Trials@uspto.gov
`571.272.7822
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` Paper 17
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`Entered: June 17, 2021
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`RESMAN, LLC,
`Petitioner,
`
`v.
`
`KARYA PROPERTY MANAGEMENT, LLC,
`Patent Owner.
`____________
`
`CBM2020-00020
`Patent 7,636,687 B2
`____________
`
`
`
`Before MEREDITH C. PETRAVICK, SUSAN L. C. MITCHELL, and
`FRANCES L. IPPOLITO, Administrative Patent Judges.
`
`MITCHELL, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
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`571.272.7822
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` Paper 17
`
`
`Entered: June 17, 2021
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`RESMAN, LLC,
`Petitioner,
`
`v.
`
`KARYA PROPERTY MANAGEMENT, LLC,
`Patent Owner.
`____________
`
`CBM2020-00020
`Patent 7,636,687 B2
`____________
`
`
`
`Before MEREDITH C. PETRAVICK, SUSAN L. C. MITCHELL, and
`FRANCES L. IPPOLITO, Administrative Patent Judges.
`
`MITCHELL, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`
`
`
`
`
`
`
`CBM2020-00020
`Patent 7,636,687 B2
`
`
`On March 17, 2021, we instituted a covered business method patent
`review of claims 1–21 of U.S. Patent No. 7,636,687 B2 (“the ’687 patent).
`Resman, LLC v. Karya Prop. Mgmt., LLC, CBM2020-00020, Paper 9, 35
`(PTAB March 17, 2021). In our decision, we noted the following about an
`asserted reference, Broerman.1
`Patent Owner correctly notes that a reference that
`qualifies as prior art under 35 U.S.C. § 102(e) may not be used
`to support a challenge in a covered business method patent
`review. See, e.g., Meridianlink, Inc. v. DH Holdings, LLC,
`CBM2013-00008, Paper 24, 2 (PTAB Sept. 12, 2013); eBay,
`Inc. v. Advanced Auctions LLC, CBM 2014-00047, Paper 15,
`12 (PTAB June 25, 2014). It appears that Broerman is not
`available as a prior art reference to be asserted against the
`claims of the ’687 patent. We invite the parties to address
`further this issue during trial.
`Resman, Paper 9, 34.
`Petitioner sought authorization for a motion to file supplemental
`information to provide support for the public accessibility and commercial
`availability of the subject matter that Broerman discloses. On April 20,
`2021, we convened a conference call with the parties and Judges Mitchell,
`Petravick, and Ippolito to determine if such authorization would be
`appropriate.
`During the call, Petitioner described the supplemental information as
`web pages, newspaper articles, and declaratory evidence to establish that the
`substance of Broerman’s disclosure was known to the public and
`commercially available in a time frame to attempt to establish Broerman as
`section 102(a) art.
`
`
`11 Vincent S. Broerman, U.S. Patent No. 6,594,633 B1, issued Jul. 15, 2003
`(Ex. 1011, “Broerman”).
`
`2
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`
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`CBM2020-00020
`Patent 7,636,687 B2
`
`
`Petitioner has the initial burden of production to establish that there is
`prior art that renders the claims unpatentable. Dynamic Drinkware, LLC v.
`Nat’l Graphics, Inc., No. 2015-01214, 2015 WL 5166366, at *4 (Fed. Cir.
`Sept. 4, 2015). To satisfy this initial burden, we often have required
`Petitioner to come forward with sufficient evidence to make a threshold
`showing, at the institution stage, that the reference relied upon is available
`prior art. See, e.g., Coalition For Affordable Drugs (ADROCA) LLC v.
`Acorda Therapeutics, Inc., IPR2015-00720, slip op. at 3–5 (PTAB Aug. 24,
`2015) (Paper 15); Symantec Corp. v. Trs. of Columbia Univ., IPR2015-
`00371, slip op. at 5–9 (PTAB June 17, 2015); Temporal Power, Ltd. v.
`Beacon Power, LLC, IPR2015-00146, slip op. at 8–11 (PTAB Apr. 27,
`2015) (Paper 10); Dell, Inc. v. Selene Comm’n Techs., LLC, IPR2014-01411,
`slip op. at 21–22 (PTAB Feb. 26, 2015) (Paper 23). As set forth above, we
`stated in our institution decision that Petitioner had shown only that
`Broerman qualifies as section 102(e) art. See Resman, Paper 9, 34. We
`understand Petitioner’s argument concerning its request to submit
`supplemental evidence not to show that the Broerman patent itself was
`available and qualifies as section 102(a) art, but that the disclosure in the
`Broerman patent was so available to the interested public.
`As Patent Owner noted, however, in the ground involving Broerman,
`a United States patent, Petitioner made no mention or any assertion as to the
`additional evidence that Petitioner now seeks to present as supplemental
`evidence. To the extent that Petitioner is seeking to have the Broerman
`patent itself serve as a section 102(a) reference, the supplemental
`information that Petitioner seeks to file is irrelevant to Broerman’s prior art
`status under section 102. The additional web pages, newspaper articles, and
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`3
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`CBM2020-00020
`Patent 7,636,687 B2
`
`declaratory evidence would be additional pieces of art that are not part of
`any ground presented in the Petition, and would do nothing to support the
`Broerman reference itself as qualifying for any publication date for public
`availability other than publication dates that are set forth on the Broerman
`reference itself. Compare 35 U.S.C. § 102(e) (referring to publication date
`of patent application or patent grant), with 35 U.S.C. § 102(a) (stating
`“invention was known or used by others in this country”).
`The key inquiry to determining under which statutory section under
`35 U.S.C. § 102 Broerman fits, however, is whether the reference was made
`“sufficiently accessible to the public interested in the art” before the critical
`date. In re Cronyn, 890 F.2d 1158, 1160 (Fed. Cir. 1989). “A given
`reference is ‘publicly accessible’ upon a satisfactory showing that such
`document has been disseminated or otherwise made available to the extent
`that persons interested and ordinarily skilled in the subject matter or art
`exercising reasonable diligence, can locate it.” Bruckelmyer v. Ground
`Heaters, Inc., 445 F.3d 1374, 1378 (Fed. Cir. 2006) (quoting In re Wyer,
`655 F.2d 221, 226 (CCPA 1981)). Petitioner is not requesting authorization
`to submit supplemental evidence that supports earlier public availability of
`the Broerman patent, but only its disclosed subject matter. As discussed
`above, this we find is not an appropriate use of supplemental evidence.
`As we have stated, “[t]he opportunity to submit additional evidence
`does not allow a petitioner to completely reopen the record, by, for example,
`changing theories after filing a petition.” Hulu, LLC v. Sound View
`Innovations, LLC, IPR2018-01039, Paper 29, 15 (PTAB Dec. 20, 2019)
`(Precedential) (citing Intelligent Bio-Sys., Inc. v. Illumina Cambridge, Ltd.,
`821 F.3d 1359, 1369–70 (Fed. Cir. 2016)). In its Petition, Petitioner states
`
`4
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`CBM2020-00020
`Patent 7,636,687 B2
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`that the Broerman patent, “filed July 7, 1999, issued July 15, 2003, is prior
`art under at least § 102(e) (pre-AIA).” Pet. 27. Petitioner does not seek to
`offer evidence to support any public accessibility of the patent before these
`dates, but seeks to establish that the subject matter of the Broerman patent
`was publicly available prior to these dates using other independent
`references such as web pages, newspaper articles, and a declaration showing
`the public availability of a commercial embodiment of the subject matter of
`the Broerman patent. This constitutes a new theory of unpatentability based
`on these additional references that Petitioner seeks to offer, which is not an
`appropriate use of supplemental information.
`It is
`ORDERED that Petitioner’s request for authorization to file a motion
`for supplemental information is denied.
`
`
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`5
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`CBM2020-00020
`Patent 7,636,687 B2
`
`PETITIONER:
`
`John Yates
`Brooks Tueting
`PATTERSON + SHERIDAN, LLP
`jyates@pattersonsheridan.com
`btueting@pattersonsheridan.com
`
`PATENT OWNER: Ali Dhanani
`Roger Fulghum
`Clarke Stavinoha
`BAKER BOTTS L.L.P.
`Ali.dhanani@bakerbotts.com
`Roger.fulghum@bakerbotts.com
`Clarke.stavinoha@bakerbotts.com
`
`6
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