Paper 12
`Trials@uspto.gov
`571-272-7822 Entered: January 25, 2018
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`INTEL CORPORATION,
`Petitioner,
`
`v.
`
`ALACRITECH, INC.,
`Patent Owner.
`____________
`
`Case IPR2017-01395
`Patent 8,805,948 B2
`____________
`
`
`
`Before STEPHEN C. SIU, DANIEL N. FISHMAN, and
`CHARLES J. BOUDREAU, Administrative Patent Judges.
`
`BOUDREAU, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying-in-Part and Granting-in-Part Petitioner’s Request for Rehearing
`37 C.F.R. § 42.71(d)
`
`
`
`Intel Corporation (“Petitioner”) filed a Request for Rehearing
`(Paper 9, “Req. Reh’g”) of the Decision Denying Institution (Paper 8,
`“Decision”) of U.S. Patent No. 8,805,948 B2 (Ex. 1001, “the ’948 patent”)
`in the above-captioned proceeding. In the Request for Rehearing, Petitioner
`
`
`Trials@uspto.gov
`571-272-7822 Entered: January 25, 2018
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`INTEL CORPORATION,
`Petitioner,
`
`v.
`
`ALACRITECH, INC.,
`Patent Owner.
`____________
`
`Case IPR2017-01395
`Patent 8,805,948 B2
`____________
`
`
`
`Before STEPHEN C. SIU, DANIEL N. FISHMAN, and
`CHARLES J. BOUDREAU, Administrative Patent Judges.
`
`BOUDREAU, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying-in-Part and Granting-in-Part Petitioner’s Request for Rehearing
`37 C.F.R. § 42.71(d)
`
`
`
`Intel Corporation (“Petitioner”) filed a Request for Rehearing
`(Paper 9, “Req. Reh’g”) of the Decision Denying Institution (Paper 8,
`“Decision”) of U.S. Patent No. 8,805,948 B2 (Ex. 1001, “the ’948 patent”)
`in the above-captioned proceeding. In the Request for Rehearing, Petitioner
`
`
`
`IPR2017-01395
`Patent 8,805,948 B2
`
`argues that the Decision misapprehended or overlooked certain evidence in
`denying review of the challenged claims. For the reasons set forth below,
`the Request for Rehearing is denied.
`When considering a request for rehearing, we review the Decision for
`an abuse of discretion. 37 C.F.R. § 42.71(c). The party requesting rehearing
`bears the burden of showing that the Decision should be modified, and “[t]he
`request must specifically identify all matters the party believes the Board
`misapprehended or overlooked.” 37 C.F.R. § 42.71(d). A request for
`rehearing is not an opportunity to present new arguments. See id. An abuse
`of discretion may arise if a decision is based on an erroneous interpretation
`of law, if a factual finding is not supported by substantial evidence, or if the
`decision represents an unreasonable judgment in weighing relevant factors.
`Star Fruits S.N.C. v. United States, 393 F.3d 1277, 1281 (Fed. Cir. 2005);
`Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re
`Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000).
`Institution of an inter partes review is authorized by statute only when
`“the information presented in the petition . . . and any response . . . shows
`that there is a reasonable likelihood that the petitioner would prevail with
`respect to at least 1 of the claims challenged in the petition.” 35 U.S.C.
`§ 314(a). In the Decision, the Board determined that the record before it was
`insufficient to show that Stevens21 is a prior art printed publication under 35
`U.S.C. §§ 102, 311(b) with respect to the ’948 patent. Stevens2 is one of the
`references relied upon in the sole asserted ground of the Petition,
`Accordingly, the Board concluded that Petitioner did not establish a
`
`1 W. Richard Stevens et al., TCP/IP Illustrated, Volume 2, 1995
`(“Stevens2,” Ex. 1013).
`
`2
`
`
`
`IPR2017-01395
`Patent 8,805,948 B2
`
`reasonable likelihood of prevailing on its sole asserted ground of
`unpatentability because the Petition failed to provide a threshold showing
`that Stevens2 qualified as a printed publication prior art reference. Dec. 4–8.
`Petitioner contends the Board overlooked or misapprehended the
`evidence of record that established the threshold showing that Stevens2 is a
`printed publication.
`Initially we observe the Petition, per se, provides only a statement that
`“Stevens2 was published no later than April 7, 1995 and is prior art under
`102(b).” Pet. 45 n.9 (citing Ex. 1063 in support thereof (the “Stansbury
`Declaration”)). The Petition, per se, provides no other evidence or argument
`to establish a threshold showing that Stevens2 is a printed publication—
`publicly accessible by an interested person of ordinary skill in the art before
`the critical date.
`Thus, Petitioner’s assertion regarding printed publication status of
`Stevens2 relies primarily on the Stansbury Declaration. Petitioner is correct
`that we erroneously discounted the Stansbury Declaration as lacking
`acknowledgment of the potential penalty for perjury. Req. 8–10. Petitioner
`is correct that the Stansbury Declaration is a sworn affidavit and, thus,
`complies with our rules’ definition of an “affidavit.” See 37 C.F.R. § 42.2.
`Therefore, we grant Petitioner’s Request for Rehearing only to the extent
`that we recognize the Stansbury Declaration is a sworn affidavit compliant
`with our rules.
`However, our Decision further determined that, even if accorded due
`weight as a sworn affidavit, the Stansbury Declaration is insufficient because
`it fails to describe any facts relating to indexing or cataloging procedures to
`support an assertion that Stevens2 would be locatable by an interested
`
`3
`
`
`
`IPR2017-01395
`Patent 8,805,948 B2
`
`person of ordinary skill. A reference is publicly accessible “upon a
`satisfactory showing that such document has been 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.” SRI
`Int’l, Inc. v. Internet Sec. Sys., Inc., 511 F.3d 1186, 1194 (Fed. Cir. 2008).
`We assess public accessibility on a case-by-case basis. See Kyocera
`Wireless Corp. v. Int’l Trade Comm’n, 545 F.3d 1340, 1350 (Fed. Cir.
`2008). In instances of references stored in libraries, for example,
`“competent evidence of the general library practice may be relied upon to
`establish an approximate time when a thesis became accessible.” In re Hall,
`781 F.2d at 899. “In these cases, we generally inquire whether the reference
`was sufficiently indexed or cataloged.” Blue Calypso, LLC v. Groupon, Inc.,
`815 F.3d 1331, 1348 (Fed. Cir. 2016); accord Voter Verified, Inc. v. Premier
`Election Solutions, Inc., 698 F.3d 1374, 1380 (Fed. Cir. 2012) (“[I]ndexing
`is a relevant factor in determining accessibility of potential prior art,
`particularly library-based references.”). “Indexing by subject offers
`meaningful assurance that an ordinarily skilled artisan, exercising reasonable
`diligence, will be able to locate a particular reference among the many
`volumes stored in a library.” Blue Calypso, 815 F.3d at 1349. Petitioner
`correctly observes that Ms. Stansbury’s title is Administrative Supervisor in
`the Original Cataloging Unit. Req. 11; Ex. 1063 ¶ 2. Ms. Stansbury states
`she is “familiar with the policies and procedures of the Library as they relate
`to . . . cataloging.” Ex. 1063 ¶ 1. However, Ms. Stansbury does not disclose
`details of those procedures nor does she disclose how she determined that
`“as best [she] can determine, [Stevens2] was publicly available at the
`Cornell University Library as of April 7, 1995.” Id. ¶ 4. Furthermore, Ms.
`
`4
`
`
`
`IPR2017-01395
`Patent 8,805,948 B2
`
`Stansbury’s testimony indicates “as best [she] can determine” suggesting
`some degree of uncertainty.
`Thus, even granting Petitioner’s request to the extent that we accord
`some weight to the Stansbury Declaration, we stand by our determination in
`the Decision that the evidence of record is insufficient to demonstrate a
`reasonable likelihood that Stevens2 qualifies as a printed publication prior
`art reference.
`Petitioner further argues, “Consistent with this, Petitioner’s expert
`attested that Stevens2 was ‘standard reference book on TCP/IP’ that was
`‘widely cited and relied upon,’ ‘well known resources to a [person of
`ordinary skill in the art]’ (Petition at 15 (citing Ex.1003 at ¶¶21-88,
`including ¶¶27, 60, and FN3), 45 (citing Ex.1003 at ¶1212), FN9).” Req. 12.
`Initially we observe the Petition cites these paragraphs of Dr. Horst’s
`Declaration as part of the “Background Of Technology” discussion rather
`than as support for public accessibility of Stevens2. See Pet. 15–24.
`Furthermore, incorporating by reference such a substantial portion of Dr.
`Horst’s Declaration (paragraphs 21–88) is improper under our rules. See 37
`C.F.R. § 42.6(a)(3). Regardless, even if we consider Dr. Horst’s description
`of well-known background material (including Stevens2) as support for
`public accessibility of Stevens2, his testimony does not indicate any personal
`knowledge that Stevens2 was publicly accessible on any particular date. In
`particular, none of paragraphs 27, 60, and 121 of Exhibit 1003 testify to any
`personal knowledge of Dr. Horst regarding any particular date of public
`accessibility of Stevens2.
`
`2 We observe paragraph 121 of Exhibit 1003 makes no reference to
`Stevens2.
`
`5
`
`
`
`IPR2017-01395
`Patent 8,805,948 B2
`
`Thus, even considering Dr. Horst’s expert testimony, we still find the
`evidence of record insufficient to demonstrate a reasonable likelihood that
`Stevens2 qualifies as a printed publication prior art reference.
`Lastly, Petitioner also contends Stevens2, per se, corroborates its prior
`art status in that “the copy relied upon by the Petitioner recites that it is the
`‘24th Printing 2010’ and bears a 1995 copyright date.” Req. 11. Our
`Decision noted this indication on the face of Stevens2 and concluded it
`contradicted Petitioner’s assertion of public accessibility as of 1995. Dec. 7.
`Petitioner argues Exhibit 1095, a web page printout from the URL
`“https://www.isbn.org/faqs_formats_reprints_editions,” filed with its
`Request, is evidence that our Decision misunderstood the meaning of “24th
`printing” confusing a “printing” (a reprint with “no substantial changes”)
`with an “edition” (with “substantial change”). Req. 11–12. Petitioner also
`argues that Exhibit 1096, filed with its Request, is evidence that the first
`printing in 1995 (Ex. 1096, 3) and the 24th printing in 2010 (Ex. 1013, 10)
`were identical printings of the same edition. Had such evidence or argument
`been included with or in the Petition, it may have been accorded some
`weight as evidence contrary to our perception that the 2010 date of the 24th
`printing contradicted Petitioner’s assertion that Stevens2 was publicly
`accessible in 1995. As noted above, a request for rehearing is not an
`opportunity to present new arguments. Regardless, even accepting
`Petitioner’s new evidence that the 24th printing in 2010 is the same as the
`1st printing in 1995, this new evidence provide no further proof that
`Stevens2 qualifies as a printed publication publicly accessible prior to the
`’948 patent.
`
`6
`
`
`
`IPR2017-01395
`Patent 8,805,948 B2
`
`Thus, even considering Petitioner’s new arguments and evidence
`(Exs. 1095 and 1096), we still find the evidence of record insufficient to
`demonstrate a reasonable likelihood that Stevens2 qualifies as a printed
`publication prior art reference.
`We have considered Petitioner’s remaining arguments presented in the
`Request for Rehearing and likewise conclude that they are unpersuasive of
`error.
`
`In conclusion, we grant Petitioner’s request only to the extent we
`recognize the Stansbury Declaration as a sworn affidavit compliant with our
`rules. Otherwise, we deny Petitioner’s Request for Rehearing. Specifically,
`we determine that the Request for Rehearing does not demonstrate that the
`Board misapprehended or overlooked any matters raised in the Petition by
`declining to institute the requested review of the ’948 patent. More
`specifically, we determined the Petition failed to establish a reasonable
`likelihood that Stevens2 is a prior art printed publication.
`
`
`ORDER
`
`Accordingly, it is:
`
`ORDERED that we grant Petitioner’s Request for Rehearing to the
`
`extent that we modify our Decision to recognize the Stansbury Declaration
`(Ex. 1063) is a sworn affidavit compliant with our rules; and
`
`FURTHER ORDERED that we otherwise deny Petitioner’s Request
`for Rehearing.
`
`
`7
`
`
`
`IPR2017-01395
`Patent 8,805,948 B2
`
`FOR PETITIONER:
`Garland T. Stephens
`Jeremy Jason Lang
`Adrian Percer
`WEIL, GOTSHAL & MANGES LLP
`garland.stephens@weil.com
`jason.lang@weil.com
`adrian.percer@weil.com
`
`FOR PATENT OWNER:
`James M. Glass
`Joseph M. Paunovich
`Brian E. Mack
`QUINN EMANUEL URQUHART & SULLIVAN LLP
`jimglass@quinnemanuel.com
`joepaunovich@quinnemanuel.com
`brianmack@quinnemanuel.com
`
`
`8
`
`
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