Trials@uspto.gov
`571-272-7822
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` Paper 14
`Entered: October 20, 2015
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`DISH NETWORK L.L.C.,
`Petitioner,
`
`v.
`
`DRAGON INTELLECTUAL PROPERTY, LLC,
`Patent Owner.
`____________
`
`Case IPR2015-00499
`Patent 5,930,444
`____________
`
`
`
`Before NEIL T. POWELL, STACEY G. WHITE, J. JOHN LEE,
`Administrative Patent Judges.
`
`WHITE, Administrative Patent Judge.
`
`
`DECISION
`Petitioner’s Request for Rehearing
`37 C.F.R. § 42.71(d)
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`
`

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`IPR2015-00499
`Patent 5,930,444
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`
`I. INTRODUCTION
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`Dish Network L.L.C (“Petitioner”) requests rehearing (Paper 9, “Req.
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`Reh’g”) of our Decision Instituting Inter Partes Review (Paper 7,
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`“Decision” or “Dec.”) of U.S. Patent No. 5,930,444 (“the ’444 patent”).
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`Petitioner seeks rehearing, reconsideration, and reversal of our determination
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`not to institute inter partes review of the ’444 patent under 35 U.S.C. §§ 102
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`and 103 over several grounds based upon Truog.1 In our Decision, “we
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`determine[d] that Petitioner ha[d] not provided sufficient evidence to
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`establish that Truog qualifies as a printed publication.” Dec. at 11.
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`Petitioner asserts that the Board erred because (1) we overlooked or
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`misapprehended arguments and evidence as to Truog’s status as prior art to
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`the ’444 patent, and (2) we misapplied the “reasonable likelihood” standard.
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`Req. Reh’g 1. Petitioner also argues that review should have been instituted
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`on claim 10 over an additional ground because “no injustice would result”
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`from granting review on the ground that we declined to institute. Id. at 11–
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`12. For the reasons that follow, Petitioner’s request for rehearing is denied.
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`II. BACKGROUND
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`In the Petition, the claims of the ’444 patent were challenged on the
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`following grounds:
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`Reference(s)
`Truog
`Truog
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`Basis
`§ 102
`§ 103
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`Claim(s) Challenged
`1, 5, 6, 8, and 14
`1, 5, 6, 8–10, and 14
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`1 Michael R. Truog, THE TELEVISION PAUSE FUNCTION (May 1989)
`(Bachelor of Science in Electrical Engineering Thesis, Massachusetts
`Institute of Technology) (on file with Massachusetts Institute of Technology
`Library) (“Truog”) (Ex. 1002).
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`
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`2
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`

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`IPR2015-00499
`Patent 5,930,444
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`
`Reference(s)
`Truog and Yifrach2
`Truog and Vogel3
`Truog, Yifrach, and Vogel
`Truog and Ulmer4
`Truog, Yifrach, and Ulmer
`Goldwasser5 and Yifrach
`Goldwasser, Yifrach, and Vogel
`Goldwasser, Yifrach, and Ulmer
`
`Basis
`§ 103
`§ 103
`§ 103
`§ 103
`§ 103
`§ 103
`§ 103
`§ 103
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`Claim(s) Challenged
`1, 5–10, and 14
`2–4 and 13
`2–4 and 13
`10
`10
`1, 7–10, and 14
`2–4 and 13
`10
`
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`Pet. 18–59. In our Decision, we concluded that Petitioner established a
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`reasonable likelihood that it would prevail in challenging the patentability of
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`claims 1, 7–10, and 14 over Goldwasser and Yifrach and claims 2–4 and 13
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`over Goldwasser, Yifrach, and Vogel. Dec. 20. Petitioner did not, however,
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`make a sufficient showing that Truog is a “printed publication” within the
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`meaning of 35 U.S.C. § 102, i.e., that Truog was publicly accessible before
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`the critical date and, thus, we denied Petitioner’s request to institute inter
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`partes review based on the proposed challenges over Truog. Id. at 10–12.
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`III. STANDARD OF REVIEW
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`When rehearing a decision, the Board reviews the decision for an
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`abuse of discretion. See 37 C.F.R. § 42.71(c). An abuse of discretion occurs
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`when a “decision [i]s based on an erroneous conclusion of law or clearly
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`erroneous factual findings, or . . . a clear error of judgment.” PPG Indus.
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`2 US 5,126,982, filed Sept. 10, 1990, issued June 30, 1992 (“Yifrach”)
`(Ex. 1003).
`3 PCT Pub. WO 90/15507, published Dec. 13, 1990 (“Vogel”) (Ex. 1004).
`4 PCT Pub. WO 89/12896, published Dec. 28, 1989 (“Ulmer”) (Ex. 1006).
`5 US 5,241,428, filed Mar. 12, 1991, issued Aug. 31, 1993 (“Goldwasser”)
`(Ex. 1005).
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`3
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`IPR2015-00499
`Patent 5,930,444
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`Inc. v. Celanese Polymer Specialties Co., 840 F.2d 1565, 1567 (Fed. Cir.
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`1988). “The burden of showing that a decision should be modified lies with
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`the party challenging the decision.” Office Patent Trial Practice Guide, 77
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`Fed. Reg. 48,756, 48,768 (Aug. 14, 2012). In its request for rehearing, the
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`dissatisfied party must (1) “specifically identify all matters the party believes
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`the Board misapprehended or overlooked” and (2) identify the place “where
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`each matter was previously addressed.” 37 C.F.R. § 42.71(d); Office Patent
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`Trial Practice Guide, 77 Fed. Reg. at 48,768. We address Petitioner’s
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`arguments with these principles in mind.
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`IV. ANALYSIS
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`A. Evidence of Public Accessibility
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`Petitioner maintains that it submitted sufficient evidence to support its
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`arguments concerning the public accessibility of an undergraduate thesis
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`authored by Michael R. Truog titled “The Television Pause Function.” Req.
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`Reh’g 3–11. Specifically, Petitioner argues that the Declaration of Walter
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`Bender, Mr. Truog’s thesis advisor, was sufficient to show public
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`accessibility. Id. at 3. We, however, fully reviewed Mr. Bender’s
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`Declaration, and Petitioner has not persuaded us that any evidence or
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`argument was overlooked or misapprehended.
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`As noted in the Decision, Mr. Bender testified that he “was familiar
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`with the process for publication of theses by MIT at the time of the Truog
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`Thesis.” Dec. 10 (citing Ex. 1009 ¶ 4). As to the procedure for publication
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`of theses, he stated that “[o]nce accepted the thesis would be transmitted to
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`the MIT Library, where it would be indexed in the Library’s catalog, and
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`made available for public viewing and copying. The theses would generally
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`be indexed and publically available within a month or two of submission.”
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`4
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`IPR2015-00499
`Patent 5,930,444
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`Id. As to the specific Truog thesis he testified that “[t]o the best of my
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`understanding the stamped date of June 16, 1989 on the front of Exhibit
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`1002 indicates the date the Truog Thesis was cataloged and publically
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`available in the MIT Library.” Id. ¶ 5.
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`In the Decision, we determined that “Mr. Bender’s testimony lacks
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`personal knowledge as to when and how the Truog thesis was made
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`available to the public, and his testimony also is insufficient evidence of the
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`library’s specific practices as to indexing and cataloging papers in the
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`relevant time period between Truog’s purported publication in 1989 and the
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`’444 patent’s 1992 priority date.” Dec. 11. For reasons discussed below, we
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`are not persuaded of error in this determination. Mr. Bender’s testimony
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`does not provide sufficient evidence of either general library practice or the
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`specific facts surrounding the purported publication of Mr. Truog’s thesis.
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`Petitioner relies heavily on In re Hall, 781 F.2d 897 (Fed. Cir. 1986).
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`In that case, the Federal Circuit affirmed a Board decision sustaining the
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`rejection of certain claims of a reissue application. 781 F.2d at 897. As
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`noted in Hall, “the proponent of the publication bar must show that prior to
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`the critical date the reference was sufficiently accessible, at least to the
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`public interested in the art, so that such a one by examining the reference
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`could make the claimed invention without further research or
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`experimentation.” Id. at 899. Hall relied upon “the librarian’s affidavit of
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`express facts regarding the specific dissertation of interest and his
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`description of the routine treatment of dissertations in general, in the
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`ordinary course of business in his library.” Id. at 898 (emphasis in original).
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`In a later case, In re Lister, 583 F.3d 1307 (Fed. Cir. 2009), the Federal
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`Circuit discussed several public accessibility cases, including Hall, and
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`5
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`IPR2015-00499
`Patent 5,930,444
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`noted that the critical difference between Hall and other cases was the
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`evidence of the dissertation being indexed, cataloged, and shelved. 583 F.3d
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`at 1312. Then, the Federal Circuit contrasted Hall with In re Cronyn, 890 F.
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`2d 1158 (Fed. Cir. 1989), where public accessibility was not shown because
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`the theses at issue were indexed by author name and, thus, “they had not
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`been either cataloged or indexed in a meaningful way.” Lister, 583 F.3d at
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`1312 (citing Croynyn, 890 F. 2d at 1161).
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`Here, Mr. Bender does not provide testimony sufficient for us to
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`determine whether Truog was cataloged or indexed in a meaningful way. As
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`noted in the Decision, Mr. Bender’s testimony is insufficient evidence as to
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`whether one of ordinary skill in the art could locate and examine the
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`reference. Dec. 11 (quoting Lister, 583 F.3d at 1311). Contrary to
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`Petitioner’s argument, this is not a narrow bright-line rule. See Req.
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`Reh’g 5. There are many ways to show that a purported reference is
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`available to the interested public; we examined the information before us
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`and found it to be insufficient. See Kyocera Wireless Corp. v. Int’l Trade
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`Com’n, 545 F.3d 1340, 1351 (Fed. Cir. 2008) (noting that “there are many
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`ways in which a reference may be disseminated to the interested public” and
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`assessing “public accessibility on a case-by-case basis”). Mr. Bender’s
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`testimony that theses “would generally be indexed and publically available
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`within a month or two of submission” does not provide any indication as to
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`how the reference may be found. Thus, we did not find the Bender
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`Declaration to be sufficient to show public accessibility.
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`Similarly, we found the purportedly corroborating evidence to be
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`lacking as well. Petitioner directs us to the MIT Libraries Archives stamp
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`on the front of the reference. Req. Reh’g 9. This stamp bears a date of June
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`6
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`IPR2015-00499
`Patent 5,930,444
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`16, 1989. Ex. 1002, 1. While this may show receipt of the document on that
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`date it does not indicate what was done with the reference at that time and
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`whether or how it was made accessible. See Lister, 583 F.3d at 1314
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`(finding that a document was available in the U.S. Copyright Office, but that
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`was not the end of the inquiry because the court also must consider “whether
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`anyone would have been able to learn of its existence and potential
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`relevance prior to the critical date”). Petitioner also directs us to a print out
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`from the Barton MIT Libraries’ Catalog. Req. Reh’g (citing Ex. 1002, 58–
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`59). This document, however, bears a December 17, 2014 date and a 2003
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`copyright date. Id. It does not inform us as to whether or how Troug was
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`indexed prior to the critical date. Petitioner also directs us to one line of
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`pseudocode contained within Truog. Req. Reh’g 10; see also Ex. 1009, 51–
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`52 (listing in “Appendix C: Pal Program” the title of the program, the name
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`of the author, and then stating “Electronic Publishing Group May 23,
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`1989”). First, we note that this line was not referenced in the Petition so it
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`could not have been misapprehended or overlooked. Second, we note that
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`there is no explanation as to the meaning or significance of this phrase.
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`Finally, Petitioner directs us to the copyright date of 1989, but a copyright
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`date alone does not inform us as to whether one of ordinary skill could have
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`located this reference. See Req. Reh’g 10; see also Lister, 583 F.3d at 1314.
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`Thus, for all of the foregoing reasons we are not persuaded that
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`argument or evidence regarding the alleged public associability was
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`overlooked or misapprehended.
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`C. Proper Standard Applied
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`Petitioner argues that we improperly applied a heightened standard of
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`proof in analyzing whether Troug is prior art to the ’444 patent. Req.
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`7
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`IPR2015-00499
`Patent 5,930,444
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`Reh’g 11. According to Petitioner its filings “included a wealth of evidence
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`demonstrating that Truog was published prior to the ’444 patent’s critical
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`date.” Id. Petitioner contends that we failed to explain how such evidence
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`could fall short of the reasonable likelihood standard. Id.
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`Our determination that Petitioner did not satisfy its burden under
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`§ 314(a) rested on the lack of sufficient evidence offered in the Petition to
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`support its assertion that Truog was prior art to the challenged claims. Our
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`decision not to institute on grounds based on Truog due to a lack of
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`sufficient evidence is consistent with prior Board decisions under § 314(a).6
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`Because Petitioner did not present in its Petition evidence qualifying
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`sufficiently Truog as prior art to the ’444 patent, we correctly concluded that
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`Petitioner did not demonstrate a reasonable likelihood that it would prevail
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`at trial in challenging claims on grounds that were based in whole or in part
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`on Truog.
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`C. Ground 10
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`Petitioner argues that we should institute review of challenged claim
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`10 over the teachings of Goldwasser, Yifrach, and Ulmer (“Ground 10”).
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`Req. Reh’g 12. We exercised our discretion and declined to institute on this
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`ground. Dec. 19. Petitioner does not direct us to anything that was
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`6 See, e.g., Symantec Corp. v. Trustees of Columbia Univ. in the City of N.Y.,
`Case IPR2015-00370, slip op. at 2–4 (PTAB Aug. 7, 2015) (Paper 15)
`(denying rehearing of denial of institution of inter partes review where
`petition did not sufficiently qualify thesis as a “printed publication”); Actavis
`v. Research Corp. Techs., Case IPR2014-01126, slip op. at 10–13 (PTAB
`Jan. 9, 2015) (Paper 21) (denying institution of inter partes review where
`petition did not sufficiently qualify thesis as a “printed publication”); Cisco
`Sys v. Constellation Techs., Case IPR2014-01085, slip. op. at 7–9 (PTAB
`Jan. 9, 2015) (Paper 11) (denying institution of inter partes review where
`petition did not sufficiently qualify reference as a “printed publication”).
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`8
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`IPR2015-00499
`Patent 5,930,444
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`misapprehended or overlooked; instead, Petitioner argues that this ground is
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`contingent upon certain claim constructions and should be instituted because
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`“[n]o injustice would result from granting institution of ground 10, while
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`denying institution of this ground would risk prejudice to the Petitioner.”
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`Req. Reh’g 13. This is not sufficient to persuade us of any impropriety in
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`our use of the discretion granted to us by statute. Thus, Petitioner’s request
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`that we institute review on Ground 10 is denied.
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`V. CONCLUSION
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`For the foregoing reasons, Petitioner has not demonstrated that we
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`abused our discretion by not instituting inter partes review of the challenged
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`claims of the ’444 patent on grounds that were based in whole or in part on
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`Truog. In addition, we are not persuaded of an abuse of discretion as to our
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`decision not to decline institution of review based on Ground 10.
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`Accordingly, it is ORDERED that Petitioner’s request for rehearing is
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`VI. ORDER
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`denied.
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`9
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`

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`IPR2015-00499
`Patent 5,930,444
`
`
`For PETITIONER:
`
`Eliot D. Williams
`G. Hopkins Guy III
`BAKER BOTTS LLP
`eliot.williams@bakerbotts.com
`hop.guy@bakerbotts.com
`
`
`
`For PATENT OWNER:
`
`Jason S. Angell
`Robert E. Freitas
`FREITAS ANGELL & WEINBERG LLP
`jangell@fawlaw.com
`rfreitas@fawlaw.com
`
`
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`10