Trials@uspto.gov Paper 14
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`571-272-7822
`Entered: November 2, 2015
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
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`SERVICENOW, INC.,
`Petitioner,
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`v.
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`HEWLETT-PACKARD CO.,
`Patent Owner.
`____________
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`Case IPR2015-00707
`Patent 7,925,981 B2
`____________
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`Before RAMA G. ELLURU, JAMES B. ARPIN, and
`CHRISTOPHER L. CRUMBLEY, Administrative Patent Judges.
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`Opinion for the Board filed by ARPIN, Administrative Patent Judge.
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`Opinion concurring filed by CRUMBLEY, Administrative Patent Judge.
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`ARPIN, Administrative Patent Judge.
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`
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`DECISION
`Denying Request for Rehearing
`37 C.F.R. § 42.71(d)
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`IPR2015-00707
`Patent 7,925,981 B2
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`I.
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`INTRODUCTION
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`ServiceNow, Inc. (“Petitioner”) filed a Petition (Paper 1, “Pet.”) to
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`institute an inter partes review of claims 1, 22, and 23 (the “challenged
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`claims”) of Patent No. US 7,925,981 B2 to Pourheidari et al. (Ex. 1001, “the
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`’981 patent”), pursuant to 35 U.S.C. §§ 311–319. Pet. 1. Petitioner
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`challenged these claims of the ’981 patent on the following ground (Pet. 4,
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`21–60):
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`Claims
`1, 22, and 23
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`References
`Grounds
`35 U.S.C. § 103(a) Collaborate References and
`Fox
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`Hewlett-Packard Company (“Patent Owner”) filed a Preliminary Response
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`(Paper 11, “Prelim. Resp.”).
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`For the reasons discussed in our Decision on Institution (Paper 12,
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`“Dec.”), we denied institution of an inter partes review of any of the
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`challenged claims. Pursuant to 37 C.F.R. § 42.71(d), Petitioner filed a
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`Request for Rehearing (Paper 13, “Reh’g Req.”), seeking reconsideration of
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`our Decision on Institution. For the reasons set forth below, Petitioner’s
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`Request for Rehearing is denied.
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`II. DISCUSSION
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`1. Standard for Reconsideration
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`37 C.F.R. § 42.71(d) provides that:
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`A party dissatisfied with a decision may file a single request for
`rehearing, without prior authorization from the Board. The
`burden of showing a decision should be modified lies with the
`party challenging the decision. The request must specifically
`identify all matters
`the party believes
`the Board
`misapprehended or overlooked, and the place where each
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`IPR2015-00707
`Patent 7,925,981 B2
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`matter was previously addressed in a motion, an opposition, or
`a reply.
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`(emphasis added). In addition, “[e]vidence not already of record at the time
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`of the decision will not be admitted [with a request for rehearing] absent a
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`showing of good cause.” Office Patent Trial Practice Guide, 77 Fed. Reg.
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`48,756, 48,768 (Aug. 14, 2012) (emphasis added). When reconsidering a
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`Decision on Institution, the Board reviews the decision for an abuse of
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`discretion. 37 C.F.R. § 42.71(c). Thus, a request for rehearing is not an
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`opportunity merely to disagree with the Board’s assessment of the
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`arguments or weighing of the evidence, or to present new arguments or
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`evidence.
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`2. Overview
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`Petitioner asserts two bases for its Request for Rehearing. Reh’g Req.
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`1–4, 9–12. First, Petitioner argues that we misapplied the standard for
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`determining public accessibility by failing to determine public accessibility
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`based on “all of the facts and circumstances surrounding the disclosure.”
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`Reh’g Req. 1 (quoting In re Lister, 583 F.3d 1307, 1313 (Fed. Cir. 2009)).
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`In particular, Petitioner argues that “the Board appeared to have employed
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`an analysis in which each individual piece of evidence was considered and
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`rejected separately, eschewing the holistic approach required by Federal
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`Circuit law.” Id. at 2. Further, Petitioner argues that we misstated the URL
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`date of Exhibit 1014 (id. at 4–5), we improperly placed dispositive weight
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`on the archiving dates of Exhibits 1004–1006 (id. at 5–7), and we
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`improperly relied on the “Restricted Rights Legend” in Exhibits 1004–1006
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`(id. at 7–9). Second, Petitioner argues that we violated Petitioner’s rights by
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`IPR2015-00707
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`sustaining Patent Owner’s evidentiary objections without affording
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`Petitioner the opportunity to respond to those objections. Id. at 9–12.
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`3. Determining Public Accessibility
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`With regard to its first basis, Petitioner argues that we misapplied the
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`standard for determining public accessibility by considering each piece of
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`evidence regarding public accessibility separately, rather than as a whole.
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`Id. at 1–4. As our Decision on Institution makes clear, however, we
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`considered the arguments and evidence presented by each party as a whole
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`in determining whether Petitioner had met its burden of persuasion. See
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`Dec. 8. In particular, we explained in our Decision on Institution that
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`Petitioner fails to make the critical link between the alleged
`identification of the Collaborate References on the “download
`page” and the exhibits relied upon in support of its asserted
`grounds. Despite Petitioner’s arguments and assertion that this
`“page” was publicly accessible “by no later than August 29,
`2001,” Petitioner fails to demonstrate Exhibits 1004–1006,
`which Petitioner relies upon in support of each of the asserted
`grounds, were publicly accessible through the webpages
`included in Exhibit A to the Butler Affidavit more than one
`year prior to May 14, 2003. See Pet. 23; Ex. 1002 ¶ 144.
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`Id. at 14 (emphasis added). Similarly, we read the copyright notice and
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`dates on Exhibits 1004–1006 together with “Restricted Rights Legend,”
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`when accessing the parties’ arguments regarding the dates appearing on the
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`exhibits. Id. at 15–17. As we explained,
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`We consider the references as a whole and read the download
`instructions, cited by Petitioner, in view of the restrictions on
`use and dissemination that also are set forth in the references.
`We are persuaded that, read together, the download instructions
`and the Restricted Rights Legends do not provide sufficient
`evidence that these references were publicly accessible.
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`Id. at 16–17 (emphases added).
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`We, thus, considered the arguments and evidence presented by the
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`parties and determined that, based upon this record, Petitioner failed to
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`satisfy its burden of showing a reasonable likelihood that asserted references
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`Exhibits 1004–1006 were publically accessible, printed publications. Id. at
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`19–20; see id. at 221 (“I agree with the majority’s recitation of the facts,
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`established by the present record. I also agree with the majority’s
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`evaluation that the evidence submitted by Patent Owner casts doubt on
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`Petitioner’s assertion that the Collaborate References are prior art to the
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`’981 patent. Where the majority and I part ways, however, is whether this
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`record meets the ‘reasonable likelihood’ standard for institution of an inter
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`partes review.” (emphasis added)).2 Therefore, we did not misapply the
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`standard for determining public accessibility by considering each piece of
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`evidence regarding public accessibility separately, rather than as a whole.
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`Petitioner identifies certain instances in which we allegedly
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`misunderstood or gave improper weight to particular pieces of evidence.
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`a. Misstated Date of Exhibit 1014
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`With respect to Exhibit 1014, Petitioner argues that we erroneously
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`stated that Exhibit 1014 was archived by the Internet Archive on November
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`1, 2002. Reh’g Req. 4 (citing Dec. 11). Petitioner notes, however, that the
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`1 This is the first page of Judge Crumbley’s dissent in the Decision on
`Institution. For clarity, we cite to the dissent consistent with Petitioner’s
`citations in the Request for Rehearing.
`2 In the Decision on Institution, the majority noted that “[t]he dissent differs
`from the majority on two basic issues: the sufficiency of the evidence
`presented in the Petition, considered in light of the evidence presented in the
`Preliminary Response, and the relevance of evidence presented at this stage
`of the proceeding to the decision to institute. With respect to the first issue,
`reasonable minds may differ as to the weight appropriately accorded to
`presented evidence.” Dec. 20 n.6 (emphasis added).
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`URL associated with Exhibit 1014 actually indicates an archive date of
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`January 11, 2002. Id. Consequently, Petitioner argues that “all of the web
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`pages attached to the Internet Archive affidavit, including the one identified
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`by the Board, predated the filing date of the ’981 patent by more than one
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`year.” Id. Petitioner is correct, and the date identified in our Decision on
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`Institution is incorrect. Dec. 11.
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`Nevertheless, we discussed this date for two reasons in our Decision
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`on Institution. First, we noted that, if the archive date of Exhibit 1014 were
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`November 1, 2002, Exhibit 1014 would predate the filing date of the ’981
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`patent by less than one year, contrary to Petitioner’s assertion. Dec. 11
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`(citing Pet. 3, 22). In view of our error, however, there is no contradiction
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`between Petitioner’s evidence and its asserted grounds. Second, we noted
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`that Petitioner’s assertion of varying archive dates for Exhibits 1004–1006 is
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`consistent with Patent Owner’s assertion of varying dates for these exhibits.
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`Id. at 15 (“That the archived dates for Exhibits 1004–1006 vary is consistent
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`with the varying archived dates noted above for the webpages identified in
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`Exhibit A to the Butler Affidavit.”); see Prelim. Resp. 11; see also Ex. 2002,
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`1–3 (dates provided by the Wayback Machine service). It was this
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`determination that contributed to our evaluation of the evidence. On this
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`second point, we note that, after correcting our error, the archive dates of
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`Exhibits 1004–1006 continue to vary. See Dec. 10–11.
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`Although we misapprehended Petitioner’s evidence on this point, the
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`incorrect date did not contribute to our evaluation of the parties’ arguments
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`and evidence. The correction of this error does not alter our overall
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`evaluation of the sufficiency of the evidence presented in the Petition,
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`considered in light of the evidence presented in the Preliminary Response.
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`b. Dispositive Weight on Exhibits 1004–1006
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`Petitioner argues that we improperly placed dispositive weight on the
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`archiving dates of Exhibits 1004–1006. Reh’g Req. 5. Moreover, Petitioner
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`argues that “[t]he Board appears to have based its decision in part on
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`speculation that Exhibits 1004–1006 were somehow different from the
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`documents available for download through the August 29, 2001 BEA e-docs
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`download page.” Id. (emphasis added).
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`Both arguments misunderstand our determination. First, Petitioner
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`does not indicate where we stated in our Decision on Institution that we gave
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`dispositive weight to the archiving dates of Exhibits 1004–1006. Instead,
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`Petitioner seems to assume that we gave such weight to Patent Owner’s
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`evidence of the archiving dates of Exhibits 1004–1006. As we explained
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`above, however, we did not rely solely on any single piece of evidence in
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`determining that Petitioner has failed to satisfy its burden of showing a
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`reasonable likelihood that asserted references Exhibits 1004–1006 were
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`publically accessible, printed publications. See Dec. 16–17, 19–20. Second,
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`Petitioner notes that, “as Judge Crumbley observed in his dissenting opinion,
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`[Patent Owner’s evidence] does not convincingly establish that the
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`documents were not publicly accessible before the filing date.” Reh’g Req.
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`5 (citing Dec. 23). The issue before us, however, was whether Petitioner had
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`demonstrated a reasonable likelihood of showing that Exhibits 1004–1006
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`are publically accessible, printed publications upon which its challenges
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`might prevail. Despite the dissent, the panel members agreed that the
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`evidence submitted by Patent Owner “casts doubt on Petitioner’s assertion
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`that the Collaborate References are prior art to the ’981 patent.” See Dec. 22
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`(emphasis added). As Judge Crumbley correctly observes, the disagreement
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`among the panel members was on “whether this record meets the
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`‘reasonable likelihood’ standard for institution of an inter partes review.”
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`Id. That issue has been determined in this initial proceeding, and a Request
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`for Rehearing is not the opportunity for Petitioner merely to express its
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`disagreement with our assessment of the arguments or weighing of the
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`evidence.
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`Because we did not give dispositive weight to Patent Owner’s
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`evidence of the archiving dates of Exhibits 1004–1006, and Petitioner has
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`not pointed to evidence in the record to the contrary, Petitioner fails to
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`demonstrate that we misapprehended or overlooked arguments or that we
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`abused our discretion in our assessment of the arguments or weighing the
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`evidence presented by the parties regarding Exhibits 1004–1006.
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`c. Reliance on the “Restricted Rights Legend”
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`Petitioner argues that, “[t]o the extent the Board used the ‘Restricted
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`Rights Legend’ to support its finding of a lack of public accessibility, it
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`clearly erred.” Reh’g Req. 7. In particular, Petitioner argues that such
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`Restricted Rights Legends are found commonly in publications and that the
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`“Restricted Rights Legend” in Exhibits 1004–1006 “has little or no bearing
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`on the public availability of Exhibits 1004-1006, and thus provided no
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`support for a finding that those documents were not publicly accessible.” Id.
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`at 7–8.
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`Petitioner, however, fails to indicate where it raised these arguments
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`in its Petition3 (see 37 C.F.R. § 42.71(d)) and now attempts to introduce new
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`evidence (Reh’g Req. Appendix A) in support of its arguments. We could
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`3 Although Petitioner cites to pages 23 and 24 of its Petition (Reh’g Req. 8),
`Petitioner did not discuss the Restricted Rights Legends in Exhibits 1004–
`1006 on the cited pages.
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`not misapprehend or overlook arguments that Petitioner did not make or
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`evidence that Petitioner did not present with its Petition. See Office Patent
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`Trial Practice Guide, 77 Fed. Reg. at 48,768. Moreover, as we explained in
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`our Decision on Institution, “[w]e consider[ed] the references as a whole and
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`read the download instructions, cited by Petitioner, in view of the restrictions
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`on use and dissemination that also are set forth in the references.” Dec. 16.
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`4. Evidentiary Objections
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`Petitioner argues that “[r]ehearing should also be granted because the
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`Board sustained evidentiary objections raised by the patent owner in its
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`Preliminary Response, without affording any opportunity for response or
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`comment by the Petitioner.” Reh’g Req. 9. Petitioner suggests that, in
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`Federal court practice, “[w]hen a party objects to the introduction [of]
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`evidence, the party offering the evidence is permitted to explain why the
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`evidence is admissible. And if there is no objection, of course, the evidence
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`is admissible even if it qualifies as hearsay.” Id. at 10 (citing cases where no
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`objection was raised to the hearsay evidence).
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`Petitioner, however, misunderstands the treatment of Petitioner’s
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`evidence of the copyright notices on Exhibits 1004–1006 in our Decision on
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`Institution. We did not “sustain” Patent Owner’s evidentiary objection;
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`Petitioner’s evidence was neither excluded from the record nor denied our
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`consideration. Cf. 37 C.F.R. § 42.64. In fact, as our Decision on Institution
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`makes clear, the evidence of the copyright notices was considered fully,
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`along with the other evidence presented by the parties, in reaching our
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`determination on the public accessibility of Exhibits 1004–1006. See Dec.
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`15–17. Specifically, on this record, we were not persuaded that the
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`copyright notices are entitled to any greater weight than that afforded to
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`hearsay in determining public accessibility. Id. at 17.
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`As is apparent from our Decision on Institution, we determined the
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`evidence of the copyright notices was hearsay. However, it was not
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`excluded. Rather, we considered it, and found it insufficient, in the context
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`of this record, to demonstrate a reasonable likelihood of public accessibility.
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`See Dec. 15–17.
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`Thus, we are not persuaded that our identification of the copyright
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`notices as hearsay and our weighing them as such in the context of the
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`arguments and evidence presented by the parties, misapprehended or
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`overlooked Petitioner’s arguments or evidence or abused our discretion.
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`Further to the extent that Petitioner now attempts to present new evidence
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`(Reh’g Req. Appendix B) and arguments related to that new evidence
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`(Reh’g Req. 11–12), we could not misapprehend or overlook arguments that
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`Petitioner did not make or evidence that Petitioner did not present with its
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`Petition. See Office Patent Trial Practice Guide, 77 Fed. Reg. at 48,768.
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`For the reasons given, it is
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`III. ORDER
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`ORDERED that Petitioner’s Request for Rehearing is denied;
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`FURTHER ORDERED that, pursuant to 37 C.F.R. § 42.7(a), Paper 13
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`is expunged; and
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`FURTHER ORDERED that, pursuant to 37 C.F.R. § 42.5(a) and
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`Office Patent Trial Practice Guide, 77 Fed. Reg. at 48,768, Petitioner shall
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`refile its Request for Rehearing, omitting Appendices A and B and any
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`citations thereto.
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`CRUMBLEY, Administrative Patent Judge, concurring in the denial of
`rehearing.
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`While I continue to disagree with the majority’s evaluation of
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`Petitioner’s likelihood of success, and the majority’s determination
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`regarding the hearsay status of some of Petitioner’s evidence, I do not
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`consider the issues identified by Petitioner in its Request for Rehearing to
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`require grant of rehearing. Our Rules state that the standard for rehearing a
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`decision on petition is abuse of discretion (37 C.F.R. § 42.71(c)), and is
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`limited to matters the Board misapprehended or overlooked (37 C.F.R.
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`§ 42.71(d)). With one inconsequential exception,4 the issues identified by
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`Petitioner are either not abuses of discretion, or are not issues the majority
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`misapprehended or overlooked in the Decision Denying Institution.
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`For these reasons, I concur in the denial of rehearing.
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`4 I refer to the panel majority’s mistake regarding the archive date of Exhibit
`1014. Because the majority states that—even correcting for this mistake—it
`does not consider the evidence to establish a reasonable likelihood of
`Petitioner prevailing, the error in the Decision Denying Institution is
`harmless.
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`IPR2015-00707
`Patent 7,925,981 B2
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`PETITIONER:
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`Heidi L. Keefe
`Andrew C. Mace
`Phillip E. Morton
`COOLEY LLP
`hkeefe@cooley.com
`amace@cooley.com
`pmorton@cooley.com
`zpatdcdocketing@cooley.com
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`PATENT OWNER:
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`Joseph F. Haag
`Evelyn C. Mak
`WILMER CUTLER PICKERING HALE AND DORR LLP
`Joseph.Haag@wilmerhale.com
`Evelyn.Mak@wilmerhale.com
`WHIPDocketStaff@wilmerhale.com
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`12