`
`
`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
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
