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`The 2009 copyright notice does not demonstrate that the Shiguo Lian
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`Book was publicly accessible in 2009. Instead,
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`A copyright notice informs the public that copyright
`protection is claimed, identifies the copyright
`owner, and states
`the asserted year of first
`publication. 17 U.S.C. § 401. . . . It . . . does not
`establish when a document was publicly accessible
`under patent law.
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`Stryker Corp. v. Karl Storz Endoscopy-America, Inc., Case IPR2015-00677,
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`2015 WL 5190757, *12 (P.T.A.B. Sept. 5, 2015); see also Servicenow, Inc. v.
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`Hewlett-Packard Co., Case IPR2015-00716, 2015 WL 5117887, *8 (P.T.A.B.
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`Aug. 26, 2015) (noting that a different panel found a copyright notice prima
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`facie evidence of publication but declining to hold “the presence of a
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`copyright notice, without more, is sufficient evidence of public accessibility
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`as of a particular date.”).
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`
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`Here, Adobe presents no evidence beyond the 2009 copyright notice
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`and indication from the Library of Congress that the Shiguo Lian Book was
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`“Published/Created” in 2009. Exs. 1015, 1022. At best, this record establishes
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`that the Shiguo Lian Book was claimed as an owned publication in 2009.
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`EWS-005508
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`Adobe provides no accompanying evidence to prove that the Shiguo Lian
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`Book was published and publicly accessible before March 21, 2009.
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`
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`Therefore, Adobe failed to produce evidence sufficient to show that the
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`Venkataramu Report, as cited in the Shiguo Lian Book, was publicly
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`accessible before the critical date of March 21, 2009. For this reason, the
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`Venkataramu Report does not qualify as prior art under section 102(b).
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`Respectfully submitted,
`
`/Isaac Rabicoff/
`Isaac Rabicoff
`Reg. No. 74,147
`Kenneth Matuszewski
`Reg. No. 74,791
`Rabicoff Law LLC
`73 W Monroe St
`
`Chicago, IL 60603
`isaac@rabilaw.com
`kenneth@rabilaw.com
`(773) 669-4590
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`EWS-005509
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`CERTIFICATE OF SERVICE UNDER 37 C.F.R. § 42.6 (e)(4)
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`It is hereby certified that on April 3, 2018, a copy of the foregoing
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`document was served via Electronic Mail upon the following:
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`James F. Valentine, Adobe-Grecia-IPR@perkinscoie.com
`Reg. No. 39,053
`Perkins Coie LLP
`3150 Porter Drive
`Palo Alto, CA 94304
`Tel: (650) 838-4300
`Fax: (650) 838-4350
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`Matthew J. Moffa, Adobe-Grecia-IPR@perkinscoie.com
` Reg. No. 58,860
`Perkins Coie LLP
`3150 Porter Drive
`Palo Alto, CA 94304
`Tel: (650) 838-4300
`Fax: (650) 838-4350
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`/Isaac Rabicoff/
`Isaac Rabicoff
`Reg. No. 74,147
`Rabicoff Law LLC
`73 W Monroe St
`
`Chicago, IL 60603
`isaac@rabilaw.com
`(773) 669-4590
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`EWS-005510
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