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
` ____________
`
`
`
`PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 8,209,205
`
`
`
`
`
`
`
`
`
`
`
`____________
`
`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
` ____________
`
`
`
`PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 8,209,205
`
`
`
`
`
`
`
`
`
`
`
`Petition for Inter Partes Review of
`U.S. Patent No. 8,209,205
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`Table of Contents
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`
`I.
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`INTRODUCTION ............................................................................................. 1
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`A. Description of the Alleged Invention of the ‘205 Patent ................................ 3
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`B. Background of the ‘205 Patent and the Present Civil Suit ............................. 4
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`1. Prosecution of the ‘205 Patent .................................................................... 4
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`2. U.S. Application No. 14/024,944 ................................................................ 6
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`3. The Present Action ...................................................................................... 7
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`II. Requirements for Inter Partes Review ............................................................... 8
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`A. Grounds for Standing ...................................................................................... 8
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`B. Identification of Challenge and Relief Requested .......................................... 8
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`1. Grounds for Challenge ................................................................................ 8
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`2. Claim Construction ................................................................................... 10
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`3. Level of Skill of a Person Having Ordinary Skill in the Art ..................... 11
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`4. The Best Practice Guideline is a Printed Publication ................................ 12
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`5. Palmer is a Printed Publication ................................................................. 14
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`6. Walkenbach is a Printed Publication ......................................................... 15
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`III. There is a Resonable Likelihood that the Challenged ClaimS of the ‘205 Patent
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`are Unpatentable ..................................................................................................... 15
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`A. Eller in view of the Best Practice Guideline Renders Claims 1-4, 8-11, and
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`14 obvious ........................................................................................................... 15
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`Petition for Inter Partes Review of
`U.S. Patent No. 8,209,205
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`B. Eller in view of the Best Practice Guideline in further view of Sinex Renders
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`Claims 5-7 and 16-20 Obvious ............................................................................ 30
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`C. Eller in view of the Best Practice Guideline in further view of Walkenbach
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`Renders Claims 12, 13, and 15 Obvious ............................................................. 36
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`D. Eller in view of Palmer Renders Claims 1-4, 8-11, and 14 Obvious ........... 40
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`E. Eller in view of Palmer in further view of Sinex Renders Claims 5-7 and 16-
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`20 Obvious ........................................................................................................... 46
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`F. Eller in view of Palmer in further view of Walkenbach Renders Claims 12,
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`13, and 15 Obvious .............................................................................................. 48
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`IV. Nonredundancy ................................................................................................ 50
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`V. Mandatory Notices ........................................................................................... 51
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`A. Real Parties-in-Interest and Related Matters ................................................ 51
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`B. Lead and Back-Up Counsel .......................................................................... 51
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`C. Payment of Fees ............................................................................................ 52
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`VI. CONCLUSION ................................................................................................ 52
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`INTRODUCTION
`
`Petition for Inter Partes Review of
`U.S. Patent No. 8,209,205
`
`
`The claims of U.S. Patent No. 8,209,205 (“‘205 Patent”) are directed to a
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`I.
`
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`planning and scheduling system that includes a user interface, various sections, and
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`drag-and-drop functionality. Ex. 1001, ‘205 Patent. At bottom, the claims recite a
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`customized user interface for a scheduling database application. None of this was
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`new as of the earliest possible priority date for the ‘205 Patent, which is May 22,
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`2003. In fact, in the related district court litigation, Patent Owner’s (“PO”) own
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`expert conceded that a person having ordinary skill in the art (“PHOSITA”) at that
`
`time would have known of relational databases, spreadsheet applications, user
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`interfaces for databases, and drag and drop functionality, among other things. Ex.
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`1002, Sherman Tr. at 46:1-24 (drag and drop was a commonly known computer
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`term and functionality in 2003); see also id. at 22:9-25:12, 27:11-29:18. According
`
`to PO’s expert, a PHOSITA at the time of the ‘205 Patent would have known to
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`customize a user interface for a particular application, and would have been
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`motivated to do so for any number of reasons, including special need or personal
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`preference. Ex. 1002, Sherman Tr. at 32:10-33:16; see also id. at 26:16-27:9, 30:2-
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`31:15, 35:4-36:15. Another reason a PHOSITA would be motivated to customize a
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`user interface would be due to a particular context, and the demands of customers
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`in that context. Ex. 1002, Sherman Tr. at 32:25-33:16.
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`
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`1
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`
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`Petition for Inter Partes Review of
`U.S. Patent No. 8,209,205
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`The evidence presented in this Petition shows that none of the claims are
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`
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`patentable. User interfaces for database applications were well-known at the time
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`and described in patents and printed publications. The prior art also includes
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`publications that show the state of the art for planning and scheduling in the
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`context of maintenance. One of those is a “Best Practice Guideline” published by
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`Electric Power Research Institute, Inc. (“EPRI”). Ex. 1003, Best Practice
`
`Guideline. The Best Practice Guideline “describe[s] the best planning and
`
`scheduling practices in the industry,” specifically in the context of power plants.
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`Id. at p. 7. It describes such concepts as weekly planning and tracking performance
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`metrics, as well as several other concepts claimed in the ‘205 Patent. The Best
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`Practice Guideline was known to the inventors of the ‘205 Patent. Indeed, the
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`priority documents in the file history of the ‘205 Patent are printed materials from
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`EPRI Solutions, which was a subsidiary of EPRI. One of the named inventors,
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`Kirk Samsel, presented the concepts described in the Best Practice Guideline to a
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`maintenance conference in 2001—two years before the earliest priority date for the
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`‘205 Patent. Ex. 1004, EPRI International Maintenance Conference Proceedings
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`at pp. 389-398. And yet this information was never submitted to the Office, so the
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`examiner did not have the opportunity to consider whether the claims in the ‘205
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`Patent would have been patentable in light of the Best Practice Guideline.
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`
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`2
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`
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`Petition for Inter Partes Review of
`U.S. Patent No. 8,209,205
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`The evidence presented here shows that the claimed planning and scheduling
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`
`
`system would have been obvious to a PHOSITA at the time of the ‘205 Patent. The
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`claims involve well-known practices in the maintenance industry applied to well-
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`known software concepts, such as a computer interface employing drag-and-drop
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`and color coding. See, e.g. Ex. 1022, Greenspun Decl. at ¶¶ 32-46. Combining
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`these well-known concepts yields predictable results, and a PHOSITA would have
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`been motivated to make the combination to create a customized user interface for
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`the maintenance context. Because these claims are unpatentable as obvious,
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`Petitioner respectfully requests Inter Partes Review (“IPR”) of claims 1-20
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`(collectively, “Challenged Claims”) of the ‘205 Patent.
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`
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`The conclusion presented herein—that the claims of the ‘205 Patent are not
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`patentable—is consistent with a recent decision from the Office. During
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`prosecution of a child application claiming priority to the ’205 Patent, the examiner
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`issued a Final Rejection on claims that recite limitations that are also in the claims
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`challenged here. Ex. 1005, Child Patent File History at pp. 7-15. Like the
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`unpatentable claims in the child application, the claims in the ‘205 Patent should
`
`also be found obvious over the prior art.
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`A. Description of the Alleged Invention of the ‘205 Patent
`The ‘205 Patent describes a computer program implementing a user
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`
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`interface designed to facilitate the scheduling and management of a business’s
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`
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`3
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`
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`Petition for Inter Partes Review of
`U.S. Patent No. 8,209,205
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`maintenance activities. See Ex. 1001, ‘205 Patent at Abstract. The specification
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`lists the following alleged inventive concepts: (1) allowing dragging and dropping
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`of work orders into a designated week (2) allowing color coding work orders based
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`on their status, (3) throttling control of “sponsored” work (work that is created and
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`entered into an otherwise completely planned work week) (4) providing real time,
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`on screen, performance indicators for a week, and (5) providing distinct screens for
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`the assignment and management of work. See id. at 2:13-24, 2:52-3:30, 5:50-6:18.
`
`B.
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`Background of the ‘205 Patent and the Present Civil Suit
`1.
`
`Prosecution of the ‘205 Patent
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`
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`The patent application that issued as the ‘205 Patent was filed on May 24,
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`2004, and claims priority to two provisional applications: Provisional Application
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`No. 60:472,414 (Ex. 1006), filed on May 22, 2003, and Provisional Application
`
`No. 60:483,111 (Ex. 1007), filed on June 30, 2003. 1 The provisional applications
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`disclose a scheduling and planning software manual and bear the logo of EPRI
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`Solutions, the employer of at least two of the named inventors at the time of the
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`filing of the ‘205 Patent. Ex. 1008, McElroy and Samsel LinkedIn Profiles.
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`1 For the purposes of this IPR, Petitioner cites prior art available before the filing date of
`
`the ‘414 Provisional and, therefore, does not contend that the ‘205 Patent cannot claim
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`priority to May 22, 2003. Petitioner reserves the right to contest this claimed priority date
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`at a later time, as PO has not shown that the ‘205 Patent is entitled to this priority date.
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`
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`4
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`
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`Petition for Inter Partes Review of
`U.S. Patent No. 8,209,205
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`In January 2010, the applicants appealed a final rejection. Ex. 1009, ‘205
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`
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`Patent File History, at p. 125-139. The examiner had rejected what issued as
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`claims 1-6, 8-12, 14-17, and 20 as obvious over U.S. 7,225,040 to Eller et al. in
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`view of U.S. 7,210,119 to Pothos et al. The examiner had also rejected what issued
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`as claims 7, 13, and 18-19 as obvious over Eller in view of Pothos in further view
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`of Chatfield (Step by Step Microsoft Office Project 2003).
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`
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`During the appeal, the applicant and examiner disagreed on whether the
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`prior art disclosed concepts such as indication of overloading of resources, color
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`coding the status of the planning of work orders, and printing contents using filters.
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`Id. at 104-122. Particularly, the examiner and applicant disagreed as to the
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`construction of the limitation, “short notice outage section,” of independent claim
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`1. The examiner interpreted “short notice outage” to mean “an event or activity
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`added to the schedule with little notice.” Id. at p. 63. The applicant then argued that
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`“short notice outage” meant “a situation in which the engineer (or other personnel)
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`is unavailable.” Id. at p. 73. The applicant identified this section as “unplanned
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`unavailable time,” such as “hours that occurred during T0 [the present workweek]
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`that were not scheduled, i.e., training, meetings, emergency vacation, etc. Id. at p.
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`128, (Appeal Brief, Jan. 7, 2010) (citing lines 17-18 of page 12 of application
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`specification). Declining to adopt either of these constructions, the Board of Patent
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`Appeals and Interferences (“BPAI”) held that “short notice outage” refers to “short
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`
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`5
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`Petition for Inter Partes Review of
`U.S. Patent No. 8,209,205
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`notice outage work” (“SNOW”). Id. at 63 (citing Doc Palmer, Maintenance
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`Planning and Scheduling Handbook (1999), at 6.51 (“Palmer,” Ex. 1010)). The
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`BPAI determined that the art cited in the rejection failed to disclose “short notice
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`outage section,” and, therefore, claim 1, the sole independent claim, was
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`nonobvious, and it was unnecessary to assess other claims for nonobviousness.
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`After the BPAI’s decision, the examiner never considered the prior art Palmer
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`reference for “short notice outage section,” a teaching plainly present in Palmer.
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`The ‘205 Patent issued without further rejections in June 2012.
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`2.
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`U.S. Application No. 14/024,944
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`
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`At the time of filing of this Petition, all eligible claims of U.S. App. No.
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`14/024,944, a continuation of the ‘205 Patent, (“Child Application”) were
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`declared unpatentable as obvious in an examiner’s final rejection. Ex. 1005, Child
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`Application History, at pp. 7-16, 21-22 (Final Rejection, Nov. 30, 2016). Notably,
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`rejected claims 1 and 3 of the Child Application each contain the limitations of
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`claim 1 of the ‘205 Patent as well as additional limitations. The additional
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`limitations include the calculation of real-time performance indicators and
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`displaying linkages between predecessor and successor orders, among other things.
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`While the Board is not bound by the findings of the examiner, this final rejection
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`lends support to Petitioner’s position that the broader claims of the ‘205 Patent are
`
`obvious.
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`
`
`6
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`
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`3.
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`The Present Action
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`Petition for Inter Partes Review of
`U.S. Patent No. 8,209,205
`
`
`
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`On February 24, 2016, the named inventors of the ‘205 Patent assigned the
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`patent to PO. On March 1, 2016, PO filed an action against Petitioner claiming
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`infringement of the ‘205 Patent in the Eastern District of Texas. Ex. 1011,
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`Complaint. On May 24, 2016, Petitioner filed a motion to dismiss pursuant to Fed.
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`R. Civ. P. 12(b)(6) on the grounds that the ‘205 Patent was invalid under 35 U.S.C.
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`§ 101. Ex. 1012, Motion to Dismiss. Petitioner’s motion, which has not yet been
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`decided, contended that the ‘205 Patent was directed to applying conventional
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`scheduling practices using generic computers, therefore, claimed unpatentable
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`abstract ideas. See id.
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`
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`John McElroy, one of the named inventors of the ‘205 Patent, submitted a
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`declaration in response to Petitioner’s § 101 motion on June 10, 2016. Mr.
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`McElroy emphasized the concepts of dragging and dropping work orders (claim 1)
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`and providing real-time resource updates (claim 3) as novel concepts in the ‘205
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`Patent. Ex. 1013, McElroy Decl. at ¶ 6. This theory of novelty had been repeatedly
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`rejected during prosecution, and is even contrary to PO’s own expert’s admission
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`that drag-and-drop functionality was well known. See Ex. 1009, ‘205 Patent File
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`History at 92, 172, 225 (characterizing the “drag and drop” feature as “very old
`
`and well known”); Ex. 1002, Sherman Tr. at 46:1-24 (drag and drop was a
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`commonly known computer term and functionality in 2003); see also id. at 23:4-
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`
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`7
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`
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`Petition for Inter Partes Review of
`U.S. Patent No. 8,209,205
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`25:12 (a PHOSITA would have known about dragging and dropping functionality
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`in spreadsheet and database applications like Microsoft Excel or Lotus Notes),
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`28:12-29:18 (a PHOSITA would have known about drag and drop functionality in
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`gaming software).
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`
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`As discussed below, the concepts of short notice outage sections, dragging
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`and dropping, and real time resource updates, as well as every other claimed
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`limitation of the ‘205 Patent, are taught by the prior art.
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`II.
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`
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`REQUIREMENTS FOR INTER PARTES REVIEW
`A. Grounds for Standing
`The ‘205 Patent is available for IPR, and Petitioner is not barred or estopped
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`from requesting IPR challenging the claims of the ‘205 Patent. Specifically,
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`Petitioner certifies: (1) Petitioner is not the owner of the ‘205 Patent; (2) Petitioner
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`has not filed civil action challenging the validity of any claim of the ‘205 Patent;
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`and (3) this Petition is filed less than one year after Petitioner was served with a
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`complaint alleging infringement of the ‘205 Patent. 37 C.F.R. § 42.104(a).
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`Identification of Challenge and Relief Requested
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`B.
`In view of the prior art, evidence, and claim charts, the Challenged Claims are
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`
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`unpatentable and should be cancelled. 37 C.F.R. § 42.104(b)(1).
`
`1.
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`Grounds for Challenge
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`
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`
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`Based on the prior art references identified, IPR of the Challenged Claims
`
`8
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`
`
`Petition for Inter Partes Review of
`U.S. Patent No. 8,209,205
`
`should be granted. 37 C.F.R. § 42.104(b)(2); see also, generally, Ex. 1022, Greenspun
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`Decl. at ¶¶ 1-102.
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`Proposed Statutory Rejections
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`Exhibit(s)
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`Claims 1-4, 8-11, and 14 are obvious under § 103(a) over U.S.
`
`1014, 1003
`
`Pat. No. 7,225,040 to Eller et al. (“Eller”) in view of the Best
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`Practice Guideline for Maintenance Planning and Scheduling by
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`the Electric Power Research Institute, Inc. (December 2000)
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`(“Best Practice Guideline”).
`
`Claims 5-7 and 16-20 are obvious under § 103(a) over Eller in
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`1014, 1003,
`
`view of the Best Practice Guideline further view of U.S. Pat. No.
`
`and 1015
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`6,606,546 to Sinex et al. (“Sinex”).
`
`Claims 12-13 and 15 are obvious under § 103(a) over Eller in
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`1014, 1003,
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`view of the Best Practice Guideline in further view of John
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`and 1051-
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`Walkenbach, Microsoft Excel 2000 Bible (1999) (“Walkenbach”)
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`54
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`Claims 1-4, 8-11, and 14 are obvious under § 103(a) over Eller in
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`1014, 1010
`
`view of Doc Palmer, Maintenance Planning and Scheduling
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`Handbook (1999) (“Palmer”).
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`Claims 5-7 and 16-20 are obvious under § 103(a) over Eller in
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`1014, 1010,
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`view of Palmer in further view of Sinex.
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`1015
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`
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`9
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`
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`Claims 12-13, and 15 are obvious under § 103(a) over Eller in
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`1014, 1010,
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`Petition for Inter Partes Review of
`U.S. Patent No. 8,209,205
`
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`view of Palmer in further view of Walkenbach.
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`1051-54
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`2.
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`Claim Construction
`
`In this proceeding, claim terms should be given their broadest reasonable
`
`interpretations consistent with the specification (which may be different from the
`
`constructions in court). 37 C.F.R. § 42.100(b). Adherence to the rules of
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`construction is not a waiver of any argument, in any litigation, that claim terms in
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`the ‘205 Patent should not be construed differently or are otherwise invalid
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`(including under 35 U.S.C. §§ 101 or 112). Claims should be construed consistently
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`with how a person having ordinary skill in the art would have interpreted them at
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`the time of the alleged invention. 35 U.S.C. § 103(a).
`
`a)
`Claim 1 requires the planning and scheduling system interface to provide a
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`“short notice outage section”
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`
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`“short notice outage section.” Claim 9 also requires that the device be able to
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`display short notice outages. During prosecution of the ‘205 Patent, the applicants
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`referenced the written description support for this term, and noted that the
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`specification disclosed the concept of a short notice outage section in Figure 1 and
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`page 12, lines 17-18 of the specification (now Col. 6:33-35 of the ‘205 Patent). Ex.
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`1009, ‘205 Patent File History at p. 128 (Appeal Brief, Jan. 7, 2010). This
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`description in the specification describes “Unplanned Unavailable Time,” i.e., an
`
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`10
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`Petition for Inter Partes Review of
`U.S. Patent No. 8,209,205
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`“area used for hours that occurred during T0 that were not scheduled, i.e., training,
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`meetings, emergency vacation, etc.” ‘205 Patent at Col. 6:33-35. Figure 1 is an
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`illustration of the user interface, and there the short notice outage section is
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`identified as a list of short notice outages, and a tab is illustrated within the “View”
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`area for this aspect. Thus, under a broadest reasonable interpretation, the term
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`“short notice outage section” should be construed to at least include an area used to
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`display unplanned unavailable time. Additionally, the term may be construed
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`consistent with the BPAI construction to include an area used to display short
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`notice outage work, or SNOW noted above. See supra at I.B.1. These concepts are
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`closely related. Accordingly, the Board could correctly interpret this term to
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`include both the embodiment described in the specification (i.e., unplanned
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`unavailable time) and the BPAI’s construction (i.e., short notice unavailable time,
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`or SNOW, whether planned or unplanned). As discussed in more detail below, the
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`prior art presented in this Petition discloses both unplanned unavailable time and
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`SNOW.
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`3.
`
`Level of Skill of a Person Having Ordinary Skill in the Art
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`
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`A PHOSITA at the time of the ‘205 Patent would have been a person with
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`(1) at least an undergraduate degree in computer science, computer engineering,
`
`electrical engineering, or similar technical fields, and (2) two or more years of
`
`
`
`11
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`Petition for Inter Partes Review of
`U.S. Patent No. 8,209,205
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`experience developing database applications.2 See Ex. 1022, Greenspun Decl. at ¶
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`20-22.
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`4.
`
`The Best Practice Guideline is a Printed Publication
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`
`
`The Electric Power Research Institute was created in 1972 in response to the
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`Great Northeastern Blackout of 1965. See Ex. 1018, About EPRI at p. 1. Since
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`then, its membership has grown to represent approximately 90% of the electricity
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`generated in the United States. Id. EPRI’s business is to conduct research and
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`development related to the delivery and use of electricity for the benefit of the
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`public. See id. at p. 4. An important component of that research is directed to
`
`improving operations and maintenance in power plants and other electricity-
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`generating systems. See id. at pp. 7, 11, 14.
`
`
`
`In December 2000, EPRI published the Best Practice Guideline to provide
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`guidelines on optimal maintenance and scheduling practices “based on the
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`collective experience from several EPRI projects.” Ex. 1003, Best Practice
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`Guideline at p. 7. The Best Practice Guideline was first made available to entities
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`2 In the related district court proceeding, PO’s expert provided the following
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`PHOSITA definition: “a person with either a Bachelor of Science degree in Electrical
`
`Engineering, Computer Engineering, or Computer Science with two years of experience
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`in computer programming, or a Master of Science degree in Electrical Engineering,
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`Computer Engineering or Computer Science.” Ex. 1017, Sherman Decl. at ¶ 17.
`
`
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`12
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`
`
`Petition for Inter Partes Review of
`U.S. Patent No. 8,209,205
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`that funded it. See generally Ex. 1019, Swezey Decl., at ¶¶ 1-8. In July 2001,
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`almost two years before the earliest priority of the ‘205 Patent, the Best Practice
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`Guideline became available for purchase by anyone without any restrictions on
`
`use. Id. at ¶¶ 3, 7. At that time, a description of the Best Practice Guideline was
`
`provided on EPRI’s website. Id. at ¶ 3. Therefore, interested persons would have
`
`been able to learn of its existence through reasonable diligence, such as through
`
`keyword searching on an Internet search engine. See id. at ¶¶ 1-8. Thus, the
`
`evidence shows public availability at least as of July 2001.
`
`
`
`Furthermore, other evidence confirms the public availability of the Best
`
`Practice Guideline well before the priority date of the ‘205 Patent. For example, in
`
`August 2001, EPRI hosted the aforementioned “International Maintenance
`
`Conference,” which was available to individuals from around the world, including
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`more than thirty presenters not directly affiliated with EPRI or its subsidiaries. See
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`Ex. 1004, International Maintenance Conference. During this conference, Kirk
`
`Samsel, one of the named inventors, gave a presentation entitled “Gaining
`
`Strategic Leverage Through Planning and Scheduling,” citing the Best Practice
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`Guideline as his sole reference. See id. at pp. 389-398. Indeed, a slide on Mr.
`
`Samsel’s presentation looks strikingly similar to a portion of Figure 5-2 of the Best
`
`Practice Guideline:
`
`
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`13
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`
`
`Petition for Inter Partes Review of
`U.S. Patent No. 8,209,205
`
`
`Best Practice Guideline, Fig. 5-2
`
`
`
`Samsel Presentation
`
`This public presentation in August 2001 of the Best Practice Guideline and the
`
`materials contained therein is consistent with the other evidence showing that the
`
`document was publicly available in July 2001. As another example, evidence in the
`
`record shows that several commercial companies downloaded or ordered the Best
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`Practice Guideline in 2001 and thereafter. See Ex. 1019, Swezey Decl., at ¶ 8. The
`
`Best Practice Guideline is thus a prior art printed publication as to the ‘205 Patent.
`
`5.
`
`Palmer is a Printed Publication
`
`The Maintenance Planning and Scheduling Handbook by Doc Palmer is a
`
`book bearing a copyright date of 1999, an ISBN Number (0-07048264-0), and
`
`states that it was printed by The McGraw-Hill Companies in the United States of
`
`America. Ex. 1010, Palmer at p. 2. On an online purchasing site, Palmer contains a
`
`review dated as early as October, 1999, as well as two other reviews dated more
`
`than a year before May 22, 2003. See Ex. 1020, Amazon.com Customer Reviews:
`
`
`
`14
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`
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`Petition for Inter Partes Review of
`U.S. Patent No. 8,209,205
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`Maintenance Planning and Scheduling Handbook. Collectively, these facts
`
`demonstrate that Palmer was publicly available to interested persons exercising
`
`reasonable diligence, and, therefore, was a printed publication at least by 1999.
`
`6. Walkenbach is a Printed Publication
`
`The Excel 2000 Bible by John Walkenbach is a book bearing a copyright
`
`date of 1999, and ISBN Number (0-7645-3259-6) and states that it was printed by
`
`Hungry Minds, Inc. in the United States of America. Ex. 1051, Walkenbach at p. 3.
`
`Additionally, Walkenbach was first registered with the Copyright Office in 1999.
`
`See Ex. 1021, Walkenbach Copyright Registration. Collectively, these facts
`
`demonstrate that Walkenbach was publicly available to interested persons
`
`exercising reasonable diligence, and, therefore, was a printed publication at least
`
`by 1999.
`
`III. THERE IS A RESONABLE LIKELIHOOD THAT THE
`CHALLENGED CLAIMS OF THE ‘205 PATENT ARE
`UNPATENTABLE
`A. Eller in view of the Best Practice Guideline Renders Claims 1-4, 8-
`11, and 14 obvious
`
`
`
`U.S Patent No. 7,225,040 to Eller et al. (“Eller”) was filed on November 14,
`
`2001, and therefore qualifies as prior art to the ‘205 Patent under 35 U.S.C. §
`
`102(e). Ex. 1014, Eller; see also Ex. 1022, Greenspun Decl. at ¶¶ 50-57. Eller was
`
`cited during prosecution to reject all of the Challenged Claims in combination with
`
`other prior art, but it was not found to disclose a “short notice outage section.”
`
`
`
`15
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`
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`Petition for Inter Partes Review of
`U.S. Patent No. 8,209,205
`
`Eller discloses a planning and scheduling interface running on a computing device
`
`in the packaging and supply industry, and, therefore, is within the field of endeavor
`
`of the ‘205 Patent. Id. at 2:62-65, 7:5-10; see also Ex. 1001, ‘205 Patent at 1:16-
`
`18, 3:33-36. Ex. 1022, Greenspun Decl. at ¶¶ 47, 51. Eller addresses issues in the
`
`efficiency of a planning and scheduling system by teaching a user interface
`
`designed to reduce lead time and, therefore, would have been reasonably pertinent
`
`to the problems identified in the ‘205 Patent. See Ex. 1014, Eller at 7:5-16; see
`
`also, e.g., Ex. 1001, ‘205 Patent at 1:16-18, 1:42-47, 2:13-20; see also Ex. 1022,
`
`Greenspun Decl. at ¶ 50-51.3
`
`
`3 In the related district court litigation, PO’s expert opined that the field of the ‘205 Patent
`
`“touches on a number of areas, including databases, graphical interfaces, [and] software
`
`engineering.” Ex. 1002, Sherman Tr. At 83:12-18. Dr. Sherman also explained that many
`
`types of information would be relevant to solving the problems the inventors of the ‘205
`
`Patent were trying to solve, including: “how to build a system that had a suitable
`
`database, such as a relational database. A system that had an easy to use graphical
`
`interface. A system that provided functionalities to support their special combination of
`
`characteristics. General software engineering. Some knowledge of work orders might be
`
`useful….” Id. at 83:19-84:17.
`
`
`
`16
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`
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`Petition for Inter Partes Review of
`U.S. Patent No. 8,209,205
`
`Eller discloses a user interface on which a computer program in
`
`
`
`communication with a database server may run to implement a weekly scheduling
`
`system:
`
`
`
`Ex. 1014, Eller at Fig. 4A; see also id. at Col. 3:4-11, at Figs. 3A-G; 4B-C; 5A-C;
`
`7A-C; 8A-E; 9A-F; 10A-E; 11B-D; 12B; 12D-G. Eller discloses work-week
`
`sections for scheduled and unscheduled jobs, and planned outage work, and it
`
`discloses the use of “intuitive” drag and drop functionality to schedule a job into its
`
`desired position in the schedule. See id. at 10:1-12, 11:31-46, 33:14-19, 35:60-62,
`
`Fig. 11C. Eller also discloses that as jobs and orders are moved into different parts
`
`
`
`17
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`
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`Petition for Inter Partes Review of
`U.S. Patent No. 8,209,205
`
`of the schedule, alerts and scheduling statistics are automatically provided to the
`
`user. See, e.g., id. at 33:14-19, 35:36-52.
`
`
`
`As discussed above, the Best Practice Guideline was first published in 2001.
`
`Therefore, the Best Practice Guideline qualifies as a prior art printed publication
`
`under 35 U.S.C. § 102(b). See supra at II.B.4; see also Ex. 1022, Greenspun Decl.
`
`at ¶¶ 58-71. The Best Practice Guideline provides that its scheduling practices
`
`would ideally be implemented into a computerized maintenance management
`
`system (CMMS). See, e.g. Ex. 1003, Best Practice Guideline at pp. 23, 33-34, 35, 78;
`
`see also Ex. 1001, ‘205 Patent at 1:16-18. Therefore, the Best Practice Guideline
`
`would have been in the same field of endeavor as the ‘205 Patent. See Ex. 1022,
`
`Greenspun Decl. at ¶¶ 60, 65-66. Furthermore, the Best Practice Guideline would
`
`have been reasonably pertinent to the problems purportedly addressed by the ‘205
`
`Patent because it taught best practices for maintenance scheduling, such as a work
`
`week management process and throttle control of sponsored work, which were
`
`objects of the ‘205 Patent. See, e.g. Ex. 1003, Best Practice Guideline at pp. 22, 36,
`
`39, 52 (Figure 5-2) (weekly scheduling); see also, e.g., id. at pp. 37, 40-42, Fig. 5-2
`
`(throttle control of sponsored work) see also Ex. 1001, ‘205 Patent at 2:13-24; Ex.
`
`1022, Greenspun Decl. at ¶¶ 59, 69.
`
`
`
`18
`
`
`
`Petition for Inter Partes Review of
`U.S. Patent No. 8,209,205
`
`The Best Practice Guideline discloses creating a scheduling system that
`
`
`
`divides work in work-weeks and different sections and tracking performance
`
`metrics:
`
`
`Ex. 1003, Best Practice Guideline at p. 52 (Fig. 5-2); see also id. at pp. 53-60
`
`(describing scheduling metrics). Additionally, the Best Practice Guideline
`
`discloses keeping track of short notice and planned outage work and a backlog. See
`
`id. at pp. 37 (“Offline work scopes will be updated and maintained for unscheduled
`
`maintenance and forced outages while outage scopes for annual planned outages
`
`
`
`19
`
`
`
`Petition for Inter Partes Review of
`U.S. Patent No. 8,209,205
`
`will be developed well in advance.”), 42 (describing work backlog), 56 (describing
`
`MUA and MAV metrics to track unplanned employee unavailability).
`
`
`
`The Best Practice Guideline teaches several other relevant concepts. For
`
`instance, the Best Practice Guide teaches the tracking of different scheduling
`
`matters, such as resource unavailability and loading, including overtime work and
`
`the assignment of resources on specific days and times. See id. at pp. 22, 34, 50-53.
`
`The Best Practice Guideline also teaches identifying the status of planning of work
`
`orders, including when work orders are “ready to be scheduled.” See id. at pp. 27,
`
`33-34. As another example, the Best Practice Guideline teaches assigning work orders
`
`to time-disconnected “weekly buckets” prior to being assigned to a fixed daily
`
`schedule. See, e.g., id. at pp. 22-23.
`
`
`
`One of skill in the art would have been motivated to combine the best-
`
`practice teachings of the Best Practice Guideline a
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