Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`
`Paper 13
`Entered: August 26, 2015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`
`
`
`
`
`SERVICENOW, INC.,
`Petitioner,
`
`v.
`
`HEWLETT-PACKARD CO.,
`Patent Owner.
`
`
`
`Case IPR2015-00716
`Patent 7,945,860 B2
`
`
`Before RAMA G. ELLURU, JAMES B. ARPIN, and
`JO-ANNE M. KOKOSKI, Administrative Patent Judges.
`
`ARPIN, Administrative Patent Judge.
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`
`Tel: 571-272-7822
`
`
`
`
`Paper 13
`Entered: August 26, 2015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`
`
`
`
`
`SERVICENOW, INC.,
`Petitioner,
`
`v.
`
`HEWLETT-PACKARD CO.,
`Patent Owner.
`
`
`
`Case IPR2015-00716
`Patent 7,945,860 B2
`
`
`Before RAMA G. ELLURU, JAMES B. ARPIN, and
`JO-ANNE M. KOKOSKI, Administrative Patent Judges.
`
`ARPIN, Administrative Patent Judge.
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`
`
`IPR2015-00716
`Patent 7,945,860 B2
`
`
`I.
`
`INTRODUCTION
`
`A. Background
`ServiceNow, Inc. (“Petitioner”) filed a Petition (Paper 1, “Pet.”) to
`institute an inter partes review of claims 1, 5, 7–10, 12, 15, and 24–26 (the
`“challenged claims”) of Patent No. US 7,945,860 B2 to Vambenepe et al.
`(Ex. 1001, “the ’860 patent”), pursuant to 35 U.S.C. §§ 311–319. Pet. 1.
`Hewlett-Packard Company (“Patent Owner”) filed a Preliminary Response
`(Paper 12, “Prelim. Resp.”). We have jurisdiction under 35 U.S.C. § 314,1
`which provides that an inter partes review may not be instituted “unless . . .
`there is a reasonable likelihood that the petitioner would prevail with respect
`to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a).
`Petitioner relies upon the following references, declaration, and affidavit in
`support of its grounds for challenging claims 1, 5, 7–10, 12, 15, and 24–26
`of the ’860 patent:
`
`
`Exhibit
`1002
`1004
`
`1005
`
`1006
`
`1008
`
`1009
`
`Description
`Declaration of Tal Lavian Ph.D.
`BEA Systems, Inc., Introducing BEA WebLogic Collaborate
`(dated July 2001) (“Introducing Collaborate”)
`BEA Systems, Inc., Administering BEA WebLogic
`Collaborate (dated July 2001) (“Administering Collaborate”)
`BEA Systems, Inc., Programming BEA WebLogic Collaborate
`Management Applications (dated July 2001) (“Programming
`Collaborate”)
`David Fox et al., Web Publisher’s Construction Kit with
`HTML 3.2 (1996) (“Fox”)
`Kenn Scribner et al., Applied SOAP: Implementing .NET
`XML Web Services (2001) (“Scribner”)
`
`
`1 See Section 6(a) of the Leahy-Smith America Invents Act (“AIA”), Pub. L.
`No. 112-29, 116 Stat. 284, 300 (2011).
`
`2
`
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`IPR2015-00716
`Patent 7,945,860 B2
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`
`Exhibit
`1011
`
`1013
`
`1014
`
`1015
`
`Description
`BEA Unveils Comprehensive Web Services Strategy and
`Support For Widest Range of Web Services Standards in the
`Industry, PR Newswire, Feb. 26, 2001
`BEA and Gauss Interprise Announce Strategic Relationship,
`Canadian Corporate Newswire, Aug. 27, 2001
`Affidavit of Christopher Butler, dated January 15, 2015
`(including Exhibit A (BEA WebLogic Screen Shots)) (“the
`Butler Affidavit”)
`Patent No. US 6,891,930 B1 to David B. Staub et al. (filed
`Dec. 17, 1999) (“Staub”)
`
`
`Exhibits 1004–1006 are referred to collectively as the “Collaborate
`References.” Pet. 20.
`Petitioner asserts that the challenged claims are unpatentable on the
`following grounds (Pet. 3–4, 20–60):
`References
`Claims
`Grounds
`1 and 24
`35 U.S.C. § 103(a) Collaborate References and
`Fox
`5, 7–9, 12, 15, and 25 35 U.S.C. § 103(a) Collaborate References, Fox,
`and Staub
`35 U.S.C. § 103(a) Collaborate References, Fox,
`Staub, and Scribner
`
`10 and 26
`
`
`For the reasons set forth below, we determine that, on this record,
`Petitioner fails to demonstrate a reasonable likelihood of prevailing in
`showing the unpatentability of any of the challenged claims. Accordingly,
`we deny institution of inter partes review as to any of the challenged claims
`of the ’860 patent.
`B. Related Proceedings
`Petitioner was sued for infringement of the ’860 patent by Patent
`
`Owner: Hewlett‐Packard Co. v. ServiceNow, Inc., Case No. 14‐CV‐
`
`3
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`00570BLF (N.D. Cal. filed Feb. 6, 2014). Pet. 1. Petitioner has filed a
`petition seeking covered business method review of the ’860 patent
`(CBM2015-00108) and petitions to review several of Patent Owner’s other
`patents – Patent Nos. US 6,321,229 B1 (IPR2015-00523); US 7,392,300 B2
`(IPR2015-00631); US 7610,512 B2 (IPR2015-00699); US 7,890,802 B2
`(IPR2015-00702); and US 7,925,981 B2 (IPR2015-00707).2
`C. The ’860 Patent
`The ’860 patent, entitled “Systems and Methods for Managing
`Conversations Between Information Technology Resources,” relates to a
`web service management system for monitoring a “conversation.” Ex. 1001,
`col. 3, ll. 24–67. The Specification defines a “conversation” as “a set of
`related messages sent and received by a particular conversation.” Id. at col.
`
`4, ll. 45–48. Figure 1A, depicting an embodiment of a conversation
`
`management system, is reproduced below:
`
`
`2 As with the ’860 patent, Patent No. US 7,925,981 B2 (Ex. 1003, “the ’981
`patent”) was filed on May 14, 2003. Petitioner relies upon the Collaborate
`References and Fox in its challenges to the claims of the ’981 patent in
`IPR2015-00707.
`
`4
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`Id. at Fig. 1A.
`In Figure 1A, management system 100 has conversation managed
`objects 108, 110 that have conversation interfaces 112, 114 for reporting
`management features of associated conversations 104, 106 to and receiving
`control instructions from manager 102. Id. at col. 4, ll. 23–40. In this
`embodiment, the Specification describes that:
`the
`Conversation managed objects 108, 110 represent
`management features of resource(s) that conduct conversations
`104, 106. Interfaces in one or more categories can be included
`in conversation interfaces 112, 114 for each conversation
`managed object 108, 110. Conversation interfaces 112, 114
`allow manager 102 to access information regarding the state of
`messages related to corresponding conversations 104, 106.
`
`Id. at col. 4, ll. 26–33 (emphases added).
`
`
`
`Conversation managed objects “can each be considered managed
`objects 148.” Id. at col. 6, ll. 61–62. The Specification explains that a
`
`5
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`Patent 7,945,860 B2
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`“[m]anaged object 148 implements managed object interfaces 150 to provide
`a common set of basic management capabilities to monitor and/or control
`the underlying resource(s) represented by managed object 148 through
`various features such as attributes, operations, and event notifications.” Id.
`
`at col. 6, ll. 63–67. Figure 1B, depicting an embodiment of a managed
`
`object interface collection for the conversation management system of
`Figure 1A, is reproduced below:
`
`
`
`6
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`Id. at Fig. 1B. Figure 1B depicts Managed Object Interface Collection.
`
`Managed Object Configuration Interface of Managed Object Interface
`Collection 152 includes Supported Relations, which is a read-only attribute
`that returns a list of the relations supported by managed object 148. Id. at
`col. 7, ll. 29–31. Relations in the returned list may be used in relationships
`managed object 148 has with other managed objects. “For example,
`managed object 148 can support relations such as Contains, Contained In,
`Depends On, Depended Upon, and Corresponds To.” Id. at col. 7, ll. 33–36.
`Thus, a conversation may “correspond to” one or more conversations
`contained by the same or a different web service. See id. at col. 7, ll. 42–55.
`As depicted in Figure 1B, other features can be included in Managed Object
`Interface Collection 152.
`D. Illustrative Claim
` Petitioner challenges claims 1, 5, 7–10, 12, 15, and 24–26 of the ’860
`patent. Claims 1 and 24 are independent. Claims 5, 7–10, 12, and 15
`depend directly from independent claim 1, which is directed to a system for
`managing a conversation in a web service; and each of claims 25 and 26
`depends directly from claim 24, which is directed to a computer program
`product tangibly embodied in a computer storage readable medium,
`including a conversation interface and a managed object interface.
`Claim 1 is illustrative and is reproduced below:
`1.
`A system for managing a conversation in a Web service,
`comprising:
`
` computer processor;
`
`7
`
` a
`
` a
`
` conversation managed object executable on the computer
`processor, wherein:
`
`
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`IPR2015-00716
`Patent 7,945,860 B2
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`
`
`the conversation managed object includes at least one
`interface configured to provide management information
`about the conversation to at least one manager; and
`
`the at least one interface is configured to provide information
`regarding the Web service that contains the conversation.
`
`
`Ex. 1001, col. 10, ll. 30–41 (claim 1).
`
`E. Claim Construction
`Each of Petitioner and Patent Owner proposes a construction for
`various claim terms, including “Web service,” “managed object,” and
`“conversation managed object.” Pet. 11–20; Prelim. Resp. 25–30. We,
`however, do not construe any term at this time because no term needs to be
`construed expressly for purposes of this Decision.
`II. ANALYSIS
`
`A. Overview
`Petitioner argues that claims 1, 5, 7–10, 12, 15, and 24–26 of the ’860
`patent are rendered obvious by the combinations of references described
`above. See supra Section I.A. Petitioner has the burden to establish in its
`Petition a reasonable likelihood of success, including, among other things,
`making a threshold showing that the Collaborate References are “printed
`publications” within the meaning of 35 U.S.C. §§ 102(b) and 311(b). 35
`U.S.C. § 314(a); see 37 C.F.R. § 42.108(c); Apple, Inc. v. DSS Tech. Mgmt.,
`Inc., Case IPR2015-00369, slip op. at 4–5, 9–11 (PTAB Aug. 12, 2015)
`(Paper 14). For the reasons set forth below and on this record, Petitioner
`does not satisfy its burden.
`
`8
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`
`B. Asserted Grounds
`1. Prior Art and Printed Publications
`Petitioner argues that each of the Collaborate References is a printed
`publication that may be asserted properly as a basis for a ground of
`unpatentability in its Petition because each Collaborate Reference was
`published more than one year before the filing date (May 14, 2003) of the
`’860 patent. Pet. 20; see 35 U.S.C. § 312(a)(3)(A); 37 C.F.R.
`§ 42.104(b)(2). Patent Owner disagrees, and contends that Petitioner fails to
`demonstrate that the Collaborate References are prior-art, printed
`publications. Prelim. Resp. 4–22.
` “Public accessibility” is the touchstone in determining whether a
`reference is a “printed publication.” In re Hall, 781 F.2d 897, 898–99 (Fed.
`Cir. 1986); see, e.g., L-3 Commc’n. Holdings, Inc. v. Power Survey, LLC,
`Case IPR2014-00832, slip op. at 11–12 (PTAB Nov. 14, 2014) (Paper 9)
`(applied reference not shown to be publicly accessible); C&D Zodiac, Inc. v.
`B/E Aerospace, Inc., Case IPR2014-00727, slip op. at 20–22 (PTAB Oct. 29,
`2014) (Paper 15) (applied reference shown to be publicly accessible). “A
`reference is publicly accessible ‘upon a satisfactory showing that such
`document has been disseminated or otherwise made available to the extent
`that persons interested and ordinarily skilled in the subject matter or art
`exercising reasonable diligence, can locate it.”’ Kyocera Wireless Corp. v.
`Int’l Trade Comm’n, 545 F.3d 1340, 1350 (Fed. Cir. 2008) (quoting SRI
`Int’l, Inc. v. Internet Sec. Sys., Inc., 511 F.3d 1186, 1194 (Fed. Cir. 2008)).
`The status of a reference as a printed publication is a legal question “based
`on underlying factual determinations.” Id.
`[W]hether information is printed, handwritten, or on
`microfilm or a magnetic disc or tape, etc., the one who wishes
`
`9
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`IPR2015-00716
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`
`to characterize the information, in whatever form it may be, as a
`‘printed publication’ . . . should produce sufficient proof of its
`dissemination or that it has otherwise been available and
`accessible to persons concerned with the art to which the
`document relates and thus most likely to avail themselves of its
`contents.
` In re Wyer, 655 F.2d 221, 227 (CCPA 1981). As noted above, Petitioner
`expressly argues that the Collaborate References qualify as prior art because
`they were published more than one year prior to the filing date of the ’860
`patent. Pet. 3, 20.
`
`a. The Wayback Machine Service
`
`In support of Petitioner’s argument that the Collaborate References
`were available for download more than one year prior to May 14, 2013,
`Petitioner submits an affidavit of Christopher Butler, Office Manager of
`Internet Archive, San Francisco, CA, which is the creator of the Wayback
`Machine service. Ex. 1014, 1. Attached to the Butler Affidavit is Exhibit A,
`which includes “true and accurate copies of printouts of the Internet
`Archive’s records of the HTML files for the URL[’]s [of each of the
`Collaborate References] and the dates specified in the footer of the printout.”
`Id. Moreover, the Butler Affidavit explains how the date of the webpage can
`be determined from the URL. Id. In particular, Exhibit A includes printouts
`for the following URLs:
`
`
`
`
`10
`
`
`
`Aug. 29, 2001
`
`Nov. 1, 2002
`
`Sept. 15, 2001
`
`Date
`Aug. 29, 20013
`
`IPR2015-00716
`Patent 7,945,860 B2
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`URL
`https://web.archive.org/web/20010829204911/http://e-
`docs.bea.com/wlintegration/v2_0/collaborate/interm/pdf.h
`tm (Ex. 1014, 4–5 (emphasis added))
`https://web.archive.org/web/20010829205428/http://e-
`docs.bea.com/wlintegration/v2_0/collaborate/interm/sitem
`ap.htm (Ex. 1014, 6 (emphasis added))
`https://web.archive.org/web/20020111212156/http://e-
`docs.bea.com/wlintegration/v2_0/collaborate/intro/index.
`htm (Ex. 1014, 7 (“Introducing Collaborate”) (emphasis
`added))
`https://web.archive.org/web/20010915203606/http://e-
`docs.bea.com/wlintegration/v2_0/collaborate/admin/index
`.htm (Ex. 1014, 8–10 (“Administering Collaborate”)
`(emphasis added))
`https://web.archive.org/web/20010915214820/http://e-
`docs.bea.com/wlintegration/v2_0/collaborate/devmgmt/in
`dex.htm (Ex. 1014, 11 (“Programming Collaborate”)
`(emphasis added))
`https://web.archive.org/web/20010915212456/http://e-
`docs.bea.com/wlintegration/v2_0/collaborate/devlog/inde
`x.htm (Ex. 1014, 11 (emphasis added))
`
`Initially, we note that, even relying on Exhibit A to the Butler Affidavit, the
`webpage for the Introducing Collaborate Reference was archived on
`November 1, 2002, less than one year prior to the May 14, 2003 filing date
`of the ’860 patent and, thus, fails to qualify as a prior-art, printed publication
`under 35 U.S.C. § 102(b), as argued by Petitioner. Pet. 3, 20.4
`
`3 These dates were determined based on the explanation provided in the
`Butler Affidavit. Ex.1014, 1 (paragraph five).
`4 Because each of Petitioner’s asserted grounds relies on a combination
`including all three of the Collaborate References, Petitioner would fail to
`establish a reasonable likelihood of success if any of the Collaborate
`References fails to qualify as a prior-art, printed publication.
`
`Sept. 15, 2001
`
`Sept. 15, 2001
`
`11
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`IPR2015-00716
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`
`Petitioner argues that:
`In this case, the Internet Archive captured a webpage entitled
`“BEA WebLogic Collaborate 2.0: PDF” that includes download
`links to various documents (in PDF form), including the
`Collaborate References cited in this Petition. (Lavian Decl.,
`Ex. 1002, ¶¶ 206, 207; Butler Aff., Ex. 1014, Ex. A (BEA
`download page).) Based on the date of capture recorded by the
`Internet Archive, the page was publicly accessible through the
`web by no later than August 29, 2001. (Lavian Decl., Ex. 1002,
`¶ 205.)
`
`
`Pet. 21 (emphasis added). The webpage in Exhibit A to the Butler Affidavit,
`listing the Collaborate References and including our annotations, is
`reproduced below:
`
`12
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`Petitioner further argues that
`
`[this] download page was part of what BEA called its “e‐docs
`
`Web Site” (edocs.bea.com), which the Collaborate References
`identify as a central source of documentation about BEA’s
`products. (See Ex. 1004, at vi (“The WebLogicCollaborate
`
`
`
`13
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`product documentation is available on the BEA Systems, Inc.
`corporate Web site.”); Ex. 1005, at x (“From the BEA Home
`
`page, click on Product Documentation or go directly to the ‘e‐
`docs’ Product Documentation page at http://e‐docs.bea.com.”);
`
`id. at xi (“A PDF version of this document is available from the
`BEA WebLogic Collaborate documentation Home page . . . at
`http://edocs.bea.com.”).)
`
`
`Pet. 21–22; see also Ex. 1006, 6 (“BEA product documentation is available
`at the following location: http://e-docs.bea.com.”).
`Nevertheless, 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.
`21; Ex. 1002 ¶ 205. This failure goes hand-in-hand with Petitioner’s alleged
`failure properly to authenticate Exhibits 1004–1006. See Prelim. Resp. 6.
`
`Patent Owner contends that the evidence available from the Wayback
`Machine service demonstrates that Exhibits 1004–1006 were not publicly
`accessible prior to May 14, 2003. Prelim. Resp. 7–12. In Exhibit 2001,
`Patent Owner submits screenshots depicting the URLs of the archived
`documents obtained by linking to the indicated documents on the “download
`page” of the Butler Affidavit’s Exhibit A. Id. at 9–10 (reproducing Ex.
`2001, 1–3). Using the explanation for date determination provided in the
`Butler Affidavit (Ex. 1014, 1), Patent Owner produced the following table
`indicating the dates on which each of Exhibits 1004–1006 was archived:
`
`14
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`Prelim. Resp. 11; see also Ex. 2002, 1–3 (dates provided by the Wayback
`Machine service). Patent Owner contends that the Wayback Machine
`service shows dates of capture for Exhibits 1004 and 1005 of November 26,
`2004, and for Exhibit 1006 of June 11, 2003; each of these dates is after May
`14, 2003. Prelim. Resp. 11–12. That the archived dates for Exhibits 1004–
`1006 vary is consistent with the varying archived dates noted above for the
`webpages identified in Exhibit A to the Butler Affidavit. Thus, on this
`record, we are not persuaded that Petitioner demonstrates that the evidence
`drawn from the Wayback Machine service is sufficient to show a reasonable
`likelihood that Exhibits 1004–1006 were printed publications that were prior
`art to the ’860 patent.
`b. The Dates on Exhibits 1004–1006 and the Download
`Instructions
`Petitioner argues that each of Exhibits 1004–1006 includes the date
`“July 2001” on its face (see, e.g., Ex. 1004, 1) and includes a copyright date
`of “2001” (see, e.g., id. at 2). Pet. 21. Further, as noted above, Petitioner
`argues that each of Exhibits 1004–1006 indicates that the reference is
`available for download from BEA Systems, Inc. Id. at 21–22; see, e.g., Ex.
`
`15
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`1004, 6 (“The WebLogicCollaborate product documentation is available on
`the BEA Systems, Inc. corporate Web site.”).
`Patent Owner contends that the date on the face of each exhibit, the
`copyright dates, and the indications of the availability of these references for
`download from BEA Systems, Inc., are inadmissible hearsay. Prelim. Resp.
`13–15. To the extent that Petitioner relies on the date on the face of each
`exhibit and the indications of the availability of these references for
`download from BEA Systems, Inc. for the truth of that information, and
`considering that Petitioner has not established that any hearsay exception or
`exclusion applies, we agree with Patent Owner. See Apple, Case IPR2015-
`00369, slip op. at 6 (Paper 14).
`In addition, as Patent Owner notes, each of Exhibits 1004–1006
`includes the following statement restricting use and dissemination of the
`Collaborative References:
`Restricted Rights Legend
`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.
`
`Prelim. Resp. 19 (quoting Ex. 1004, 2; Ex. 1005, 2; Ex. 1006, 2). 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.
`
`16
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`At least one panel of the Board has determined that reliance on a
`copyright notice as evidence that a reference was a printed publication as of
`a particular date is inadmissible hearsay. See Standard Innovation Corp. v.
`Lelo, Inc., Case IPR2014-00148, slip op. at 13–16 (PTAB Apr. 23, 2015)
`(Paper 41). We note, however, that, when determining the threshold issue of
`whether a reference is a printed publication for purposes of a decision on
`institution, a copyright notice has been accepted as prima facie evidence of
`publication.5 See Ford Motor Co. v. Cruise Control Techs. LLC, Case
`IPR2014-00291, slip op. at 7–8 (PTAB June 29, 2015) (Paper 44) (citing
`FLIR Sys., Inc. v. Leak Surveys, Inc., Case IPR2014-00411, slip op. at 18–19
`(PTAB Sept. 5, 2014) (Paper 9)). We are not bound by the determinations
`noted above, and, on this record, we are not persuaded that the presence of a
`copyright notice, without more, is sufficient evidence of public accessibility
`as of a particular date. See, e.g., LG Electronics, Inc. v. Advanced Micro
`Devices, Inc., Case IPR2015-00329, slip op. at 10–13 (PTAB July 10, 2015)
`(Paper 13).
`Consequently, on this record, we are not persuaded that Petitioner
`demonstrates that the dates on Exhibits 1004–1006, the download
`instructions, or both, is sufficient to show a reasonable likelihood that
`Exhibits 1004–1006 were publicly accessible more than one year prior to
`May 14, 2003.
`
`c. Petitioner’s Declarants
`
`Petitioner argues that, “[a]s explained by Dr. Lavian and in the
`
`
`5 “[A] notice of copyright . . . may be placed on publicly distributed copies
`from which the work can be visually perceived . . . .” 17 U.S.C. § 401(a)
`(emphasis added).
`
`17
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`accompanying ‘Affidavit of Christopher Butler’ from the Internet Archive,
`the Collaborate References were publicly available for download from
`BEA’s website no later than August 2001.” Pet. 21 (citing Ex. 1002 ¶¶ 203–
`208; Ex. 1014, 1). Patent Owner disagrees, and contends that Petitioner’s
`declarants’ testimony fails to demonstrate that they or anyone else used the
`identified webpages or the search engines identified by Dr. Lavian “to locate
`the Collaborate References in July 2001 or at any other time before May 14,
`2003.” Prelim. Resp. 20-21.
`Neither Mr. Butler nor Dr. Lavian testifies expressly that Exhibits
`1004–1006 could have been downloaded prior to May 14, 2003. See id. at
`21–22. As noted above, Mr. Butler merely testifies regarding the operation
`of the Wayback Machine service and to the accuracy of the printouts
`provided in Exhibit A. Ex. 1014, 1. Dr. Lavian testifies that the “download
`page” contains links to the Collaborate References (Ex. 1002 ¶¶ 205, 206),
`and opines that he has “seen no evidence suggesting that a person of
`ordinary skill in the art would have experienced difficulty locating the
`Collaborate References from BEA’s website.” Ex. 1002 ¶ 208 (emphasis
`added). Nevertheless, Dr. Lavian does not testify that he downloaded
`Exhibits 1004–1006 from the download page before May 14, 2003, or that
`he is aware of anyone else who did. See Dish Network L.L.C. v. Dragon
`Intellectual Property, LLC, Case IPR2015-00499, slip op. at 10–11 (PTAB
`July 17, 2015) (Paper 7).
`Consequently, on this record, we are not persuaded that Petitioner
`demonstrates that the testimony of Dr. Lavian (Ex. 1002) or Mr. Butler (Ex.
`1014), or both, is sufficient to show a reasonable likelihood that Exhibits
`1004–1006 were publicly accessible more than one year prior to May 14,
`
`18
`
`
`
`IPR2015-00716
`Patent 7,945,860 B2
`
`2003.
`
`d. Press Releases Regarding BEA Activities in 2001
`
`produced the Collaborate References, was a well‐known web services
`
`Finally, Petitioner alleges that “BEA Systems, Inc., the company that
`
`product provider in the early 2000s” and notes that that the company
`claimed to have more than 11,000 customers worldwide by 2001. Pet. 22
`(citing Ex. 1002 ¶ 209; Ex. 1013, 1); see Ex. 1011, 1. Patent Owner
`contends that Petitioner does not offer any testimony from BEA Systems,
`Inc. or from its customers attesting that the Collaborate References were
`provided or made available to BEA’s customers more than one year before
`May 14, 2003. Prelim. Resp. 13. Further, as noted above, each of Exhibits
`1004–1006 bears a notice restricting its dissemination and the use of the
`described products to the terms of the BEA Systems Licensing Agreement.
`E.g., Ex. 1004, 2. In view of this restriction, we are not persuaded that
`Petitioner’s evidence of the number of BEA’s customers prior to May 14,
`2003 sufficiently demonstrates that Exhibits 1004–1006 had been
`“disseminated or otherwise made available to the extent that persons
`interested and ordinarily skilled in the subject matter or art exercising
`reasonable diligence, [could] locate [them].”’ Kyocera, 545 F.3d at 1350.
`Thus, on this record, we are not persuaded that Petitioner demonstrates that
`the press releases (Exs. 1011 and 1013) discussing activities of BEA
`Systems, Inc. are sufficient to show a reasonable likelihood that Exhibits
`1004–1006 were publicly accessible more than one year prior to May 14,
`2003.
`
`Consequently, on this record and for purposes of this Decision, we are
`not persuaded that Petitioner has demonstrated a reasonable likelihood of
`
`19
`
`
`
`IPR2015-00716
`Patent 7,945,860 B2
`
`prevailing in establishing that the Collaborate References are prior-art,
`printed publications.
`2. Obviousness of Claims 1, 5, 7–10, 12, 15, and 24–26 over
`Collaborate References and Fox, Alone or in Combination
`with Staub or with Staub and Scribner
`Petitioner asserts that claims 1, 5, 7–10, 12, 15, and 24–26 are
`unpatentable under 35 U.S.C. § 103(a) over the Collaborate References and
`Fox, alone or in combination with Staub or with Staub and Scribner. Pet.
`20–60. Because we are not persuaded that Petitioner has demonstrated a
`reasonable likelihood that the Collaborate References are prior-art, printed
`publications (see supra Section II.B.1.), we are not persuaded that Petitioner
`has demonstrated a reasonable likelihood of showing that any of claims 1, 5,
`7–10, 12, 15, and 24–26 is unpatentable under 35 U.S.C. § 103(a) over the
`Collaborate References and Fox, alone or in combination with Staub or with
`Staub and Scribner.
`
`III. CONCLUSION
`Petitioner fails to demonstrate that there is a reasonable likelihood of
`prevailing in its challenge to the patentability of claims 1, 5, 7–10, 12, 15,
`and 24–26 of the ʼ860 patent. Consequently, the Petition is denied as to
`each of the asserted grounds.
`
`IV. ORDER
`For the reasons given, it is
`ORDERED that the Petition is denied, and no inter partes review is
`instituted.
`
`
`
`
`20
`
`
`
`IPR2015-00716
`Patent 7,945,860 B2
`
`PETITIONER:
`Heidi L. Keefe
`Andrew C. Mace
`Phillip E. Morton
`COOLEY LLP
`hkeefe@cooley.com
`amace@cooley.com
`pmorton@cooley.com
`zpatdcdocketing@cooley.com
`
`PATENT OWNER:
`Joseph F. Haag
`Evelyn C. Mak
`WILMER CUTLER PICKERING HALE AND DORR LLP
`Joseph.Haag@wilmerhale.com
`Evelyn.Mak@wilmerhale.com
`WHIPDocketStaff@wilmerhale.com
`
`
`21
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