`
`
`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 No. IPR2017-00516
`Patent 8,209,205
` ____________
`
`
`
`PETITIONER CIM’S MOTION FOR LEAVE TO FILE SUPPLEMENTAL
`INFORMATION PURSUANT TO 37 C.F.R. 42.123(A)
`
`
`
`
`
`Petition for Inter Partes Review of
`U.S. Patent No. 8,209,205
`
`STATEMENT OF PRECISE RELIEF REQUESTED
`
`I.
`
`
`
`Pursuant to 37 C.F.R. 42.123(A), and in light of arguments made by Patent
`
`Owner P&RO Solutions Group, Inc. (“P&RO”) in its Preliminary Response related
`
`to the public availability of certain references, Petitioner CiM Maintenance Inc.
`
`(“CiM”) respectfully requests that the Board allow Petitioner to submit the
`
`evidence attached in Exhibits 1056-1062 as supplemental information.
`
`II.
`
`STATEMENT OF FACTS
`
`
`
`This proceedings relates to the inter partes review of U.S. Patent No. 8,209,205
`
`(the “’205 Patent”). On December 22, 2016, CiM filed its Petition for inter partes
`
`review with the Patent Trials and Appeals Board (the “Board”). See Paper 1, Petition.
`
`In the Petition, Petitioner relied in part on three printed publication references (“the
`
`References”): (1) Best Practice Guideline for Maintenance Planning and Scheduling,
`
`by the Electric Power Research Institute, Inc. (the “Best Practice Guideline”), (2)
`
`Microsoft Excel 2000 Bible, a book by John Walkenbach, and (3) Maintenance
`
`Planning and Scheduling Handbook, a book by Doc Palmer (“Palmer”). In its
`
`Preliminary response, P&RO argued that CiM had failed to show that each of these
`
`references was a printed publication by the time of the earliest priority date of the ’205
`
`Patent. See Paper 7 (“Prelim. Resp.”), 23-31, 36-37, 46. The Board instituted review
`
`
`
`
`
`on June 22, 2017.
`
`Petition for Inter Partes Review of
`U.S. Patent No. 8,209,205
`
`
`III. THIS MOTION COMPLIES WITH THE RULES
`
`
`
`CiM’s motion complies with the rules. First, the Board instituted review on
`
`June 22, 2017, and Petitioner timely submitted its request for authorization on
`
`Monday, July 24, 2017. See 37 C.F.R. § 42.123; see also 35 U.S.C. § 21(b); 37 C.F.R.
`
`§ 1.7. Further, in light of P&RO’s challenge to the public availability of the
`
`References, and the subsequent institution on the References, the offered evidence
`
`relates to the claims at issue in this proceeding. See Palo Alto Networks, Inc. v.
`
`Juniper Networks, Inc., Case IPR2013-00369, No. 37 (P.T.A.B. Feb. 5, 2014).
`
`IV. THE REQUESTED SUPPLEMENTAL INFORMATION
`
`
`
`Three sets of are submitted with CiM’s request. Ex. 1055, the affidavit of
`
`Christopher Butler, authenticates the evidence supplied in Exhibit 1056, which are
`
`webpage printouts from the Internet Archive’s Wayback Machine. Mr. Butler’s
`
`affidavit explains that the footer of the webpages indicates when they were archived
`
`by the Wayback Machine. “[F]ederal Courts have regularly accepted evidence from
`
`the Internet Archive.” SDI Technologies, Inc. v. Bose Corp., Case IPR2013-00465,
`
`Paper 40, 15 (P.T.A.B. Nov. 7, 2014) (Final Written Decision) (denying motion to
`
`exclude). Exhibits 1057 is a declaration of Scott Bennett, a librarian and researcher
`
`
`
`
`
`Petition for Inter Partes Review of
`U.S. Patent No. 8,209,205
`
`with expertise on the dissemination and availability of documents. See Ex. 1057,
`
`Bennett Decl. at ¶¶ 7-24. Mr. Bennett’s declaration cites library catalogs and other
`
`evidence demonstrating that the Palmer and Walkenbach references were publicly
`
`available prior to the priority date of the ’205 Patent.
`
`
`
`Exhibit 1056 demonstrates that Walkenbach was publicly available for sale on
`
`Amazon.com at least as early as November 29, 1999, and there was even a review on
`
`Mr. Excel of the books by June 12, 2000. See Ex. 1056 at 3-4, 7. Additionally,
`
`according to Scott Bennett, there was evidence that Walkenbach was catalogued at
`
`public libraries in 1998 and 1999 and that an ordinary research exercising reasonable
`
`diligence would have had no difficulting accessing Walkenbach by December 7,
`
`1999. See Ex. 1057, Bennett Decl. at ¶¶ 32-40; see also Ex. 1062, at 7-110. The
`
`Internet Archive evidence and Mr. Bennett’s declaration demonstrates
`
`that
`
`Walkenbach is a prior art printed publication in regards to the ’205 Patent.
`
`
`
`Exhibit 1056 also demonstrates that Palmer was publicly available for sale on
`
`Amazon.com by April 22, 2000. See Ex. 1056 at 9-10. Additionally, according to
`
`Scott Bennett, there was evidence that Walkenbach was catalogued at public libraries
`
`in 1998 and 1999 and that an ordinary research exercising reasonable diligence would
`
`have had no difficulting accessing Palmer July 1999. See Ex. 1057, Bennett Decl. at
`
`
`
`
`
`Petition for Inter Partes Review of
`U.S. Patent No. 8,209,205
`
`¶¶ 25-31; see also generally, Exs. 1058-1061, Ex. 1062 at 1-6. The Internet Archive
`
`evidence and Mr. Bennett’s declaration demonstrate that Palmer is a prior art printed
`
`publication in regards to the ’205 Patent.
`
`
`
`Finally, Exhibit 1056 provides addition corroboration to statements made in the
`
`Petition arguing that that the Best Practice Guideline was known prior to the earliest
`
`priorty date of the’205 Patent. First, in its calendar of events in December 2000 and
`
`June 2001, epri.com indicated that it was holding a maintenance conference in August
`
`2001, which is when the International Maintenance Conference mentioned in the
`
`Petition was purportedly held. See Ex. 1056 at 28, 41 (mentioning the EPRI
`
`maintenance conference); see also Paper 1 at 13. Additionally, in 2001, EPRI begain
`
`advertising the “Best Practices Guideline for Maintenance Planning and Scheduling”
`
`as part of its Option Value Package for Work Process Improvement Guidelines and
`
`Techniques. See id. at 54. Together with the Swezey Declaration (Ex. 1019) and the
`
`International Maintenance Conference proceedings (Ex. 1004), this evidence supports
`
`that the Best Practice Guideline was advertised and publicly available before the
`
`priority date of the ’205 Patent.
`
`V.
`
`P&RO will not be prejudiced by the supplemental information
`
`The proposed supplemental information does not change the grounds for
`
`
`
`
`
`
`
`Petition for Inter Partes Review of
`U.S. Patent No. 8,209,205
`
`unpatentability, would not affect the Board’s deadlines, and does not change the
`
`evidence initially presented in the Petition to support its grounds, and was not
`
`withheld intentionally from CiM’s original Petition. In their telephonic conferences,
`
`P&RO identified no reason as to why this supplemental information should not be
`
`admitted. Therefore, this supplemental information would not prejudice P&RO. See
`
`Palo Alto Networks, Case IPR2013-00369, No. 37
`
`(admitting supplemental
`
`information related to public availability of reference).
`
`VI. Conclusion
`
`
`
`For the reasons cited above, CiM respectfully requests that its motion for leave
`
`to file supplemental information is granted.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`BY:
`
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`
`
`ERISE IP, P.A.
`
`/s/Abran J. Kean
`
`Abran J. Kean, Reg. No. 58,540
`Eric A. Buresh, Reg. No. 50,394
`6201 College Blvd., Suite 300
`Overland Park, KS 66211
`P: (913) 777-5600
`F: (913) 777-5601
`abran.kean@eriseip.com
`eric.buresh@eriseip.com
`
`
`
`ATTORNEYS FOR PETITIONER
`
`
`
`Petition for Inter Partes Review of
`U.S. Patent No. 8,209,205
`
`CERTIFICATE OF SERVICE ON PATENT OWNER
`UNDER 37 C.F.R. § 42.6
`
`
`
`Pursuant to 37 CFR §§ 42.6(e)(4)(i) and 42.105(b), the undersigned certifies
`
`
`
`
`that on February 6, 2017, a complete and entire copy of this PETITIONER CIM’S
`
`MOTION FOR LEAVE TO FILE SUPPLEMENTAL
`
`INFORMATION
`
`PURSUANT TO 37 C.F.R. 42.123(A) was served by Electronic submission through
`
`the USPTO Patent Trial and Appeal Board End-to-End System and by email to the
`
`following:
`
`Michael Greenbaum, Greenbaum@BlankRome.com
`Ameya Paradkar, AParadkar@BlankRome.com
`Daniel Cardy, DCardy@BlankRome.com
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`
`
`ERISE IP, P.A.
`
`
`
`
`
`
`
`
`BY: /s/Abran J. Kean
`
`
`Abran J. Kean, Reg. No. 58,540
`
`Eric A. Buresh, Reg. No. 50,394
`
`
`
`
`
`
`
`ATTORNEYS FOR PETITIONER
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`