Trials@uspto.gov
`Tel: 571-272-7822
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` Paper 18
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` Entered: February 18, 2015
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`HALIBURTON ENERGY SERVICES, INC.,
`Petitioner,
`
`v.
`
`DYNAMIC 3D GEOSOLUTIONS LLC,
`Patent Owner.
`_______________
`Cases IPR2014-011861
`Patent 7,986,319 B2
`_______________
`
`
`
`Before KARL D. EASTHOM, DAVID C. McKONE, and
`KEVIN W. CHERRY, Administrative Patent Judges.
`
`EASTHOM, Administrative Patent Judge.
`
`DECISION
`Request for Rehearing
`37 C.F.R. § 42.71(c)
`
`
`
`
`
`
`1 IPR2014-01189 and IPR2014-01190 have been consolidated with
`IPR2014-01186.
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`Par v Novartis, IPR 2016-00084
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`I. BACKGROUND
`In an Institution Decision (Paper 13, “Inst. Dec.”), we instituted trial on all
`challenged claims, claims 1–93, but determined that Petitioner had not made a
`threshold showing that certain asserted prior art, Petrel 2005 (Ex. 1013),
`constitutes a printed publication. Inst. Dec. 24–38. In its Rehearing Request
`(Paper 15, “Reh’g Req.”), Petitioner “respectfully requests the Board to reverse
`its” determination that Petrel 2005 constitutes a printed publication. Reh’g Req. 1.
`For the reasons that follow, we deny the requested relief. The applicable
`standard for a request for rehearing is set forth in 37 C.F.R. § 42.71(c) and (d),
`which provides, in relevant part, the following:
`(c) Petition decisions. . . . When rehearing a decision on
`petition, the panel will review the decision for an abuse of discretion.
`(d) Rehearing. A party dissatisfied with a decision may file a
`request for rehearing, without prior authorization from the Board. The
`burden of showing a decision should be modified lies with the party
`challenging the decision. 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, opposition, or a reply.
`
`
`II. DISCUSSION
`Petitioner has not shown that the panel abused its discretion and overlooked
`or misapprehended a previously addressed matter that warrants the requested relief.
`Petitioner contends that the Institution Decision’s “discussion of accessibility and
`dissemination is commingled, thereby leading to an incorrect conclusion by the
`Board to require evidence of ‘widespread dissemination’ despite sufficient
`evidence of accessibility.” Reh’g Dec. 3, n.1 (citing Inst. Dec. 36–37). Petitioner
`similarly contends that the “Board erred in requiring Petitioner to prove access,
`e.g., widespread dissemination, in light of Petitioner’s clear evidence of the
`
`
`
`2
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`IPR2014-01186
`Patent 7,986,319 B2
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`accessibility of Petrel 2005 and its accompanying documents.” Id. at 4 (citing Inst.
`Dec. 33–37).
`According to Petitioner, “Petrel 2005’s accompanying documents [i.e.,
`Release Notes and Help Files]2 were printed publications when the Petrel 2005
`software became accessible. Petitioner need not have provided evidence showing
`that they were separately accessible or published apart from the software.” Reh’g
`Req. 5.
`Contrary to Petitioner’s arguments in its Rehearing Request, we did not
`require a showing of “widespread dissemination” to establish accessibility: “On
`balance, Petitioner does not show dissemination or public accessibility.” Inst.
`Dec. 36 (emphasis added). The Institution Decision further states that “‘[i]f
`accessibility is proved, there is no requirement to show that particular members of
`the public actually received the information.’” Inst. Dec. 26–27 (quoting Constant
`v. Advanced Micro-Devices, Inc., 848 F.2d 1560, 1569 (Fed. Cir. 1988) (emphasis
`added)).
`If improper commingling occurs, Petitioner commingles the analysis of
`accessibility with “public use” or “sale.” See Reh’g Req. 14. For example,
`Petitioner refers to a donated Petrel 2005 gift as a “site license,” and argues that
`“[i]t is well-settled law that use of only a single gift is public use under § 102.” Id.
`at 13–14. Addressing a similar theory advanced in the Petition, we noted that
`“Petitioner, at times, refers to Petrel 2005 as a system or product, and, at other
`times, as including a printed publication––i.e., at least the Release Notes and Help
`
`
`2 As background, the Institution Decision points out that “[t]he disk, or
`downloadable product, Petrel 2005 (Ex. 1013), includes three central items:
`execution software for geological seismic modeling (see Ex. 1013), Release Notes
`(Ex. 1014), and Help Files (Ex. 1046–1053).” Inst. Dec. 25.
`
`
`
`
`3
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`Files. . . . An inter partes review must be instituted on a patent or printed
`publication––i.e., not a system or product.” Inst. Dec. 26, n. 21 (citing 35 U.S.C.
`§ 311).
`We also noted that “[a]lthough it is not clear, Petitioner appears to rely on
`accessibility, not dissemination, or perhaps a combination of the two.” Inst.
`Dec. 27. Addressing accessibility, we reasoned that “even if the advertisements of
`Petrel 2005 ‘might have hinted at the path to the’ Release Notes and Help Files,
`see SRI, 511 F.3d at 1197, Petitioner does not advance this argument explicitly. In
`any event, on this record, the large licensing fees effectively obscured any path to
`the Release Notes and Help Files through Petrel 2005.” Id. (quoting SRI Int’l., Inc.
`v. Internet Sec. Sys., Inc., 511 F.3d 1186, 1197 (Fed. Cir. 2008) (emphasis added).
`Id. at 36.
`Petitioner does not dispute that Petrel 2005 involved “large licensing fees.”
`See Reh’g Req. 12. For example, “[t]he record shows that Petrel 2005 was subject
`to large licensing fees. See Pet. 11 (touting two university donations with ‘a
`combined estimated commercial value of over $4 million’).” Inst. Dec. 34
`(quoting Ex. 1021, 2).
`Petitioner also does not address the rationale directly that the large fees
`“obscured any path” to the Release Notes and Help Files. Rather, Petitioner
`essentially contends that announcing the sale of the Petrel 2005 software renders
`accessible the software manuals (i.e., the Release Notes and Help Files).
`See Reh’g. Dec. 5, 8–12. To show a “publicly accessible” document, Petitioner
`must show that any advertisements, or other information, about Petrel 2005,
`“provid[ed] the roadmap that would have allowed one skilled in the art to locate”
`the Help Files and Release Notes. See Bruckelmeyer v. Ground Heaters, Inc., 445
`F.3d 1374 (Fed. Cir. 2006).
`
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`4
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`In context, Bruckelmeyer reasoned as follows:
`In Klopfenstein, we held that a reference was made sufficiently
`publicly accessible because, despite that it was not indexed and copies
`were not distributed to the public, it was prominently displayed for
`several days to a wide variety of interested viewers who were free to
`take notes or photographs, and copying would have been a simple
`undertaking.
`Bruckelmeyer, 445 F.3d at 1381 (discussing In re Klopfenstein, 380 F.3d 1345,
`1350 (Fed.Cir.2004)) (emphases added).
`Petitioner neither explains in its Rehearing Request, nor in its Petition,
`whether the software manuals themselves were “prominently displayed,” whether
`members of the interested public, in general, knew about them, or how garnering
`the sum of hundreds of thousands of dollars to obtain Petrel 2005 “would have
`been a simple undertaking” for “a wide variety of interested” artisans. See
`Bruckelmeyer, 445 F.3d at 1381. In other words, as we determined, “[u]ltimately,
`Petitioner does not provide evidence or persuasive argument that an advertisement
`about Petrel 2005 would have lead an ordinarily skilled artisan to the Release
`Notes and Help Files in the absence of paying large licensing fees or obtaining
`other special access.” Inst. Dec. 34–35.
`Petitioner’s Rehearing Request focuses on reasoning in Ex Parte ePlus, Inc.,
`Appeal 2010-00784 (BPAI May 18, 2011) (Rexam. No. 90/008,104), aff’d per
`curiam, In re ePlus, Inc., 540 F. App’x 998 (Fed. Cir. 2013) (Fed. Cir. R. 36).
`Petitioner relies on, among other statements, the following statement in ePlus:
`“‘we do not find the cost [of the license] necessarily to be material [to
`accessibility].’” See Reh’g Req. 12 (quoting ePlus at 15, additions by Petitioner).3
`
`
`3 All the pinpoint citations to ePlus herein refer to the reported version stored in
`the USPTO EDAN or EFOIA system, whereas the citations in the Rehearing
`Request refer to Westlaw.
`
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`Notwithstanding the argument, ePlus does not hold that evidence of cost is never
`material to accessibility, and ePlus relied upon evidence of actual sales to support
`the finding of accessibility. See Reh’g Req. 10 (quoting Solicitor’s appeal brief to
`the Federal Circuit (which is attached as an exhibit to Paper 16)); ePlus at 17–18
`(The “evidence presented clearly show[s] that the software packages had been
`sold, and that the manuals would have been provided with the software packages.
`Thus, . . . we find ample evidence of public accessibility.” (Emphasis added).)
`In contrast, Petitioner does not dispute that there is no “evidence of actual
`dissemination [via a sale] of a single Petrel 2005 disk or download to a specific
`licensee.” See Inst. Dec. 29. The high “price point” for obtaining the underlying
`software in this case is further evidence weighing against a finding of accessibility.
`Virginia Innov’n Sciences, Inc. v. Samsung Elecs. Co., Ltd., 983 F. Supp. 2d 713,
`738 (E.D. Va. 2014) ($10,000 price point). Given the much larger price point here
`as compared to that in Virginia Innovation Sciences, and lack of any other
`persuasive evidence of accessibility or dissemination, Petitioner does not show that
`“‘any interested person could have obtained the documents if desired.’” See Reh’g
`Req. 11 (quoting the Solicitor’s Brief in ePlus).
`In further reliance on ePlus, Petitioner downplays the proprietary notice on
`the Petrel 2005 packaging by arguing that the notice is only a copyright restriction
`and not a restriction on who could purchase the documentation. See Reh’g Req. 8–
`10; Ex. 1013, 1 (emphasis omitted). The proprietary notice on the Petrel 2005
`packaging states that the “application contains confidential and proprietary trade
`secrets . . . [that] may not be . . . used, distributed, or transmitted in any form . . .
`without the express written permission of the copyright owner.” Ex. 1013, 1
`(emphasis added). The proprietary notice is not the only evidence weighing
`against accessibility, however. Rather, in contrast to ePlus, the high licensing fees
`
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`here effectively restricted who could purchase it; therefore, restricting the further
`use or distribution of “proprietary trade secrets” coalesces with the price restriction
`to restrict accessibility to those with resources to pay the price.
`Petitioner’s related argument that Virginia Innovation Sciences limits its
`analysis to a “closed group” or “exclusive organization” does not account for the
`full rationale. See Reh’g Req. 12–13. The Virginia Innovation Sciences court
`considered what “price point . . . is too high to consider the document accessible to
`the interested public,” including “at what price [the document] would have been
`accessible” to “non-members” of the otherwise closed group. Id. at 738 (emphasis
`added). In this case, the high price point (an order of magnitude higher than that in
`Virginia Innovation Sciences) is evidence tending to show that the group of
`artisans with access to the Release Notes and Help Files effectively is closed.
`Petitioner’s argument that a donated “site license” created access to
`members of the interested public also does not show an overlooked point.
`See Reh’g Req. 14. The argument does not address the initial finding that the
`Petition may show, at most, that pursuant to the donated license, only a small
`number of ordinarily skilled artisans (i.e., a closed group) had special access
`restricted by the proprietary notice and dongle key at a single computer in a lab.
`See Inst. Dec. 29–32. Accordingly, the Petition fails to show requisite accessibility
`based on any alleged “site license.” See Inst. Dec. 30–32 (citing cases and
`discussing limited distribution).
`In summary, Petitioner argues that mere awareness of Petrel 2005 amounts
`to accessibility of the Release Notes and Help Files. As the court in Virginia
`Innovation Sciences aptly reasons, “the standard for a printed publication is not
`public awareness of a document, but public accessibility of the document.” 983 F.
`Supp. 2d at 738 (In re Klopfenstein, 380 F.3d 1345, 1348 (Fed. Cir. 2004).
`
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`Accordingly, the Petition does not demonstrate that Petitioner is reasonably likely
`to show that an ordinarily skilled artisan, if desired, could have obtained Petrel
`2005’s Release Notes and Help Files.
`Based on the foregoing discussion, in light of the record, including Patent
`Owner’s showing, and as set forth in the Institution Decision, Petitioner does not
`show that the Board abused its discretion and overlooked or misapprehended
`Petitioner’s showing regarding whether Petrel 2005 constitutes a printed
`publication under 35 U.S.C. § 311.
`III. CONCLUSION
`We deny Petitioner’s request to reverse our determination that the Petitioner
`failed to meet the burden of showing that Petrel 2005 is a printed publication.
`IV. ORDER
`For the reasons given, it is ORDERED that the Petitioner’s Rehearing
`Request is denied.
`
`For PETITIONER:
`
`Carey Jordan
`ccjordan@mwe.com
`
`
`
`For PATENT OWNER:
`
`Andrew Tower
`atower@cepiplaw.com
`
`Henry Pogorzelski
`hpogorelski@cepiplaw.com
`
`
`
`
`
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