Page 1
`
`2014 WL 1604334 (Patent Tr. & App. Bd.)
`
`Patent Trial and Appeal Board
`Patent and Trademark Office (P.T.O.)
`
`*1 ELECTRONIC FRONTIER FOUNDATION PETITIONER,
`v.
`PERSONAL AUDIO, LLC PATENT OWNER.
`
`Case IPR2014-00070
`Patent 8,112,504
`
`April 18, 2014
`
`For PETITIONER:
`Richard Pettus
`pettusr@gtlaw.com
`
`Nicholas Brown
`brown@gtlaw.com
`For PATENT OWNER:
`
`Michael Femal
`mfemal@muchshelist.com
`
`James Hanarath
`jhanrath@muchshelist.com
`
`Before TRENTON A. WARD, SHERIDAN K. SNEDDEN, and GREGG I. ANDERSON
`Administrative Patent Judges
`ANDERSON
`Administrative Patent Judge
`
`DECISION
`
`Institution of Inter Partes Review
`
`37 C.F.R. § 42.108
`
`I. INTRODUCTION
`
`On October 30, 2013, Electronic Frontier Foundation (“Electronic Frontier” or “Petitioner”) filed a revised petition re-
`questing inter partes review of claims 31-35 of U.S. Patent No. 8,112,504 (Ex. 1001, “the '504 patent”). Paper 6 (“Pet.”).
`On February 7, 2014, Personal Audio, LLC (“Personal Audio” or “Patent Owner”), filed a preliminary response. Paper
`20 (“Prelim. Resp.”). We have jurisdiction under 35 U.S.C. § 314.
`
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`The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides as follows:
`THRESHOLD.--The Director may not authorize an inter partes review to be instituted unless the Director determines
`that the information presented in the petition filed under section 311 and any response filed under section 313 shows
`that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims chal-
`lenged in the petition.
`
`For the reasons described below, we determine that the present record shows a reasonable likelihood Petitioner will pre-
`vail in showing unpatentability of all the challenged claims. Accordingly, pursuant to 35 U.S.C. § 314, we institute an
`inter partes review for claims 31-35 of the '504 patent.
`
`A. Related Proceedings
`Petitioner indicates the '504 patent is involved in co-pending proceedings, including: (i) Personal Audio, LLC v. CBS
`Corp., No. 2:13-cv-270 (E.D. Tex. Apr. 11, 2013); (ii) Personal Audio, LLC v. NBC Universal Media, LLC, No.
`2:13-cv-271 (E.D. Tex. Apr. 11, 2013); (iii) Personal Audio, LLC v. Ace Broadcasting Network, LLC, No. 2:13-cv-14
`(E.D. Tex. Jan. 7, 2013); (iv) Personal Audio, LLC v. Howstuffworks.com, No. 2:13-cv-15 (E.D. Tex. Apr. 10, 2013); (v)
`Personal Audio, LLC v. Togi Entertainment, Inc., No. 2:13-cv-13 (E.D. Tex. Jan. 7, 2013); (vi) Fox Networks Group,
`Inc. v. Personal Audio, LLC, No. 1:13-cv-11794 (D. Mass. July 26, 2013); and (vii) Personal Audio, LLC v. Fox Broad-
`casting Co., No. 2:13-cv-577 (E.D. Tex. Aug. 6, 2013). Pet. 1-2.
`
`B. The '504 patent
`*2 The '504 patent broadly relates to a player for audio programing, which includes functions that allow the listener to
`control many aspects of the playback. Ex. 1001, 2:21-56. As relevant to the claims under consideration, the '504 patent
`relates to how audio program segments are distributed to client subscriber locations. Ex. 1001, Abstract.
`
`Figure 1 of the '504 patent is reproduced below:
`
`Figure 1 is a block diagram of the invention illustrating the utilization of the Internet to connect host computer 101 to au-
`
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`dio player 103. Ex. 1001, 4:39-42. Host server 101 periodically transmits download compilation file 145 upon receiving
`a request from player 103. Id. at 6:60-62. The compilation file extracts data from library 130 based on the selections of
`the user as specified in the subscriber data and usage log database 143. Id. at 7:3-9. The file is placed in a predetermined
`FTP download file directory and assigned a filename known to the player. Id. at 6:62-64. Using clock 106, at a time de-
`termined by the player, a dial up connection is established via service provider 121 and Internet to FTP server 125, and
`the download compilation is transferred to program data store 107 in the player. Id. at 6:64-7:1. Once downloaded, the
`user plays program data 107 using the functionality of the player. Id. at 4:44-60.
`
`The invention includes the ability for the user to select a program segment, which may represent an episode in a series.
`Ex. 1001, 19:35-38. When a serialized sequence is requested, the host may download less than all of the episodes, when
`all are not yet available. Id. at 19:45-49. Episodes that have not issued yet may be selected. Id. at 20:64-21:3.
`
`C. Exemplary Claims
`Claim 31 is the only independent claim challenged and is reproduced below:
`
`31. Apparatus for disseminating a series of episodes represented by media files via the Internet as said episodes become
`available, said apparatus comprising:
`
`one or more data storage servers,
`
`one or more communication interfaces connected to the Internet for receiving requests received from remotely located
`client devices, and for responding to each given one of said requests by downloading a data file identified by a URL spe-
`cified by said given one of said requests to the requesting client device,
`
`one or more processors coupled to said one or more data storage servers and to said one or more communications inter-
`faces for:
`
`storing one or more media files representing each episode as said one or more media files become available, each of said
`one or more media files being stored at a storage location specified by a unique episode URL;
`
`*3 from time to time, as new episodes represented in said series of episodes become available, storing an updated version
`of a compilation file in one of said one or more data storage servers at a storage location identified by a predetermined
`URL, said updated version of said compilation file containing attribute data describing currently available episodes in
`said series of episodes, said attribute data for each given one of said currently available episodes including displayable
`text describing said given one of said currently available episodes and one or more episode URLs specifying the storage
`locations of one or more corresponding media files representing said given one of said episodes; and
`
`employing one of said one or more communication interfaces to:
`
`(a) receive a request from a requesting client device for the updated version of said compilation file located at said prede-
`termined URL;
`
`(b) download said updated version of said compilation file to said requesting client device; and
`
`(c) thereafter receive and respond to a request from said requesting client device for one or more media files identified by
`one or more corresponding episode URLs included in the attribute data contained in said updated version of said compil-
`ation files.
`
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`Exhibit(s)
`
`Ex. 1019[FN3]
`
`Apr. 22, 1993
`
`Ex. 1020
`
`March 31, 1993 through July
`15, 1994[FN4]
`Jan. 1, 1996[FN6]
`
`Exs. 1008-1011[FN5]
`
`Ex. 1012
`
`Aug. 10, 1995
`
`Ex. 1022
`
`D. Prior Art Relied Upon
`Petitioner relies upon the following prior art references:
`
`Description
`
`Date
`
`Apr. 22, 1993
`
`Abbreviation for Refer-
`ence(s)
`NCSA GotW[FN1]
`
`SurfPunk
`
`Geek of the Week Articles
`
`Patrick/CBC
`
`Compton/CNN
`
`Browser rendering of the
`web page located at
`www.ncsa.uiuc.edu/radio/rad
`io.html[FN2]
`[surfpunk-0080] BUBBLES:
`talk radio; _A New Age_;
`clipper chip
`News articles regarding Geek
`of the Week.
`Andrew S. Patrick, et al,
`CBC Radio on the Internet:
`An Experiment in Conver-
`gence, 21 CANADIAN J. OF
`COMM'N 1, 125-140 (1996)
`Charles L. Compton, Internet
`CNN NEWSROOM: The
`Design of a Digital Video
`News Magazine, Massachu-
`setts Institute of Technology
`(Aug. 10, 1995)
`
`E. The Alleged Grounds of Unpatentability
`*4 Petitioner alleges the following grounds of unpatentability.
`
`Claims
`31-35
`31-35
`31-35
`
`31-35
`31-35
`
`Grounds
`35 U.S.C. § 102(b)
`35 U.S.C. § 102(b)
`35 U.S.C. § 103
`
`35 U.S.C. § 102(a)
`35 U.S.C. § 103
`
`II. ANALYSIS
`
`Reference[s]
`NCSAGotW
`SurfPunk
`NCSAGotW, SurfPunk, and Geek of
`the Week Articles
`Patrick/CBC
`Compton/CNN
`
`A. Claim Construction
`In an inter partes review, claim terms in an unexpired patent are interpreted according to their broadest reasonable con-
`struction in light of the specification of the patent in which they appear. 37 C.F.R. § 42.100(b); Office Patent Trial Prac-
`tice Guide, 77 Fed. Reg. 48,756, 48,766 (Aug. 14, 2012). If an inventor acts as his or her own lexicographer, the defini-
`
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`tion must be set forth in the specification with reasonable clarity, deliberateness, and precision. Renishaw PLC v. Mar-
`poss Societa' per Azioni, 158 F.3d 1243, 1249 (Fed. Cir. 1998). The terms also are given their ordinary and customary
`meaning as would be understood by one of ordinary skill in the art in the context of the disclosure. In re Translogic
`Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007).
`
`1. “episode” (Claims 31-35)
`
`Petitioner proposes “episode” be construed “as a program segment, represented by one or more media files, which is part
`of a series of related segments, e.g. a radio show or a newscast.”Pet. 11-12. Petitioner notes that the specification de-
`scribes that an episode is a program segment that is part of a series (i.e. a sequence of related segments).Id. at 11, (citing
`Ex. 1001, 19:35-42). Patent Owner does not propose a construction for the term.
`
`*5 Petitioner's proposed construction is the broadest reasonable interpretation consistent with the specification, and is
`therefore adopted for this decision.
`
`2. “compilation file” (Claims 31-35)
`
`Petitioner proposes “compilation file” be construed as “any file that contains information about multiple episodes and
`satisfies the other claim requirements.”Pet. 12-13. Patent Owner does not propose a construction for the term. Petitioner
`argues that the specification describes the “compilation file” as simply an ordinary file that contains the information re-
`quired by the claim. Id. (citing Ex. 1001, 6:60-64, 7:10-22).
`
`The specification describes the compilation file as “one or more subscriber and session specific files which contain the
`identification of separately stored sharable files.”Ex. 1001, 7:10-13. Applying the broadest reasonable construction con-
`sistent with the specification, compilation file is construed to mean “a file that contains episode information” for the pur-
`poses of this decision.
`
`3. “media file” (Claims 31-35)
`
`Petitioner proposes that “media file” be construed as “a file with content that can be reproduced as video, audio, and/or
`text.”Pet. 13. Petitioner points to claims 32 and 33 as reciting that the media file includes “digital compressed audio”
`and/or “text data.” Id. (citing Ex. 1001, claims 32-33). Patent owner does not propose a meaning for the term.
`
`The specification does not disclose the term “media files” beyond the recitation of the term in the claims. Neither is the
`term medias described in the specification. The plain and ordinary meaning of media is consistent with Petitioner's pro-
`posed construction of “media files.” Petitioner's construction is the broadest reasonable construction and is consistent
`with the specification and is therefore adopted for this decision.
`
`B. Anticipation by Patrick/CBC (Claims 31-35)
`The '504 patent claims priority through a series of divisional applications, the earliest filed of which is U.S. Patent Ap-
`plication Ser. No. 08/724,813, filed October 2, 1996, now U.S. Patent No. 6,199,076. Ex. 1001, 1:8-17. Petitioner's de-
`clarant, Mr. Schmandt, uses October 2, 1996, as the effective filing date. Ex. 1002 ¶ 4. Based on Mr. Schmandt's declara-
`tion and metadata for the article showing a January 1, 1996 date of publication, Petitioner alleges Patrick/CBC was pub-
`lished January 1, 1996. For purposes of this decision, we therefore assume Exhibit 1012 is prior art dated January 1,
`1996. See Ex. 1002, ¶ 59, Ex. 1013.
`
`*6 Petitioner alleges Patrick/CBC is prior art anticipating claims 31-35 of the '504 patent under 35 U.S.C. § 102(a). Pet.
`16, 35-45. Petitioner relies, in part, on the testimony of Mr. Schmandt. Ex. 1002 ¶¶ 58-71.
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`1. Patrick/CBC Overview
`
`Patrick/CBC discloses an experimental trial to determine, among other things, if there was any demand for regular radio
`programming distributed as digital audio files over the Internet. Ex. 1012, Abstract. Patrick/CBC alleges that the trial is
`“the first time that audio programs produced for traditional radio broadcasts have been made available on the Internet on
`a regular basis.” Id. at 2. [FN7] CBC Radio programming was stored on a server and the resulting program files were
`made available using standard Internet server software. Id. at 2-3.
`
`2. Claims 31-35 as Anticipated by Patrick/CBC
`
`Independent claim 31 is an apparatus claim. The preamble recites, in pertinent part, that a “series of episodes” is dissem-
`inated over the Internet as they become available. Petitioner argues that Patrick/CBC's disclosure of making traditional
`radio broadcasts available over the Internet meets the preamble's language. [FN8] Pet. 35 (citing Ex. 1012, 3, 7; Ex.
`1002, ¶ 64).
`
`Patrick/CBC discloses “Installing the Server,” and that the disclosed trial was conducted on a server that was used as a
`source for Canadian government documents. Ex. 1012, 3. Patrick/CBC discloses that the server could be accessed at
`ftp://www.radio.cbc.ca or http://www.radio.cbc.ca/. Id. at 7. Petitioner relies on this disclosure for the recitation of “data
`storage servers” in claim 31. Pet. 40, Ex. 1002 ¶ 64.
`
`Claim 31 requires requests for media files to be received from “remotely located client devices.” Patrick/CBC discloses
`that the program files for CBC Radio programs were made available via FTP, Gopher, and World Wide Web (WWW)
`using standard Internet server software. Ex. 1012, 2-3. Petitioner asserts that in using FTP, Gopher, and the World Wide
`Web, one of skill in the art would have understood that URLs were used to identify the data file a user was requesting us-
`ing a remotely located client device, as required by claim 31. Pet. 40 (citing Ex. 1002 ¶¶ 60, 62-64).
`
`Claim 31 also recites “downloading a data file identified by a URL,” as specified by the client device. As discussed
`above, Patrick/CBC discloses access to the program files located on a server via FTP, Gopher, and World Wide Web. Ex.
`1012, 3. Petitioner argues that this disclosure meets the “downloading a data file identified by a URL” limitation in claim
`31. Pet. 40 (citing Ex. 1002 ¶ 66).
`
`*7 Patrick/CBC discloses an FM radio receiver was installed in the laboratory to constantly monitor the CBC broadcasts.
`Ex. 1012, 3. Using a ““cron” program, a Sun computer automatically recorded programs and transferred them to the serv-
`er. Ex. 1012, 3. For example, Patrick/CBC discloses that the Quirks & Quarks science magazine show was recorded each
`week, broken down into its component parts, and made available on the server. Id. Patrick/CBC also discloses that radio
`programs were made available “on demand” in that users could request them from the server at any time. Id. at 3. Peti-
`tioner relies, in part, on this disclosure as meeting claim 31's recitation of storing media files as they become available.
`Pet. 41 (citing Ex. 1002 ¶¶ 63-64, 67). Further, Petitioner argues that the media files are located at a specific URL. Id.
`Petitioner argues that these disclosures regarding the radio programs meets the claim 31 requirement that, “from time to
`time, as new episodes represented in said series of episodes become available.”Pet. 41-42 (citing Ex. 1002 ¶¶ 63-66). Ad-
`ditionally, claim 31 requires “displayable text,” and Petitioner argues that Patrick/CBC discloses accompanying text de-
`scribing the episodes. Id. (citing Ex. 1012, 3).
`
`Claim 31 further requires receiving a “request for an updated version of the compilation file,” downloading the updated
`compilation file, and then receiving and responding to a request
`for “one or more corresponding episode
`URLs.”Petitioner cites to Patrick/CBC's disclosure of the HTML construct of the URL for downloading the radio pro-
`gramming as meeting the “compilation file” limitation. Pet. 43 (citing Ex. 1012, 3, 7; Ex. 1002 ¶¶ 65-67).
`
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`Patent Owner argues the petition does not explain adequately what portions of the quoted materials correspond to precise
`claimed elements. Prelim. Resp. 29-30. In addition, Patent Owner contends that the petition admits that, at the end, “the
`trial was not updated during this time.”Id. Patent Owner also argues equipment available to users in 1993 did not neces-
`sarily support downloading data files. Id. at 30. Patent Owner also disputes Petitioner's contention that a link to an epis-
`ode of CBC Radio equates to a specific URL for an episode. Id. at 31-32.
`
`Patrick/CBC discloses storing media files, in the form of radio programing, on a server for later use. Ex. 1012, Abstract.
`A series of programs are stored and made available, i.e., the Quirks & Quarks science magazine show was recorded each
`week, broken down into its component parts, and made available on the server. Id. at 3. New episodes are added as they
`become available. Two newscasts were recorded each day and made available on the server immediately after the broad-
`cast. Id. Thus we are persuaded that the key element of claim 31 as asserted by Patent Owner (Prelim. Resp. 3) is shown
`in Patrick/CBC and explained in the petition. As discussed above, Petitioner has presented sufficient evidence to show
`the remaining elements of claim 31.
`
`*8 Petitioner relies on Mr. Schmandt's testimony that links may be used, like a URL, to take a user to a specific file loca-
`tion. Ex. 1002 ¶¶ 27-33. Additionally, the '504 patent also uses the term “link” in the context of accessing a program seg-
`ment, and as an “Internet link,” such as shown in Figure 1. Ex. 1001, 3:35-53, 7:53-58. Further, FTP downloads are dis-
`closed as specifying the “URLs of the needed files.” Id. at 19:6-9. FTP downloads are disclosed in Patrick/CBC. Ex.
`1012, 2-3. Petitioner asserts that, in using FTP, it would have been understood to a person of ordinary skill in the art that
`URLs were used to identify the data file a user was requesting using a remotely located client device. Ex. 1002 ¶¶ 60,
`62-64. For purposes of this decision, we are persuaded by Petitioner's argument that Patrick/CBC discloses to the person
`of ordinary skill in the art the use of URLs to identify specific file locations.
`
`Patent Owner further argues that in December 1993, when the trial of Patrick/CBC was conducted, adequate technology
`did not exist to download files as claimed. Prelim. Resp. 30-31. Contrary to Patent Owner's argument, however, Patrick/
`CBC identifies the technology used to prepare, download, and play audio files. Ex. 1012, 2 (“Running the Trial Digitiz-
`ing Radio Programs”). That it was not as fast or capable as later developed technology does not appear to be relevant to
`the claims.
`
`We have also reviewed the petition in connection with dependent claims 32-35. In summary, we have reviewed Petition-
`er's analysis and supporting evidence regarding the proposed ground of anticipation by Patrick/CBC, and determine that
`Petitioner, on the record before us, has demonstrated a reasonable likelihood that independent claim 31, and claims 32-35
`dependent from claim 31, are anticipated by Patrick/CBC.
`
`C. Obvious over Compton/CNN (Claims 31-35)
`Petitioner contends that claims of the '504 patent are obvious under 35 U.S.C. § 103 over Compton/CNN (Ex. 1022). Pet.
`16, 45-59. To support this position, Petitioner presents the testimony of Mr. Schmandt. Ex. 1002 ¶¶ 72-85.
`
`1. Compton/CNN Overview
`
`Compton/CNN describes the design of a digital video newsroom based on the video program CNN NEWSROOM. [FN9]
`Ex. 1022, Abstract. Compton/CNN describes that the CNN NEWSROOM uses MPEG digital video and is distributed via
`the World Wide Web on the Internet. Id.
`
`CNN NEWSROOM is disclosed as being distributed via cable television systems as well as directly to schools via satel-
`lite. Ex. 1022, 11. [FN10] Compton/CNN describes that an important aspect of the Internet deployment of CNN NEWS-
`ROOM is the development of a searchable digital library of CNN NEWSROOM programs and segments. Id. at 14. CNN
`
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`NEWSROOM is disclosed as being archived for six months. Id. at 15.
`
`*9 Figure 1 of Compton/CNN is reproduced below.
`
`Figure 1 shows the Table of Contents for a particular day's program. Ex. 1022, 14. Figure 1 further shows the Table of
`Contents as an HTML document that consists of a short summary and an icon or title for each segment of the program,
`where a segment corresponds to a single news story. Id.
`
`Figure 6 of Compton/CNN is reproduced below.
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`Figure 6 illustrates a hardware hierarchy for network video distribution. Ex. 1022, 23-24. Caching proxy servers store
`video content. Id. Only one caching server is required for Internet connectivity. Id. at 23.
`
`Ultimately, video is delivered over the Internet to the subscribing caching servers for display. Ex. 1022, 25. The pro-
`graming includes past episodes of other news programs, sitcoms, and soap operas. Id. at 29.
`
`2. Claims 31-35 as Obvious over Compton/CNN
`
`Compton/CNN discloses that each day of the CNN NEWSROOM program is distributed over the Internet. Ex. 1022, 10.
`Petitioner points to this disclosure as meeting the basic environment set out in the preamble. Pet. 46-47, 53-54.
`
`Compton/CNN shows servers in the form of the NMIS Web Server. Ex. 1022, fig. 6. Petitioner argues these servers meet
`the “data storage servers” recited in claim 31. Pet. 47-48, 54. Petitioner alleges that a person of ordinary skill would have
`understood, at the time the invention was made, that “processors” and the claimed “communications interface” are
`“necessarily contained” in the server once media files are requested over the Internet. Pet. 47-48 (citing Ex. 1002 ¶ 76).
`
`Claim 31 recites storing “one or more media files representing each episode as said one or more media files become
`available” at a “unique episode URL.” Compton/CNN discloses the automatic generation of a WWW user interface for
`daily content. Ex. 1022, 7. Further, Compton/CNN captures video using the FTP protocol and delivers the files to the
`server. Id. at 22. The results can be delivered to “any host on the Internet supporting the FTP protocol.”Id. Petitioner re-
`lies upon these disclosures and the testimony of Mr. Schmandt to argue the limitation is met because links would be un-
`derstood to be unique episode URLs. Pet. 55 (citing Ex. 1002 ¶ 77).
`
`A “compilation file” updated from “time to time, as new episodes represented in said series of episodes become avail-
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`able” is also recited in claim 31. Compton/CNN discloses a Table of Contents, see Figure 1 above, which Petitioner re-
`lies on as a “compilation file.” Pet. 55 (citing Ex. 1002 ¶ 78). Petitioner argues that the displayable text in the Table of
`Contents describes the episode, i.e., “segment.” Pet. 56. The Table of Contents is an HTML file that “was automatically
`updated each day and presented attribute data describing each episode (in this case, the episodes were news segments).”
`Ex. 1022, 13-14, 17-19. Further, the link in the Table of Contents is a URL in that it “specifies the location of one of the
`media files representing the episode.”Pet. 56 (citing Ex. 1002 ¶¶ 24-33).
`
`*10 As to the recitations of claim 31 regarding a “compilation file,” Petitioner relies upon the disclosure in Compton/
`CNN regarding updates to the Table of Contents. Pet. 50 (citing Ex. 1022, 13-14). The Table of Contents is an HTML
`file that includes information about each program or segment, which is updated as new segments are produced. Id. (citing
`Ex. 1022, 14). Compton/CNN discloses that clicking a link downloads a MPEG file to playback. Id. at 25. Petitioner
`points to these features of Compton/CNN as meeting the recited limitations. Pet. 56-57 (citing Ex. 1002 ¶¶ 80, 24-33).
`
`Patent Owner argues Compton/CNN's segments are not “episodes represented by media files.” Prelim. Resp. 32. Further,
`Patent Owner argues that the Table of Contents is not a “compilation file.” Id. at 34. Given our construction of
`““episode” and “compilation file,” we are not persuaded by Patent Owner's arguments. First,
`the “segments” of
`Compton/CNN are programming, i.e., media files. Furthermore, the “segments” disclosed in Compton/CNN also fall
`within our construction of “episodes” as “a program segment, represented by one or more media files, which is part of a
`series of related segments, e.g. a radio show or a newscast.” Additionally, the Table of Contents is a listing of program
`materials available for download to a user. As such, we are not persuaded that the Table of Contents of Compton/CNN is
`not “a file that contains episode information.”
`
`Claim 31 further requires that “from time to time, as new episodes represented in said series of episodes become avail-
`able,” the compilation file is updated. As noted above, Petitioner has cited to the disclosure in Compton/CNN that the
`Table of Contents was automatically updated each day with attribute data describing each episode, i.e., news segments.
`Pet. 56, Ex. 1022, 13-14, Ex. 1002 ¶ 72. In addition, to the extent an updated compilation file is not shown in Compton/
`CNN, Petitioner alleges that element would be obvious. Pet. 45. [FN11] Patent Owner alleges the obviousness grounds
`are conclusory. Prelim. Resp. 3. Patent Owner makes no specific argument as to why Compton/CNN would not render
`claim 31 obvious. Indeed, the only argument made regarding Compton/CNN is that the compilation file is not updated.
`Prelim. Resp. 32-33. For reasons already discussed we disagree that Compton/CNN discloses updating a compilation file.
`Furthermore, given the disclosure of storing multiple episodes of news programing in Compton/CNN in a compilation
`file, updating the compilation file would have been a predictable step and, therefore, obvious to the person of ordinary
`skill in the art. See KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007).
`
`*11 We have also reviewed the petition in connection with dependent claims 32-35. In summary, we have reviewed Peti-
`tioner's analysis and supporting evidence regarding the proposed ground of obviousness by Compton/CNN and determine
`that Petitioner, on the record before us, has demonstrated a reasonable likelihood that independent claim 31, and claims
`32-35 dependent from claim 31, are obvious over Compton/CNN.
`
`D. Anticipation under 35 U.S.C. § 102(b) of Claims 31-35 by NCSA GotW or SurfPunk
`Patent Owner alleges both NCSA GotW and SurfPunk are not printed publications available for inter partes review. Pre-
`lim. Resp. 7-8 (citing 35 U.S.C. § 311 (b), 37 CFR § 42.104 (b)(2) and (b)(4)). More specifically, NCSA GotW and
`SurfPunk are alleged to be grounds for unpatentability based on public use or knowledge. Id. at 7, see35 U.S.C. § 102(a).
`35 U.S.C. § 311 (b) limits the scope of inter partes review to any “ground that could be raised under section 102 or 103
`and only on the basis of prior art consisting of patents or printed publications.”
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`
`Petitioner alleges NCSA GotW is a printed publication because on April 13, 1993, Marc Andreessen, the maker of Mosa-
`ic, published the URL www.ncsa.uiuc.edu/radio/radio.html for NCSA GotW. Pet. 19 (citing Ex. 1018). Petitioner ac-
`knowledges NCSA GotW no longer exists at the URL, but argues that content was copied in SurfPunk. Pet. 17-18. Peti-
`tioner apparently relies on In re Klopfenstein, 380 F.3d 1345, 1350-52 (Fed. Cir. 2004) for the proposition that temporary
`public availability is sufficient to establish that NCSA GotW is a printed publication. Id. at 19.
`
`SurfPunk is alleged to be a technical journal that Petitioner argues was capable of being downloaded as a printed publica-
`tion. Id. (citing Voter Verified, Inc. v. Premier Election Sol'ns, 698 F.3d 1374, 1380-81 (Fed. Cir. 2012). Petitioner rep-
`resents SurfPunk (Ex. 1020) as the SurfPunk Technical Journal dated April 22, 1993, which included a copy of NCSA
`GotW. Id. (citing Declaration of Chris Schmandt, Ex. 1002 ¶ 50, see Pet. 16, Ex. 1002 ¶ 44.a.).
`
`Patent Owner argues that whether a document constitutes a printed publication under 35 U.S.C. § 102 is a question of
`law based upon the underlying facts of each particular case. Prelim. Resp. 9 (citing Cordis Corp. v. Boston Scientific
`Corp., 561 F.3d 1319, 1332-33 (Fed. Cir. 2009)). Further, Patent Owner argues dissemination and public accessibility are
`the keys to the legal determination of whether the prior art reference was “published” in the context of 35 U.S.C. §
`102(b).Id. (citing In re Cronyn, 890 F.2d 1158, 1160 (Fed. Cir. 1989)); see In re Hall, 781 F.2d 897, 899 (Fed. Cir. 1986)
`
`. *
`
`12 Patent Owner argues NCSA GotW was not accessible because even a knowledgeable person of ordinary skill in the
`art would need precise location information to locate it. Prelim. Resp. 10. As such, it is not publicly accessible. Id. Peti-
`tioner relies on Exhibit 1018 and Mr. Adreessen as evidence directing a person seeking access to copy and paste the
`URL, providing the precise direction required. Pet. 10-11. Patent Owner relies on SRI international, Inc. v. Internet Se-
`curity Systems, Inc., 511 F3d 186, 1196-97 (Fed. Cir. 2008), where a paper sent via email and posted on a file transfer
`protocol was not sufficiently publicly accessible to constitute a printed publication because the paper would not have
`been found without precise direction. Id. at 11.
`
`Concerning SurfPunk, Patent Owner alleges it is a private email exchange. Prelim. Resp. 13. As such, SurfPunk is prin-
`ted, but not a printed publication, because it is not publicly accessible. Id.
`
`To determine whether to deny a ground on the basis that a reference is not a ““printed publication,” we decide each case
`on the basis of its own facts. More specifically, the determination of whether a given reference qualifies as a prior art
`“printed publication” involves a case-by-case inquiry into the facts and circumstances surrounding the reference's dis-
`closure to members of the public. In re Klopfenstein, 380 F.3d at 1350. “A reference is publicly accessible upon a satis-
`factory showing that such document has been disseminated or otherwise made available to the extent that persons inter-
`ested and ordinarily skilled in the subject matter or art exercising reasonable diligence, can locate it.”Kyocera Wireless
`Corp. v. ITC, 545 F.3d 1340, 1350 (Fed. Cir. 2008) (internal citation and quotation marks omitted).
`
`Petitioner acknowledges GotW was only temporarily available, and no longer exists at the URL location. Pet. 17-18. Pe-
`titioner's evidence shows the earliest existing copy of the GotW, located using the “Wayback Machine,” is dated Decem-
`ber 20, 1996. Ex. 1003 ¶ 17. Petitioner fails to provide any evidence that the GotW document, Exhibit 1019, could be
`found anywhere other than directly through the URL. [FN12] Additionally, while the URL for GotW is found in Mr. An-
`dreessen's announcement contained in Exhibit 1018, this fact alone is not dispositive of the sufficiency of the public
`availability of GotW. For example, there is a question of whether Exhibit 1018, itself, was publicly available such that
`the URL would likewise be available.
`
`On its face, Exhibit 1018 states that it was “Posted in group: alt.radio.internet.” Petitioner fails to provide any informa-
`tion regarding this posting, the group, who is in the group, or the size of the group. Neither Mr. Schmandt nor Mr. Mal-
`
`© 2014 Thomson Reuters. No Claim to Orig. US Gov. Works.
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`amud (Exs. 1002 and 1003) provide any insight about Exhibit 1018 or its availability.
`
`*13 Based on the record before us, we determine that Petitioner fails to provide sufficient factual support that Exhibit
`1018 was publicly available. More particularly, Petitioner fails to provide sufficient factual support that the person of or-
`dinary skill, exercising reasonable diligence, would have been able to find the URL based on Exhibit 1018. Kyocera, 545
`F.3d at 1350 (reference must be “disseminated or otherwise made available to the extent that persons interested and or-
`dinarily skilled in the subject matter or art exercising reasonable diligence, can locate it”).
`
`Additionally, we determine that Petitioner failed to provide suffi