Trials@uspto.gov
`571-272-7822
`
`Paper 101
`Entered: March 29, 2017
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ACTIVISION BLIZZARD, INC.,
`ELECTRONIC ARTS INC.,
`TAKE-TWO INTERACTIVE SOFTWARE, INC.,
`2K SPORTS, INC., ROCKSTAR GAMES, INC., and
`BUNGIE, INC.,
`Petitioner,
`
`v.
`
`ACCELERATION BAY, LLC,
`Patent Owner.
`____________
`
`Case IPR2015-019961
`Patent 6,829,634 B1
`____________
`
`
`Before SALLY C. MEDLEY, LYNNE E. PETTIGREW, and
`WILLIAM M. FINK, Administrative Patent Judges.
`
`PETTIGREW, Administrative Patent Judge.
`
`
`
`FINAL WRITTEN DECISION2
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`1 Bungie, Inc., who filed a Petition in IPR2016-00964, has been joined as a
`petitioner in this proceeding.
`2 A sealed “Parties and Board Only” version of this Decision was entered on
`March 29, 2017. Pursuant to notice from the parties that this Decision may
`be made publicly available without any redactions, the Decision is reissued
`as a public version.
`
`

`

`IPR2015-01996
`Patent 6,829,634 B1
`
`I. INTRODUCTION
`
`In this inter partes review, instituted pursuant to 35 U.S.C. § 314,
`Activision Blizzard, Inc., Electronic Arts Inc., Take-Two Interactive
`Software, Inc., 2K Sports, Inc., Rockstar Games, Inc., and Bungie, Inc.
`(collectively, “Petitioner”) challenge claims 1–18 (“the challenged claims”)
`of U.S. Patent No. 6,829,634 B1 (Ex. 1101, “the ’634 patent”), owned by
`Acceleration Bay, LLC (“Patent Owner”). We have jurisdiction under
`35 U.S.C. § 6. This Final Written Decision is entered pursuant to 35 U.S.C.
`§ 318(a) and 37 C.F.R. § 42.73. For the reasons discussed below, Petitioner
`has shown by a preponderance of the evidence that claims 1–9 are
`unpatentable but has not shown by a preponderance of the evidence that
`claims 10–18 are unpatentable.
`
`A. Procedural History
`Activision Blizzard, Inc., Electronic Arts Inc., Take-Two Interactive
`Software, Inc., 2K Sports, Inc., and Rockstar Games, Inc., filed a Petition for
`inter partes review of claims 1–18 of the ’634 patent. Paper 2 (“Pet.”).
`Patent Owner filed a Preliminary Response. Paper 6 (“Prelim. Resp.”). On
`March 31, 2016, we instituted an inter partes review on the following
`grounds: (1) claims 10, 11, 15, and 18 of the ’634 patent as anticipated
`under 35 U.S.C. § 102(b)3 by Shoubridge,4 and (2) claims 1–18 of the
`
`
`3 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
`(2011) (“AIA”), amended 35 U.S.C. §§ 102 and 103. Because the
`’634 patent has an effective filing date before the effective date of the
`applicable AIA amendments, we refer to the pre-AIA versions of 35 U.S.C.
`§§ 102 and 103.
`4 Peter J. Shoubridge & Arek Dadej, Hybrid Routing in Dynamic Networks,
`3 IEEE INT’L CONF. ON COMMS. CONF. REC. 1381-86 (Montreal, 1997)
`
`2
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`’634 patent as obvious under 35 U.S.C. § 103(a) over Shoubridge. Paper 8,
`19 (“Dec.”).
`Subsequent to institution, Bungie, Inc. filed a Petition and Motion for
`Joinder with the instant proceeding. Bungie, Inc. v. Acceleration Bay, LLC,
`IPR2016-00964, Papers 2, 3. On June 23, 2016, we instituted an inter partes
`review and granted the Motion, joining Bungie, Inc. as a petitioner in this
`inter partes review. Paper 23.
`Thereafter, Patent Owner filed a Patent Owner Response (“PO
`Resp.”). Paper 33 (confidential), Paper 94 (redacted). Petitioner filed a
`Reply to the Patent Owner Response (“Pet. Reply”). Paper 56. Patent
`Owner also filed a Contingent Motion to Amend requesting substitution of
`various claims in the event certain claims in the ’634 patent were found to be
`unpatentable. Paper 31 (“Mot. Am.”). Petitioner filed an Opposition to
`Patent Owner’s Contingent Motion to Amend. Paper 54 (“Opp. Mot. Am.”).
`Patent Owner then filed a Reply in support of its Contingent Motion to
`Amend. Paper 69 (“Reply Mot. Am.”). Patent Owner also filed a Motion for
`Observation on Cross-Examination. Paper 76 (“Mot. Obsv.”). Petitioner
`filed a Response to Petitioner’s Motion for Observation. Paper 82 (“Resp.
`Obsv.”)
`An oral hearing was held on December 7, 2016.5 A transcript of the
`hearing has been entered into the record. Paper 93 (“Tr.”).
`
`
`(Ex. 1105) (“Shoubridge”).
`5 A consolidated hearing was held for this proceeding and IPR2015-01951,
`IPR2015-01953, IPR2015-01964, IPR2015-01970, and IPR2015-01972.
`See Paper 80 (hearing order).
`
`3
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`Patent 6,829,634 B1
`
`B. Related Matters
`Petitioner identifies the following pending judicial matters as relating
`to the ’634 patent: Activision Blizzard, Inc. v. Acceleration Bay LLC, Case
`No. 3:16-cv-03375 (N.D. Cal., filed June 16, 2016); Electronic Arts Inc. v.
`Acceleration Bay LLC, Case No. 3:16-cv-03378 (N. D. Cal., filed June 16,
`2016); Take-Two Interactive Software, Inc. v. Acceleration Bay LLC, Case
`No. 3:16-cv-03377 (N.D. Cal., filed June 16, 2016); Acceleration Bay LLC
`v. Activision Blizzard, Inc., Case No. 1:16-cv-00453 (D. Del., filed June 17,
`2016); Acceleration Bay LLC v. Electronic Arts Inc., Case No. 1:16-cv-
`00454 (D. Del., filed June 17, 2016); and Acceleration Bay LLC v. Take-Two
`Interactive Software, Inc., Case No. 1:16-cv-00455 (D. Del., filed June 17,
`2016). Paper 20, 2–3.
`Petitioner and Patent Owner also identify five other petitions for inter
`partes review filed by Petitioner challenging the ’634 patent and similar
`patents: IPR2015-01964 (the ’634 patent); IPR2015-01951 and IPR2015-
`01953 (U.S. Patent No. 6,714,966 B1); and IPR2015-01970 and IPR2015-
`01972 (U.S. Patent No. 6,701,344 B1). Pet. 4; Paper 5, 1. Trials were
`instituted in those proceedings as well.
`
`C. The ’634 Patent
`The ’634 patent relates to a “broadcast technique in which a broadcast
`channel overlays a point-to-point communications network.” Ex. 1101,
`4:29–30. The broadcast technique overlays the underlying network system
`with a graph of point-to-point connections between host computers or nodes
`through which the broadcast channel is implemented. Id. at 4:49–52.
`Figure 1 of the ’634 patent is reproduced below:
`
`4
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`IPR2015-01996
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`
`Figure 1 illustrates a broadcast channel represented by a “4-regular,
`4-connected” graph. Id. at 5:7–8. The graph of Figure 1 is “4-regular”
`because each node is connected to exactly four other nodes (e.g., node A is
`connected to nodes E, F, G, and H). Id. at 4:64–65, 5:8–12. A node in a
`4-regular graph can only be disconnected if all four of the connections to its
`neighbors fail. Id. at 4:65–5:1. Moreover, the graph of Figure 1 is
`“4-connected” because it would take the failure of four nodes to divide the
`graph into two separate sub-graphs (i.e., two broadcast channels). Id. at 5:1–
`5.
`
`To broadcast a message over the network, an originating computer
`sends the message to each of its four neighbors using the point-to-point
`connections. Id. at 4:56–58. Each computer that receives the message sends
`the message to its other neighbors, such that the message is propagated to
`each computer in the network. Id. at 4:58–60. Each computer, however,
`only sends to its neighbors the first copy of the message that it receives and
`disregards subsequently received copies. Id. at 7:66–8:2. Each computer
`that originates messages numbers its own messages sequentially so that each
`computer that receives the messages out of order can queue the messages
`
`5
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`IPR2015-01996
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`
`until it receives the earlier ordered messages. Id. at 2:52–53, 8:17–21, 30–
`35.
`
`D. Illustrative Claims
`Among the claims of the ’634 patent at issue in this proceeding,
`claims 1 and 10 are independent and are illustrative of the claimed subject
`matter:
`
`1. A non-routing table based computer network having a
`plurality of participants, each participant having connections to
`at least three neighbor participants, wherein an originating
`participant sends data to the other participants by sending the
`data through each of its connections to its neighbor participants,
`wherein each participant sends data that it receives from a
`neighbor participant to its other neighbor participants, wherein
`data is numbered sequentially so that data received out of order
`can be queued and rearranged, further wherein the network is
`m-regular and m-connected, where m is the number of neighbor
`participants of each participant, and further wherein the number
`of participants is at least two greater than m thus resulting in a
`non-complete graph.
`10. A non-routing table based broadcast channel for
`participants, comprising:
`a communications network that provides peer-to-peer
`communications between the participants connected to the
`broadcast channel; and
`for each participant connected to the broadcast channel, an
`indication of four neighbor participants of that participant; and
`a broadcast component that receives data from a neighbor
`participant using the communications network and that sends the
`received data to its other neighbor participants to effect the
`broadcasting of the data to each participant of the . . . broadcast
`channel, wherein the network is m-regular and m-connected,
`where m is the number of neighbor participants of each
`participant, and further wherein the number of participants is at
`least two greater than m thus resulting in a non-complete graph.
`
`6
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`IPR2015-01996
`Patent 6,829,634 B1
`
`Id. at 29:12–25, 29:43–60.
`
`II. DISCUSSION
`
`A. Principles of Law
`
`To prevail in its challenge to Patent Owner’s claims, Petitioner must
`demonstrate by a preponderance of the evidence that the claims are
`unpatentable. 35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d). A claim is
`anticipated if a single prior art reference either expressly or inherently
`discloses every limitation of the claim. Orion IP, LLC v. Hyundai Motor
`Am., 605 F.3d 967, 975 (Fed. Cir. 2010). A claim is unpatentable under
`35 U.S.C. § 103(a) if the differences between the claimed subject matter and
`the prior art are such that the subject matter, as a whole, would have been
`obvious at the time of the invention to a person having ordinary skill in the
`art. KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 406 (2007). The question
`of obviousness is resolved on the basis of underlying factual determinations
`including: (1) the scope and content of the prior art; (2) any differences
`between the claimed subject matter and the prior art; (3) the level of ordinary
`skill in the art; and (4) objective evidence of nonobviousness. Graham v.
`John Deere Co., 383 U.S. 1, 17–18 (1966). The level of ordinary skill in the
`art may be reflected by the prior art of record. See Okajima v. Bourdeau,
`261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579
`(Fed. Cir. 1995).
`
`B. Level of Ordinary Skill in the Art
`
`Citing its declarant, Dr. David R. Karger, Petitioner contends that a
`person having ordinary skill in the art at the time of the invention would
`have had a minimum of (1) a bachelor’s degree in computer science,
`
`7
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`computer engineering, applied mathematics, or a related field of study; and
`(2) four or more years of industry experience relating to networking
`protocols or network topologies. Pet. 14; Ex. 1119 ¶ 19. Petitioner also
`contends that additional graduate education could substitute for professional
`experience, or significant experience in the field could substitute for formal
`education. Pet. 14; Ex. 1119 ¶ 19.
`Patent Owner’s expert, Dr. Michael Goodrich, opines that a person of
`ordinary skill in the art would have had (1) a bachelor’s degree in computer
`science or related field, and (2) two or more years of industry experience
`and/or an advanced degree in computer science or related field. Ex. 2022
`¶ 25. Dr. Goodrich also states that his opinions would be the same if
`rendered from the perspective of a person of ordinary skill in the art as set
`out by Dr. Karger. Id. ¶ 28.
`The levels of ordinary skill proposed by the parties do not differ
`significantly, as suggested by Dr. Karger’s testimony that his opinions
`would be the same under either party’s proposal. See id. Both parties’
`proposed descriptions require at least an undergraduate degree in computer
`science or related technical field, and both require at least two years of
`industry experience (although Petitioner proposes four years), but both agree
`that an advanced degree could substitute for work experience. For purposes
`of this Decision, we adopt Petitioner’s proposed definition as more
`representative, but note that our analysis would be the same under either
`definition.
`
`C. Claim Interpretation
`
`In an inter partes review, claim terms in an unexpired patent are given
`their “broadest reasonable construction in light of the specification of the
`
`8
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`IPR2015-01996
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`patent in which they appear.” 37 C.F.R. § 42.100(b); Cuozzo Speed Techs.,
`LLC v. Lee, 136 S.Ct. 2131, 2144–46 (2016). Under the broadest reasonable
`construction standard, claim terms are given their ordinary and customary
`meaning, as would be understood by one of ordinary skill in the art in the
`context of the entire disclosure. In re Translogic Tech., Inc., 504 F.3d 1249,
`1257 (Fed. Cir. 2007). An inventor may provide a meaning for a term that is
`different from its ordinary meaning by defining the term in the specification
`with reasonable clarity, deliberateness, and precision. In re Paulsen, 30 F.3d
`1475, 1480 (Fed. Cir. 1994).
`
`1. “m-regular”
`Petitioner proposes the term “m-regular,” recited in at least
`independent claims 1 and 10, means “each node is connected to exactly m
`other nodes.” Pet. 13 (citing Ex. 1101, 4:64–65, 15:32–41). Patent Owner
`does not offer a construction of this term. Prelim. Resp. 12; PO Resp. 13–
`16. For purposes of institution, we agreed that Petitioner’s proposed
`construction accords with the broadest reasonable construction consistent
`with the specification, which, for example, describes a graph in which each
`node is connected to four other nodes as a 4-regular graph. Ex. 1101, 4:64–
`65. We see no need to alter that construction here. Accordingly, we
`construe “m-regular” to mean “each node is connected to exactly m other
`nodes.”
`
`2. “m-connected”
`Petitioner proposes the term “m-connected,” recited in at least
`independent claims 1 and 10, means “dividing the network into two or more
`separate parts would require the removal of at least m nodes.” Pet. 14 (citing
`Ex. 1101, 5:1–5). Patent Owner does not offer a construction of this term.
`
`9
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`IPR2015-01996
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`Prelim. Resp. 13; PO Resp. 13–16. The portion of the specification cited by
`Petitioner describes the 4-connected graph as having the property that it
`would take the failure of at least 4 nodes to divide the graph into disjoint
`subgraphs. Ex. 1101, 5:1–5. Because Petitioner’s construction accords with
`the specification description, we see no reason to alter that construction here.
`Accordingly, we construe “m-connected” to mean “dividing the network
`into two or more separate parts would require the removal of at least m
`nodes.”
`
`3. “participant”
`Patent Owner contends that the term “participant,” recited in at least
`independent claims 1 and 10, should be construed as “an application
`program that interacts with a logical broadcast channel that overlays an
`underlying network.” PO Resp. 14. Patent Owner contends that the
`specification’s statements that “[e]ach application program interfaces with a
`broadcaster component for each broadcast channel” and “the broadcast
`channel . . . overlays a point-to-point communication network” support its
`construction. Id. (citing, e.g., Ex. 1101, 15:65–16:1, 4:29–31). Thus, Patent
`Owner contends, the term “participant is used to refer to the application
`programs that interact with a broadcast channel in an overlay network rather
`than the physical components that communicate at the network level.” Id.
`(citing, e.g., Ex. 1101, 15:53–56, claims 7, 13–15).
`Petitioner contends the specification uses “participant” without
`imposing any such limitations. Pet. Reply 2 (citing Ex. 1101, 1:46–51,
`1:42–45, 1:56–2:2, 2:16–22, 2:32–39). Accordingly, Petitioner contends,
`under the broadest reasonable interpretation, the term “participant” should
`receive its plain meaning (“participant in the network”). Id.
`
`10
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`

`IPR2015-01996
`Patent 6,829,634 B1
`
`The portions of the specification cited by Patent Owner, and the
`claims in particular, do not support Patent Owner’s attempt to read
`additional limitations into the term “participant.” For example, claim 7,
`which depends from claim 1, recites that “each participant is a process
`executing on a computer.” Ex. 1101, 29:36–37 (emphases added). The
`’634 patent uses the term “process” in describing both application programs
`and parts of programs. See, e.g., id. at 15:65–16:3 (“Computer 600 includes
`multiple application programs 601 executing as separate processes. . . .
`Alternatively, the broadcaster component may execute as a separate process
`or thread from the application program.”), Fig. 9 (“Contact process”). Thus,
`as used in claim 7, participant encompasses more than application
`programs—the limitation Patent Owner seeks to impose on “participant” in
`claim 1. Similarly, claims 13–15, which depend from claim 10, respectively
`recite that each participant is a “computer process,” “computer thread,” or
`“computer.” Id. at 30:7–12. By imposing a narrower limitation on
`“participant” for purposes of claims 1 and 10 than the limitations imposed
`by dependent claims 7 and 13–15, Patent Owner’s proposed claim
`construction is inconsistent with the specification.6
`
`6 Patent Owner contends that its constructions are “unrebutted” and that
`Petitioner’s declarant, Dr. Karger, testified that he had no understanding of
`the terms Patent Owner seeks to construe. PO Resp. 15–16 (citing, e.g.,
`Ex. 2033, 100:23–101:8, 51:14–52:9). We disagree. Petitioner
`“interpret[ed] [terms] for purposes of this review with their plain and
`ordinary meaning consistent with the specification of the ’634 patent.”
`Pet. 13; Pet. Reply 2–3. Moreover, we have reviewed portions of
`Dr. Karger’s testimony cited by Patent Owner (see PO Resp. 18–19; Mot.
`Obsv. 1–5), and do not agree that he had no understanding of the terms.
`Although Dr. Karger did not attempt to provide an explicit definition of
`terms Patent Owner seeks to construe (see, e.g., Ex. 2034, 120:10–11 (“I
`
`11
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`In addition, independent claim 10 requires that “participants [be]
`connected to the broadcast channel.” Ex. 1101, 29:46–47. Because this
`claim already describes participants as connected to the broadcast channel, it
`would be superfluous to include in the construction of “participant” a
`requirement that a participant interact with a broadcast channel, as Patent
`Owner proposes.
`Petitioner proposes that “participant” be construed to have its “plain
`meaning.” Pet. Reply 2 (“participant in the network”). For reasons
`discussed below, we agree that the plain meaning of the term “participant,”
`including the various constraints placed on it by the claims themselves,
`would be sufficiently clear to a person of ordinary skill in the art for
`purposes of the analysis.
`
`4. “connection”
`Patent Owner contends the term “connection” should be construed as
`“an edge between two application programs connected to a logical broadcast
`channel that overlays an underlying network.” PO Resp. 15–16 (citing
`Ex. 1101, 5:8–13, claim 1). As Petitioner points out, however, claim 6
`recites that “connections are TCP/IP connections,” which means that
`connections may exist at the transport layer rather than at the application
`layer as Patent Owner’s construction requires.7 Pet. Reply 2 (citing
`Ex. 2022 ¶ 31). Similarly, in the specification, connections are described
`
`
`was not asked to scope the exact boundaries of the meaning”)), Dr. Karger
`did apply his understanding of the meaning of these terms to the art. For
`these reasons, we reject Patent Owner’s suggestion that his testimony be
`given no weight.
`7 We point out that the specification does not use the term “layer” or refer to
`the OSI Reference Model.
`
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`without reference to application programs. See Ex. 1101, 1:46–48 (“The
`point-to-point network protocols, such as UNIX pipes, TCP/IP, and UDP,
`allow processes on different computers to communicate via point-to-point
`connections.”); 6:49–51 (discussing computer connections using the TCP/IP
`protocol).
`Petitioner proposes that “connection” be construed to have its “plain
`meaning.” Pet. Reply 2–3 (“connection between participants”). For reasons
`discussed below, we agree that the plain meaning of the term “connection,”
`including the various constraints placed on it by the claims themselves—
`e.g., participants have connections through which data can be sent or
`received—would be sufficiently clear to a person of ordinary skill in the art
`for purposes of the analysis.
`
`D. Asserted Anticipation of Claims 10, 11, 15, and 18 by Shoubridge
`
`Petitioner contends that claims 10, 11, 15, and 18 are anticipated by
`Shoubridge. Pet. 42–51, 54, 56. We have reviewed the parties’ arguments
`in the Petition, Patent Owner Response, and Reply, as well as the relevant
`evidence discussed in those papers and other record papers, including the
`declarations of Dr. Karger and Dr. Goodrich. For the reasons that follow,
`we determine Petitioner has not shown by a preponderance of the evidence
`that claims 10, 11, 15, and 18 are anticipated by Shoubridge.
`
`1. Summary of Shoubridge
`Shoubridge describes techniques for routing messages to all the
`participants in a communications network. Ex. 1105, 1.8 Specifically,
`Shoubridge models a communication network as a graph in which “[e]ach
`
`8 We refer to exhibit pagination.
`
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`node functions as a source of user traffic entering the network where traffic
`can be destined to all other nodes within the network.” Id. at 2. In a specific
`example, Shoubridge describes a “64 node network with connectivity of
`degree 4” modeled as a “large regular graph forming a manhattan grid
`network that has been wrapped around itself as a torus.” Id. at 3.
`Shoubridge describes a routing protocol called “constrained flooding, the
`most efficient way to flood an entire network.” Id. at 2. In constrained
`flooding, a packet received at a node is rebroadcast on all links except the
`link it was received on, and packets are numbered such that if a “packet[]
`revisit[s] a node with the same sequence number, [it is] discarded.” Id. at 3.
`Shoubridge describes simulations using both constrained flooding and
`minimum hop algorithms that use routing tables. Id. at 2–4. Ultimately, a
`hybrid routing model is proposed in which constrained flooding is used if
`routing tables are unable to provide a next node entry for forwarding user
`traffic, but minimum hop is used if a valid next node entry exists. Id. at 4–5.
`
`2. Status of Shoubridge as a Prior Art Printed Publication
`As a preliminary matter, we address whether Shoubridge is a prior art
`printed publication under 35 U.S.C. § 102(b). See 35 U.S.C. § 311(b). It is
`Petitioner’s burden to prove that it is. See 35 U.S.C. § 316(e). The
`determination of whether a document is a “printed publication” under
`35 U.S.C. § 102 “involves a case-by-case inquiry into the facts and
`circumstances surrounding the reference’s disclosure to members of the
`public.” In re Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004).
`“Because there are many ways in which a reference may be disseminated to
`the interested public, ‘public accessibility’ has been called the touchstone in
`determining whether a reference constitutes a ‘printed publication’ bar under
`
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`35 U.S.C. § 102(b).” Blue Calypso, LLC v. Groupon, Inc., 815 F.3d 1331,
`1348 (Fed. Cir. 2016) (citation omitted).
`For purposes of institution, we accepted Petitioner’s unchallenged
`contention that Shoubridge was a paper published and presented at an IEEE
`conference in 1997. Dec. 6; Pet. 3, 17 (citing Ex. 1105; Ex. 1120). In its
`Response, Patent Owner now challenges this contention. PO Resp. 16–17.
`Specifically, Patent Owner argues that Dr. Shoubridge admitted in his
`deposition that the paper he identified in his declaration (Ex. 1120 at
`Exhibit B) as the paper presented at the 1997 International Conference on
`Communications in Montreal, on June 8–12, 1997, “was not the same paper
`that was presented at the conference.” Id. (citing Ex. 2031, 77:12–78:1,
`83:4–11). Patent Owner also argues that the paper cannot be shown to have
`been disseminated or otherwise made available based on the publication date
`on the face of the paper. Id. at 17 (citing Kyocera Wireless Corp. v. Int’l
`Trade Comm’n, 545 F.3d 1340, 1350 (Fed. Cir. 2008)).
`Petitioner disputes Patent Owner’s contention that Dr. Shoubridge
`could not identify his paper. Pet. Reply 4–5. Petitioner directs us to
`Dr. Shoubridge’s testimony that his paper (i.e., Shoubridge) was handed out
`to 500–1000 attendees as part of the proceedings and that the Exhibit
`“correlate[s] 100 percent with what was presented at the conference in
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`1997.” Pet. Reply 4 (citing Ex. 2031, 78:12–80:13).9 Petitioner also
`contends Dr. Shoubridge’s second declaration explains that the $10 price tag
`and copyright notice (the alleged source of the discrepancy according to
`Patent Owner (Tr. 54:15–55:8)) was indeed on the copy distributed at the
`June 1997 conference. Pet. Reply 4–5 (citing Ex. 1136 ¶¶ 4–8; Ex. 1137).
`We find that Petitioner has satisfied its burden of proving that
`Shoubridge was a printed publication that was publicly available as of
`June 1997. At the outset, we observe that Dr. Shoubridge is a third-party
`witness with no alleged interest in the outcome of these proceedings. See
`Ex. 2031, 7:9–16, 90:25–91:7. In his first declaration, he testified that the
`attached Exhibit B10 was the paper he presented at the 1997 conference.
`Ex. 1120 ¶¶ 6–7. Although Patent Owner is correct that the pages of
`Exhibit B were not the actual pages from the conference proceeding (as in
`physically obtained at the conference), but a reproduction, Patent Owner
`does not address Dr. Shoubridge’s repeated testimony that the content of the
`paper was identical in every respect to what was presented and distributed in
`bound conference volumes. Ex. 2031, 77:24–78:7 (“So I can confirm that
`that [Exhibit B] paper was the paper I presented at the conference and it was
`put in the proceeding. That was what was published in the -- that content of
`
`
`9 We have considered Patent Owner’s contention that this portion of
`Petitioner’s Reply exceeds the proper scope of reply (see Paper 65), but we
`disagree. We determine that this portion of the Reply, as well as the others
`cited herein, is properly responsive to evidence and arguments raised by
`Patent Owner in its Response and Preliminary Response (see also Paper 67)
`and, therefore, does not raise a new issue or belatedly present evidence. See
`Patent Office Trial Practice Guide, 77 Fed. Reg. 48,756, 48,767 (Aug. 14,
`2012).
`10 Exhibit B is identical to the Shoubridge reference, Exhibit 1105.
`
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`that paper is what was published in the proceedings.”), 81:19–82:4 (“[P]ages
`1381 to 1386 will correlate 100 percent with what was submitted as
`Exhibit [B]. So it’s an accurate reproduction, but it is not an actual bound –
`you know, it’s not pages out of the bound volume.”). Patent Owner does not
`direct us to any authority that requires the same physical paper to be in
`evidence for a reference to qualify as prior art.
`We have considered the fact that Dr. Shoubridge was, at first, unable
`to confirm that the $10 price indicated on the first page of the paper (see
`Ex. 1105, 1) was on the version of the paper presented in the conference and
`contained in the bound conference proceedings. Ex. 2031, 80:15–19
`(“Maybe they do, but this one doesn’t.”). However, Dr. Shoubridge
`addressed this perceived discrepancy in his second declaration, where he
`stated that he was not looking at the first page of his article when asked
`about the price indication. See Ex. 1136 ¶¶ 4–8; Pet. Reply 4–5. We find
`this explanation credible. With its Reply, Petitioner submitted Exhibit 1137,
`which appears to be a scan of the bound version of Dr. Shoubridge’s article.
`Pages 31 to 36 of Exhibit 1137 appear to be identical to the Shoubridge
`reference in every respect including formatting, pagination, and the $10.00
`indication on the first page.11 Consequently, Exhibit 1137 confirms
`Dr. Shoubridge’s deposition testimony as well as his second declaration that
`
`
`11 The issue of whether the bound conference proceeding contained the $10
`indication, therefore, is resolved by Exhibit 1137, which contains the $10
`indication on its first page. As Petitioner represents, and Dr. Shoubridge
`states in his second declaration, Dr. Shoubridge may not have been looking
`at the first page of the paper when being cross-examined about the price
`indication. Pet. Reply 4–5; Ex. 1136 ¶¶ 4–8.
`
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`the contents and $10 price of the paper on Exhibit B were identical to those
`of the paper presented at the conference.
`In sum, Dr. Shoubridge’s testimony, which we find to be credible,
`supports Petitioner’s contention that the Shoubridge reference (Ex. 1105)
`was a paper that was published and disseminated at the 1997 IEEE
`conference.12 Because the 1997 date on the face of Shoubridge is supported
`by evidence, it is unnecessary to consider Patent Owner’s argument that
`standing alone, the 1997 date on the face of the paper, is insufficient
`evidence of publication date and public availability. We determine
`Shoubridge to be a printed publication for purposes of 35 U.S.C. §§ 102(b)
`and 311(b).
`
`3. Enablement of Shoubridge
`As a threshold matter, Patent Owner contends “Shoubridge is not
`enabled,” because it teaches a routing model simulation and “does not
`identify or describe an application layer m-regular incomplete graph
`overlay . . . in the real world.” PO Resp. 22 (citing Ex. 1105, 2–3). Patent
`Owner further contends that “[a] POSITA would have to perform undue
`experimentation to create an application layer overlay that would be m-
`regular and incomplete graph over an underlying network. See § II.C, supra
`
`
`12 Patent Owner does not argue that presentation and dissemination at the
`conference are insufficient to prove public availability. In any event, the
`circumstances of this IEEE conference, in which 500–1000 people attended
`and were given copies of the proceedings (Ex. 2031, 85:6–11, 86:1–10), are
`more than sufficient for Shoubridge to qualify as a printed publication. See
`Massachusetts Inst. of Tech. v. AB Fortia, 774 F.2d 1104, 1109 (Fed. Cir.
`1985).
`
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`(describing the 3 year development of an m-regular, incomplete graph at the
`application layer).” Id.
`Petitioner contends the claims are not limited to an application layer
`overlay and, in any event, a person of ordinary skill in the art would have
`found it straightforward to implement Shoubridge’s network as an overlay at
`the application layer. Pet. Reply 21 (citing Ex. 1105, 3; Ex. 1125 ¶ 208).
`Petitioner acknowledges that Shoubridge discloses the claimed network (i.e.,
`using “flooding”) in a simulation, but contends that a person of ordinary skill
`in the art would have understood that the simulation could be implemented
`in a real-world network. Id. at 22 (citing Ex. 1125 ¶ 209). We agree with
`Petitioner.
`To anticipate a claimed invention, a prior art reference must enable
`one of ordinary skill in the art to make the prior invention without undue
`experimentation. Amgen Inc. v. Hoe