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`Case No. IPR2015-00707
`U.S. Patent No. 7,925,981
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________________________________
`
`SERVICENOW, INC.,
`
`Petitioner,
`
`v.
`
`HEWLETT-PACKARD COMPANY,
`
`Patent Owner.
`____________________________________________
`
`Case No. IPR2015-00707
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`U.S. Patent No. 7,925,981
`____________________________________________
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`UNDER 37 C.F.R. § 42.107
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`Case No. IPR2015-00707
`U.S. Patent No. 7,925,981
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`TABLE OF CONTENTS
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`I.
`II.
`
`B. 
`
`B. 
`
`INTRODUCTION ........................................................................................... 1
`THE PETITION SHOULD BE DENIED BECAUSE PETITIONER
`HAS FAILED TO ESTABLISH THE AUTHENTICITY OF ANY
`OF THE COLLABORATE REFERENCES ................................................... 4
`A. 
`Petitioner offers no direct evidence to authenticate the
`Collaborate References. ........................................................................ 5 
`The Wayback Machine evidence offered by Petitioner does not
`authenticate the Collaborate References. .............................................. 6 
`III. THE PETITION SHOULD BE DENIED BECAUSE PETITIONER
`HAS FAILED TO ESTABLISH THAT ANY OF THE
`COLLABORATE REFERENCES WAS PUBLICLY ACCESSIBLE;
`THEREFORE, THEY DO NOT QUALIFY AS A PRIOR ART
`“PRINTED PUBLICATION” ....................................................................... 12
`A. 
`Petitioner offers no direct evidence of the public accessibility of
`the Collaborate References before May 14, 2003. .............................. 13 
`Petitioner relies on inadmissible hearsay evidence to show the
`public accessibility of the Collaborate References before May
`14, 2003. .............................................................................................. 13 
`The use and reproduction restrictions in the Collaborate
`References show that they were not publicly accessible. ................... 19 
`Petitioner does not offer any evidence that the Collaborate
`References were indexed by search engines before May 14,
`2003. .................................................................................................... 21 
`The evidence affirmatively shows that the Collaborate
`References were, in fact, made publicly available for download
`after the May 14, 2003 filing date of the ’981 patent. ........................ 22 
`IV.  THE PETITION SHOULD BE DENIED BECAUSE THE CITED
`REFERENCES DO NOT DISCLOSE EVERY CLAIM
`LIMITATION OF THE CHALLENGED CLAIMS ..................................... 23 
`A. 
`The invention of the ’981 patent ......................................................... 23 
`B. 
`Claim construction .............................................................................. 26 
`1. 
`The claim term “Web service” should be construed as “a
`computing service with a discoverable public interface
`
`C. 
`
`D. 
`
`E. 
`
`i
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`V. 
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`C. 
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`D. 
`
`2. 
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`3. 
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`3. 
`
`4. 
`
`that is accessible using Web protocols through the
`exchange of messages” (Claims 1 and 22). .............................. 27 
`The claim term “managed object” should be construed to
`mean “software that acts as a management representation
`of a resource and includes at least an interface for
`accessing management features of the resource” (Claims
`1 and 22). ................................................................................... 29 
`The claim term “service managed object” should be
`construed to mean “software that acts as a management
`representation of a Web service that performs services
`and includes at least an interface for accessing
`management features of the Web service” (Claim 1). .............. 30 
`The cited references fail to disclose every claim limitation................ 31 
`1. 
`Overview of the Cited References ............................................ 32 
`2. 
`None of the cited references alone or in combination
`disclose or suggest “managing a Web service.” ....................... 33 
`None of the cited references alone or in combination
`disclose or suggest a “service managed object.” ...................... 34 
`None of the cited references alone or in combination
`disclose or suggest a “managed object” .................................... 37 
`Petitioner fails to establish a reason for combining the
`Collaborate References with the Fox reference. ................................. 38 
`CONCLUSION .............................................................................................. 39 
`
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`Case No. IPR2015-00707
`U.S. Patent No. 7,925,981
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`Case No. IPR2015-00707
`U.S. Patent No. 7,925,981
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`TABLE OF AUTHORITIES
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`
`FEDERAL CASES
`Cordis Corp. v. Boston Scientific Corp.,
`561 F.3d 1319 (Fed. Cir. 2009) .......................................................................... 13
`
`Page(s)
`
`EMC Corp. v. PersonalWeb Techs., LLC,
`No. IPR2013-00085, 2014 WL 2090664 (P.T.A.B. May 15, 2014) .............. 5, 21
`
`Ethicon, Inc. v. United States Surgical Corp.,
`762 F. Supp. 480 (D. Conn. 1991) ...................................................................... 21
`
`In re Cronyn,
`890 F.2d 1158 (Fed. Cir. 1989) .......................................................................... 12
`
`In re Hall,
`781 F.2d 897 (Fed. Cir. 1986) ............................................................................ 12
`
`Loussier v. Universal Music Group, Inc.,
`No. 02 CIV. 2447 (KMW), 2005 WL 5644421 (S.D.N.Y. July 14, 2005) ........ 18
`
`Microsoft Corp. v. Proxyconn, Inc.,
`No. IPR2012-00026, 2012 WL 10703131 (P.T.A.B. Dec. 21, 2012) ................ 32
`
`Northern Telecom, Inc. v. Datapoint Corp.,
`908 F.2d 931 (Fed. Cir. 1990) ............................................................................ 19
`
`Novak v. Tucows, Inc.,
`No. 06-CV-1909 (JFB) (ARL), 2007 WL 922306 (E.D.N.Y. Mar. 26,
`2007) ................................................................................................................... 17
`
`Osborn v. Butler,
`712 F. Supp. 2d 1134 (D. Idaho 2010) ......................................................... 18, 19
`
`Standard Innovation Corp. v. Lelo, Inc.,
`No. IPR2014-00148, 2015 WL 1906730 (P.T.A.B. Apr. 23, 2015) ........ 5, 14, 15
`
`Toxgon Corp. v. BNFL, Inc.,
`No. CT-00-5040 (WFN), 2003 WL 25860388 (E.D. Wash. July 7, 2003) ........ 18
`
`iii
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`Va. Innovation Scis., Inc. v. Samsung Elecs. Co.,
`983 F. Supp. 2d 713 (E.D. Va. 2014) ................................................................. 20
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`Case No. IPR2015-00707
`U.S. Patent No. 7,925,981
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`
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`Voter Verified, Inc. v. Premier Election Solutions, Inc.,
`698 F.3d 1374 (Fed. Cir. 2012) .......................................................................... 21
`
`FEDERAL STATUTES
`
`35 U.S.C. § 102 ........................................................................................................ 12
`
`35 U.S.C. § 314 .......................................................................................................... 4
`
`RULES
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`Federal Rule of Evidence 807 .................................................................................. 14
`
`REGULATIONS
`
`37 C.F.R. § 42.100(b) .............................................................................................. 26
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`37 C.F.R. § 42.104(b)(4) ......................................................................................... 32
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`37 C.F.R. § 42.108 ..................................................................................................... 4
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`iv
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`I.
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`INTRODUCTION
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`Case No. IPR2015-00707
`U.S. Patent No. 7,925,981
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`U.S. Patent No. 7,925,981 (the “’981 patent”) is directed to a novel system
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`for managing “Web services.” By May 14, 2003, when the application for the ’981
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`patent was filed, Web services were emerging as a promising technology for
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`developing distributed applications over a network, such as the Internet. However,
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`Web services presented management challenges due to their distributed nature.
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`The ’981 patent discloses the concept of a “managed object” that represents a
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`computing resource (e.g., a system or service) and provides interfaces to allow a
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`remote manager to manage the resource. A manager may access managed objects
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`for multiple resources involved in a business process taking place over a network,
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`and thereby gain a unified management view of the process. Thus, the system of
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`the ’981 patent is able to effectively manage distributed Web services that extend
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`across various networks and systems.
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`The ’981 patent is assigned to Patent Owner Hewlett-Packard Company
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`(“HP” or “Patent Owner”) and is the subject of a co-pending litigation, Hewlett-
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`Packard Co. v. ServiceNow, Inc., No. 14-cv-00570-BLF (N.D. Cal.), between HP
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`and ServiceNow, Inc. (“ServiceNow” or “Petitioner”). Petitioner asserts a single
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`ground in the Petition – that claims 1, 22, and 23 of the ’981 patent are obvious
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`over three purported manuals for the BEA WebLogic Collaborate software product
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`(collectively, “Collaborate References”) (Exs. 1004-1006) in view of a fourth
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`1
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`reference – David Fox et al., Web Publisher’s Construction Kit with HTML 3.2
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`U.S. Patent No. 7,925,981
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`(1996) (“Fox”) (Ex. 1008). The Petitioner alleges that each of the Collaborate
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`References was published in July or August 2001. The Petition is fatally flawed
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`for at least three reasons.
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`First, Petitioner fails to authenticate any of the three Collaborate References,
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`which it relies on as its primary references. Petitioner offers no testimony from
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`BEA, the purported creator of the documents, or any BEA customer attesting to
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`their authenticity. Instead, Petitioner attempts to submit evidence from the
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`Wayback Machine to show that it archived certain BEA web pages in August
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`2001. However, Petitioner omits the Wayback Machine’s archives of the
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`Collaborate References themselves. These omitted archives actually show that the
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`Collaborate References were captured in June 2003 and November 2004, and thus
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`cannot be used to authenticate them as public documents from August 2001.
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`Second, Petitioner fails to establish that any of the three Collaborate
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`References was publicly accessible before the May 14, 2003 filing date of the ’981
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`patent; therefore, they do not qualify as prior art “printed publication.” Petitioner
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`asserts that the Collaborate References were published no later than August 2001,
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`based on the appearance of the text “July 2001” in the references and the dates of
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`web pages archived by the Wayback Machine from which Petitioner asserts the
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`references could be downloaded. However, such evidence is inadmissible hearsay.
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`2
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`Petitioner also fails to address the use and reproduction restrictions stated in the
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`Collaborate References, which suggest that they were not freely distributed to the
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`public. In addition, the available evidence shows that these references were, in
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`fact, made publicly available only after the May 14, 2003 filing date of the ’981
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`patent.
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`Third, Petitioner’s sole ground for challenging the claims depends on
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`unreasonably broad claim constructions for three key terms: “Web service,”
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`“managed object,” and “service managed object.” For instance, Petitioner asserts
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`that the broadest reasonable construction of “Web service” is “a service or system
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`that interacts with another system through the exchange of eXtensible Markup
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`Language (XML) messages” – this construction is overly broad because it suggests
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`that a “Web service” could be anything that is capable of exchanging XML files,
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`such as the sending and receiving of XML files by email or by FM radio, and is
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`therefore disconnected from the patent specification. Petitioner’s constructions of
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`“managed object” and “service managed object” also are inconsistent with the
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`patent specification. Petitioner’s cited references fail to disclose the claimed
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`invention of the challenged claims under the proper claim constructions.
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`These deficiencies defeat Petitioner’s single proposed ground, such that
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`there is no reasonable likelihood that Petitioner will prevail on at least one claim,
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`3
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`and therefore the Board should not institute review of any of claims 1, 22, and 23
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`of the ’981 patent. 35 U.S.C. § 314; 37 C.F.R. § 42.108.
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`II. THE PETITION SHOULD BE DENIED BECAUSE PETITIONER
`HAS FAILED TO ESTABLISH THE AUTHENTICITY OF ANY OF
`THE COLLABORATE REFERENCES
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`Petitioner presents a single ground in its Petition – that claims 1, 22, and 23
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`of the ’981 patent are obvious over the Collaborate References (Exs. 1004-1006) in
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`view of Fox (Ex. 1008). Petition at 21-22. Petitioner identifies the Collaborate
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`References as the following three separate documents:
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` “Introducing BEA WebLogic Collaborate” (“Introducing Collaborate”)
`(Ex. 1004);
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` “Administering BEA WebLogic Collaborate” (“Administering
`Collaborate”) (Ex. 1005); and
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` “Programming BEA WebLogic Collaborate Management Applications”
`(“Programming Collaborate”) (Ex. 1006).
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`Id. Petitioner asserts that the Collaborate References “were part of a collection of
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`product manuals and documentation for a commercial product called BEA
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`WebLogic, offered by BEA Systems, Inc.,” and “were publicly available for
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`download from BEA’s website no later than August 2001.” Petition at 22.
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`The Petition, however, does not present sufficient evidence to authenticate
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`the Collaborate References, i.e., (1) that Exhibits 1004-1006 are in fact product
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`manuals from BEA and (2) that they are, in fact, the same product manuals that
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`were available for download on BEA’s website by August 2001 as Petitioner
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`U.S. Patent No. 7,925,981
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`contends.
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`A.
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`Petitioner offers no direct evidence to authenticate the
`Collaborate References.
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`Petitioner offers no direct evidence from anyone with personal knowledge of
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`the Collaborate References to support a finding that they are authentic. Petitioner
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`does not offer any testimony from BEA attesting that the Collaborate References
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`were created by BEA, were manuals for a BEA product, or that they were made
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`available to the public on the BEA website or by any other means by August 2001
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`(or any other date prior to the May 14, 2003 filing date of the ’981 patent).
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`Similarly, Petitioner does not offer testimony from even one BEA customer or any
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`other person who accessed the Collaborate References on BEA’s website, or by
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`any other means, by August 2001 (or any other date prior to the May 14, 2003
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`filing date of the ’981 patent). Standard Innovation Corp. v. Lelo, Inc., Case No.
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`IPR2014-00148, 2015 WL 1906730, at *5 (P.T.A.B. Apr. 23, 2015) (“[T]o
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`authenticate printouts from a website, the party proffering the evidence must
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`produce some statement or affidavit from someone with knowledge of the
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`website . . . for example a web master or someone else with personal knowledge
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`would be sufficient.”) (quoting EMC Corp. v. PersonalWeb Techs., LLC, Case No.
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`IPR2013-00085, 2014 WL 2090664, at *33 (P.T.A.B. May 15, 2014)).
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`U.S. Patent No. 7,925,981
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`B.
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`The Wayback Machine evidence offered by Petitioner does not
`authenticate the Collaborate References.
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`Petitioner relies on archives made by the Internet Archive’s Wayback
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`Machine service of pages from BEA’s website to argue that the Collaborate
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`References were available for download from BEA’s website by August 2001.
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`Petition at 22-23. However, this evidence is insufficient to authenticate the BEA
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`evidence for at least two reasons.
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`First, the Wayback Machine evidence offered by Petitioner are not archives
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`of the Collaborate References themselves, but archives of other pages on BEA’s
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`website, including a page from an “‘e-docs Web Site’ (docs.bea.com)” from which
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`Petitioner asserts that the Collaborate References could be downloaded. Id. at 23.
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`Petitioner offers a declaration from Christopher Butler (“Butler declaration”) of the
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`Internet Archive attesting to the process by which the BEA web pages were
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`captured by the Wayback Machine and how their dates of capture could be derived
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`from their URLs, but this declaration too does not address the Collaborate
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`References themselves. Id. The Butler declaration therefore does not authenticate
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`the Collaborate References.
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`Second, the Wayback Machine archives of the Collaborate References
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`affirmatively show that they are not the same documents that were available for
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`download (if any were in fact available) on BEA’s website in August 2001.
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`Petitioner uses the Wayback Machine evidence in a misleading way. The
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`Petition fails to disclose the fact that the Collaborate References were not archived
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`by the Wayback Machine until after the filing date of the ’981 patent. The below
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`screenshot of an archived BEA web page submitted by Petitioner (Ex. 1014) has
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`been annotated to highlight what Petitioner asserts are links to the Collaborate
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`References (highlighted and labeled Exs. 1004-1006):
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`U.S. Patent No. 7,925,981
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`However, the links on the above page go to URLs that were captured by the
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`Wayback Machine after the May 14, 2003 filing date of the ’981 patent. The
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`following screenshots show the Wayback Machine’s actual archive of each
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`Collaborate Reference, which has been annotated with a box to show the portion of
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`the URL from which the date of capture could be derived, based on the explanation
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`provided in Petitioner’s Butler declaration. See Butler Decl. (Ex. 1014) ¶ 5; see
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`also Lavian Decl. (Ex. 1002) ¶ 144.
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`Screenshot of the Wayback Machine’s archive of Petitioner’s Exhibit 1004:
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`Screenshot of the Wayback Machine’s archive of Petitioner’s Exhibit 1005:
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`Screenshot of the Wayback Machine’s archive of Petitioner’s Exhibit 1006:
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`These screenshots are also submitted as Exhibit 2001 to this Response. Exhibit
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`2002 shows pages from the Wayback Machine stating the capture dates of the
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`URLs identified in Exhibit 2001.
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`The table below identifies the URL and date of the earliest Wayback
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`Machine archive of each of the Collaborate References. As shown in Exhibits
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`2001 and 2002, and in the table below, two of the Collaborate References were
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`captured on November 26, 2004 and the third was captured on June 11, 2003.
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`Both of these dates are after the May 14, 2003 filing date of the ’981 patent.
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`URL of Wayback Machine Archive
`Ex.
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`No.
`1004 https://web.archive.org/web/20041126061609/http:/e-
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`Date of
`Capture
`11/26/04
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`docs.bea.com/wlintegration/v2_0/collaborate/pdf/intro.pdf
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`1005 https://web.archive.org/web/20041126061916/http:/e-
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`11/26/04
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`docs.bea.com/wlintegration/v2_0/collaborate/pdf/admin.pdf
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`1006 https://web.archive.org/web/20030611035358/http://e-
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`6/11/03
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`docs.bea.com/wlintegration/v2_0/collaborate/pdf/mgmtapps.pdf
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`Because the Wayback Machine evidence shows that the Collaborate
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`References themselves were captured well after August 2001 (and also after the
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`May 14, 2003 filing date of the ’981 patent), it cannot be used to prove that the
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`Collaborate References are what Petitioner asserts that they are – BEA product
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`manuals publicly available for download on BEA’s website in August 2001 (or
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`before May 14, 2003 for that matter).
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`Accordingly, the Petition should be denied because Petitioner has failed to
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`establish the authenticity of any of the Collaborate References. In particular, (1)
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`Petitioner offers no direct evidence to authenticate the Collaborate References, and
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`(2) the WayBack Machine evidence offered by Petitioner does not authenticate the
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`Collaborate References.
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`III. THE PETITION SHOULD BE DENIED BECAUSE PETITIONER
`HAS FAILED TO ESTABLISH THAT ANY OF THE
`COLLABORATE REFERENCES WAS PUBLICLY ACCESSIBLE;
`THEREFORE, THEY DO NOT QUALIFY AS A PRIOR ART
`“PRINTED PUBLICATION”
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`Petitioner fails to establish that any of the Collaborate References qualifies
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`as a printed publication under 35 U.S.C. § 102. To qualify as a printed publication,
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`a document must have been “sufficiently accessible to the public interested in the
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`art.” In re Cronyn, 890 F.2d 1158, 1160 (Fed. Cir. 1989). As the Federal Circuit
`
`has explained, the “touchstone” of a printed publication under 35 U.S.C. § 102 is
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`“public accessibility.” In re Hall, 781 F.2d 897, 899 (Fed. Cir. 1986). A
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`document is publicly accessible—and qualifies as a printed publication—only if it
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`“has been disseminated or otherwise made available to the extent that persons
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`interested and ordinarily skilled in the subject matter or art, exercising reasonable
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`diligence, can locate it and recognize and comprehend therefrom the essentials of
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`the claimed invention without need of further research or experimentation.”
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`Cordis Corp. v. Boston Scientific Corp., 561 F.3d 1319, 1333 (Fed. Cir. 2009)
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`(internal citation and quotation omitted).
`
`A.
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`Petitioner offers no direct evidence of the public accessibility of
`the Collaborate References before May 14, 2003.
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`Petitioner fails to offer any direct evidence that the Collaborate References
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`were publicly accessible before May 14, 2003. As discussed above in Section II,
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`Petitioner does not offer any testimony from BEA attesting that the Collaborate
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`References were provided or made available to BEA’s customers or any member
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`of the public before May 14, 2003. See Petition at 22-24. Nor does Petitioner
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`offer testimony from even one BEA customer or any member of the public who
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`accessed the Collaborate References before May 14, 2003. Id.
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`B.
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`Petitioner relies on inadmissible hearsay evidence to show the
`public accessibility of the Collaborate References before May 14,
`2003.
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`Petitioner relies only on inadmissible hearsay as evidence of the alleged July
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`or August 2001 publication date of the Collaborate References.
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`First, Petitioner suggests that the appearance of the text “July 2001” on the
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`face and copyright pages of the Collaborate References indicates that these
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`documents were, in fact, published around that time. Petition at 22.1 This
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`“evidence” is inadmissible hearsay. See Standard Innovation, 2015 WL 1906730,
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`at *8.
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`In Standard Innovation, the Petitioner sought to prove the publication date
`
`of a reference known as LILY by referring to copyright dates provided within the
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`reference. Id. at *3. The Board held that this use of the copyright dates was
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`hearsay. Id. at *11. The Petitioner further argued that the “residual exception” of
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`Federal Rule of Evidence 807 should apply to the reference because:
`
`(1) the statements have equivalent circumstantial guarantees of
`trustworthiness, particularly given that [Patent Owner] has not
`disputed that the exhibit identifies [Patent Owner’s] own product, (2)
`the statements are offered as evidence of a material fact (i.e., that the
`information contained in [the LILY reference] was known by the
`person having ordinary skill in the art as of the filing date of the
`[patent-at-issue]), (3) the statements are more probative on what was
`known about the Lily at the relevant time than any other evidence that
`[Petitioner] can obtain through reasonable efforts, and (4) admitting
`[the LILY reference] will best serve the purposes of the Federal Rules
`of Evidence and the interests of justice.
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`Id. at *12. The Board rejected the argument that the residual exception to hearsay
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`should apply to copyright dates provided within a reference, stating:
`
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`1 The Petition’s reference to “July 2011” appears to be a typo.
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`U.S. Patent No. 7,925,981
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`We are not persuaded. For example, regarding Petitioner’s first point,
`whether the Lily massager is Patent Owner’s product sheds no light
`on the trustworthiness of [the LILY reference]. Regarding
`Petitioner’s third point, Petitioner has not explained persuasively why
`information regarding the source of [the LILY reference] could not
`have been obtained by reasonable efforts. Regarding Petitioner’s
`fourth point, the conclusory assertion that admitting [the LILY
`reference] would serve the purposes of the Federal Rules of Evidence
`and the interests of justice is simply a recitation of the rule involved,
`and does not provide a persuasive explanation tied to the facts of the
`case at hand. As explained above, the residual exception to the
`hearsay rule is to be reserved for exceptional cases. Here, Petitioner
`has not demonstrated this to be an exceptional case.
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`Id. at *13. The Board accordingly held that “to the extent that the copyright dates
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`depicted on [the LILY reference] are offered to prove the publication date of the
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`reference, these dates are inadmissible hearsay.” Id. at *12.
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`Here, Petitioner attempts to use the “July 2001” text in the Collaborate
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`References for the same purpose rejected by the Board in Standard Innovation.
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`The “July 2001” text is thus inadmissible hearsay and cannot be used to establish
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`the publication date of the Collaborate References.
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`Second, Petitioner alleges that the Collaborate References could be
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`downloaded from BEA’s “‘e-docs Web Site’ (docs.bea.com)” based on the web
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`page being captured by the Wayback Machine on August 29, 2001. Petition at 22-
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`23. On this basis, Petitioner argues that the Collaborate References “were publicly
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`available for download from BEA’s website no later than August 2001.” Id.
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`Petitioner relies on the below screenshot showing an archived BEA web page (Ex.
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`1014), allegedly from August 2001, that has been annotated to show which of the
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`links allegedly correspond to the Collaborate References (highlighted and labeled
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`Exs. 1004-1006):
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`Petitioner uses the archived BEA web page for the purpose of proving the
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`truth of the matter asserted on the page – i.e., that the Collaborate References
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`themselves were available for download from that page in August 2001. Petition
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`at 22-23. The archived BEA web page is therefore inadmissible hearsay. See
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`Novak v. Tucows, Inc., No. 06-CV-1909 (JFB) (ARL), 2007 WL 922306, at *5
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`(E.D.N.Y. Mar. 26, 2007), aff’d, 330 F. App’x 204 (2d Cir. 2009) (“Where
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`postings from Internet websites are not statements made by declarants testifying at
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`trial and are offered to prove the truth of the matter asserted, such postings
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`generally constitute hearsay . . . .”); Toxgon Corp. v. BNFL, Inc., No. CT-00-5040
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`(WFN), 2003 WL 25860388, at *4-5 (E.D. Wash. July 7, 2003) (striking an expert
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`declaration and attached “copies of website pages and news articles downloaded
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`from the Internet” as inadmissible hearsay); see also Osborn v. Butler, 712 F.
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`Supp. 2d 1134, 1147 (D. Idaho 2010) (finding that without authentication from an
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`author of a website’s content, the printout of a website is admissible “for the
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`limited purpose of showing that a website such as the one . . . printed exists or did
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`exist at the purported website address,” but “the written content of the website
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`pages is inadmissible hearsay”); Loussier v. Universal Music Group, Inc., No. 02
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`CIV. 2447 (KMW), 2005 WL 5644421, at *5 (S.D.N.Y. July 14, 2005) (finding
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`printouts from eBay website inadmissible hearsay because they constitute out-of-
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`court statements being offered to prove that certain items were being sold on
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`eBay).
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`Third, Petitioner cites to statements in the Collaborate References
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`themselves that refer to the availability of the documents on BEA’s website as
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`proof that the documents were, in fact, available as so stated. Petition at 23-24
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`(e.g., quoting Ex. 1005 at xi: “A PDF version of this document is available from
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`the BEA WebLogic Collaborate documentation Home page, which is available on
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`the documentation CD and on the e‐docs Web site at http://e-docs.bea.com.”).
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`This too is inadmissible hearsay because it is being offered for the purpose of
`
`proving the truth of the matter asserted on the page. See Osborn, 712 F. Supp. 2d
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`at 1147 (finding that without authentication from author of a website’s content “the
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`written content of the website pages is inadmissible hearsay”).
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`Without the inadmissible hearsay evidence, Petitioner has no proof of the
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`public accessibility of the Collaborate References before May 14, 2003.
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`C. The use and reproduction restrictions in the Collaborate
`References show that they were not publicly accessible.
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`The Collaborate References include use and reproduction restrictions that
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`indicate any distribution of these documents was likely accompanied by a
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`limitation on further re-distribution. Documents distributed with restrictions on
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`further dissemination may be found not to be “publicly accessible,” in which case
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`they do not qualify as prior art. See Northern Telecom, Inc. v. Datapoint Corp.,
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`908 F.2d 931, 936 (Fed. Cir. 1990) (ruling that documents that “were distributed to
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`approximately fifty persons or organizations” but which contained the legend
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`“Reproduction or further dissemination is not authorized ... not for public release”
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`were not printed publications because they were not “generally available”). Each
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`of the Collaborate References includes the following language:
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`Restricted Rights Legend
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`This software and documentation is subject to and made available
`only pursuant to the terms of the BEA Systems License Agreement
`and may be used or copied only in accordance with the terms of that
`agreement. ... This document may not, in whole or in part, be copied
`photocopied, reproduced, translated, or reduced to any electronic
`medium or machine readable form without prior consent, in writing,
`from BEA Systems, Inc.
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`Ex. 1004 at ii; Ex. 1005 at ii; Ex. 1006 at ii. This language expressly restricts
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`recipients’ rights to use and reproduce the documents, and indicates that a “BEA
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`Systems License Agreement” imposes additional limitations. The reference to the
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`BEA Systems License Agreement suggests that any recipient of the Collaborate
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`References was not free to distribute them to other persons and entities that were
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`not licensed by BEA; Petitioner has not proffered any evidence otherwise. Thus,
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`Petitioner has failed to prove that the Collaborate References qualify as prior art
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`for this independent reason. See Va. Innovation Scis., Inc. v. Samsung Elecs. Co.,
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`983 F. Supp. 2d 713 (E.D. Va. 2014) (denying motion for summary judgment of
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`invalidity based on document distributed to members of a standards body under
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`confidentiality restrictions; finding genuine issue of material fact as to public
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`accessibility of the document).
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`D.
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`Petitioner does not offer any evidence that the Collaborate
`References were indexed by search engines before May 14, 2003.
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`The indexing of a reference is “often relevant to public accessibility.” Voter
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`Verified, Inc. v. Premier Election Solutions, Inc., 698 F.3d 1374, 1380-81 (Fed.
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`Cir. 2012); see also EMC Corp., 2014 WL 2090664, at *6 (indexing is a relevant
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`factor “that may bear on public accessibility”); Ethicon, Inc. v. United States
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`Surgical Corp., 762 F. Supp. 480, 501 (D. Conn. 1991) (finding that defendant’s
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`prior art reference does not constitute a “prior publication” because defendant
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`failed to provide credible evidence that the reference “was actually catalogued and
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`