Case IPR2015-01037
`Patent 8,122,141
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`______________________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________________________________________
`
`FRIENDFINDER NETWORKS INC., STREAMRAY INC., WMM, LLC,
`WMM HOLDINGS, LLC, MULTI MEDIA, LLC, AND
`DUODECAD IT SERVICES LUXEMBOURG S.À.R.L.
`Petitioners
`v.
`
`WAG ACQUISITION, LLC
`Patent Owner
`
`U.S. Patent No. 8,122,141
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`
`
`_______________________________________
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`Inter Partes Review Case No. 2015-01037
`_______________________________________
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`PATENT OWNER PRELIMINARY RESPONSE
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`Case IPR2015-01037
`Patent 8,122,141
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`TABLE OF CONTENTS
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`I.
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`INTRODUCTION AND SUMMARY OF ARGUMENT .......................... 1
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`II.
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`THE SU MASTER’S THESIS RELIED UPON BY THE PETITION
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`IS NOT “PRINTED PUBLICATION” PRIOR ART. ............................... 4
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`A.
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`B.
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`Petitioners’ Evidence ........................................................................... 5
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`Patent Owner’s Additional Evidence .............................................. 15
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`III. BACKGROUND OF THE ’141 PATENT AND THE ALLEGED
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`PRIOR ART ................................................................................................. 20
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`IV. CLAIM CONSTRUCTION ........................................................................ 23
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`A.
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`6 “said server does not maintain a pointer into a buffer
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`B.
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`C.
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`D.
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`E.
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`F.
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`G.
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`established within said server” - Claims 6 and 15.......................... 24
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`8 “streaming media from a live source” - claims 8, 17, and 21 ..... 25
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`1(h) “a sufficient number of media data elements in the media
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`player for uninterrupted playback” - Claims 1-10, 24-27, and
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`28 ......................................................................................................... 28
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`“serial identifier” (All Claims) ......................................................... 28
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`24(c) “next sequential media data element following said last
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`sequential media data element” - Claims 24-27 ............................. 28
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`19 “format capable of being served to users by said server.” ....... 29
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`19(b) - “said server responds to user requests for media data
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`elements” - Claims 19-23 .................................................................. 29
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`H.
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`19(c) - “a routine to store and serially identify sequential data
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`elements comprising said streaming media content” - Claims
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`19-23 .................................................................................................... 30
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`V.
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`PETITIONERS’ EXPERT DECLARATION CANNOT BE
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`RELIED ON TO DO THE JOB OF THE PETITION ............................ 30
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`Patent 8,122,141
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`VI. EACH ALLEGED GROUND OF PATENTABILITY FAILS THE
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`“REASONABLE LIKELIHOOD” TEST. ................................................ 31
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`VII. GROUND 1, AS TO CLAIMS 1-2, 5-7, 9-11, 14-16, 18-20, 24, AND
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`27-28 .............................................................................................................. 31
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`A.
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`Pull By Serial Identifier .................................................................... 31
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`B. Media Data Elements Sent Faster than Playback Rate ................. 36
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`C.
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`Pull Requests as Required to Maintain Client Buffer for
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`Uninterrupted Playback ................................................................... 37
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`D. Client Maintains Record of the Identifier of Last Data
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`Element It Has Received ................................................................... 40
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`E.
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`24(c) a routine that requests transmission of the next
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`sequential media data elements following said last sequential
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`media data element - Claims 24-27 .................................................. 42
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`F.
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`“said server does not maintain a pointer into a buffer
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`established within said server, for each said user” - Claims 6
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`and 15 .................................................................................................. 43
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`VIII. GROUND 2 ................................................................................................... 44
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`IX. GROUND 3 ................................................................................................... 44
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`A.
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`Live Source ......................................................................................... 44
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`X. GROUND 4 ................................................................................................... 47
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`A.
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`19(b) - “said server responds to user requests for media data
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`elements identified by a serial identifier” - Claims 19-23 ............. 47
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`B.
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`19(c) – “a routine to store and serially identify sequential data
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`elements comprising said streaming media content”..................... 48
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`XI. CONCLUSION ............................................................................................ 49
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`EXHIBIT LIST
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`Case IPR2015-01037
`Patent 8,122,141
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`Exhibit Number Description
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`2001
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`Copy of the Su thesis microfiche from the National Library of
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`Canada.
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`2002
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`National Library of Canada envelope in which microfiche
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`indexes of bibliographic information on Canadian writings are
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`stored.
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`2003
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`Copy of an index microfiche containing bibliographic
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`information for Canadian works from April 1999 ordered
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`alphabetically by titles and authors beginning with the letter
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`“C.”
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`2004
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`Copy of an index microfiche containing bibliographic
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`information for Canadian works from April 1999 ordered
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`alphabetically by titles and authors beginning with the letter
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`“S.”
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`2005
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`Black-on-white reversed image blowup of the bibliographic
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`entry for the Su thesis, which appears on the index microfiche
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`of Exhibit 2003.
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`2006
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`Black-on-white reversed image blowup of the bibliographic
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`entry for the Su thesis, which appears on the index microfiche
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`of Exhibit 2004.
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`Case IPR2015-01033
`Patent 8,122,141
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`Patent Owner WAG Acquisition, L.L.C. (“Patent Owner” or “WAG”)
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`respectfully submits this Preliminary Response in accordance with 35 U.S.C. § 313
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`and 37 C.F.R. § 42.107, responding to the Petition for inter partes review (the
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`“Petition”) filed by Friendfinder Networks, Inc, et al. (“Petitioners”) regarding the
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`claims of U.S. Patent No. 8,122,141 (the “’141 Patent”).
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`I.
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`Introduction and Summary of Argument
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`While the patent owner is not required to file a Preliminary Response (37
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`C.F.R. § 42.107(a)), WAG takes this limited opportunity to point out the
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`shortcomings of the Petition and the reasons why the Board should not institute
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`trial.
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`By statute, the Board must decide whether to institute a trial based on “the
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`information presented in the petition.” 35 U.S.C. § 314(a). Petitioners bear the
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`burden of demonstrating a reasonable likelihood that they would prevail in
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`showing unpatentability on the grounds asserted in the Petition. 37 C.F.R.
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`§ 42.108(c).
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`Petitioners’ burden includes, inter alia, explaining in the Petition how each
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`challenged claim is construed and how the prior art teaches that claim. World
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`Bottling Cap, LLC v. Crown Packaging Tech., Inc., Case IPR2015-00296, slip op.
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`at 5 (PTAB May 27, 2015) (Paper 8); see also 37 CFR § 42.104(b)(3)-(4).
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`Case IPR2015-01037
`Patent 8,122,141
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`The flaws in the present Petition are numerous. Despite taking up the full 60
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`pages allotted, the Petition leaves many blanks. The Board should not have to fill
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`in the blanks where Petitioners have failed to do so in the Petition. See Liberty Mut.
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`Ins. Co. v. Progressive Cas. Ins. Co., Case CBM2012-00003, slip op. at 14 (PTAB
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`Oct. 25, 2012) (Paper 8) (noting that it would be “inappropriate for the Board to
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`take the side of the Petitioner to salvage an inadequately expressed ground
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`proposing an alternative rationale”).
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`The Petition falls far short of meeting the prescribed burden, for a number of
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`reasons, including without limitation the following.
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`First, the Petition fails to show that the Su reference (Ex. 1003), relied upon
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`throughout, is prior art. The exhibit that Petitioners provide from the Canadian
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`Library and Archives (Ex. 1011) is not sufficient to establish a date by which this
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`reference became “publicly accessible” so as to constitute printed publication prior
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`art.
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`Second, even accepting the bona fides of all of its cited art, the Petition fails
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`to show, for example, the obviousness of modifying the principal reference to
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`make it request data elements by number as opposed to simply requesting the next
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`element, as it teaches; teachings in the prior art to send requested media data
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`elements faster than the media playback rate; teachings that the client media player
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`transmits requests for these elements in order to maintain a sufficient number of
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`media data elements in the media player for uninterrupted playback; or how the
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`Case IPR2015-01037
`Patent 8,122,141
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`cited references could have been modified to support live broadcasts.
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`Third, Petitioners’ arguments depend on extreme and legally unsustainable
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`claim constructions, transparently distorted from any reasonable interpretation, in
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`an attempt to fill the gaps left by the Petition’s prior art references.
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`Finally, the present Petition takes for granted that Petitioners can meet their
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`burden of showing a reasonable likelihood of obviousness by showing that the
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`individual elements of a claim are allegedly found in a combination of two
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`references, and adding to that a conclusory statement that it would have been
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`obvious to modify the first reference in order to obtain the advantages of the
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`second. This formula is repeated throughout the Petition. However, a patent claim
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`“is not proved obvious merely by demonstrating that each of its elements was,
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`independently, known in the prior art.” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398,
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`418 (2007). “Rather, obviousness requires the additional showing that a person of
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`ordinary skill at the time of the invention would have selected and combined those
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`prior art elements in the normal course of research and development to yield the
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`claimed invention.” Unigene Labs., Inc. v. Apotex, Inc., 655 F.3d 1352, 1360 (Fed.
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`Cir. 2011). For an obviousness analysis, “it can be important to identify a reason
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`that would have prompted a person of ordinary skill in the relevant field to
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`combine the elements in the way the claimed new invention does.” KSR, 550 U.S.
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`at 418. A conclusion of obviousness also requires a showing that one of ordinary
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`Case IPR2015-01037
`Patent 8,122,141
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`skill in the art could have pursued the known potential options with a reasonable
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`expectation of success. See id. at 417-18. An assertion of obviousness “cannot be
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`sustained by mere conclusory statements; instead, there must be some articulated
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`reasoning with some rational underpinning to support the legal conclusion of
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`obviousness.” Id. at 418 (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).
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`The Petition repeatedly fails to articulate a proper reasoned basis to establish why
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`it would have been obvious to an ordinarily skilled practitioner at the time to the
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`claimed invention to have combined the pertinent teachings.
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`For all of these reasons, Patent Owner respectfully submits that the Petition
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`is inadequate to trigger the next stage of IPR review.
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`II. The Su Master’s Thesis relied upon by the Petition is not “printed
`publication” prior art.
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`The Petition cites a Master’s Thesis by Jun Su, titled “Continuous Media
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`Support for Multimedia Databases” (Ex. 1003), as alleged printed publication prior
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`art. Petitioners cite only Ex. 1011 in support of their asserted 1999 publication date
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`for the Su thesis. The Petition asserts without further support, explanation, or
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`argument that the Su thesis was “published by and available at the National Library
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`of Canada in 1999.” Petition at page 10.
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`Petitioners have failed to meet their burden of showing the date on which the
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`Su thesis was publicly accessible. Patent Owner does not dispute that the thesis is
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`publicly available today. However, there is no showing of when it became so
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`Patent 8,122,141
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`accessible. Therefore, the Su thesis — relied upon for all Grounds in the present
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`Petition — cannot be considered a printed publication for purposes of the present
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`Petition.
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`A. Petitioners’ Evidence
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`Ex. 1003 (the copy provided of the thesis itself), states on its cover that it
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`was submitted to a Canadian university in 1998, and bears a 1998 copyright notice
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`in the name of Su, the author.
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`Ex. 1011 is a bibliographic record from the web site of Theses Canada. Ex.
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`1011 states on its face that it (or the HTML format for presenting the record) was
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`created on July 18, 2008.
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`The bibliographic record, in a field labeled “Publisher,” identifies “National
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`Library of Canada” in English and French, followed by 1999 in square brackets:
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`“[1999].” The “Description” of the item in the Library’s collection is “2
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`microfiches,” and the record further identifies the location in the library stacks
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`where those two microfiches may be found.
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`The bibliographic record as reproduced in Ex. 1011 includes an abstract, but
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`there is no indication within Ex. 1011 — itself dated as of July 18, 2008 — that
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`any earlier publicly accessible index for the Su thesis contained an abstract.
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`Patent Owner submits that the Petition makes an insufficient showing that
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`Ex. 1003, the Su thesis, is prior art. It fails to establish that whatever steps the
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`National Library of Canada may have taken in 1999 to make the Su thesis
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`available in the Library were sufficient to constitute “public accessibility” of the
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`reference prior to the critical date. Furthermore, Patent Owner has submitted its
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`own evidence, which shows the limitations of what the National Library of Canada
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`made available regarding this thesis in 1999 (which was short of meeting the legal
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`standard for printed publication accessibility), and that the full text and abstract for
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`this reference, which we can now see in 2015, did not come into view of the public
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`until well after the critical date.
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`The Petitioners have the burden under 35 U.S.C. § 311(b) to establish the
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`“patent or printed publication” status of all alleged prior art in an IPR. See, e.g.,
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`Microsoft Corp. v. Biscotti, Inc., Case IPR2014-01457, slip op. at 3 (PTAB June 2,
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`2015) (Paper 21) (denying rehearing on denial of institution based on failure to
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`establish a publication date); Cisco Systems, Inc. v. Constellation Techs. L.L.C.,
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`Case IPR2014-01085, slip. op. at 7-9 (PTAB Jan. 9, 2015) (Paper 11) (denying
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`institution of an IPR because petitioner failed to meet its burden of proving alleged
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`prior art qualified as a printed publication).
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`To constitute printed publication prior art, a thesis must be more than merely
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`written and deposited in a library. It must be shown that the thesis was made
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`publicly accessible, such that an interested member of the public exercising
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`reasonable diligence could have found it as of the critical date. See In re Bayer,
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`568 F.2d 1357, 1358-59 (C.C.P.A. 1978) (unindexed thesis in a publicly accessible
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`library not a “printed publication”); In re Cronyn, 890 F.2d 1158, 1161 (Fed. Cir.
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`1989) (thesis in a publicly accessible library that is indexed only by the name of
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`the author and not by its subject matter was not a “printed publication”).
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`“A given reference is deemed ‘publicly accessible’ upon a satisfactory
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`showing that such document has been [1] disseminated, or [2] otherwise made
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`available to the extent that persons interested and ordinarily skilled in the subject
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`matter or art exercising reasonable diligence, can locate it.” SRI Int'l, Inc. v.
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`Internet Sec. Sys., Inc., 511 F.3d 1186, 1194-95 (Fed. Cir. 2008) (quoting
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`Bruckelmyer v. Ground Heaters, Inc., 445 F.3d 1374, 1378 (Fed. Cir. 2006)); see
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`also In re Cronyn, 890 F.2d at 1160 (“[D]issemination and public accessibility are
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`the keys to the legal determination whether a prior art reference was ‘published.’”)
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`(quoting Constant v. Advanced Micro-Devices, Inc., 848 F.2d 1560, 1568 (Fed.
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`Cir. 1988), cert. denied, 488 U.S. 892 (1988)).
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`Decisions on what constitutes a “printed publication” must proceed on a
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`case-by-case basis; these decisions are fact-sensitive, and determinations must be
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`based on the particulars of accessibility. See SRI, 511 F.3d at 1195 (citing In re
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`Cronyn, 890 F.2d 1158, 1161 (Fed. Cir. 1989); In re Hall, 781 F.2d 897, 899 (Fed.
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`Case IPR2015-01037
`Patent 8,122,141
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`Cir. 1986); In re Wyer, 655 F.2d 221, 224 (C.C.P.A. 1981)).
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`In In re Lister, 583 F.3d 1307 (Fed.Cir.2009), the Federal Circuit declined to
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`accept a book manuscript as a “printed publication” merely because it was
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`available at the U.S. Copyright office upon request:
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`In short, we must consider all of the facts and circumstances
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`surrounding the disclosure and determine whether an interested
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`researcher would have been sufficiently capable of finding the
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`reference and examining its contents. . . . We must also consider
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`whether anyone would have been able to learn of [the reference’s]
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`existence and potential relevance prior to the critical date . . . our
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`inquiry is whether it could be located by persons interested and
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`ordinarily skilled in the subject matter or art exercising reasonable
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`diligence.
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`In re Lister, 583 F.3d 1307, 1314-15 (Fed. Cir. 2009) (internal citations and
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`quotations omitted) (emphasis in original). The reference at issue in Lister was a
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`manuscript for the patent applicant’s own book on a method for making a golf
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`game easier for casual golfers, which had been deposited in the U.S. Copyright
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`Office in connection with a copyright application. The Copyright Office’s search
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`system provided for searching by author or the first word in the title, which in that
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`case was the word “Advanced.” The government conceded that this was
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`insufficient to support a finding of public accessibility. Id. at 1315. However, at
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`some time later, the commercial databases Westlaw and Dialog also captured the
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`Case IPR2015-01037
`Patent 8,122,141
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`Copyright Office data, including the full title of the copyrighted works, and made
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`this data in its entirety keyword-searchable. The searchable data for the manuscript
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`in the commercial systems included the keywords “golf” and “handicap.” The
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`court held that, under the particular circumstances, in view of the subject matter of
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`the claimed invention, “an individual interested in ways to expedite the game of
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`golf and make it easier for casual players would be inclined to use ‘handicap’ as a
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`search term . . . a reasonably diligent researcher would have searched for ‘golf’ in
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`combination with ‘handicap’ . . . [a]ccordingly . . . the Lister manuscript was
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`publicly accessible as of the date that it was included in either Westlaw or Dialog,
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`the databases that permitted keyword searching of titles.” Id. at 1315-16 (emphasis
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`added).
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`However, even if a reference at one point becomes publicly accessible, it is
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`Petitioners’ burden in an IPR to supply evidence sufficient to establish a date
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`earlier than the critical date, by which the reference became so accessible.
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`In re Lister goes on to address the further need to establish a date for when
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`public accessibility occurred. The parties in In re Lister disputed when the
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`manuscript in question became accessible through commercial databases. The
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`manuscript was made available by the Copyright Office to the commercial
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`databases as a result of a copyright registration more than two years prior to the
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`critical date. The court held that, even given the period of two years that the
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`commercial databases had in which to act, absent evidence of the database
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`operators’ practices in updating their databases, “there was no basis to conclude
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`that the manuscript was publicly accessible prior to the critical date.” In re Lister,
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`583 F.3d at 1317.
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`As noted, the Petition itself only makes the conclusory assertion that the Su
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`thesis was published in 1999. The sum total of the evidence underlying the Petition
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`in this regard is the following:
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`● September 1998 submission by the student to a Canadian university
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`● Canadian student’s 1998 copyright notice
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`● The “[1999]” in the field identifying the “Publisher” in Ex. 1011
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`● Indication in the 2008 web form of Ex. 1011 that the thesis microfiches were
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`shelved in the National Library of Canada
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`● AMICUS, Canadiana, and ISBN numbers in the 2008 web form of Ex. 1011
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`(the Canadiana number starting with “99”)
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`● An abstract of the thesis set forth in the 2008 web form of Ex. 1011
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`● A hyperlink, currently operable, to a PDF copy of the Su thesis, in the 2008
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`web form of Ex. 1011
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`Ex. 1011 provides no clue as to when the PDF link and abstract rendered in
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`Ex. 1011 was added to the database from which that web page was generated.
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`Patent Owner submits that the exhibits submitted with the present Petition
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`do not establish any date, short of the present, as of which the Su thesis was
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`accessible in a searchable or indexed manner such that “it could be located by
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`persons interested and ordinarily skilled in the subject matter or art exercising
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`reasonable diligence.” Without at least the abstract in some searchable form, this
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`reference would not have been found in a diligent search.
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`Bibliographic showings with similar shortcomings have been held
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`insufficient to establish a publication date for purposes of 35 U.S.C. §§ 102, 103.
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`In Symantec Corp. v. Trustees of Columbia Univ., the Board, denying
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`institution, found that a master’s thesis by a student at the Air Force Institute of
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`Technology was not publicly accessible, and therefore not a printed publication,
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`because there was not “any discussion in the Petition in support of the allegation
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`that [the alleged printed publication] was published” as of the claimed date of
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`availability. Case IPR2015-00370, slip op. at 5 (PTAB June 17, 2015) (Paper 13).
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`The cover page of the thesis was dated March 1999 (prior to the 2002 patent filing
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`date), bore the number “AFIT/GCS/ENG/99M-02”, and said “Approved for public
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`release; distribution unlimited.” Another document stated that the number on the
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`cover page was a “performing organization report number.” Id. at 7. The Board
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`stated:
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`In this case, Petitioner provides insufficient evidence by declaration or
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`documentation tending to show the public accessibility of [the thesis]
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`prior to the filing date of the [challenged] patent. . . . We acknowledge
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`that [the thesis] contains the notation “[a]pproved for public release;
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`distribution unlimited.” . . . Petitioner, however, has not provided
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`evidence extrinsic to [the thesis exhibit itself] tending to show when
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`the thesis actually may have been released or distributed to the public.
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`We observe also that [the thesis] includes an Abstract and a list of
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`subject terms . . . that appear suited for facilitating an electronic-
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`database search. The Petition points to no evidence, however, that the
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`thesis was entered into an electronic database prior to the critical date,
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`much less into a publicly accessible database prior to the critical date.
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`Nor has Petitioner shown, for that matter, that the thesis was
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`otherwise “sufficiently accessible to the public interested in the art.”
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`Id. at 8-9.
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`In Square, Inc. v. Unwired Planet, LLC, petitioners relied on an ISBN
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`number to try to authenticate the date of an alleged printed publication. Case
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`CBM2014-00156 (PTAB Dec. 24, 2014) (Paper 11). The Board found that the
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`“Petitioner has failed to provide any evidence that would allow us to determine the
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`significance of the ISBN number. Petitioner provide[d] no evidence about what an
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`ISBN number actually is, how it is generated, or what it purports to show, which
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`would allow us to assign any weight to it.” Id. at 18. The Board found that the
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`petitioner failed to meet its burden of establishing public accessibility as of the
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`Case IPR2015-01037
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`critical date.
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`In a decision on rehearing in Square v. Unwired Planet, the Board further
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`considered whether a copyright notice on an alleged reference, which was a
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`document of foreign origin, might be sufficient evidence of publication. The Board
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`declined to consider such a copyright notice sufficient, noting that the reference
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`was not published in the United States and that the petitioner “[did] not show
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`where it argued in its Petition that the copyright laws applicable to [the author of
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`the reference] identify the date associated with [the author’s] copyright and ISBN
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`notices as its publication date, or how the interaction between foreign copyright
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`law and U.S. patent law affects the prior art status of this reference.” Square, Inc.
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`v. Unwired Planet, LLC, Case CBM2014-00156, slip op. at 7 (PTAB Feb. 26,
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`2015) (Paper 22).
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`The same is true here for Su.
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`The September 1998 submission date does not establish publication. See
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`Microsoft v. Biscotti, Case IPR2014-01457, slip op. at 9 (PTAB June 2, 2015)
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`(Paper 21) (denying rehearing on denial of institution; “recitation of ‘November
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`10, 2006’ on the face of [a standards document] . . . may tend to demonstrate that
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`the [document] existed as of that date, but we find it relatively unpersuasive on the
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`issue of whether it was publicly accessible.”).
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`The present Petition does not even assert the copyright notice on the cover of
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`the Su thesis to support publication, and in any case, as in Square, the Su thesis
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`was a foreign document, in this case a Canadian document, and, as in Square, the
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`Petition fails to address the how “the interaction between [Canadian] copyright law
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`and U.S. patent law affects the prior art status of this reference.”
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`The ISBN, Canadiana, and AMICUS numbers in Ex. 1011 are not evidence
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`of the date of public accessibility. The ISBN number is presumably one assigned in
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`Canada, with no apparent meaningful coding or explanation. The “Canadiana”
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`number, 992099080, has no indication of meaning1, and the “AMICUS” number is
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`accompanied by no indication of what the number signifies. As in Square,
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`“Petitioner provide[d] no evidence about what [these numbers] actually [are], how
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`[they are] generated, or what [they] purport[] to show, which would allow [the
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`Board] to assign any weight to [them].”
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`The date “[1999]” is part of the identification of the “Publisher” and is not
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`labelled as a “publication” date. Neither Ex. 1011, the Petition, nor any other
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`evidence provided indicate what “[1999]” in the Publisher name field signifies.
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`Based on the Petition and Exhibits 1003 and 1011 themselves, the Board is left to
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`speculate that “[1999]” means the year the National Library of Canada “published”
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`the thesis, and to speculate as to what this Canadian bibliographic record means by
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`1
` Even assuming the leading two digits “99” in the Canadiana number refer to 1999, there is no indication in ex.
`1011 of what occurred in 1999, if anything, vis-a-vis publication or indexing.
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`“publish,” and whether whatever was done in 1999 by way of such “publication”
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`was sufficient to meet the legal requirements for public accessibility for printed
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`publication prior art.
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`Petitioners cannot meet their burden by speculation. See Microsoft v.
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`Biscotti, Case IPR2014-01457, slip op. at 9 (PTAB June 2, 2015) (Paper 21)
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`(holding that “speculation is not persuasive evidence sufficient to carry Petitioner’s
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`burden of showing a reasonable likelihood of establishing that [an alleged printed
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`publication reference] was accessible to the interested public” and denying
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`rehearing on a denial of institution).
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`Patent Owner accordingly submits that the evidence on the face of the
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`Petition, as well as the unargued evidence on the face of Exhibits 1003 and 1011,
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`fail to meet Petitioners’ burden to establish that the Su thesis is prior art.
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`B. Patent Owner’s Additional Evidence
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`Nevertheless, Patent Owner has gone further than showing the inadequacy of
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`the Petition. Patent Owner has submitted its own evidence to affirmatively show
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`what the National Library of Canada in fact did with the Su thesis in 1999, and that
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`this falls short of making the thesis accessible in such a way that it could have been
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`found by an ordinarily skilled practitioner at the time who was exercising
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`reasonable diligence to find applicable teachings concerning the problems
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`addressed in the ’141 Patent.
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`Ex. 2001 is a copy of the microfiche from the National Library of Canada, of
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`the Su thesis. The contents of this microfiche are the same as what was already in
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`the PDF printout of Ex. 1003 except that, following the text of Su’s thesis, Ex.
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`2001 also contains Su’s one-page curriculum vitae.
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`Ex. 2002 is a picture of an envelope from the National Library of Canada in
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`which indexes of bibliographic information on Canadian writings (including
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`graduate theses, among many other types of works) are stored. The indexes
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`themselves are on microfiche. At the top is a legend on the first index microfiche
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`in the envelope, showing its coverage of works indexed in a period of months in
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`1999.
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`Ex. 2003 is a copy of one index microfiche such as found in the above
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`envelopes, containing author, title, and other bibliographic information (but
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`importantly not an abstract) for Canadian works during a period in 1999. The
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`entries are in alphabetical order. At least for the Su thesis, two versions of the entry
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`were created for this index. The versions are the same, except that one lists the
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`author first and the other lists the title first. Thus, the entries may be found by
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`looking through these lists alphabetically, for either the author’s last name, or the
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`first word of the title. This particular microfiche is entirely in the range of names
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`and titles beginning with “C” and contains the entry for the Su thesis, the title of
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`which starts with the word “Continuous.”
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`Ex. 2004 is a copy of another index microfiche from the same series as Ex.
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`2003, but in the range of authors and titles beginning with “S.” It can be seen that
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`entries for “Su” (an author name) follows an entry for “Styx” (the title for a poem).
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`Ex. 2005 shows a black-on-white reversed image blowup of the
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`bibliographic entry for the Su thesis beginning with the title, which appears on the
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`index microfiche of Exhibit 2003. The entry includes author and title and other
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`identifying information, but no abstract.
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`Ex. 2006 shows a black-on-white reversed image blowup of the
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`bibliographic entry for the Su thesis beginning with the author name, which
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`appears on the index microfiche of Exhibit 2004. As in Ex. 2005, the entry
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`includes author and title and other identifying information, but no abstract.
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`It should also be noted that both of the index entries for the Su thesis in the
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`Canadian library’s microfiche catalog contain the text: “Ottawa : National Library
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`of Canada = Bibliothèque nationale du Canada, [1999]” – i.e., text identical to
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`what appears in the “Publisher” field in Petitioners’ Exhibit 1011.
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`Patent Owner submits that its additional evidence, summarized above, in
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`combination with Ex. 1011, shows what the National Library of Canada did in
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`1999, relative to the Su thesis. The presence of the exact same wording referring to
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`the Library and “[1999]” in the original microfiche makes clear that this activity
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`was the Library’s limited indexing of the thesis in 1999: copying the thesis to
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`microfiche, creating a bibliographical entry with the author’s name and the title
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`and other identifying information (but importantly not an abstract), putting these
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`bibliographic entries into a publicly accessible physical index, organized and
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`accessible by looking up the author’s last