Trials@uspto.gov
`571-272-7822
`
` Paper No. 12
` Entered: August 12, 2015
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`DSS TECHNOLOGY MANAGEMENT, INC.,
`Patent Owner.
`____________
`
`Case IPR2015-00373
`Patent 6,128,290
`____________
`
`
`
`Before JAMESON LEE, MATTHEW R. CLEMENTS, and
`CHARLES J. BOUDREAU, Administrative Patent Judges.
`
`BOUDREAU, Administrative Patent Judge.
`
`
`DECISION
`Petitioner’s Request for Rehearing
`37 C.F.R. § 42.71(d)
`
`
`

`
`IPR2015-00373
`Patent 6,128,290
`
`
`I. INTRODUCTION
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`Petitioner Apple Inc. (“Apple”) filed a request for rehearing
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`(Paper 10, “Req. Reh’g”), requesting rehearing, reconsideration, and reversal
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`of our determination not to institute inter partes review of claims 9 and 10 of
`
`U.S. Patent No. 6,128,290 (“the ’290 patent”) under 35 U.S.C. § 103 over
`
`Barber.1 For the reasons that follow, Apple’s request for rehearing is denied.
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`II. BACKGROUND
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`In its Petition, Apple challenged the patentability of claims 6, 7, 9, and
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`10 of the ’290 patent on the following three grounds:
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`Reference(s)
`
`Basis
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`Claims Challenged
`
`Barber
`
`Natarajan2 and Neve3
`
`Mahany4
`
`§ 103(a)
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`§ 103(a)
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`§ 103(a)
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`9, 10
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`6, 7, 9, 10
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`6, 7
`
`
`Pet. 9, 11–60. In an institution decision entered on June 25, 2015, we
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`concluded that Apple established a reasonable likelihood that it would
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`prevail in challenging the patentability of claims 6, 7, 9, and 10 of the
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`’290 patent under 35 U.S.C. § 103(a) over the combination of Natarajan and
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`Neve, as well as in challenging claims 6 and 7 over Mahany, and we
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`instituted inter partes review on those two grounds. Paper 8, 11–21
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`(“Dec.”). Because Apple did not, however, make a sufficient preliminary
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`1 Thomas J. Barber Jr., BODYLAN™: A LOW-POWER COMMUNICATIONS
`SYSTEM (M.S. thesis, Massachusetts Institute of Technology) (Ex. 1002,
`“Barber”)
`2 U.S. Patent No. 5,241,542 (Ex. 1003)
`3 U.S. Patent No. 4,887,266 (Ex. 1004)
`4 U.S. Patent No. 5,696,903 (Ex. 1010)
`
`
`
`2
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`

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`IPR2015-00373
`Patent 6,128,290
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`showing that Barber is a “printed publication” within the meaning of
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`35 U.S.C. § 102, i.e., that Barber was publicly accessible before the critical
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`date, we declined to institute inter partes review based on Apple’s proposed
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`challenge over Barber. Id. at 9–11. Apple now argues, inter alia, that we
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`misapprehended the law, overlooked evidence, and “acted contrary to the
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`procedural framework of inter partes review and the highly factual nature of
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`the printed publication inquiry” in our determination not to institute review
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`over Barber. Req. Reh’g 1.
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`III. STANDARD OF REVIEW
`
`When rehearing a decision on petition, the Board reviews the decision
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`for an abuse of discretion. See 37 C.F.R. § 42.71(c). An abuse of discretion
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`occurs when a “decision [i]s based on an erroneous conclusion of law or
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`clearly erroneous factual findings, or . . . a clear error of judgment.”
`
`PPG Indus. Inc. v. Celanese Polymer Specialties Co., 840 F.2d 1565, 1567
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`(Fed. Cir. 1988). “The burden of showing that a decision should be
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`modified lies with the party challenging the decision.” Office Patent Trial
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`Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012). In its request
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`for rehearing, the dissatisfied party must (1) “specifically identify all matters
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`the party believes the Board misapprehended or overlooked” and (2) identify
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`the place “where each matter was previously addressed.” 37 C.F.R. §
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`42.71(d); Office Patent Trial Practice Guide, 77 Fed. Reg. at 48,768. With
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`these principles in mind, we address the arguments presented by Apple in
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`turn.
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`
`
`3
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`

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`IPR2015-00373
`Patent 6,128,290
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`
`IV. ANALYSIS
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`A. Patent Owner was not obligated to raise an argument in its
`Preliminary Response concerning the public accessibility of Barber, and we
`do not understand Patent Owner to have conceded that issue
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`Apple contends in its request for rehearing that the Board “overlooked
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`Patent Owner’s concession of Barber’s public accessibility.” Req. Reh’g 5
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`(boldface omitted). According to Apple, “Patent Owner did not argue in that
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`Barber fails to qualify as prior art for lack of public accessibility or that the
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`stamped date on Barber’s cover does not establish a publication date.” Id. at
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`4. “To the contrary,” Apple asserts, “Patent Owner conceded the public
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`accessibility of Barber, stating that ‘Barber did not become publicly
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`available at least until April 11, 1996.’” Id. at 5 (boldface and italics
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`omitted) (quoting Prelim. Resp. 20). “For this reason alone,” Apple
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`contends, “the Board should have addressed the merits of the proposed
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`ground of invalidity based on Barber.” Id.
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`Contrary to Apple’s contentions, the Board did not overlook the fact
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`that Patent Owner DSS Technology Management, Inc. (“DSS”) did not raise
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`an argument in its Preliminary Response concerning the public accessibility
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`of Barber. Although the Board takes into account a patent owner’s
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`preliminary response, if such a response is filed, 37 C.F.R. § 42.108(c), the
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`filing of a preliminary response is optional, and we do not construe a patent
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`owner’s failure to raise any particular argument in a preliminary response as
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`a concession or waiver. Whether or not a preliminary response is filed, we
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`are constrained, as explained in our institution decision, to decide whether to
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`institute a trial based on “the information presented in the petition.” Dec. 11
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`(citing 35 U.S.C. § 314(a)). In this case, for the reasons stated in the
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`institution decision and in section IV.B below, the information presented in
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`
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`4
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`

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`IPR2015-00373
`Patent 6,128,290
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`Apple’s Petition was insufficient to demonstrate that Barber is a printed
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`publication within the meaning of 35 U.S.C. §§ 102 and 311(b) such that it
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`would be available as prior art in an inter partes review proceeding.
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`Moreover, DSS’s statement that “Barber did not become publicly
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`available at least until April 11, 1996” is not reasonably read as a concession
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`of Barber’s public availability on April 11, 1996, or any other date. Req.
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`Reh’g 5. In the context of DSS’s argument that claims 9 and 10 are entitled
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`to the benefit of the March 6, 1996 filing date of the ’695 application from
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`which the ’290 patent claims priority, DSS’s statement is more naturally
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`read merely as an assertion that Barber was not publicly available on March
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`6, 1996. See Prelim. Resp. 5. In any event, to the extent that DSS’s
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`statement constitutes an admission, that, by itself, is insufficient to establish
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`that the public interested in the art could access Barber prior to the critical
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`date of the ’290 patent. See In re Cronyn, 890 F.2d 1158, 1160 (Fed. Cir.
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`1989); In re Wyer, 655 F.2d 221, 226 (CCPA 1981) (noting the key inquiry
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`is whether the reference was made “sufficiently accessible to the public
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`interested in the art” before the critical date.). Admission by DSS does not
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`mean the Board would refrain from making an assessment in that regard.
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`B. The record evidence is insufficient to qualify Barber as a “printed
`publication” within the meaning of §§ 102 and 311(b)
`
`Pursuant to 35 U.S.C. § 314(a), Apple had the burden to establish in
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`its Petition a reasonable likelihood of success, including, among other
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`things, making a threshold showing that Barber is a “printed publication”
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`within the meaning of 35 U.S.C. §§ 102 and 311(b). As we explained in the
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`institution decision, Apple did not satisfy its burden. Dec. 10–11. Apple
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`submitted no evidence, for example, to establish that the thesis was indexed,
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`
`
`5
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`

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`IPR2015-00373
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`cataloged, and shelved in the university library prior to the filing of the ’999
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`application. See Cronyn, 890 F.2d at 1161; cf. In re Hall, 781 F.2d 897
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`(Fed. Cir. 1986).
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`Apple argues the Board misapprehended the weight of the evidence in
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`the record. Req. Reh’g 5. According to Apple, “on its face, Barber includes
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`a stamped date of April 11, 1996 from the MIT Library,” and “[t]his alone
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`leads to the logical conclusion that Barber was publicly accessible as of the
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`stamped date.” Id.
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`We disagree. First, as explained in the institution decision, the
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`stamped date on the face of Barber is a hearsay statement to the extent Apple
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`is relying on it for the truth of what it states, and Apple has not established
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`that any hearsay exception or exclusion applies. Dec. 10. Second, as also
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`explained in the institution decision, even if Apple had established that the
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`stamp was admissible, which it did not, the stamp would then be evidence
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`only of when Barber was archived. Id. at 10–11. In the absence of any
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`competent evidence on the record that a thesis, when “archived” by the
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`Massachusetts Institute of Technology (“MIT”) Libraries, is “available to
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`the extent that persons interested and ordinarily skilled in the subject matter
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`or art[,] exercising reasonable diligence, can locate it,” the archive date
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`cannot establish when, if ever, Barber became publicly available. In re
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`Lister, 583 F.3d 1307, 1311 (Fed. Cir. 2009); see also Bruckelmyer v.
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`Ground Heaters, Inc., 445 F.3d 1374, 1378 (Fed. Cir. 2006); In re Cronyn,
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`890 F.2d 1158, 1161 (Fed. Cir. 1989). Simply put, an uncorroborated
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`archive date stamp unsupported by evidence linking archiving with public
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`accessibility is insufficient to establish a threshold showing for printed
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`publication status. More is required of Apple to satisfy its burden under §
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`6
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`IPR2015-00373
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`314(a), especially given the controlling case law from the United States
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`Court of Appeals for the Federal Circuit with respect to establishing whether
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`a paper or thesis is made sufficiently accessible to the public interested in the
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`art to qualify it as a prior art printed publication.
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`Apple additionally contends, “both Apple and Dr. Grimes assert that
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`April 11, 1996 is Barber’s publication date.” Req. Reh’g 5–6. More
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`specifically, Apple asserts that Dr. Grimes, “a former University professor
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`and author of dozens of publications,” reviewed Barber and “declared that it
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`was ‘submitted January 30, 1996, [and] archived in Massachusetts Institute
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`of Technology Libraries April 11, 1996.’” Id. at 3 (citing Ex. 1008 ¶ 8).
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`But Apple does not point to any evidence—nor can we discern any in either
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`Dr. Grimes’s declaration (Ex. 1008) or Dr. Grimes’s résumé (Ex. 1009)—
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`that would reasonably suggest either (1) that Dr. Grimes has personal
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`knowledge as to when and how Barber was made available to the public or
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`(2) that Dr. Grimes has the sort of specialized knowledge of the MIT
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`Libraries’ thesis archiving procedures that would enable him to provide
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`expert testimony regarding the public accessibility of the Barber thesis.
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`Cf. Fed. R. Evid. 702(a). Dr. Grimes’s declaration is considerably weaker in
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`this regard than a declaration submitted in Dish Network L.L.C. v. Dragon
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`Intellectual Property, LLC, IPR2015-00499, in which inter partes review
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`was denied on otherwise similar facts. IPR2015-00499, Paper 7 (PTAB
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`July 17, 2015). As in the present case, the petitioner in Dish Network
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`asserted an MIT archive stamp date as evidence of publication of a student
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`thesis. Id., slip op. at 10. Unlike in the present case, however, the petitioner
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`in Dish Network also supported its contention with a declaration from the
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`thesis author’s advisor, who testified that he “was familiar with the process
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`7
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`IPR2015-00373
`Patent 6,128,290
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`for publication of theses by MIT” at the relevant time; that “[a] thesis would
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`be transmitted to the MIT Library, where it would be indexed in the
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`Library’s catalog, and made available for public viewing and copying”; and
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`that “[t]o the best of [his] understanding, the stamped [Archive] date . . . on
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`the front of [the thesis] indicates the date [the thesis] was cataloged and
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`publicly available in the MIT Library.” Id. In determining that Petitioner
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`had not submitted sufficient evidence to establish that the thesis in that case
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`qualifies as a printed publication under 35 U.S.C. § 102, the Board explained
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`that the declarant’s testimony “lacks personal knowledge as to when and
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`how the . . . thesis was made available to the public, and his testimony also
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`is insufficient evidence of the library’s specific practices as to indexing and
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`cataloging papers in the relevant time period between [the thesis’]s
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`purported publication in 1989 and the [subject] patent’s . . . priority date.”
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`Id. at 11. The Board further explained, “[s]pecifically, [the declarant’s]
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`testimony is insufficient evidence as to ‘whether the research tools available
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`would have been sufficient to permit an interested researcher to locate and
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`examine the reference.’” Id. (quoting Lister, 583 F.3d at 1311).
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`Accordingly, Dr. Grimes’s conclusory “declaration” of Barber’s
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`archive date, which does no more than repeat an assertion in the Petition, is
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`entitled to little or no weight. See Dell, Inc. v. Selene Commc’n Techs., LLC,
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`IPR2014-01411, Paper 23, slip op. at 22–23 (PTAB Feb. 26, 2015)
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`(explaining that an expert declaration is not enough to prove a prior art
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`reference’s publication date where the expert declaration merely repeats
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`assertions made by the petitioner).
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`8
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`IPR2015-00373
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`C. Controlling case law establishes that Apple should have presented
`adequate facts of public accessibility regarding Barber sufficient to qualify
`it as prior art to the ’290 patent
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`Apple argues that we misapprehended the statutes and the regulations
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`governing inter partes proceedings, “creating an irrebuttable presumption
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`that the date stamped on a printed publication is not what it purports to be.”
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`Req. Reh’g 1. According to Apple, the Board “imposed an arbitrary
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`requirement on Apple to preemptively provide additional evidence that
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`Barber qualifies as prior art.” Id. at 10 (boldface omitted). Apple contends,
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`“[n]umerous Board decisions establish a pattern of letting prior art issues
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`play out between the parties,” and “[t]o effectively impose a preemptive
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`corroboration requirement on Apple in this proceeding, but not on other
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`petitioners, is arbitrary and capricious.” Id. at 6–7. According to Apple,
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`“the regulations governing inter partes review specifically provide the
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`parties with a mechanism for objecting to evidence submitted during the
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`‘preliminary proceeding.’” Id. at 11 (citing 37 C.F.R. § 42.64(b)(1)). Apple
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`argues that the Board “misapprehended the purpose of 37 C.F.R § 42.64(b)
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`and acted contrary to an established pattern of conduct by the Board.” Id. at
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`6 (boldface omitted); see also id. at 11–12. According to Apple, “the Board
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`should allow the parties to further develop the record, if they find it
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`necessary to do so.” Id. at 13.
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`Apple’s assertions mischaracterize our institution decision and
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`disregard the burden uniquely placed on petitioners under 35 U.S.C.
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`§ 314(a). Contrary to Apple’s suggestion, we did not create an “irrebuttable
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`presumption” that the date stamped on the cover of Barber “is not what it
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`purports to be.” Req. Reh’g 1. Indeed, we did not make any determination
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`or reach any conclusion at all as to when, if ever, Barber was made
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`
`
`9
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`IPR2015-00373
`Patent 6,128,290
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`sufficiently accessible to the public interested in the art to qualify it as a
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`printed publication. Instead, our determination that Apple did not satisfy its
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`burden under § 314(a) rested on the lack of sufficient evidence offered by
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`Apple in its Petition to support its conclusory assertion that Barber was
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`published “at least as early as April 11, 1996,” Barber’s alleged archive date.
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`See Pet. 9. If Barber was in fact publicly accessible on April 11, 1996, as
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`Apple alleges, there is no reason apparent from this record why Apple could
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`not have provided competent evidence with its Petition sufficient to make a
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`threshold showing of that fact, consistent with Board precedent under
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`§ 314(a).5
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`Apple’s arguments based on 37 C.F.R. § 42.64(b) are also
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`unpersuasive. Although § 42.64(b)(2) contemplates the filing of
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`supplemental evidence by a party relying on evidence to which an objection
`
`has been timely served, § 42.64(b) does not permit a party to withhold
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`evidence necessary to establish a reasonable likelihood of success, including,
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`5 See, e.g., Symantec Corp. v. Trustees of Columbia Univ. in the City of N.Y.,
`IPR2015-00370, Paper 15, slip op. at 2–4 (PTAB Aug. 7, 2015) (denying
`rehearing of denial of institution of inter partes review where petition did
`not sufficiently qualify thesis as a “printed publication”); Dish Network,
`IPR2015-00499, Paper 7, slip op. at 10–11; Temporal Power, Ltd. v. Beacon
`Power, LLC, IPR2015-00147, Paper 10, slip op. at 3–7 (PTAB June 10,
`2015) (same); Actavis v. Research Corp. Techs., IPR2014-01126, Paper 21,
`slip op. at 10–13 (PTAB Jan. 9, 2015) (denying institution of inter partes
`review where petition did not sufficiently qualify thesis as a “printed
`publication”); Cisco Systems v. Constellation Techs., IPR2014-01085, Paper
`11, slip. op. at 7–9 (PTAB Jan. 9, 2015) (denying institution of inter partes
`review where petition did not sufficiently qualify reference as a “printed
`publication”); Square, Inc. v. Unwired Planet, LLC, CBM2014-00156, Paper
`11, slip op. at 17–20 (PTAB Dec. 24, 2014) (denying institution of covered
`business method review where petition did not sufficiently qualify reference
`as a “printed publication”).
`
`
`
`10
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`IPR2015-00373
`Patent 6,128,290
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`among other things, making a threshold showing that a reference is a
`
`“printed publication” within the meaning of 35 U.S.C. §§ 102 and 311(b).
`
`As explained above, we are required under 35 U.S.C. § 314(a) to decide
`
`whether to institute a trial based on “the information presented in the
`
`petition.” Because Apple did not present in its Petition competent evidence
`
`qualifying Barber as prior art to the ’290 patent, we correctly concluded that
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`Apple did not demonstrate a reasonable likelihood that it would prevail at
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`trial in challenging claims 9 and 10 of the ’290 patent over Barber.
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`V. CONCLUSION
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`For the foregoing reasons, Apple has not demonstrated that we abused
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`our discretion by not instituting inter partes review of claims 9 and 10 of the
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`’290 patent over Barber.
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`Accordingly, it is ORDERED that Apple’s request for rehearing is
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`VI. ORDER
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`denied.
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`
`
`11
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`

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`IPR2015-00373
`Patent 6,128,290
`
`For PETITIONER:
`
`David K.S. Cornwell
`davidc-PTAB@skgf.com
`
`Mark W. Rygiel
`mrygiel-PTAB@skgf.com
`
`
`
`For PATENT OWNER:
`
`Andriy Lytvyn
`andriy.lytvyn@smithhopen.com
`
`Anton J. Hopen
`anton.hopen@smithhopen.com
`
`Nicholas Pfeifer
`nicholas.pfeifer@smithhopen.com
`
`
`
`12