Trials@uspto.gov Paper 10
`571.272.7822 Entered: November 4, 2016
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`FORD MOTOR COMPANY,
`Petitioner,
`
`v.
`
`VERSATA DEVELOPMENT GROUP, INC.,
`Patent Owner.
`
`
`
`Case IPR2016-01013
`Patent 7,882,057 B1
`
`
`
`Before HOWARD B. BLANKENSHIP, JAMES B. ARPIN, and
`WILLIAM M. FINK, Administrative Patent Judges.
`
`ARPIN, Administrative Patent Judge.
`
`
`
`
`
`
`DECISION
`Denying Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`
`571.272.7822 Entered: November 4, 2016
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`FORD MOTOR COMPANY,
`Petitioner,
`
`v.
`
`VERSATA DEVELOPMENT GROUP, INC.,
`Patent Owner.
`
`
`
`Case IPR2016-01013
`Patent 7,882,057 B1
`
`
`
`Before HOWARD B. BLANKENSHIP, JAMES B. ARPIN, and
`WILLIAM M. FINK, Administrative Patent Judges.
`
`ARPIN, Administrative Patent Judge.
`
`
`
`
`
`
`DECISION
`Denying Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`
`
`IPR2016-01013
`Patent 7,882,057 B1
`
`
`I. BACKGROUND
`
`Ford Motor Company (“Petitioner”) requests an inter partes review of
`
`claims 17, 30, and 44–46 of U.S. Patent No. 7,882,057 B1 (Ex. 1101, “the
`
`’057 patent”) under 35 U.S.C. §§ 311–319. Paper 2 (“Petition” or “Pet.”).
`
`Versata Development Group, Inc. (“Patent Owner”) has filed a Preliminary
`
`Response. Paper 8 (“Prelim. Resp.”).
`
`We have jurisdiction under 35 U.S.C. § 314. Section 314(a) provides
`
`that an inter partes review may not be instituted unless “the information
`
`presented in the petition . . . shows that there is a reasonable likelihood that
`
`the petitioner would prevail with respect to at least 1 of the claims
`
`challenged in the petition.”
`
`For the reasons that follow, we do not institute an inter partes review
`
`of any of claims 17, 30, and 44–46 of the ʼ057 patent.
`
`A. Related Proceedings
`
`The parties report that the ʼ057 patent is involved in Ford Motor
`
`Company v. Versata Software, Inc., No. 2:15-cv-10628-MFL-EAS (E.D.
`
`Mich.).1 Pet. v; Paper 5, 1. Petitioner also reports that the ʼ057 patent was
`
`asserted against Petitioner in another District Court action, but the case was
`
`dismissed without prejudice. Pet. v‒vi.
`
`
`
`1 Patent Owner filed a counterclaim and served that counterclaim on
`Petitioner on October 28, 2015. Pet. v. We presume the validity of the
`claims of the ’057 patent was not challenged in the initial complaint. See 35
`U.S.C. §§ 315(a)(1) (“An inter partes review may not be instituted if, before
`the date on which the petition for such a review is filed, the petitioner or real
`party in interest filed a civil action challenging the validity of a claim of the
`patent.”), 315(a)(3) (“A counterclaim challenging the validity of a claim of a
`patent does not constitute a civil action challenging the validity of a claim of
`a patent for purposes of this subsection.”).
`
`2
`
`
`
`IPR2016-01013
`Patent 7,882,057 B1
`
`
`B. The ’057 Patent
`
`The ’057 patent has an effective filing date of October 4, 2004. Ex.
`
`1101, at [22]. Petitioner does not suggest a different priority date in its
`
`Petition.
`
`C. Asserted References
`
`1106
`
`Exhibit No. Reference
`U.S. Patent No. 7,873,503 B2 to Loomans et al., effective
`1105
`filing date Sept. 28, 2001, filed Nov. 18, 2002
`A. Stahl, R. Bergmann, S. Schmitt, A Customization
`Approach for Structured Products in Electronic Shops,
`Electronic Commerce: The End of the Beginning, 13th
`International Bled Electronic Commerce Conference (June
`19–21, 2000)
`
`D. Asserted Ground of Unpatentability
`
`Petitioner asserts the following ground of unpatentability under
`
`35 U.S.C. § 103(a) against claims 17, 30, and 44–46 of the ʼ057 patent (Pet.
`
`2):
`
`References
`Loomans, Stahl, and
`the general knowledge
`of a person of ordinary
`skill in the art2
`
`Basis
`35 U.S.C. § 103(a)
`
`Claims
`17, 30, and 44–46
`
`II. ANALYSIS
`
`A. Prior Art Status of Stahl
`
`In its Preliminary Response, Patent Owner contends that Petitioner
`
`fails to show that Stahl is a prior art “printed publication” in accordance with
`
`
`
`2 Because petitioners must base their claim challenges on patents or printed
`publications, we understand Petitioner’s reference here to the general
`knowledge of a person of ordinary skill in the art to refer to how such a
`person would understand the teachings of Loomans and Stahl. See 35
`
`3
`
`
`
`IPR2016-01013
`Patent 7,882,057 B1
`
`35 U.S.C. §§ 102 and 311(b). Prelim. Resp. 14, 16–22. We look to the
`
`underlying facts to make a legal determination as to whether a reference is a
`
`printed publication. Suffolk Techs., LLC v. AOL Inc., 752 F.3d 1358, 1364
`
`(Fed. Cir. 2014). “The determination of whether a reference is a ‘printed
`
`publication’ under 35 U.S.C. § 102(b) 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) (citations omitted). Public accessibility is a key question in
`
`determining whether a document is a printed publication. Suffolk Techs.,
`
`752 F.3d at 1364. To qualify as a printed publication, a document “must
`
`have been sufficiently accessible to the public interested in the art.” In re
`
`Lister, 583 F.3d 1307, 1311 (Fed. Cir. 2009) (citations omitted).
`
`Petitioner makes inconsistent allegations regarding the public
`
`accessibility of Stahl. Initially, Petitioner identifies Ex. 1106 as “A. Stahl,
`
`R. Bergmann, S. Schmitt, A Customization Approach for Structured
`
`Products in Electronic Shops, Electronic Commerce: The End of the
`
`Beginning, 13th International Bled Electronic Commerce Conference (June
`
`19–21, 2000).” Pet. ii. Thus, Petitioner appears to rely on the public
`
`accessibility of Stahl during the conference to qualify the reference as a
`
`printed publication. Subsequently, Petitioner alleges that “Stahl was
`
`published in the Proceedings of the 13th International Bled Electronic
`
`Commerce Conference in 2000.” Id. at 1. Petitioner’s declarant, Dr.
`
`Greenspun, testifies that “Stahl is a printed publication titled “A
`
`Customization Approach for Structured Products in Electronic Shops,”
`
`
`
`U.S.C. § 311(b); 37 C.F.R. § 42.104(b)(2).
`
`4
`
`
`
`IPR2016-01013
`Patent 7,882,057 B1
`
`which was published during the 13th International Bled Electronic
`
`Commerce Conference in Bled, Slovenia in June 2000.” Ex. 1102 ¶ 66
`
`(emphasis added) (footnote omitted). Dr. Greenspun further asserts that
`
`“Ex. 1106 is a true and accurate copy of: Armin Stahl, Ralph Bergmann,
`
`Sascha Schmitt, ‘A Customization Approach for Structure Products in
`
`Electronic Shops,’ 13th International Bled Electronic Commerce Conference
`
`June 19-21, 2000. Available at (https://domino.fov.uni-
`
`mb.si/ecomframes.nsf/pages/bled2000.)” Ex. 1102 ¶ 66 n.9. The hyperlink
`
`provided by Dr. Greenspun, however, is undated and merely permits the
`
`purchase of copies of the “13th International Bled Electronic Commerce
`
`Conference 2000 – Conference Proceedings.” Ex. 3001. Based on these
`
`inconsistent representations, Dr. Greenspun testifies that it is his
`
`“understanding” that Stahl qualifies as prior art to the ’057 patent. Ex. 1102
`
`¶ 66.
`
`Patent Owner contends that Petitioner has not established that Stahl is
`
`a printed publication. Prelim. Resp. 14. According to Patent Owner, the
`
`Petition fails to indicate clearly “how Ford is alleging Stahl was published.”
`
`Id. at 17. Further, if Petitioner is arguing that Stahl was made publicly
`
`accessible during the conference, Patent Owner contends that Petitioner has
`
`failed to provide the requisite evidence to show such public accessibility. Id.
`
`at 18. If, instead, Petitioner is arguing that Stahl was published in the
`
`Proceedings of the 13th International Bled Electronic Commerce
`
`Conference later in 2000, Patent Owner contends that Petitioner has failed to
`
`show that Ex. 1106 is from such a publication. Id. at 21–22.
`
`In considering its Petition seeking inter partes review, the burden
`
`rests on Petitioner to demonstrate that Stahl, specifically, as embodied in
`
`5
`
`
`
`IPR2016-01013
`Patent 7,882,057 B1
`
`Exhibit 1106, qualifies as a “printed publication,” as required by 35 U.S.C.
`
`§ 311(b) and 37 C.F.R. § 42.104(b)(2). As an initial matter, we agree with
`
`Patent Owner that Petitioner has not made clear in its Petition whether it is
`
`relying on evidence of the public accessibility of Stahl during the conference
`
`or evidence of the inclusion of Stahl in the published proceedings of the
`
`conference, as proof that Stahl qualifies as a “printed publication.”
`
`Regardless, however Petitioner is arguing that Stahl was published, we are
`
`not persuaded on this record that Petitioner has met its burden of showing
`
`that Stahl (Ex. 1106) is a “printed publication.”
`
`1. Public Accessibility During the Conference
`
`First, Patent Owner contends that Petitioner fails to show that Stahl
`
`was available at the 13th International Bled Electronic Commerce
`
`Conference in Bled, Slovenia, on June 19–21, 2000, and that, even if Stahl
`
`was available, this fact alone does not mean it was published. Prelim. Resp.
`
`18. “Whether a reference is publicly accessible is determined on a case-by-
`
`case basis based on the ‘facts and circumstances surrounding the reference’s
`
`disclosure to members of the public.’” Voter Verified, Inc. v. Premier
`
`Election Solutions, Inc., 698 F.3d 1374, 1380 (Fed. Cir. 2012) (quoting
`
`Lister, 583 F.3d at 1311). Furthermore, “[p]ublic accessibility is a legal
`
`conclusion based on underlying factual determinations.” Id. (citing Cooper
`
`Cameron Corp. v. Kvaerner Oilfield Prods., Inc., 291 F.3d 1317, 1321 (Fed.
`
`Cir. 2002)). As Patent Owner asserts, publication turns on whether a
`
`reference was disseminated or otherwise made available to interested
`
`persons of ordinary skill in the art exercising reasonable diligence. Id. at
`
`6
`
`
`
`IPR2016-01013
`Patent 7,882,057 B1
`
`19–20 (citing Bruckelmyer v. Ground Heaters, Inc., 445 F.3d 1374, 1378
`
`(Fed. Cir. 2006)).
`
`We agree that Petitioner has not established that Stahl (Ex. 1106) is a
`
`printed publication for purposes of 35 U.S.C. § 102(a) or (b), based on its
`
`presentation during the conference. See Pet. 1. As an initial matter, we
`
`agree with Patent Owner that Stahl itself contains little evidence that it was
`
`made accessible. In fact, the only information on the face of Stahl to
`
`indicate that it was publicly accessible before the critical date is the header:
`
`“Electronic Commerce: The End of the Beginning
`13th International Bled Electronic Commerce Conference
`Bled, Slovenia, June 19-21, 2000.”
`
`Ex. 1106, 1. However, the exhibit contains no copyright date, and there is
`
`no further indication in Stahl itself as to when and under what circumstances
`
`or conditions it may have been disseminated to members of the public. See
`
`Klopfenstein, 380 F.3d at 1350.
`
`
`
`Exhibit 1106 actually includes two documents: the Stahl reference
`
`(Ex. 1106, 1–9) and the program for the 13th International Bled Electronic
`
`Commerce Conference (id. at 10–38). See Prelim. Resp. 18–19. The
`
`program identifies a section meeting involving the same persons listed as the
`
`authors of Stahl and indicates that the section meeting was scheduled to
`
`occur between 11:00AM and 12:30PM on June 19, 2000. Ex. 1106, 17–18.
`
`We note, however, that the Petition does not rely on the program (id. at 10–
`
`38) as evidence that Stahl (id. at 1–9) was made available to the conference
`
`attendees in any way (see Prelim. Resp. 18–19); and we do not find that the
`
`program (Ex. 1106, 10–38) indicates that Stahl (id. at 1–9) was made
`
`available to the conference attendees.
`
`7
`
`
`
`IPR2016-01013
`Patent 7,882,057 B1
`
`
`As noted above, Dr. Greenspun testifies that “Stahl is a printed
`
`publication titled ‘A Customization Approach for Structured Products in
`
`Electronic Shops,’ which was published during the 13th International Bled
`
`Electronic Commerce Conference in Bled, Slovenia in June 2000.” See Ex.
`
`1102 ¶ 66 (emphasis added). However, Dr. Greenspun offers no evidence
`
`supporting this testimony. See 37 C.F.R. § 42.65(a) (“Expert testimony that
`
`does not disclose the underlying facts or data on which the opinion is based
`
`is entitled to little or no weight.”). Although Dr. Greenspun also testifies
`
`that Exhibit 1106 is a “true and accurate copy” of the reference identified by
`
`its header (Ex. 1106, 1) and that the reference is available at an identified
`
`hyperlink (Ex. 1102 ¶ 66 n.9 (footnote text quoted above)), the document
`
`available via the hyperlink appears to be from the Proceedings of the 13th
`
`International Bled Electronic Commerce Conference and has not been made
`
`part of the record. Nevertheless, we considered the hyperlink, but we do not
`
`find its existence persuasive of public accessibility before the critical date.3
`
`See Air Liquide Large Industries U.S., LP v. Praxair Tech., Inc., Case
`
`IPR2015-01074, slip op. at 6 (PTAB Oct. 26, 2015) (Paper 11) (finding
`
`conference website is insufficient evidence of availability at the website at
`
`the critical date); Google, Inc. v. Art+Com Innovationpool GmbH, Case
`
`IPR2015-00789, slip op. at 8 (PTAB Sept. 2, 2015) (Paper 8) (“Petitioner
`
`submitted no archival evidence establishing that the website in Exhibit 1017
`
`
`
`3 We did not attempt to purchase a copy of the 13th Bled Electronic
`Commerce Conference 2000 - Conference Proceedings via the hyperlink
`(Ex. 3001 (image of order page)), nor would it have been appropriate for us
`to retrieve and add this reference to the record, with or without purchase.
`See 37 C.F.R. § 42.104(b)(5).
`
`8
`
`
`
`IPR2016-01013
`Patent 7,882,057 B1
`
`existed before [the date the exhibit was created].”). Moreover, Dr.
`
`Greenspun does not claim to have attended the 13th International Bled
`
`Electronic Commerce Conference and, thus, claims no personal knowledge
`
`of the accessibility of Stahl. Ex. 1102 ¶ 66 (“It is also my understanding
`
`that Stahl is prior art as it was published before the filing date of the ‘057
`
`Patent.” (emphasis added)). Thus, because Dr. Greenspun provides only his
`
`understanding, but no evidence as to how and when Stahl was published, his
`
`testimony is entitled to little weight in establishing Stahl as a printed
`
`publication.
`
`Patent Owner contends that Petitioner’s failure to show that “Ex. 1106
`
`was presented at the conference is fatal.” Prelim. Resp. 19. We agree. See
`
`Norian Corp. v. Stryker Corp., 363 F.3d 1321, 1330 (Fed. Cir. 2004)
`
`(Absent evidence that the reference actually was made available at the
`
`conference, that reference cannot be a printed publication.); see also Air
`
`Liquide Large Industries U.S. LP v. Praxair Technology, IPR2015-01074,
`
`slip op. at 6 (PTAB Oct. 26, 2015) (Paper 11) (“Petitioner, however, offers
`
`no corroborating evidence that the SLIDES exhibit itself was ever presented
`
`at the conference, or evidence establishing the nature of the presentation and
`
`dissemination of the information.”). On this record, we are not persuaded
`
`that Petitioner has shown that Stahl qualifies as a printed publication as a
`
`result of its public accessibility to interested persons of ordinary skill in the
`
`art, exercising reasonable diligence, during the 13th Bled Electronic
`
`Commerce Conference.
`
`2. Publication in Conference Proceedings
`
`Second, although Petitioner argues that “Stahl was published in the
`
`Proceedings of the 13th International Bled Electronic Commerce Conference
`
`9
`
`
`
`IPR2016-01013
`Patent 7,882,057 B1
`
`in 2000” (Pet. 1), Patent Owner contends that Petitioner has provided no
`
`evidence supporting this argument (Prelim. Resp. 21–22). Patent Owner
`
`contends that Petitioner fails to indicate where Stahl refers to the
`
`Proceedings publication in its header (Ex. 1106, 1) or elsewhere in the
`
`reference (id. at 1–8). See Prelim. Resp. 22. Further, although the Research
`
`portion4 (Volume I) of the Proceedings publication is allegedly 786 pages in
`
`length (see Ex. 3001 (“Volume I – Research (786 pages), Volume II –
`
`Business (171 pages)”)), the Stahl reference (Ex. 1106, 1–8) is numbered
`
`sequentially from page 1 through page 8. While not necessarily inconsistent
`
`with the appearance of an article in a larger volume, Patent Owner contends
`
`that this numbering of Stahl’s pages is unusual and unexplained by
`
`Petitioner. See Prelim. Resp. 22.
`
`We need not consider further, however, whether Stahl (Ex. 1106) is
`
`the paper published in the Proceedings of the 13th International Bled
`
`Electronic Commerce Conference, as Petitioner argued in its Petition,
`
`because Petitioner’s counsel has informed us that it is not. Ex. 2011, 17:2–9.
`
`On October 11, 2016, Petitioner sought permission to file a sur-reply to the
`
`Preliminary Response with additional evidence relating to Stahl, that
`
`evidence was not intended to show that Stahl (Ex. 1106) was a printed
`
`publication, but, instead, to show that the information contained in Stahl was
`
`substantially the same as that contained in an article published in the
`
`Proceedings of the 13th International Bled Electronic Commerce
`
`Conference, which had not been made of record previously. During the
`
`
`
`4 We understand the program for the 13th International Bled Electronic
`Commerce Conference (Ex. 1106, 10–38) to indicate that the Stahl
`presentation was part of the “Research” portion of the conference (id. at 18).
`
`10
`
`
`
`IPR2016-01013
`Patent 7,882,057 B1
`
`conference call regarding Petitioner’s request to file a sur-reply,5 Petitioner’s
`
`counsel stated
`
`I want to explain that. So the declaration -- I'm not going to get
`into specifics of the declaration. The declaration attaches the
`paper that was in the proceeding book. The Stahl article that is
`in Exhibit [1106] is the identical substantive article that was in
`that proceeding book that is attached to this declaration.
`
`Ex. 2011, 17:2–9 (emphasis added). Thus, despite Petitioner’s argument
`
`(Pet. 1), Stahl (Ex. 1006) is not the same article published in the
`
`Proceedings of the 13th International Bled Electronic Commerce
`
`Conference, and the article published in the Proceedings of the 13th
`
`International Bled Electronic Commerce Conference is not the reference
`
`upon which Petitioner argues its ground for unpatentability in the Petition.
`
`See Ex. 2011, 17:10–20.
`
`In sum, we have insufficient evidence that Stahl was published,
`
`disseminated, or otherwise made available to interested persons of ordinary
`
`skill in the art, exercising reasonable diligence, prior to the critical date, such
`
`that Stahl qualifies as a prior art, printed publication. Consequently, we
`
`conclude that Petitioner has not met its burden of showing a reasonable
`
`likelihood that Stahl (Ex. 1106) is a printed publication, as contemplated by
`
`35 U.S.C. §§ 102 and 311(b) or 37 C.F.R. § 42.104(b)(2).
`
`B. Asserted Ground of Unpatentability
`
`Because Petitioner has not made a satisfactory showing that Stahl is a
`
`prior art printed publication, Petitioner fails to demonstrate a reasonable
`
`likelihood of prevailing on the ground that the subject matter of claims 17,
`
`
`
`5 For the reasons set forth in the transcript of the conference call, we denied
`Petitioner’s request to file a sur-reply. See Ex. 2011, 23:21–24:21.
`
`11
`
`
`
`IPR2016-01013
`Patent 7,882,057 B1
`
`30, and 44–46 of the ’057 patent would have been obvious over Loomans,
`
`Stahl, and the general knowledge of a person of ordinary skill in the art.
`
`III. CONCLUSION
`
`The Petition fails to demonstrate a reasonable likelihood of prevailing
`
`on the asserted ground that any of the challenged claims are unpatentable
`
`under 35 U.S.C. § 103(a) over the combination of Loomans and Stahl.
`
`It is
`
`IV. ORDER
`
`ORDERED that the Petition is denied as to all challenged claims, and
`
`no trial is instituted.
`
`
`
`12
`
`
`
`IPR2016-01013
`Patent 7,882,057 B1
`
`PETITIONER:
`
`John S. LeRoy
`Thomas A. Lewry
`Frank A. Angileri
`John P. Rondini
`Christopher C. Smith
`Jonathan D. Nikkila
`BROOKS KUSHMAN P.C.
`FPGP0124IPR1@brookskushman.com
`
`PATENT OWNER:
`
`Robert Green Sterne
`Joseph E. Mutschelknaus
`Jonathan Tuminaro
`Salvador M. Bezos
`STERN, KESSLER, GOLDSTEIN & FOX PLLC
`rsterne-PTAB@skgf.com
`jmustche-PTAB@skgf.com
`jtuminar-PTAB@skgf.com
`sbezos-PTAB@skgf.com
`
`Kent B. Chambers
`TERRILE, CANNATTI, CHAMBERS & HOLLAND, LLP
`kchambers@tcchlaw.com
`
`Sharoon Saleem
`JONES & SPROSS, PLLC
`sharoon.saleem@jonesspross.com
`
`
`
`13
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