Paper 11
`Trials@uspto.gov
`571-272-7822 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 IPR2015-019641
`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 DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`1 Bungie, Inc., who filed a Petition in IPR2016-00963, has been joined as a
`petitioner in this proceeding.
`
`
`Trials@uspto.gov
`571-272-7822 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 IPR2015-019641
`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 DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`1 Bungie, Inc., who filed a Petition in IPR2016-00963, has been joined as a
`petitioner in this proceeding.
`
`
`
`IPR2015-01964
`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. 1001, “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 not shown by a preponderance of the evidence that the challenged claims
`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 7 (“Prelim. Resp.”). On
`March 31, 2016, we instituted an inter partes review of claims 1–18 of the
`’634 patent on the following grounds: (1) claims 10, 15, and 18 as
`anticipated under 35 U.S.C. § 102(a)2 by Lin,3 and (2) claims 1–18 as
`obvious under 35 U.S.C. § 103(a) over Lin. Paper 10, 20 (“Dec.”).
`
`
`2 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.
`3 Meng-Jang Lin, et al., Gossip versus Deterministic Flooding: Low
`Message Overhead and High Reliability for Broadcasting on Small
`
`2
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`IPR2015-01964
`Patent 6,829,634 B1
`
`Subsequent to institution, Bungie, Inc. filed a Petition and Motion for
`Joinder with the instant proceeding. Bungie, Inc. v. Acceleration Bay, LLC,
`IPR2016-00963, 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 24.
`Thereafter, Patent Owner filed a Patent Owner Response (“PO
`Resp.”). Paper 33 (confidential), Paper 102 (redacted). Petitioner filed a
`Reply to the Patent Owner Response (“Pet. Reply”). Paper 57
`(confidential), Paper 107 (redacted). 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 56. Patent Owner then filed a Reply in support of
`its Contingent Motion to Amend. Paper 69.
`Petitioner filed a Motion to Exclude, Paper 74 (“Pet. Mot. Exc.”),
`Patent Owner filed an Opposition, Paper 84 (confidential), Paper 103
`(redacted), and Petitioner filed a Reply, Paper 95. Patent Owner also filed a
`Motion to Exclude, Paper 78 (“PO Mot. Exc.”), Petitioner filed an
`Opposition, Paper 87 (“Pet. Opp. Mot. Exc.”), and Patent Owner filed a
`Reply, Paper 97.
`An oral hearing was held on December 7, 2016.4 A transcript of the
`hearing has been entered into the record. Paper 101 (“Tr.”).
`
`Networks, Technical Report No. CS1999-0637 (Univ. of Cal. San Diego,
`1999) (Ex. 1004 (Ex. B)) (“Lin”).
`4 A consolidated hearing was held for this proceeding and IPR2015-01951,
`IPR2015-01953, IPR2015-01970, IPR2015-01972, and IPR2015-01996.
`See Paper 83 (hearing order).
`
`3
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`IPR2015-01964
`Patent 6,829,634 B1
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`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 22, 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: IPR2015-01996 (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 4, 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. 1001,
`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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`IPR2015-01964
`Patent 6,829,634 B1
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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
`
`5
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`IPR2015-01964
`Patent 6,829,634 B1
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`that originates messages numbers its own messages sequentially so that each
`computer that receives the messages out of order can queue the messages
`until it receives the earlier ordered messages. Id. at 2:52–53, 8:17–21, 30–
`35.
`
`D. Illustrative Claim
`Among the claims of the ’634 patent at issue in this proceeding,
`claims 1 and 10 are independent. Claim 1, reproduced below, is 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.
`
`Id. at 29:12–25.
`
`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
`
`6
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`IPR2015-01964
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`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).
`
`B. Level of Ordinary Skill in the Art
`
`Citing its declarant, Dr. 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, 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. 13–14; Ex. 1019 ¶ 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. 1019 ¶ 19.
`Patent Owner’s expert, Dr. 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
`
`7
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`IPR2015-01964
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`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. Petitioner’s Asserted Grounds of Unpatentability
`
`Petitioner contends that claims 10, 15, and 18 are unpatentable under
`35 U.S.C. § 102(a) as anticipated by Lin and claims 1–18 are unpatentable
`under 35 U.S.C. § 103(a) as obvious over Lin. Pet. 14–59. We have
`reviewed the Petition, Patent Owner Response, and Reply, as well as the
`evidence discussed in each of those papers, and we determine that Petitioner
`has not shown by a preponderance of the evidence that the challenged claims
`are unpatentable based on the asserted grounds.
`
`1. Summary of Lin
`Lin is a technical report that describes broadcasting messages to all of
`the processors in a computer network. Ex. 1004, 8.5 Specifically, Lin
`
`
`5 We refer to the exhibit pagination. The Lin reference begins on page 8 of
`Exhibit 1004.
`
`8
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`IPR2015-01964
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`discloses a protocol that superimposes a communications graph on top of the
`processors in the network. Id. at 9. Figure 2 of Lin is reproduced below:
`
`
`
`Figure 2 depicts Harary graphs Hn,t containing n nodes and t
`connections. Ex. 1004, 14. Using Lin’s “simple broadcast protocol,” one
`processor or node initiates the broadcast of a message by sending it to all of
`its neighbors, i.e., those nodes that share a link between them. Id. at 9. A
`node that receives the message for the first time sends it to all of its
`neighbors except the neighbor that forwarded the message. Id. This
`technique is called “flooding.” Id. The disclosure in Lin compares flooding
`with another broadcast protocol called gossiping. Id. Lin explains that
`flooding over a Harary graph provides most of the attractions of the gossip
`protocol, such as scalability, adaptability, and reliability, but with a
`substantially lower message overhead. Id. at 27.
`
`2. Status of Lin as a Prior Art Printed Publication
`Before reaching the merits of Petitioner’s anticipation and
`obviousness contentions, both of which are based on Lin, we must determine
`as a threshold issue whether Lin is a prior art printed publication under 35
`U.S.C. § 102(a). See Pet. 17 (citing Ex. 1004, 2–3, 5). It is Petitioner’s
`burden to prove that it is, as Petitioner bears the burden of proving
`
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`IPR2015-01964
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`unpatentability by a preponderance of the evidence. See 35 U.S.C. § 316(e).
`For purposes of instituting trial, we accepted Petitioner’s contention,
`unchallenged in the Preliminary Response, that Lin was available as
`§ 102(a) prior art as of November 23, 1999. Dec. 9–10. During trial,
`however, Patent Owner challenged that contention, and Petitioner provided
`additional argument and evidence in reply. PO Resp. 22–26; Pet. Reply 3–6.
`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
`35 U.S.C. § 102(b).” Blue Calypso, LLC v. Groupon, Inc., 815 F.3d 1331,
`1348 (Fed. Cir. 2016) (quoting In re Hall, 781 F.2d 897, 898–99 (Fed. Cir.
`1986)). “A reference will be considered publicly accessible if it was
`‘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.’” Id. (quoting Kyocera Wireless Corp.
`v. Int’l Trade Comm’n, 545 F.3d 1340, 1350 (Fed. Cir. 2008)).
`We begin our analysis with an overview of the evidence submitted by
`Petitioner in support of its contention that Lin was publicly accessible at the
`relevant time. The Petition asserts that Lin is prior art under § 102(a), with
`only a brief citation to the declaration of Glenn Little. Pet. 17 (citing
`Ex. 1004, 2–3, 5). In his declaration, Mr. Little testifies that he has been
`employed since 1985 by the Computer Science and Engineering (“CSE”)
`
`10
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`IPR2015-01964
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`department of the University of California, San Diego (“UCSD”), and that in
`his role as Systems Administrator he is “familiar with the operation of the
`CSE Technical Reports Library operated by the CSE department, including
`how Technical Reports are entered into the system and how they become
`available to the public.” Ex. 1004 ¶¶ 1–3. According to Mr. Little, the CSE
`department regularly maintains electronic technical reports and records
`concerning those reports, and a staff member assigns a unique identifier to
`each report based on the year it was uploaded and the relative order it was
`uploaded in comparison to other papers. Id. ¶¶ 7–8. Based on the CSE
`Technical Reports Library summary page available for Lin, as well as
`operating system records associated with Lin, Mr. Little testifies that “it
`appears that [Lin] was submitted to the Technical Reports Library on
`November 18, 1999, . . . and became available to the public no later than
`November 23, 1999.” Id. ¶ 13; see id. ¶¶ 9–12. The Little Declaration
`provides URLs for the CSE Technical Reports Library, the summary page
`for Lin, and the Lin report itself, but it does not otherwise indicate how
`technical reports on the Library website are organized or how a person of
`ordinary skill in the art would search for technical reports on the website.
`In its Reply, Petitioner provides additional evidence in support of its
`argument that Lin was publicly accessible in November 1999. Pet. Reply 3–
`6. First, Petitioner cites the Rebuttal Declaration of its expert, Dr. Karger,
`who testifies that “[i]n 1999, [persons of ordinary skill in the art] and
`researchers in the computer science field would frequently search online
`technical reports libraries maintained by computer science departments . . .
`such as UCSD’s [CSE] department for research in the area of computer
`science, including advancements in the field of networking.” Ex. 1024 ¶ 72;
`
`11
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`see Pet. Reply 5. Second, Petitioner identifies a webpage titled
`“Epidemiological Protocols” maintained by Dr. Keith Marzullo, one of the
`Lin authors, and dated November 27, 1999. Pet. Reply 4 (citing Ex. 1042
`¶ 6 & p.6 (Affidavit of Christopher Butler, Office Manager at the Internet
`Archive)); see also Ex. 1026 ¶ 27 (Declaration of Scott Bennett, Ph.D.,
`proffered by Petitioner as a library science expert). The webpage describes
`the work of Dr. Marzullo and his colleagues and lists three papers, including
`Lin, which is identified by title and UCSD technical report number.
`Ex. 1042, 6; Ex. 1026 ¶ 27. According to Dr. Bennett, the webpage provides
`an active link for Lin. Ex. 1026 ¶ 27. Dr. Karger testifies that “in 1999, a
`researcher looking for computer science literature would have sought to
`locate resources online first by going to other researchers’ web pages (such
`as the web page on which Lin was posted).” Ex. 1024 ¶ 73. In addition,
`both Dr. Karger and Dr. Bennett opine that, based on the evidence cited by
`Petitioner, Lin was publicly accessible. Ex. 1024 ¶ 71; Ex. 1026 ¶ 28.
`We now consider whether Petitioner has met its burden to show under
`governing case law that Lin was publicly accessible. Patent Owner contends
`Mr. Little’s declaration does not establish that Lin was publicly accessible in
`November 1999 at the UCSD CSE Technical Reports Library website. PO
`Resp. 23–26. In support of its argument, Patent Owner cites portions of
`Mr. Little’s deposition testimony and documents introduced as exhibits at
`Mr. Little’s deposition. Id. (citing Ex. 2030 (Little deposition); Exs. 2005,
`2075–80 (deposition exhibits)).
`As an initial matter, Patent Owner submits that Mr. Little had no
`personal knowledge as to whether Lin was publicly available before the
`critical date and that his declaration was based purely on speculation that Lin
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`was available on the CSE website on November 23, 1999. Id. at 23 (citing
`Ex. 2030, 25:15–17). As Petitioner argues, however, Mr. Little’s testimony
`relates to the CSE Technical Reports Library’s general practice for receiving
`articles and uploading them to the website. See Pet. Reply 4; Ex. 2030,
`9:11–10:2, 23:10–21, 24:25–25:9, 26:14–21. Such evidence of a library’s
`general practices may be used to show public accessibility. Hall, 781 F.2d
`at 899. Based on Mr. Little’s credible testimony regarding the CSE
`Technical Reports Library’s normal practice, we find Petitioner has shown
`sufficiently that Lin had been uploaded to the Library website as of
`November 23, 1999.
`Our analysis does not end there, however, because “public
`accessibility” requires more than technical accessibility—there must be
`evidence that the reference was disseminated or otherwise made available in
`a way that the interested public could locate it using reasonable diligence.
`See Blue Calypso, 815 F.3d at 1348. The record here does not show that Lin
`was disseminated to members of the interested public or, for that matter, that
`any member of the public accessed Lin after it was posted on the CSE
`website. See Ex. 2030, 28:15–17 (Mr. Little testifying he has “no way of
`knowing” whether anyone accessed Lin); PO Resp. 25–26. Thus, we must
`determine whether a person interested and ordinarily skilled in the art
`exercising reasonable diligence would have found Lin on the CSE Technical
`Reports Library website. See Blue Calypso, 815 F.3d at 1348. Because
`nothing in the record suggests that the CSE Library’s website was indexed
`by a commercial internet search engine in 1999, two factors are relevant to
`our determination: whether a person of ordinary skill interested in network
`broadcasting techniques would have been independently aware of the CSE
`
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`Technical Reports Library website, and whether a person of ordinary skill,
`upon accessing the website, would have been able to find Lin. See Voter
`Verified, Inc. v. Premier Election Solutions, Inc., 698 F.3d 1374, 1380–81
`(Fed. Cir. 2012) (analyzing public accessibility of online reference in 1999
`absent evidence that website containing the reference had been indexed by
`an internet search engine); see also Blue Calypso, 815 F.3d at 1349
`(discussing factors applied in Voter Verified for determining public
`accessibility of online reference).
`As to the first inquiry, Petitioner’s expert, Dr. Karger, testifies that
`persons of ordinary skill in the art in 1999 were aware of and regularly used
`online libraries maintained by computer science departments, such as the
`UCSD CSE Technical Reports Library website, for research in computer
`science. Ex. 1024 ¶ 72; see Pet. Reply 5. In Voter Verified, one factor in
`favor of an article’s public accessibility was “unrebutted testimony” that the
`website on which the article was posted was “well known to the community
`interested in” the relevant subject matter. 698 F.3d at 1380. However,
`Dr. Karger’s testimony regarding the general practice in 1999 of using
`online computer science department libraries is not specific to the UCSD
`CSE website itself and, therefore, does not rise to the level of the evidence
`present in Voter Verified regarding the Risks Digest website, which the court
`found was known as a “prominent forum” for discussing the relevant
`technology. Id. at 1381. Instead, Dr. Karger’s testimony suggests that the
`UCSD CSE Technical Reports Library website is analogous to a traditional
`library in which technical or scientific papers are shelved, such as the
`university library in Hall, in which the Federal Circuit concluded that a
`thesis was publicly accessible based on evidence as to the library’s
`
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`procedure for indexing, cataloging, and shelving. See Hall, 781 F.2d at 899–
`900.
`
`Consequently, the remaining question regarding the CSE Technical
`Reports Library is whether a person of ordinary skill in the art exercising
`reasonable diligence would have located Lin on the website. Petitioner
`contends that “CSE was a publicly available, indexed, searchable online
`library.” Pet. Reply 4–5. Petitioner, however, submitted no evidence
`explaining how the CSE Library website was either indexed or searchable.
`See Pet. 17 (citing only the Little Declaration); Ex. 1004 ¶¶ 5–14
`(Mr. Little’s declaration providing URLs for the CSE Technical Reports
`Library website, the summary page for Lin, and the Lin report, without
`discussing any indexing or search capability associated with the website).
`The only evidence in the record regarding the CSE Library website’s alleged
`indexing and search capability is Mr. Little’s cross-examination deposition
`testimony and exhibits used during his deposition, all submitted by Patent
`Owner. See Ex. 2030 (Little deposition); Exs. 2005, 2075–80 (deposition
`exhibits).
`According to Mr. Little’s deposition testimony, the Library website
`has a search page that allows a user to view a list of technical reports by
`author or by year or to use an “advanced search form.” Ex. 2030, 14:15–18,
`30:19–21; see Ex. 2005 (CSE Technical Reports Library search page);
`Ex. 2075 (page for browsing collection by author); Ex. 2076 (page for
`browsing collection by year); Ex. 2077 (fielded search page). Patent Owner
`argues that Lin “falls short of a properly indexed ‘printed publication’
`because it was not indexed according to subject matter.” PO Resp. 24
`(citing In re Cronyn, 890 F.2d 1158, 1161 (Fed. Cir. 1989)). Moreover,
`
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`Patent Owner argues, “the search functionality on the CSE website does not
`work.” Id. In response, Petitioner contends that indexing is not required if
`there are other ways to access the information, and asserts that “CSE’s
`website could be ‘drilled down in[to], either by year or by author or by
`searching.’” Pet. Reply 5 (quoting Ex. 2030, 23:10–24:7; citing Voter
`Verified, 698 F.3d at 1380 (searchable online publication known to
`interested community was publicly accessible)); see Tr. 21:6–11. Petitioner
`further contends that a person of ordinary skill in the art viewing a list of
`titles for a given year would have been able to identify each article’s subject.
`Pet. Reply 5–6 (citing Ex. 1024 ¶ 75; E.I. Du Pont de Nemours & Co. v.
`Cetus Corp., 1990 WL 305551, at *8 n.7 (N.D. Cal. 1990) (unpublished)).
`Contrary to Patent Owner’s argument, indexing by subject matter is
`not a “necessary condition for a reference to be publicly accessible”; rather,
`it is one of a variety of factors that may be useful in determining whether a
`reference was publicly accessible. In re Lister, 583 F.3d 1307, 1312 (Fed.
`Cir. 2009). Furthermore, “indexing is no more or less important in
`evaluating the public accessibility of online references than for those fixed in
`more traditional, tangible media.” Voter Verified, 698 F.3d at 1380.
`Nevertheless, the Federal Circuit has confirmed recently that “[j]ust as
`indexing plays a significant role in evaluating whether a reference in a
`library is publicly accessible, . . . indexing . . . is also an important question
`for determining if a reference stored on a given webpage in cyberspace is
`publicly accessible.” Blue Calypso, 815 F.3d at 1349. Moreover,
`“[i]ndexing by subject matter offers meaningful assurance that an ordinarily
`skilled artisan, exercising reasonable diligence, will be able to locate a
`
`16
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`IPR2015-01964
`Patent 6,829,634 B1
`
`particular reference . . . .” Id.; see also Cronyn, 890 F.2d at 1161 (theses
`indexed by author not “indexed in a meaningful way”).
`With these legal principles in mind, we examine the evidence relating
`to indexing and searching of the CSE Technical Reports Library. First, we
`are not persuaded that a person of ordinary skill in the art using reasonable
`diligence would have located Lin by viewing the list of available reports
`either by author or year. Although Petitioner contends that an ordinarily
`skilled artisan using the title index for a given year would have been able to
`identify each article’s subject, Petitioner provides no evidence as to how
`many reports were in the Library’s database in 1999. See Tr. 98:4–12.
`Dr. Karger testifies that the title of Lin indicates its subject matter, but he
`provides no testimony regarding the ability of a reasonably diligent artisan to
`find Lin on the CSE Technical Reports Library website. Ex. 1024 ¶ 75. At
`best, Dr. Karger’s evidence suggests that an artisan might have located Lin
`by skimming through potentially hundreds of titles in the same year, with
`most containing unrelated subject matter, or by viewing all titles in the
`database listed by author, when the authors were not particularly well
`known.
`The present case is distinguishable from the Du Pont case, an
`unpublished summary judgment order cited by Petitioner. See Pet. Reply 6.
`In Du Pont, the district court concluded that a grant proposal indexed by
`title, author, institution, and grant number was a printed publication based in
`part on a citation to the grant proposal on the first page of another prior art
`reference and the reputation of its author, “who was widely recognized as a
`pioneer in the field of DNA synthesis.” Du Pont, 1990 WL 305551, at *8
`n.7. In contrast, Petitioner points to no evidence in the record that the Lin
`
`17
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`IPR2015-01964
`Patent 6,829,634 B1
`
`authors were similarly well known in the relevant field of networking
`protocols or that other known prior art referred to Lin. See Pet. Reply 6.
`We also find the evidence regarding the CSE Library’s “advanced
`search form” to be deficient. The search form appears to allow a user to
`search on keywords for author, title, and abstract fields. Ex. 2077; see
`Ex. 2005. Mr. Little, however, testifies that he does not know how the
`search works or how keywords are generated. Ex. 2030, 31:10–32:21,
`36:11–13, 36:24–25. Further, Mr. Little testifies that he never searched for
`Lin using the advanced search form, and that it was not the department’s
`practice to cross-check the search capability when a new article was
`uploaded. Id. at 33:1–19. When presented with exhibits showing that the
`system was unable to provide any results for searches on the title and
`abstract fields using relevant terms or phrases, Mr. Little admits it was
`possible the search function did not work. Id. at 35:25–36:13; see Ex. 2078
`(abstract field search for “rumor mongering”); Ex. 2079 (abstract field
`search for “gossip”); Ex. 2080 (title search for “low message overhead”).
`He also admits it was possible the searches presented to him would not have
`worked in 1999. Ex. 2030, 38:15–17. Indeed, he testifies that the Library
`website runs the same software now as in 1999 and that the ways of
`searching for a reference were the same in 1999 as they are now. Id. at
`20:8–23. Thus, there is insufficient evidence of record to support a finding
`that a person of ordinary skill in the art in 1999 could have located Lin using
`the CSE Library website’s search function. In this regard, the present case is
`unlike Voter Verified, in which the court concluded an interested researcher
`would have found the prior art reference at issue by entering keywords into a
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`18
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`IPR2015-01964
`Patent 6,829,634 B1
`
`known website’s search tool. See Voter Verified, 698 F.3d at 1380–81; Pet.
`Reply 5 (citing Voter Verified, 698 F.3d at 1380).
`Petitioner attempts to bolster its position that Lin was publicly
`accessible with evidence regarding a webpage from November 1999 titled
`“Epidemiological Protocols” that was maintained by Dr. Marzullo, one of
`the Lin authors. See Ex. 1026 ¶¶ 26–28; Ex. 1042 ¶ 6, p.6; Ex. 1024 ¶¶ 71–
`75; Pet. Reply 4–5. To begin with, Patent Owner contends that Exhibit 1026
`(Bennett Declaration), Exhibit 1042 (Butler Affidavit), and paragraphs 71
`to 75 of Exhibit 1024 (Karger Rebuttal Declaration), as well as the portions
`of Petitioner’s Reply citing that evidence, constitute new evidence and
`argument exceeding the proper scope of reply. Paper 65, 1; PO Mot.
`Exc. 1–3.6 In response, Petitioner argues that the cited evidence and
`portions of its Reply are responsive to arguments in the Patent Owner
`Response regarding the public availability of Lin. Paper 67, 1; Pet. Opp.
`Mot. Exc. 3–4.
`
`
`6 The Board authorized Patent Owner to file a paper containing an itemized
`listing of Petitioner’s reply arguments and evidence that Patent Owner
`considere
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