Trials@uspto.gov
`571-272-7822
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` Paper: 8
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`Entered: June 22, 2017
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`CIM MAINTENANCE INC.,
`Petitioner,
`
`v.
`
`P&RO SOLUTIONS GROUP, INC.,
`Patent Owner.
`____________
`
`Case IPR2017-00516
`Patent 8,209,205 B1
`____________
`
`
`
`Before PHILLIP J. KAUFFMAN, KEVIN W. CHERRY, and
`ELIZABETH M. ROESEL, Administrative Patent Judges.
`
`ROESEL, Administrative Patent Judge.
`
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
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`
`571-272-7822
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` Paper: 8
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`Entered: June 22, 2017
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`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`CIM MAINTENANCE INC.,
`Petitioner,
`
`v.
`
`P&RO SOLUTIONS GROUP, INC.,
`Patent Owner.
`____________
`
`Case IPR2017-00516
`Patent 8,209,205 B1
`____________
`
`
`
`Before PHILLIP J. KAUFFMAN, KEVIN W. CHERRY, and
`ELIZABETH M. ROESEL, Administrative Patent Judges.
`
`ROESEL, Administrative Patent Judge.
`
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`IPR2017-00516
`Patent 8,209,205 B1
`
`
`This case concerns U.S. Patent No. 8,209,205 B1 (Ex. 1001, “the ’205
`patent”). Petitioner, CiM Maintenance Inc., filed a Petition seeking inter
`partes review of claims 1–20 of the ’205 patent (Paper 1, “Pet.”), along with
`a Declaration of Philip Greenspun, Ph.D. (Ex. 1022). Patent Owner, P&RO
`Solutions Group, Inc., filed a Preliminary Response. Paper 7 (“Prelim.
`Resp.”).
`We have jurisdiction under 35 U.S.C. § 314 and 37 C.F.R. § 42.4(a).
`An inter partes review may be authorized only if the information presented
`in the Petition and the Preliminary Response shows that there is a reasonable
`likelihood that Petitioner would prevail with respect to at least one claim
`challenged in the Petition. 35 U.S.C. § 314(a). Applying that standard, we
`institute an inter partes review of claims 1–20 of the ’205 patent for the
`reasons and on the grounds set forth below.
`Our determination is based on the record developed thus far, before
`the filing of Patent Owner’s Response. This is not a final decision as to the
`patentability of any challenged claim. Any final decision will be based on
`the full record developed during the trial.
`
`I. BACKGROUND
`A. Related Matters
`Pursuant to 37 C.F.R. § 42.8(b)(2), the parties identify the following
`patent infringement litigation involving the ’205 patent: P&RO Solutions
`Group, Inc. v. CiM Maintenance Inc., No. 6:16-cv-00095-RWS (E.D. Tex.,
`filed March 1, 2016). Pet. 51; Paper 5, 2 (Patent Owner’s Mandatory
`Notices).
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`2
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`
`B. Petitioner’s References
`Petitioner’s patentability challenges are primarily based on the
`following references:
`Eller et al., US 7,225,040 B2, issued May 29, 2007 (Ex. 1014,
`“Eller”);
`Sinex, US 6,606,546 B2, issued Aug. 12, 2003 (Ex. 1015 “Sinex”);
`ELECTRIC POWER RESEARCH INSTITUTE INC., BEST PRACTICE
`GUIDELINE FOR MAINTENANCE PLANNING AND SCHEDULING (2000)
`(Ex. 1003, “BPG”);
`RICHARD D. (“DOC”) PALMER, MAINTENANCE PLANNING AND
`SCHEDULING HANDBOOK (1999) (Ex. 1010, “Palmer”); and
`JOHN WALKENBACH, MICROSOFT® EXCEL 2000 BIBLE (1999)
`(Exs. 1051–1054, “Walkenbach”).
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`C. Petitioner’s Asserted Grounds of Unpatentability
`
`
`
`Reference(s)
`
`1 Eller and BPG
`
`2 Eller, BPG, and Sinex
`
`3 Eller, BPG, and Walkenbach
`
`4 Eller and Palmer
`
`Basis
`
`§ 103(a)
`§ 103(a)
`
`§ 103(a)
`
`§ 103(a)
`
`5 Eller, Palmer, and Sinex
`6 Eller, Palmer, and Walkenbach § 103(a)
`
`§ 103(a)
`
`
`
`Claims
`
`1–4, 8–11, and 14
`
`5–7 and 16–20
`
`12, 13, and 15
`
`1–4, 8–11, and 14
`
`5–7 and 16–20
`
`12, 13, and 15
`
`D. The ’205 Patent (Ex. 1001)
`The ’205 patent was issued on Application No. 10/851,663, filed May
`24, 2004. Ex. 1001, [21], [22]. It claims priority to provisional Application
`No. 60/472,414, filed May 22, 2003, and provisional Application No.
`60/483,111, filed June 30, 2003. Id. at [60]. For purposes of this decision,
`we need not decide whether the ’205 patent is entitled to priority based on
`the provisional applications.
`The ’205 patent relates to a computerized system for planning and
`scheduling maintenance work in an industrial facility. Id., Abstract, 1:15–
`47, 2:25–30. According to the ’205 patent, the system provides a user
`interface for a Computerized Maintenance Management System (“CMMS”)
`database. Id., Abstract, 1:27–28, 2:43–46. The disclosed embodiment is
`referred to as “a planning and scheduling tool assistant (PaSTA)” (id. at
`2:25–27), which Patent Owner represents is its commercial software
`product. Prelim. Resp. 3; see also Ex. 1001, Abstract, 2:41–42 (referencing
`“tech manual and summary sheets” for PaSTA).
`
`4
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`Patent 8,209,205 B1
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`
`The system includes two basic screen formats: a Work Week
`Assignment Tool for the scheduling and planning activities by the
`schedulers and planners (Figures 1 and 2), and a Work Week Management
`Form for the maintenance supervisor to execute the work week (Figures 3
`and 4). Id. at 3:26–30, 5:32–40, 6:13–18.
`Figure 1 of the ’205 patent is reproduced below:
`
`
`
`Figure 1 is an annotated screen shot showing work week assignment tool
`100. Ex. 1001, 5:32–33, 5:52–53. On the right is list 102 of unscheduled
`jobs, and on the left is list 104 of scheduled jobs, grouped by work week. Id.
`at 5:53–55. On the bottom right of Figure 1 are sections for short notice
`outage (“short outage list”), planned outage (“planned outage list”), backlog
`(“backlog list”), and standing work orders (“standing work order list”). Id.
`at Fig. 1, 2:53–59.
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`Patent 8,209,205 B1
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`According to the ’205 patent, one feature of the system is “[d]rag and
`drop movement of work orders from work-week to work-week, from
`unscheduled to scheduled, to short notice outage plan, to planned outage
`plan, to backlog.” Id. at 2:53–55; see also id. at 2:20, 5:50–51. With
`reference to the work week assignment tool of Figure 1, the ’205 patent
`discloses that a user can “click on an unscheduled job with a mouse and drag
`it to a desired work week.” Id. at 5:55–57.
`
`E. Illustrative Claim
`The ’205 patent includes 20 claims. Claim 1 is the sole independent
`claim. All 20 claims are challenged in the Petition. Claim 1 is reproduced
`below:
`
`1. A planning and scheduling system running on a
`computing device, the system comprising:
`a user interface; and
`a computing device in communication with said user
`interface, said computing device being programmed to
`implement:
`work week sections;
`a scheduled job section;
`an unscheduled job section;
`a short notice outage section;
`a planned outage section; and
`work orders, wherein the work orders can be moved from
`one work week section to another work week section, from
`unscheduled to scheduled, to short notice outage, to planned
`outage, and to backlog, by dragging and dropping the work
`orders using said user interface.
`Ex. 1001, 13:31–46.
`
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`
`II. DISCUSSION
`
`A. Claim Construction
`In an inter partes review, claim terms in an unexpired patent are given
`their broadest reasonable interpretation in light of the specification of the
`patent in which they appear. 37 C.F.R. § 42.100(b); Cuozzo Speed Tech.,
`LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016). Under that standard, we
`generally give claim terms their ordinary and customary meaning, as
`understood by a person of ordinary skill in the art in the context of the entire
`patent disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed.
`Cir. 2007).
`The parties dispute the meaning of the term, “short notice outage
`section,” which we address below. No other claim term requires express
`construction for purposes of this Decision. Vivid Techs., Inc. v. Am. Sci. &
`Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).
`
`“short notice outage section”
`Claim 1 recites a planning and scheduling system, including a
`computing device programmed to implement a “short notice outage section,”
`among other sections. Ex. 1001, 13:40.
`Petitioner contends that “short notice outage section” should be
`construed to include both an area used to display unplanned unavailable time
`and an area used to display short notice unavailable time, whether planned or
`unplanned. Pet. 11.
`Patent Owner contends that “short notice outage section” should be
`construed as “a portion of the user interface that displays planned outages of
`short duration for the purpose of performing maintenance.” Prelim.
`Resp. 15.
`
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`
`The ’205 patent does not expressly define the term, “short notice
`outage section,” nor the lesser included term, “short notice outage.”
`According to claim 1, a “short notice outage section” is a section of
`the user interface to which work orders can be dragged and dropped.
`Specifically, claim 1 recites: “the work orders can be moved . . . from
`unscheduled to scheduled, to short notice outage, to planned outage, and to
`backlog, by dragging and dropping the work orders using said user
`interface.” Ex. 1001, 13:42–46.
`The written description of the ’205 patent describes a “short notice
`outage section” as a “holding bucket” to which work orders can be dragged
`and dropped. More specifically, the ’205 patent discloses:
`Drag and drop movement of work orders from work-
`week to work-week, from unscheduled to scheduled, to short
`notice outage plan, to planned outage plan, to backlog. Because
`the screen has side by side unscheduled and multiple weeks
`presented, it is very easy to drag and drop work into any given
`week or to the holding buckets of short notice outage plan,
`planned outage plan, and backlog.
`Ex. 1001, 2:53–59.
`An example of a “short notice outage section” is shown in Figure 1.
`The right half of the screen in Figure 1 has a section labeled “Unscheduled
`Work.” Id. at Fig. 1. At the bottom of that section is an area labeled,
`“View,” and within that area, there are several small sections, including one
`labeled “Normal View,” with the annotation “all unscheduled work orders.”
`Figure 1 shows four other sections with the annotations: “short outage list,”
`“planned outage list,” “backlog list,” and “standing work order list.” Id.
`The annotations suggest that each of these sections contains a list of work
`orders.
`
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`Patent 8,209,205 B1
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`
`With reference to Figure 1, the ’205 patent discloses that a user can
`“click on an unscheduled job with a mouse and drag it to a desired work
`week.” Id. at 5:55–57. Alternatively, a user could drag the unscheduled job
`to the “holding bucket” of “short notice outage plan.” Id. at 2:54–59.
`Neither claim 1, nor the written description, explains what happens to work
`orders after they are dropped into the “short notice outage section.” Based
`on the screen shown in Figure 1 and relying in particular on the label,
`“View,” it appears that any work orders that have been dragged and dropped
`into the “short notice outage section” can be displayed by clicking on that
`section.
`Petitioner argues that “the term ‘short notice outage section’ should be
`construed to at least include an area used to display unplanned unavailable
`time.” Pet. 11. As support for this argument, Petitioner directs us to the
`prosecution history of the ’205 patent (Ex. 1009). Petitioner points to
`Applicant’s Appeal Brief, which cites Figure 1 and page 12, lines 17–18 of
`the Specification (corresponding to Ex. 1001, 6:33–35) as support for claim
`1’s “short notice outage section.” Pet. 10–11 (citing Ex. 1009, 128).
`Petitioner also points to Applicant’s Reply Brief, which argues that “a short
`notice outage would be a situation in which the engineer (or other personnel)
`is unavailable.” Ex. 1009, 73; see Pet. 5. We are not persuaded by
`Petitioner’s argument.
`Notwithstanding the cited portions of the prosecution history, we are
`not persuaded that the ’205 patent’s disclosure of “Unplanned Unavailable
`Time” (Ex. 1001, 6:33–35) relates to a “short notice outage section.”
`According to the ’205 patent, a “short notice outage section” is a section of
`the user interface to which work orders can be dragged and dropped to create
`
`9
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`IPR2017-00516
`Patent 8,209,205 B1
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`a list of one or more work orders. Id. at Fig. 1, 2:53–59, 13:42–46. In
`contrast, the ’205 patent describes “Unplanned Unavailable Time” as
`follows:
`
`As shown in FIG. 1, the work week assignment tool
`includes the following functionality:
`Crew: Allows user to select a desired crew
`Week of: Allows user to select the desired week with the
`arrow or a drop down calendar. The weeks are designated T0,
`T1, . . . .
`Planned Unavailable Time This area is used for hours
`that are not tracked on work orders (WO), i.e. vacation, holiday,
`sick leave, off days, operations, etc.
`Unplanned Unavailable Time This area is used for hours
`that occurred during T0 that were not scheduled, i.e. training,
`meetings, emergency vacation, etc.
`Ex. 1001, 6:24–35; see also 14:49–51 (claim 20: “all unavailable resource
`time is identified whether personnel vacation, holiday, sick, training, etc. or
`equipment resource unavailability”). There is no indication in the ’205
`patent or elsewhere in the intrinsic record that work orders can be dragged
`and dropped to “Unplanned Unavailable Time.” Accordingly, we view
`Petitioner’s argument as inconsistent with claim 1 and the written
`description of the ’205 patent, which provides no support for construing a
`“short notice outage section” as including “unplanned unavailable time.”
`The parties contend that, during prosecution of the ’205 patent, the
`Board of Patent Appeals and Interferences (BPAI)1 provided a claim
`
`
`1 Section 7 of the Leahy-Smith America Invents Act (“AIA”), Pub. L. No.
`112-29, created the Patent Trial and Appeal Board and amended 35 U.S.C.
`§ 6 to state, inter alia, that “Any reference in any Federal law, Executive
`order, rule, regulation, or delegation of authority, or any document of or
`
`10
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`IPR2017-00516
`Patent 8,209,205 B1
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`construction, and each party argues that its proposed construction is
`consistent with the BPAI’s construction. Pet. 5–6, 11; Prelim. Resp. 2, 7–8,
`15–18. The parties rely on the following passage in the Board’s decision:
`Short notice outage work (aka SNOW) is not defined in
`the Specification, but is a term of art in the maintenance arts.
`That is, it has a customary meaning to one of ordinary skill
`apart from what others might take to be its plain meaning. It
`refers to planned outages for the purpose of performing
`maintenance. Thus, since short notice outage work is planned,
`the Examiner’s interpretation of ‘an event or activity added to
`the schedule with little notice’ fits within the customary
`meaning, but is overly broad. More to the point, the portion of
`Pothos the Examiner cites refers to ‘unscheduled tasks’ which
`is the antithesis of the planned nature of short notice outage
`work.
`Ex. 1009, 63–64.
`Notwithstanding the parties’ arguments, we do not view the Board’s
`decision as providing a definitive construction for the claim term, “short
`notice outage section,” which differs from the term, “short notice outage
`work (aka SNOW),” that was defined by the Board. Ex. 1009, 63. Even if
`the Board’s decision can be read as providing a construction for the term,
`“short notice outage section,” the Board interpreted the claim language only
`to the extent necessary to resolve the issues on appeal, which differ from the
`issues presented by the Petition. See Section II.I. infra. Therefore, for
`purposes of deciding whether to institute review and based on the present
`record, we do not adopt what the parties refer to as the BPAI construction.
`
`
`pertaining to the Board of Patent Appeals and Interferences is deemed to
`refer to the Patent Trial and Appeal Board.”
`
`11
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`
`Patent Owner also relies upon a claim construction that was agreed to
`by the parties and adopted by the District Court in the related litigation.
`Prelim. Resp. 2, 15–18. That construction is as follows:
`“short notice outage section” “a portion of the user interface
`that displays planned outages of short duration for the purposes
`of performing maintenance, the ‘short notice outage section’
`and ‘planned outage section’ are different sections”
`Ex. 2002, 8.
`We are not bound by the construction given a term by the District
`Court, because the District Court applies a different claim construction
`standard than we are required to apply. Power Integrations, Inc. v. Lee, 797
`F.3d 1318, 1326 (Fed. Cir. 2015). When such a claim construction is made
`of record, however, we must acknowledge it and “assess whether it is
`consistent with the broadest reasonable construction of the term” being
`construed. Id. Here, for purposes of deciding whether to institute review
`and based on the present record, we determine that the District Court’s
`construction is not consistent with the broadest reasonable construction for
`“short notice outage section.”
`As discussed above, both claim 1 and the written description of the
`’205 patent describe a “short notice outage section” as a section of the user
`interface to which work orders can be dragged and dropped. Ex. 1001,
`Fig. 1, 2:53–59, 13:42–46. Although dependent claim 9 recites that the user
`interface displays the short notice outage section, there is no suggestion that
`the outages themselves are displayed. Instead, the ’205 patent describes the
`short notice outage section as a “holding bucket” for work orders (Ex. 1001,
`2:56–59) and suggests that, by clicking on that section, a list of work orders
`can be displayed. Id. at Fig. 1 (showing “short outage list” alongside other
`
`12
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`IPR2017-00516
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`lists of work orders). Accordingly, for these reasons and the reasons
`discussed above with respect to the BPAI construction, we decline to adopt
`the District Court’s construction.
`Accordingly, for purposes of deciding whether to institute review and
`based on the present record, we preliminarily construe the term, “short
`notice outage section,” to mean “a section of the user interface to which
`work orders can be dragged and dropped.”
`We invite the parties to indicate whether they agree or disagree with
`our preliminary construction and to present arguments and evidence in
`support of, or in opposition to, our preliminary construction, and/or to
`propose a modification thereof.
`
`B. Level of Ordinary Skill in the Art
`For purposes of this decision, we accept Petitioner’s definition of a
`person of ordinary skill in the art (“POSITA”) as a person with (1) at least an
`undergraduate degree in computer science, computer engineering, electrical
`engineering, or similar technical fields, and (2) two or more years of
`experience developing database applications. Pet. 11–12. At this stage, the
`Greenspun Declaration (Ex. 1022 ¶ 21) and the declaration of Patent
`Owner’s expert from the related district court litigation (Ex. 1017 ¶ 17) are
`adequate to support Petitioner’s contention, which is not challenged in the
`Preliminary Response.
`We also rely on the cited prior art references as reflecting the level of
`ordinary skill in the art at the time of the invention. See Okajima v.
`Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).
`We invite the parties, to the extent permitted under our rules, e.g.,
`37 C.F.R. § 42.23(b), to submit additional arguments and evidence
`
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`IPR2017-00516
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`addressing whether and the degree to which a POSITA would have been
`familiar with scheduling and planning of maintenance work in an industrial
`facility and the use of computer databases and user interfaces for such
`scheduling and planning.
`
`C. Status of Petitioner’s References as Printed Publications
`Petitioner contends that BPG, Palmer, and Walkenbach are each prior
`art printed publications under 35 U.S.C. § 102(b) and § 311(b). Pet. 12–15,
`18, 36, 40. Patent Owner opposes. Prelim. Resp. 3, 21, 23–31, 36–42, 46–
`49, 53.
`
`1. Legal Standard
`“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).
`“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)). “Evidence of
`routine business practice can be sufficient to prove that a reference was
`made accessible before a critical date.” Constant v. Advanced Micro-
`
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`Devices, Inc., 848 F.2d 1560, 1569 (Fed. Cir. 1988). “If accessibility is
`proved, there is no requirement to show that particular members of the
`public actually received the information.” Id. On the other hand, “a printed
`publication need not be easily searchable after publication if it was
`sufficiently disseminated at the time of its publication.” Suffolk
`Technologies, LLC v. AOL Inc., 752 F.3d 1358, 1365 (Fed. Cir. 2014).
`
`2. BPG (Ex. 1003)
`Petitioner contends that BPG was published in December 2000 by the
`Electric Power Research Institute (“EPRI”) and is prior art under 35 U.S.C.
`§ 102(b). Pet. 12, 18. As support for its contention, Petitioner relies on
`BPG itself (Ex. 1003); a recent printout of pages from EPRI’s website
`(Ex. 1018); a Declaration of an EPRI employee, Rory Swezey (Ex. 1019);
`and proceedings of an August 2001 EPRI conference (Ex. 1004), including a
`paper authored by inventor Kirk Samsel (id. 389–398), which cites BPG as
`its sole reference and includes a slide that Petitioner contends “looks
`strikingly similar to” a figure in BPG (Pet. 13–14).
`Petitioner contends that BPG was made available by EPRI in two
`ways. First, Petitioner contends that, in December 2000, BPG was made
`available to EPRI members who funded the project. Pet. 12–13; Ex. 1019
`¶ 2. Second, Petitioner contends that, in July 2001, BPG was made available
`for purchase by anyone without any restrictions on use. Pet. 13; Ex. 1019
`¶¶ 3, 7. Petitioner contends that, in July 2001, a description of BPG was
`provided on EPRI’s website and that interested persons could learn of its
`existence by keyword searching on an Internet search engine. Pet. 13;
`Ex. 1019 ¶ 3. Petitioner further contends that several commercial companies
`downloaded or ordered BPG in 2001 and thereafter. Pet. 14; Ex. 1019 ¶ 8.
`
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`Patent Owner contends that Petitioner fails to establish a reasonable
`likelihood that BPG was publicly accessible before the critical date. Prelim.
`Resp. 23–31. Patent Owner contends that the Swezey Declaration lacks
`supporting documentation and that some of its assertions are not based on
`personal knowledge. Id. at 25–27, 29–30. Relying on Blue Calypso, 815
`F.3d at 1350, Patent Owner contends that Petitioner did not present evidence
`that BPG was indexed and locatable by subject matter searching prior to the
`critical date. Id. at 27–28. Patent Owner contends that Mr. Samsel could
`not have previously presented BPG because he never saw BPG before it was
`shown to him at his March 29, 2017, deposition in the related District Court
`litigation. Id. at 29 (citing Ex. 2004, 120:1–16).2
`Although Patent Owner relies heavily on Blue Calypso, the facts of
`that case are distinguishable. In Blue Calypso, Petitioner provided no
`evidence that the reference was viewed, downloaded, or otherwise
`disseminated to the interested public before the critical date. 815 F.3d at
`1350. Here, in contrast, the Swezey Declaration avers that several
`
`
`2 Exhibit 2004 is rough draft transcript and was filed by Patent Owner on the
`confidential record without a concurrent motion to seal, as required by our
`rules and practice. 42 C.F.R. §§ 42.14, 42.54; Office Trial Practice Guide,
`77 Fed. Reg. 48,756, 48,760 (Aug. 14, 2012). We determine that the
`information from Exhibit 2004 paraphrased herein does not qualify for
`confidential treatment. Within ten business days of entry of this decision,
`Patent Owner shall file the final version of the deposition transcript as a
`replacement exhibit with the same exhibit number. Unless the replacement
`exhibit is filed on the public record, it shall be accompanied by a motion to
`seal confidential portions of the transcript, a proposed protective order, and a
`non-confidential, redacted version of the exhibit.
`
`16
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`IPR2017-00516
`Patent 8,209,205 B1
`
`commercial companies downloaded or ordered BPG in 2001 and thereafter.
`Ex. 1019 ¶ 8.
`Furthermore, the reference at issue in Blue Calypso was available via
`a hyperlink located on a graduate student’s personal webpage, and there was
`no evidence that ordinarily skilled artisans would have known of the
`webpage or its address. 815 F.3d at 1350. Here, in contrast, the Swezey
`Declaration avers that EPRI’s website provided a description of BPG and a
`telephone number to call to purchase a copy of the report. Ex. 1019 ¶ 3; see
`also Ex. 1003, 4 (ordering information).3 There is also evidence that
`supports an inference that EPRI was known to ordinarily skilled artisans as a
`source of information relating to maintenance of power plants, including
`planning and scheduling of maintenance work. Ex. 1004, 5–6, 389–398;
`Ex. 1018, 1, 7, 11; Ex. 2004, 10:23–11:1, 13:2–15:16 (Mr. Samsel’s role
`when he joined EPRI in 2000 was to help power plants with their workweek
`management process, i.e., planning and scheduling); id. at 30:5–12
`(workweek management was part of a “suite of things” that EPRI would
`offer to a customer in 2000).
`We acknowledge Mr. Samsel’s testimony that he had not seen BPG
`before his March, 2017 deposition (Ex. 2004, 120:1–16), but that testimony
`appears to be inconsistent with Exhibit 1004—a paper authored by Mr.
`Samsel that cites BPG. Ex. 1004, 398. For purposes of deciding whether to
`institute inter partes review, we view Mr. Samsel’s testimony in the light
`most favorable to Petitioner. 37 C.F.R. § 42.108(c). The relative weight to
`
`
`3 We cite to Exhibit 1003 using the page numbers added by Petitioner in the
`bottom right corner of each page.
`
`17
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`IPR2017-00516
`Patent 8,209,205 B1
`
`be accorded Mr. Samsel’s deposition testimony and Exhibit 1004 remains an
`open issue to be addressed during the proceeding.
`Accordingly, based on the record before us, we determine that
`Petitioner’s arguments and evidence, including the Swezey Declaration,
`provide a sufficient threshold showing that BPG is a printed publication that
`was publicly accessible before the critical date of the ’205 patent. See In re
`Enhanced Security Research, LLC, 739 F.3d 1347, 1354–55 (Fed. Cir. 2014)
`(software manual’s inscription date, declaration averring that manual was
`available before critical date, and advertisements for software were
`sufficient to show public availability).
`
`3. Palmer (Ex. 1010)
`Petitioner contends that Palmer (Ex. 1010) was a printed publication
`by 1999 and is prior art under 35 U.S.C. § 102(b). Pet. 15, 40. As support
`for its contention, Petitioner relies on Palmer itself, including a copyright
`date, an ISBN Number, and a statement that it was printed by The McGraw-
`Hill Companies in the United States of America. Id. at 14 (citing Ex. 1010,
`2).4 Petitioner also relies on Amazon.com customer reviews, including one
`dated October, 1999. Id. at 14–15 (citing Ex. 1020).
`Patent Owner contends that Petitioner fails to establish a reasonable
`likelihood that Palmer is a prior art printed publication. Prelim. Resp. 46–
`49. Patent Owner contends that the dates appearing on the face of Exhibits
`1010 and 1020 are inadmissible hearsay and that Exhibit 1020 is an
`unauthenticated webpage printout. Id. at 46–47. Patent Owner contends
`
`4 Like Petitioner, we cite to Exhibit 1010 using either the page numbers
`added by Petitioner in the bottom right corner of each page (e.g., pages 1, 2,
`and 145) or the page numbers of the original document (e.g., page 6.50).
`
`18
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`IPR2017-00516
`Patent 8,209,205 B1
`
`that the Amazon.com reviews do not reliably indicate that Palmer was
`publicly accessible before the critical date, the ISBN and “printed by”
`statement have little probative value, and the copyright date, standing alone,
`is insufficient to establish public accessibility. Id. at 47–49.
`At this stage, we make no determination as to the admissibility of
`Petitioner’s evidence.5
`Exhibit 1010 appears to be a photocopy of selected pages6 of a bound
`book titled, “Maintenance Planning and Scheduling Handbook” authored by
`“Doc Palmer,” also known as “Richard D. Palmer.” Ex. 1010, 1, 2. Exhibit
`1010 identifies its publisher as “McGraw-Hill, A Division of The McGraw-
`Hill Companies.” Id. at 2. Exhibit 1010 bears a 13-digit ISBN bar code, a
`copyright date of 1999, and the notation, “Printed in the United States of
`America.” Id. at 2, 145. McGraw-Hill was, and is, a commercial publisher
`in the business of printing and selling books, which lends credence to
`Petitioner’s assertion that Palmer was publicly accessible as of its copyright
`date.
`
`Exhibit 1020 appears to be a printout from the Amazon.com web site,
`including customer reviews for the Maintenance Planning and Scheduling
`Handbook by Richard D. Palmer. Ex. 1020, 1. Exhibit 1020 includes an
`
`
`5 Any objection to evidence submitted during a preliminary proceeding must
`be filed within ten business days of the institution of the trial, and a motion
`to exclude evidence must be filed to preserve any objection. 37 C.F.R.
`§ 42.64(b)(1), (c).
`6 Exhibit 1010 includes copies of the front and back covers of the book
`(pages 1, 145), copyright page (page 2), table of contents (pages 3–7),
`Forward (page 7), Preface (pages 8–9), Chapters 2, 3, 5, 6, 8, and 10, and
`Appendices B, I, J, and L.
`
`19
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`IPR2017-00516
`Patent 8,209,205 B1
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`image of the front cover of the book, which appears to be the same as page 1
`of Exhibit 1010. The earliest customer review in Exhibit 1020 is dated
`October 22, 1999.
`Based on the record before us, we determine that Petitioner’s
`arguments and evidence provide a sufficient threshold showing that Palmer
`is a printed publication that was publicly accessible before the critical date
`of the ’205 patent.
`
`4. Walkenbach (Exs. 1051–54)
`Petitioner contends that Walkenbach (Exs. 1051–54)7 was a printed
`publication by 1999 and is prior art under 35 U.S.C. § 102(b). Pet. 15, 36.
`As support for its contention, Petitioner relies on Walkenbach itself,
`including a copyright date, an ISBN Number, and a statement that it was
`printed by Hungry Minds, Inc. in the United States of America. Id. (citing
`Ex. 1051, 3).8 Petitioner also relies on information from the Copyright
`Office’s online copyright catalog. Id. (citing Ex. 1021).
`Patent Owner contends that Petitioner fails to establish a reasonable
`likelihood that Walkenbach is a prior art printed publication. Prelim.
`Resp. 36–42, 53. Patent Owner contends that the dates appearing on the
`face of Exhibits 1051 and 1021 are inadmissible hearsay and that Exhibit
`1021 is an unauthenticated webpage printout. Id. at 37–40. Patent Owner
`contends that the information from the Copyright Office’s public catalog
`
`
`7 Exhibits 1051–1054 appear to be a single 976-page document, submitted as
`four separate exhibits due to the limitations of the Board’s electronic filing
`system.
`8 We cite to Exhibits 1051–1054 using the page numbers added by Petitioner
`in the bottom right corner of each page.
`
`20
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`IPR2017-00516
`Patent 8,209,205 B1
`
`(Ex. 1021) does not establish that Walkenbach was accessible to the
`interested public before the critical date, the ISBN and “printed by”
`statement have little probative value, and the copyright date, standing alone,
`is insufficient to establish public accessibility. Id. at 40–42.
`At this stage, we make no determin
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