Trials@uspto.gov
`571-272-7822
`
`
` Paper 10
`
`Date Entered: December 28, 2016
`
`
`
`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,
`Petitioner
`
`v.
`
`WAG ACQUISITION, LLC,
`Patent Owner.
`____________
`
`Case IPR2015-01033
`Patent 8,327,011 B2
`Case IPR2015-01037
`Patent 8,122,141 B21
`____________
`
`
`Before GLENN J. PERRY, TREVOR M. JEFFERSON, and
`BRIAN J. McNAMARA, Administrative Patent Judges.
`
`McNAMARA, Administrative Patent Judge.
`
`
`DECISION DENYING REQUEST FOR REHEARING
`37C.F.R. § 42.71(d)
`
`
`
`1 This Decision addresses issues that are substantially the same in IPR2015-
`01033 and IPR2015-01037. Therefore, we exercise our discretion to issue
`one order to be filed in each case. The parties, however, are not authorized
`to use this style heading in any subsequent papers.
`
`
`
`
`571-272-7822
`
`
` Paper 10
`
`Date Entered: December 28, 2016
`
`
`
`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,
`Petitioner
`
`v.
`
`WAG ACQUISITION, LLC,
`Patent Owner.
`____________
`
`Case IPR2015-01033
`Patent 8,327,011 B2
`Case IPR2015-01037
`Patent 8,122,141 B21
`____________
`
`
`Before GLENN J. PERRY, TREVOR M. JEFFERSON, and
`BRIAN J. McNAMARA, Administrative Patent Judges.
`
`McNAMARA, Administrative Patent Judge.
`
`
`DECISION DENYING REQUEST FOR REHEARING
`37C.F.R. § 42.71(d)
`
`
`
`1 This Decision addresses issues that are substantially the same in IPR2015-
`01033 and IPR2015-01037. Therefore, we exercise our discretion to issue
`one order to be filed in each case. The parties, however, are not authorized
`to use this style heading in any subsequent papers.
`
`
`
`
`
`IPR2015-01033; IPR2015-01037
`Patent 8,327,011 B2; 8,122,141 B2
`
`
`INTRODUCTION
`Friendfinder Networks Inc., Streamray Inc., WMM, LLC, WMM
`Holdings, LLC, Multi Media, LLC, and Duodecad IT Services Luxembourg
`S.À.R.L (collectively, “Petitioner”) requested rehearing of our Decision
`Denying Institution of Inter Partes Review in IPR2015-01033 (Friendfinder
`I) and IPR2015-01037 (Friendfinder II) entered on October 19, 2015. Paper
`9 (“Req. Reh’g.”) in each proceeding.
`The burden of showing a decision should be modified lies with the
`party challenging the decision. 37 C.F.R. § 42.71(d). The request must
`specifically identify all matters the party believes the Board misapprehended
`or overlooked, and the place where each matter was previously addressed in
`a motion, an opposition or reply. Id. For the reasons discussed below, the
`Request for Rehearing is DENIED.
`ANALYSIS
`In our Decision Denying Institution in Friendfinder I, we determined
`that Petitioner had failed to demonstrate that a Master of Science Thesis
`entitled “Continuous Media Support for Multimedia Databases” submitted
`by Jun Su to the Department of Computing and Information Science at
`Queens University, Ontario, Canada in September 1998 (“Su”) was
`accessible to the public in 1999. Dec. to Inst. 9–11, 13.2 We applied the
`same analysis of Su in Friendfinder II. Friendfinder II Dec. Denying Inst. 8–
`9.
`
`Petitioner contends that the panel failed to consider and give proper
`value to terms that would have been used by a person of ordinary skill in the
`
`
`2 All references cited herein are to our papers in Friendfinder I, unless
`otherwise noted.
`
`
`
`2
`
`
`
`IPR2015-01033; IPR2015-01037
`Patent 8,327,011 B2; 8,122,141 B2
`
`art to search for and locate references describing the subject matter of the
`U.S. Patent 8,327,011 (“the ’011 Patent”) (Req. Reh’g. 1–2) and U.S. Patent
`8,122,141 B2 (“the ’041 Patent) (Friendfinder II Req. Reh’g. 1–2).
`According to Petitioner, the panel overlooked the importance of the term
`“continuous” because the inventor’s goal was to achieve a continuous
`broadcast without interruption. Req. Reh’g. 2. Petitioner also contends that
`we applied the incorrect legal standard for determining public accessibility
`by omitting from our analysis the perspective of a person of ordinary skill in
`the art. Id. Petitioner further contends that the totality of the circumstances
`makes it clear that the reference was publically accessible before the critical
`date of the ’011 Patent. Id. at 3.
`Petitioner fails to recognize that our Decision was based on
`Petitioner’s failure to present sufficient evidence of public accessibility.
`Public accessibility is the touchstone in determining whether a reference is a
`printed publication. In re Hall, 781 F.2d 897, 898–99 (Fed. Cir. 1986). “A
`reference is publicly accessible ‘upon a satisfactory showing that such
`document has been disseminated or otherwise made available to the extent
`that persons interested and ordinarily skilled in the subject matter or art
`exercising reasonable diligence, can locate it.”’ Kyocera Wireless Corp. v.
`Int’l Trade Comm’n., 545 F.3d 1340, 1350 (Fed. Cir. 2008) (quoting SRI
`Int’l, Inc. v. Internet Sec. Sys. Inc., 511 F.3d 1186, 1194 (Fed. Cir. 2008).
`Whether a reference is a printed publication is a legal question based on
`underlying factual determinations. Id. The party seeking to introduce the
`reference “should produce sufficient proof of its dissemination or that it has
`otherwise been available and accessible to persons concerned with the art to
`
`
`
`3
`
`
`
`IPR2015-01033; IPR2015-01037
`Patent 8,327,011 B2; 8,122,141 B2
`
`which the document relates and thus most likely to avail themselves of its
`contents.” In re Wyer, 655 F.2d 221, 227 (CCPA 1981).
`On August 6, 2015, we denied Petitioner’s request for authorization to
`submit a response to the Patent Owner Preliminary Response concerning this
`issue because, during a telephone conference on August 4, 2015, Petitioner
`acknowledged that it did not seek to introduce new evidence or rebut facts
`presented in the Patent Owner Preliminary Response and that the question
`before us was a legal one. Dec. Denying Inst. 6–7 (citing Paper 7, 2–3). As
`we noted in the Decision Denying Institution, where no facts are in dispute,
`the question of whether a reference represents a “printed publication” is a
`question of law. Id. at 7 (citing. In re Cronyn, 890 F.2d 1158, 1159
`(Fed.Cir.1989)).3
`The sole evidence cited in the Petition is a print-out of a record
`created in 2008 by Theses Canada. Ex. 1013 (“TH-Su”). As we noted in
`our Decision Denying Institution, TH-Su includes an active PDF link to Su,
`identifies Su as resident on two microfiches, indicates the publisher is the
`Ottawa: National Library of Canada [1999], and includes an abstract. Dec.
`Denying Inst. 7. TH-Su also includes an AMICUS No. (20672380)1, an
`international standard book number (ISBN 0612312569), a Canadian
`Number (992099080) and the following information “Copies: NL Stacks –
`Mic. TJ- 31256.” Id. at 7-8. However, TH-Su is a document created and
`modified on July 18, 2008, not in 1999. Id. at 7–8. Petitioner failed to tie
`
`
`3 We agree with Petitioner’s assertion that it did not concede any of the
`argument set forth in Patent Owner’s Preliminary Response. Req. Reh’g. 6,
`fn 4. However, our inquiry during the conference of August 4, 2016
`concerned facts and evidence.
`
`
`
`4
`
`
`
`IPR2015-01033; IPR2015-01037
`Patent 8,327,011 B2; 8,122,141 B2
`
`any of these numerical designations in TH-Su to public accessibility prior to
`2008. Thus, Petitioner failed to meet its burden to demonstrate that Su was
`publically accessible in 1999.
`Notwithstanding that, Petitioner failed to meet its burden to show
`public accessibility, Petitioner’s Rehearing Request challenges our
`assessment of arguments and exhibits proffered by Patent Owner in the
`Patent Owner Preliminary Response about practices for cataloging and
`shelving Su. Dec. to Inst. 10–13.
`Patent Owner submitted as Exhibit 2002 a photograph of an envelope
`from the National Library of Canada in which microfiche indexes of
`bibliographic information on Canadian writings are stored. As we noted in
`our Decision Denying Institution, the top of the microfiche in the envelope
`reads: “Jan– Jul/Aug 1999 ISSN 0225-3216 Index A Authors Titles Series.”
`Exhibit 2002 provides no further information concerning when Su may have
`become accessible to the public.
`Ex. 2003 is a copy of an index microfiche as found in the envelope
`submitted as Exhibit 2002 for 1999 Canadian works having titles and
`author’s names beginning with the letter “C.” Exhibit 2004 is a similar
`index for the same series of works having titles and indexes beginning with
`the letter “S.” We agreed with Patent Owner that this rudimentary indexing
`of the Su thesis by author name (“Su”) and/or the first word of the title
`(“Continuous”), which is the only indexing that the evidence suggests may
`have occurred before the priority date, does not suggest its relevance to the
`streaming media network transport problem addressed by the ’011 Patent
`and would not be sufficient to meet the applicable standard for public
`accessibility. Dec. Denying Inst. 13. In In re Lister, 558 F. 3d at 1315–16, a
`
`
`
`5
`
`
`
`IPR2015-01033; IPR2015-01037
`Patent 8,327,011 B2; 8,122,141 B2
`
`book concerning a golf game deposited at the Copyright Office and
`searchable only by the author’s last name and the first word of the title
`(“Advanced”) was not considered publicly accessible until sometime later
`when commercial databases including the full title of the work made the data
`keyword searchable. The circumstances here are similar, i.e., the indexing
`of Su by author’s last name and the first word of the title does not rise to the
`level of public accessibility, although the Theses Canada database record
`generated in 2008 and later accessed by Petitioner for this proceeding may
`establish public accessibility as of 2008.
` Relying on the evidence provided by Patent Owner, Petitioner
`contends, the record before us demonstrates that Su was publicly accessible
`“because Su could be readily located by a person of ordinary skill in the art
`exercising reasonable diligence.” Req. Reh’g. 7. Petitioner argues that
`Patent Owner and the Board acknowledge that Su was indexed and
`searchable within the National Library of Canada by author name and first
`word of Su’s title, i.e., “continuous.” Id. Petitioner contends that, had we
`permitted a reply to the Patent Owner Preliminary Response, Petitioner
`would have responded to Patent Owner’s characterizations of keywords that
`would be used by a diligent searcher in view of the content of the patents’
`specifications. Req. Reh’g. 4. As discussed above, however, Petitioner
`represented that it did not plan to introduce evidence disputing facts asserted
`in the Patent Owner Preliminary Response concerning the indexing or
`cataloging of the relevant publications. Paper 7, 2–3.
`Petitioner further argues that a person of ordinary skill would have
`searched for the term “continuous” because it is highly descriptive term
`indicative of the subject matter of the ’011 Patent, i.e., a continuous stream
`
`
`
`6
`
`
`
`IPR2015-01033; IPR2015-01037
`Patent 8,327,011 B2; 8,122,141 B2
`
`of media. Id. at 7–8. Petitioner contends that the ’011 Patent is “replete”
`with the term “continuous.” Id. at 9. The ’011 Patent uses the word
`“continuous” three times: (i) at column 1, line 43 (referring to “continuous
`media”), (ii) at column 1, line 48 (referring to “continuous media broadcast,
`or ‘stream’, such as from a radio station”), and at column 3, line 65
`(referring to “a continuous stream of audio”). The ’011 Patent also uses the
`work “continuously” stating that because a buffer holds one minute of
`audio/video data “it can play continuously despite data reception
`interruptions of less than a minute.” Ex. 1001, 11:65–67. Petitioner also
`argues the Declaration of its expert, Dr. Nathanial Polish (Ex. 1006 “Polish
`decl.”) includes the term “continuous” 137 times and illustrates the
`substantive overlay of “continuous” and “streaming.” Req. Reh’g. 8.
`We could not have overlooked these arguments because they are new
`arguments that were not made in the Petition. Even if they had been made in
`the Petition, we are not persuaded by Petitioner’s arguments concerning the
`term “continuous.” As discussed above, the only indexing appears to have
`been by author’s last name, which has no significance as to the subject
`matter, and by the first word of the thesis title, i.e., “continuous.” Thus,
`Petitioner’s argument asserts that a person of ordinary skill would have
`located this particular index and searched it for the word “continuous.”
`However, the term “continuous” is a common word that has application in
`many contexts and there is no indication that the indexing by Theses Canada
`was arranged by subject matter.
`Petitioner also contends that, because we did not define a person of
`ordinary skill, we were unable to make the requisite determination of
`whether Su could be found by such a person. Req. Reh’g. 12–13. However,
`
`
`
`7
`
`
`
`IPR2015-01033; IPR2015-01037
`Patent 8,327,011 B2; 8,122,141 B2
`
`the Petition describes one of ordinary skill as having B.S. degree in
`computer science or electrical engineering (or comparable degree) and two
`years of experience in networking or streaming media, or a M.S. in computer
`science or electrical engineering (or comparable degree). Pet. 14. Patent
`Owner did not contest Petitioner’s description of a person of ordinary skill.
`Thus, the matter was not in dispute and there was no need to address it
`further in our Decision.
`Petitioner also argues that we failed to consider the totality of the
`circumstances, and improperly disregarded that Su was copyrighted in 1998.
`Req. Reh’g. 14. In a footnote, Petitioner argues it never stated Su was not
`“publicly available” in 1998, but confirmed that Su was published by the
`National Library of Canada in 1999. The issue before us, however, is not
`the copyright date, but the date Su became publically available. Petitioner
`has produced no evidence prior to the print-out from Theses Canada
`indicating that record was created in 2008. As discussed above, even relying
`on the evidence produced by Patent Owner, we cannot determine that Su
`was accessible to the public, so as to be publicly available as prior art.
`CONCLUSION
`In both Friendfinder I and Friendfinder II, our Decision Denying
`Institution was the result of Petitioner’s failure to provide evidence that Su
`was publically accessible as of the critical date. Petitioner’s Request for
`Rehearing is substantially the same in Friendfinder I and Friendfinder II and
`does not identify any subject matter presented in the respective Petitions that
`we overlooked or misapprehended. Therefore, Petitioner’s Request for
`Rehearing in Friendfinder I and in Friendfinder II is DENIED.
`
`
`
`
`8
`
`
`
`IPR2015-01033; IPR2015-01037
`Patent 8,327,011 B2; 8,122,141 B2
`
`
`
`
`PETITIONER
`Frank Gasparo
`Jeffri Kaminski
`VENABLE LLP
`FMGasparo@Venable.com
`JAKaminski@Venable.com
`
`Kevin O’Brien
`Richard Wells
`Matt Dushek
`BAKER & MCKENZIE LLP
`Kevin.obrien@bakermckenzie.com
`richard.wells@bakermckenzie.com
`matt.dushek@bakermckenzie.com
`Duodecad_WAG@bakermckenzie.com
`
`
`
`PATENT OWNER
`
`Ronald Abramson
`LEWIS BAACH PLLC
`ronald.abramson@lewisbaach.com
`
`Ernest D. Buff
`ERNEST D. BUFF & ASSOCIATES, LLC
`ebuff@edbuff.com
`
`
`
`
`
`
`9
`
`
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