CASE IPR2015-01037
`Patent No. 8,122,141
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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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`________________
`
`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
`________________
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`CASE IPR2015-01037
`Patent No. 8,122,141
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`__________________________________________________________________
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`PETITIONERS’ REQUEST FOR REHEARING
`PURSUANT TO 37 C.F.R. § 42.71(d)
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`10300685-v1
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`Patent No. 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
`________________
`
`CASE IPR2015-01037
`Patent No. 8,122,141
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`__________________________________________________________________
`
`PETITIONERS’ REQUEST FOR REHEARING
`PURSUANT TO 37 C.F.R. § 42.71(d)
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`10300685-v1
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`CASE IPR2015-01037
`Patent No. 8,122,141
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`TABLE OF CONTENTS
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`INTRODUCTION .....................................................................................................1
`STATEMENT OF FACTS ........................................................................................3
`LEGAL AUTHORITY ..............................................................................................5
`A.
`The Board Erred In Finding That Su Was Not Publically Accessible..........6
`B.
`The Board Incorrectly Applied The Standard For Public Accessibility.....11
`C.
`The Totality of Circumstances Demonstrates That Su Is Prior Art............14
`CONCLUSION........................................................................................................15
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`10300685-v1
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`TABLE OF AUTHORITIES
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`CASE IPR2015-01037
`Patent No. 8,122,141
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`Page(s)
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`Cases
`Atl. Research Mktg. Sys. v. Troy,
`659 F.3d 1345 (Fed. Cir. 2011) .......................................................................5
`
`Cordis Corp. v. Boston Scientific Corp.,
`561 F.3d 1319 (Fed. Cir. 2009) .......................................................................7
`
`In re Klopfenstein,
`380 F.3d 1350 (Fed. Cir. 2004) ............................................................ 6, 7, 13
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`In re Lister,
`583 F.3d 1307 (Fed. Cir. 2009) ............................................ 3, 7, 8, 12, 13, 14
`
`Kyocera Wireless Corp. v. Int’l Trade Comm’n,
`545 F.3d 1340 (Fed. Cir. 2008) .......................................................................3
`
`Lucent Techs. v. Gateway,
`2007 U.S. Dist. LEXIS 46863 (S.D. Cal. June 27, 2007) ...............................8
`
`Mobil Oil Corp v. Amoco Chems. Corp.,
`779 F. Supp. 1429 (D. Del. 1981), aff’d, 980 F.2d 742 (Fed. Cir. 1992)......14
`
`Oxford Nanopore v. Univ. of Wash.,
`Case IPR2014-00512, Paper No. 12 at 12 (PTAB Sept. 15, 2014).................1
`
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005) .......................................................................9
`
`Star Fruits S.N.C. v. United States,
`393 F.3d 1277 (Fed. Cir. 2005) .......................................................................5
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`Suffolk Techs., LLC v. AOL Inc.,
`752 F.3d 1358 (Fed. Cir. 2014) .......................................................................6
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`CASE IPR2015-01037
`Patent No. 8,122,141
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`INTRODUCTION
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`Petitioners, by and through their undersigned counsel, hereby move pursuant
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`to 37 C.F.R. § 42.71(d) for rehearing of the Board’s October 19, 2015 Decision
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`denying institution of inter partes review of U.S. Patent No. 8,122,141 (“the ‘141
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`Patent”).1 Respectfully, the Board erred in determining that Jun Su, “Continuous
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`Media Support for Multimedia Databases” (“Su,” Ex. 1003) is not a “printed
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`publication” as required under 37 C.F.R. § 42.104(b)(2).2
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`Indeed, the Board’s
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`determination regarding the public availability of Su rests on three fundamental
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`errors – any one of which justifies the relief requested herein.
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`First, the Board failed to consider and give proper weight to the terms that
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`would have been used by a person of ordinary skill in the art at the time of the
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`invention to search for and locate references describing the subject matter of the ‘141
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`1 Petitioners also seek rehearing in IPR2015-01033 (“1033”). The Board relied on
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`its 1033 Decision (with respect to Su) in denying institution here.
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`2 See, e.g., Oxford Nanopore v. Univ. of Wash., Case IPR2014-00512, Paper No. 12
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`at 12 (PTAB Sept. 15, 2014) (The Board uses the ‘reasonable likelihood of
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`prevailing’ standard to determine whether a reference “constitute[s] prior art,” and
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`thus whether to institute inter partes review). This is a lower threshold than the
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`preponderance of evidence standard applied at trial. 35 U.S.C. § 316(e).
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`1
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`Patent – including the Su reference. The Board specifically overlooked the
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`importance of the term “continuous” – a term whose subject-matter-relevance is
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`demonstrated not only by the Petition and unrebutted declaration of Dr. Polish – but
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`by the ‘141 Patent itself. Ex. 1001 passim. To be clear, the inventor’s goal was to
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`achieve a continuous media broadcast without interruptions. Notwithstanding this
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`fact, the Board found that the indexing of Su by author and the first word of the title
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`(i.e., “continuous”) was “[in]sufficient to meet the applicable standard for public
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`accessibility.” 1033 Decision at 13. This finding is unsupported by law and fact, and
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`refuted by the evidence of record.
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`Second, the Board erred in adopting Patent Owner’s conclusory arguments
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`and incorrect application of the legal standard for determining public accessibility.
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`Specifically, the Board found that it was “persuaded by Patent Owner” with respect
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`to its attorneys’ characterization of Su’s indexing. 1033 Decision at 13. The Board
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`then adopted verbatim Patent Owner’s claim that such indexing “would not provide
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`a meaningful pathway to a researcher who was not previously aware of the existence
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`of the thesis and was searching by subject matter.” Id. However, in adopting this
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`position, the Board omitted the requisite benchmark from its analysis: a person of
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`ordinary skill in the art. Indeed, a reference is publicly accessible if it could be found
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`by “persons interested and ordinarily skilled in the subject matter or art exercising
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`reasonable diligence.” See, e.g., Kyocera Wireless Corp. v. Int’l Trade Comm’n, 545
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`F.3d 1340, 1350 (Fed. Cir. 2008) (emphasis added). Here, the Board never defined
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`a person of ordinary skill in the art, nor did it describe what qualifications that
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`individual would have.3 The Board was therefore unable to make the proper
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`determination under the applicable legal standard, i.e., whether Su could be found
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`by a person of ordinary skill in the art following a reasonably diligent search.
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`And third, the Board overlooked the totality of circumstances, which as
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`discussed in detail infra, makes clear that Su was publically available before the
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`critical date of the ‘141 Patent.
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`A request for rehearing is reviewed for abuse of discretion. 37 C.F.R. § 42.71
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`(c). That standard is met by any one of these three (3) errors.
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`STATEMENT OF FACTS
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`Petitioners filed their Petition on April 14, 2015 seeking review of the ‘141
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`Patent in view of, inter alia, Hollfelder et al., “Transparent Integration of Continuous
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`3 The Board instead focused on an undefined “researcher,” and seemingly conflated
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`its public accessibility determination, with the ancillary and non-dispositive
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`assessment of a reference’s mode of indexing. In re Lister, 583 F.3d 1307, 1314-15
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`(Fed. Cir. 2009) (“neither cataloging nor indexing is a necessary condition for a
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`reference to be publicly accessible”).
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`3
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`Media Support into a Multimedia DBMS” (“Hollfelder”) (Ex. 1002) and Su,
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`“Continuous Media Support for Multimedia Databases” (“Su”) (Ex. 1003).
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`Patent Owner filed its Preliminary Response on July 22, 2015 challenging Su
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`as a printed publication. Patent Owner concedes that Su was indexed by author name
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`and the first word of its title (i.e., “continuous”) before the critical date of the
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`invention. Prelim. Resp. at 17; Exs. 2001-2006. Nevertheless, Patent Owner claims
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`that Su was not publically accessible because:
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`There is nothing in the title of the Su thesis suggesting it may be relevant
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`to the streaming media network transport problem addressed by the
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`‘141 Patent… The rudimentary indexing of this thesis at the Canadian
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`library was insufficient to render it ‘publicly accessible’
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`Prelim. Resp. at 18-19. Tellingly, Patent Owner offered no evidence to support such
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`claim. Nor did it articulate why the term “continuous” is not “relevant to the
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`streaming media network transport problem referenced in the ‘141 Patent,” when the
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`evidence of record suggests otherwise.
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`On July 31, 2015 Petitioners requested permission to file a Reply to address
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`Patent Owner’s unsupported attorney argument. Petitioners specifically sought to
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`“respond to Patent Owner’s characterization of keywords that would be used by a
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`diligent searcher in view of the content of the patents’ specifications…” Petitioners’
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`July 31, 2015 Request. The Board denied Petitioners’ request.
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`On October 19, 2015, the Board denied institution of the ‘141 Petition. The
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`Board acknowledged that Su was located in a “publicly accessible physical index,
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`organized and accessible by … author’s last name and the first word of the title [prior
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`to the critical date].” 1033 Decision at 11-12; n. 4 (citing Prelim. Resp. at 18-19).
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`However, the Board adopted Patent Owner’s attorney argument that the term
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`“continuous…does not suggest
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`its relevance to the streaming media network
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`transport problem addressed by ‘141 Patent.” 1033 Decision at 13 (citing Prelim.
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`Resp. at 18-19). The Board further adopted Patent Owner’s claim that “such
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`indexing would not provide a meaningful pathway to a researcher” to locate Su. Id.
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`The Board subsequently held that Su was not publically available prior to the
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`critical date and therefore is not a printed publication under 37 C.F.R. § 42.104(b)(2).
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`LEGAL AUTHORITY
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`“An abuse of discretion occurs where the decision is based on an (1)
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`erroneous interpretation of the law, (2) on factual findings that are not supported by
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`substantial evidence, or (3) represents an unreasonable judgment in weighing
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`relevant factors.” Star Fruits S.N.C. v. United States, 393 F.3d 1277, 1281 (Fed.
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`Cir. 2005) (internal citation omitted); Atl. Research Mktg. Sys. v. Troy, 659 F.3d
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`1345, 1359 (Fed. Cir. 2011) (“A decision based on an erroneous view of the
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`law…invariably constitutes an abuse of discretion.”) (internal citation omitted).
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`All three bases are present here.
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`A.
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`The Board Erred In Finding That Su Was Not Publically
`Accessible
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`The determination of whether a reference is a printed publication involves a
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`case-by-case inquiry into the facts and circumstances surrounding the reference’s
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`disclosure to the public.4 Suffolk Techs., LLC v. AOL Inc., 752 F.3d 1358, 1364
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`(Fed. Cir. 2014); In re Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004). Public
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`accessibility is the principal query in determining whether a document is a printed
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`publication. Suffolk Techs., 752 F.3d at 1364. A document is publicly accessible
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`when it could be located by persons of ordinary skill in the subject matter after a
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`4 In reference to the August 4, 2015 teleconference, the Board stated that “Petitioner
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`acknowledged that it did not seek to introduce [into its requested Reply] new
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`evidence or rebut facts presented in the Patent Owner Preliminary Response.” The
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`Board then stated that “where no facts are in dispute, the question of whether a
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`reference represents a “printed publication” is a question of law.” 1033 Decision at
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`7. However, Petitioners did not – and do not – concede any of the attorney argument
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`set forth in Patent Owner’s Preliminary Response. It is therefore incorrect for the
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`Board to suggest that “no facts are in dispute.” Id. To be clear, binding precedent
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`mandates a case by case inquiry into the relevant facts at hand. In re Klopfenstein,
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`380 F.3d at 1350.
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`reasonably diligent search. See, e.g., In re Lister, 583 F.3d at 1311; Cordis Corp. v.
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`Boston Scientific Corp., 561 F.3d 1319, 1333 (Fed. Cir. 2009) (“a document is
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`publically accessible if it has been disseminated or otherwise made available to the
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`extent that persons interested and ordinarily skilled in the subject matter or art,
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`exercising reasonable diligence, can locate it”).
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`The record before the Board demonstrates that Su was publically accessible
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`before the critical date because Su could be readily located by a person of ordinary
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`skill in the art exercising reasonable diligence.
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`The Patent Owner and Board have acknowledged that Su was indexed and
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`searchable within the National Library of Canada by author name and the first word
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`of Su’s title, i.e., “continuous” prior to the critical date. 1033 Decision at 13; Exs.
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`2001-2006. This is significant because the determination of Su’s public availability
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`ultimately rests on whether a person of ordinary skill in the art would have used the
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`term “continuous” in his or her prior art search at the time of the purported invention.
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`See, e.g., Cordis Corp., 561 F.3d at 1333.
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`Here, the Board overlooked the following facts of the record – all of which
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`are undisputed and collectively demonstrate that Su meets the threshold for public
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`accessibility. In re Klopfenstein, 380 F.3d at 350.
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`First, the indexed word “continuous” is a highly descriptive term indicative of
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`the subject matter of the ‘141 Patent. In fact, a continuous stream of media was the
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`very goal of the underlying invention. This is in sharp contrast to In re Lister, where
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`the indexed term was generic and non-descript (i.e., “advanced”). Unlike the word
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`“continuous” here, generic terms give no indication of the subject matter of the
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`indexed reference. Compare with Lucent Techs. v. Gateway, 2007 U.S. Dist. LEXIS
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`46863, *17-18 (S.D. Cal. June 27, 2007) (“In German, the first word of the title is
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`‘vergleich’ the equivalent of ‘comparison’ and hence, filing under this word is not
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`indicative of the subject matter.”).5
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`The significance of the word “continuous” is further demonstrated by the
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`testimony of Dr. Polish – the only evidence of record from a person of ordinary skill
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`in the art. The Polish Declaration – which includes the term “continuous” 137 times
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`– illustrates the substantive overlay of “continuous” and “streaming,” often using the
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`terms in unison. See, e.g., Ex.1006 at ¶ 26 (“data stored in a server to be sent over
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`networks to a client buffer to assure a continuous stream of video”) (emphasis
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`added); at ¶ 39 (“periodically requests additional data in order to maintain a
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`continuous streaming presentation to the user”) (emphasis added).
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`5 The Lucent court still found the challenged thesis to be a printed publication under
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`the totality of circumstances. Lucent Techs., 2007 U.S. Dist. LEXIS 46863 at *17.
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`The ‘141 Patent is also replete with the term “continuous.” Ex. 1001 passim.
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`In fact, the inventor himself (someone presumed to have ordinary skill in the art)6
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`used the term “continuous” as a synonym for “streaming,” and made clear that the
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`goal of his invention was to achieve a continuous broadcast without interruptions:
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`The advent of streaming media technologies allowed users to listen or
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`view the files as they were being down-loaded, and allowed users to
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`“tune-in” to a continuous media broadcast, or “stream”…
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`Ex. 1001 at 1:46-49 (emphasis added). The ‘141 Patent likewise uses both words in
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`unison. Ex. 1001 at 3:65 (“continuous stream”). Because Patent Owner concedes
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`that the term “streaming” would be used to search for prior art to the ‘141 Patent
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`(prelim. resp. at 18 (“buffer,” “streaming,” “network,” or “transport”… would be
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`likely search terms in the present field” (emphasis added)), the inventor’s admitted
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`synonym must be relevant as well.
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`The file history is similarly rife with the term “continuous.” Ex. 1010 passim.
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`And there are at least four (4) prior art references of record that include the term
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`“continuous” in their titles, three (3) of which, like Su, also include the term “media.”
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`Ex. 1001 (“References Cited” listing: (1) US5892915 “System having client sending
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`6 An inventor is presumed to be a person of ordinary skill in the relevant art. See,
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`e.g., Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc).
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`edit commands to server during transmission of continuous media from one clip in
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`play list for editing the play list”; (2) US5974503 “Storage and access of continuous
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`media files indexed as lists of raid stripe sets associated with file names”; (3)
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`US5996015 “Method of delivering seamless and continuous presentation of
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`multimedia data files to a target device by assembling and concatenating multimedia
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`segments in memory”; and (4) Zhao et al., Bandwidth-Efficient Continuous Media
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`Streaming through Optimal Multiplexing, 1999) (emphasis added); see also Ex.
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`1012.
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`Significantly, all of these references were submitted to the Patent Office by
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`the applicant himself via information disclosure statement. Ex. 1010 (Jan. 24, 2012
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`Information Disclosure Statement). Even the Hollfelder article, which was cited by
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`Su and deemed by the Board to be prior art to the ‘141 Patent, includes the term
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`“continuous” in its title. (Ex. 1002) (“Transparent Integration of Continuous Media
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`Support into a Multimedia DBMS.”). “Continuous” is clearly a term indicative of
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`the subject matter of the ‘141 Patent.
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`It is therefore unreasonable for Patent Owner to claim that “nothing in the title
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`of the Su thesis suggest[s] it may be relevant to the streaming media network
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`transport problem addressed by the ‘141 Patent.” Patent Owner used “continuous”
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`as a synonym to “streaming” – no word beyond streaming itself could be more
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`relevant. The Board thus erred in holding that “the indexing of the Su thesis by
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`author name (“Su”) and/or the first word of the title (“Continuous,” … does not
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`suggest its relevance to the streaming media network transport problem addressed
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`by the ‘141 Patent) [and] would not be sufficient to meet the applicable standard for
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`public accessibility.” 1033 Decision at 13.
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`B.
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`The Board Incorrectly Applied The Standard For Public
`Accessibility
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`In denying institution, the Board held that:
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`We are persuaded by Patent Owner that the rudimentary indexing of
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`the Su thesis by author name (“Su”) and/or the first word of the title
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`(“Continuous,” which is the only indexing that the evidence suggests
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`may have occurred before the priority date and does not suggest its
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`relevance to the streaming media network transport problem addressed
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`by the ‘141 Patent) would not be sufficient to meet the applicable
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`standard for public accessibility. As Patent Owner notes, such indexing
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`would not provide a meaningful pathway to a researcher who was not
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`previously aware of the existence of the thesis and was searching by
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`subject matter.
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`1033 Decision at 13 (emphasis added) (internal citations omitted).
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`Respectfully, this is an incorrect (or at the very least incomplete) application
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`of the legal standard for determining public accessibility. Reconsideration should
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`be granted on this basis alone.
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`The requisite benchmark for a reference’s public accessibility is a person of
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`ordinary skill in the art. Kyocera Wireless Corp., 545 F.3d at 1350. Here, the Board
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`never defined a person of ordinary skill in the art, nor did it describe what
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`qualifications that individual would have. It did not even reference Petitioners or
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`Patent Owner’s definitions of a person of skill in the art. Instead, the Board focused
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`on Su’s indexing in view of a “researcher.”7 While indexing plays a role in cases
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`involving library references,
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`the Federal Circuit has made clear that neither
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`cataloging nor indexing is a necessary condition for a reference to be publicly
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`7 The Board bases its determination on a non-descript “researcher.” However, the
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`proper analysis involving references stored in libraries is “whether the research tools
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`available would have been sufficient to permit an interested researcher to locate and
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`examine the reference.” In re Lister, 583 F.3d at 1311 (emphasis added). The use of
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`the term “interested” is significant, connoting a level of ordinary skill in the art. Id.
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`(discussing “persons interested and ordinarily skilled in the subject matter or art.”).
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`But the Board did not base its analysis on an “interested researcher,” nor did it
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`articulate the level of skill of its referenced “researcher.” 1033 Decision at 13.
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`accessible. Klopfenstein, 380 F.3d at 1348 (“[O]ur cases do not limit this court to
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`finding something to be a printed publication only when there is distribution and/or
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`indexing.”).
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`Thus, irrespective of its judgment on indexing, the Board was still required to
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`make the ultimate determination of whether a skilled artisan would have been able
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`to find Su after a reasonably diligent search. Klopfenstein, 380 F.3d at 1348. Those
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`two analyses are not one in the same. Id. Patent Owner confirms this point:
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`[W]e must consider all of the facts and circumstances
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`surrounding the disclosure and determine whether an
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`interested researcher would have been sufficiently
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`capable of
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`finding the reference and examining its
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`contents. . . . We must also consider whether anyone would
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`have been able to learn of [the reference’s] existence and
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`potential relevance prior to the critical date . . . our
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`inquiry is whether it could be located by persons interested
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`and ordinarily skilled in the subject matter or art
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`exercising reasonable diligence.
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`Prelim. Resp. at 8, citing In re Lister, 583 F.3d at 1314-15 (emphasis added).
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`The Board failed to define, and consider in its analysis, a person of ordinary
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`skill
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`in the art. Accordingly,
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`the Board was unable to make the requisite
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`CASE IPR2015-01037
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`determination of whether Su could be found by such person, irrespective of the
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`Board’s judgment on Su’s indexing.
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`The Totality of Circumstances Demonstrates That Su Is Prior Art
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`C.
`The Federal Circuit has made clear that “depending on the circumstances
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`surrounding the disclosure, a variety of factors may be useful in determining whether
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`a reference was publicly accessible.” In re Lister, 583 F.3d at 1312. Indexing alone
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`is not dispositive. See, e.g., Mobil Oil Corp v. Amoco Chems. Corp., 779 F. Supp.
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`1429, 1489 (D. Del. 1981), aff’d, 980 F.2d 742 (Fed. Cir. 1992).
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`Here, the Board failed to consider the totality of the evidence of record
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`demonstrating Su’s public accessibility. Su was copyrighted in 1998 (Ex. 1003 at
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`1).8
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`It was submitted to the Queens University Department of Computing and
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`Information Science, and indeed the entire university, almost two years prior to the
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`critical date. Prelim. Resp. at 18 (Patent Owner admitted that Su was a “September
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`1998 submission . . . to a Canadian university [Queen’s University].”) (emphasis
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`added); Petition at 11.
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`8 The Board erred in disregarding Su’s 1998 Copyright date. Petitioners never stated
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`that Su was not “publicly available” in 1998, they simply confirmed that Su was
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`“published” by the National Library of Canada in 1999.
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`Su was also accessible at the National Library of Canada and searchable by
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`author name and first word of title as discussed supra. Suffolk Techs., LLC, 752 F.3d
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`at 1365 (printed publication despite no indexing and only receiving “six responses”
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`while assuming “[m]any more people may have viewed the posts without posting
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`anything themselves.”). Moreover, Su was licensed to the National Library of
`
`Canada allowing that library to “reproduce, loan, distribute or sell copies of [Su] in
`
`microform.” Ex. 1003 at 2; Ex. 1013 (the National Library of Canada stated it was
`
`the “Publisher” in 1999). As in Lucent, the totality of evidence here demonstrates
`
`public accessibility irrespective of any purported indexing deficiencies. Lucent
`
`Techs., 2007 U.S. Dist. LEXIS 46863 at *17.
`
`CONCLUSION
`
`The evidence of record plainly demonstrates that Su was publically accessible
`
`before the critical date of the ‘141 Patent. The Board erred in holding otherwise,
`
`and Petitioners’ request for rehearing should, respectfully, be granted.
`
`Dated: November 17, 2015
`
`Respectfully submitted,
`
`By: /Frank M. Gasparo/
`Frank M. Gasparo
`Registration No. 44,700
`Venable LLP
`Rockefeller Center
`1270 Avenue of the Americas
`
`10300685-v1
`
`15
`
`
`
`CASE IPR2015-01037
`Patent No. 8,122,141
`
`Twenty-Fourth Floor
`New York, NY 10020
`
`10300685-v1
`
`16
`
`
`
`CASE IPR2015-01037
`Patent No. 8,122,141
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that on November 17, 2015, I caused a true and correct copy
`of Petitioners’ Request For Rehearing Pursuant to 37 C.F.R. § 42.71(d) to be served
`via:
`
`Via Express Mail
`
`Ernest D. Buff & Associates, LLC
`231 Somerville Road
`Bedminster, NJ 07921
`
`Ronald Abramson
`David G. Liston
`Lewis Baach PLLC
`The Chrysler Building
`405 Lexington Avenue
`New York, NY 10174
`
`Dated: November 17, 2015
`
`By: /Frank M. Gasparo/
`Frank M. Gasparo
`Registration No. 44,700
`Venable LLP
`Rockefeller Center
`1270 Avenue of the Americas
`Twenty-Fourth Floor
`New York, NY 10020
`
`10300685-v1
`
`17
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