Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 18
`Entered: June 25, 2018
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`RIOT GAMES, INC.,
`Petitioner,
`v.
`PALTALK HOLDINGS, INC.,
`Patent Owner.
`_______________
`
`Case IPR2018-00131
`Patent 6,226,686 & 6,226,686 C1
`_______________
`
`
`Before THU A. DANG, KARL D. EASTHOM, and
`NEIL T. POWELL, Administrative Patent Judges.
`
`DANG, Administrative Patent Judge.
`
`
`
`DECISION
`Patent Owner’s Request for Rehearing
`37 .F.R. § 42.71
`
`
`
`

`

`IPR2018-00131
`Patent 6,226,686 & 6,226,686 C1
`
`
`
`I.
`
`INTRODUCTION
`
`
`Patent Owner filed a Request for Rehearing (Paper 14, “Req. Reh’g”)
`of our Decision (Paper 11, “Dec.”) to inter partes review of claims 1–4,
`7–21, 28–35, 39, 40, 47–54, 56, 57, and 64–70 of U.S. Patent No. 6,226,686
`(Ex. 1002, “the ’686 patent”). In the Decision, we instituted a trial on
`Petitioner’s asserted ground that claims 1–4, 7–21, 28–35, 39, 40, 47–54, 56,
`57, and 64–70 are unpatentable under 35 U.S.C. § 103 as obvious over
`Aldred and RFC 1692, or Aldred, RFC 1692 and RFC 1459. Dec. 48. For
`the reasons stated below, Patent Owner’s Request for Rehearing is denied.
`
`
`II. ANALYSIS
`
`When rehearing a decision on petition, the Board will review the
`
`decision for an abuse of discretion. 37 C.F.R. § 42.71(c). The party
`requesting rehearing bears the burden of showing an abuse of discretion, and
`“[t]he request must specifically identify all matters the party believes the
`Board misapprehended or overlooked.” 37 C.F.R. § 42.71(d).
`Patent Owner argues “the Board abused its discretion in accepting
`Petitioner’s evidence that RFC 1692 and RFC 1459 are prior art publications
`to the ‘686 Patent.” Req. Reh’g 2. In particular, Patent Owner contends the
`Crocker Declaration does not provide sufficient evidence that, on or before
`the filing date of February 1, 1996 (“critical date”) of the ’686 patent, RFC
`791, RFC 1001, RFC 1459, and/or RFC 1692 were actually available to the
`public online, that these RFCs were actually accessed or downloaded by any
`member of the public, or whether and how any alleged sources such as the
`
`
`
`1
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`

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`IPR2018-00131
`Patent 6,226,686 & 6,226,686 C1
`
`anonymous FTP hosts or the RFC Editor’s Website were indexed or
`cataloged. Id. at 7. Thus, according to Patent Owner, Petitioner has not
`shown sufficiently that RFC 791, RFC 1001, RFC 1459, and RFC 1692
`were “publicly accessible” on or before the critical date, rendering the
`references unavailable as prior art references under 35 U.S.C. § 102.1 Id.
`Patent Owner fails to show an overlooked or a misapprehended matter.
`In our Decision, we addressed the arguments that Patent Owner made
`in its Preliminary Response concerning the RFCs. We determined, based on
`the current record and for purposes of institution, RFC 1692, RFC 1459, and
`RFC 791 were “publicly accessible” to persons of ordinary skill interested in
`computer networking and security, respectively as of August 1994, May
`1993 and September 1981, i.e., before the critical date. See, e.g., Dec.
`25–30.
`As we noted in the Decision,
`[a] given 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.
`
`
`Dec. 30 (citing SRI Int’l, Inc. v. Internet Security Sys., Inc., 511 F.3d 1186,
`1194 (Fed. 21 Cir. 2008)).
`As pointed out in the Decision, the ’686 patent itself, in several
`places, relies on and cites RFC documents, including RFC 791, indicating
`that, generally, persons of ordinary skill interested in computer networking
`
`
`1 RFC 1001 does not appear to be at issue in this proceeding, although the
`parties should clarify respective positions on this point.
`
`
`
`2
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`IPR2018-00131
`Patent 6,226,686 & 6,226,686 C1
`
`and security (the public) would have been able to find and subsequently
`access RFC documents on or before the filing date of the ’686 patent. See
`Dec. 29 (citing, e.g., Ex. 1002, 3:52–54). We cited PGMedia, Inc., which
`states “much of the development and technical management of the Internet
`has been by the consensus of Internet users. This is evidenced . . . by IETF
`and the more than 2000 RFC’s which have been written and circulated.”)).
`Id. (citing PGMedia, Inc. v. Network Sols., Inc., 51 F. Supp. 2d 389, 406
`(S.D.N.Y. 1999).2 PGMedia, Inc. corroborates that RFCs were generally
`available to the public prior to the critical date, to help address a central
`concern of building a consensus for developing the Internet and associated
`standards, i.e., not merely “today” or “currently” as Patent Owner contends.
`Req. Reh’g. 6.3
`
`
`2 We also cited VirnetX Inc., where the Board found RFCs were publically
`available notwithstanding patent owner’s arguments otherwise. Dec. 29
`(citing VirnetX Inc. v. Apple Inc., 2018 WL 1371144 (Fed. Cir. Mar. 16,
`2018) (IPR2015-00870 & IPR 2015-00871) (Rule 36)). The showing in
`VirnetX Inc. involved a later critical date than at issue here. Nevertheless,
`the case demonstrates that RFC dates of publication generally were reliable
`indicators to corroborate public accessibility in light of similar evidence
`regarding RFC publication practices.
`3 In PG Media, the court states “[i]n 1987, the Internet community agreed on
`a new protocol, announced in Request for Comments (‘RFC’) 1034, dated
`November 1987 and written by one P. Mockapetris.” Id. at 391. The court
`also notes the following:
`RFC’s are formal memos produced by members of the Internet
`Engineering Task Force (“IETF”). The IETF is a “loosely self-
`organized group of people who make technical and other
`contributions to the engineering and evolution of the Internet and
`its technologies. It is the principal body engaged in the
`development of new Internet standard specifications.” (Strawn
`Decl. Ex. A.) As there is no centralized authority that controls
`
`
`
`3
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`Patent 6,226,686 & 6,226,686 C1
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`Patent Owner’s contention that these “other cases . . . should not
`weigh against Patent Owner’s position” correctly posits that the Board must
`solve a “case-by-case inquiry into the facts and circumstances surrounding
`[the RFCs] disclosure to members of the public.” Id. (latter quote quoting In
`re Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004) (emphasis by Patent
`Owner)). Nevertheless, the cited cases generally corroborate the testimony
`of Mr. Crocker concerning practices of the IETF and the public accessibility
`of RFCs in general prior to and after the critical date. See supra notes 2, 3.
`As we pointed out in the Decision, the RFC documents are as
`indicated in their title, “Request for Comments,” typically announcing a
`request for suggestions and improvements for Internet standards, and thus,
`constitute the type of documents with a main purpose being for public
`disclosure and consideration. Dec. 30; note 3 (used to build consensus about
`the Internet). That is, the title, “Request for Comments,” and statements
`therein further corroborate specific availability of the RFC to the public from
`which it seeks comments at the time of its announcement.
`In the Decision, for purposes of institution, we found credible Mr.
`Crocker’s testimony that the RFCs were available generally prior to the
`
`
`the Internet, the Internet's smooth functioning depends on the
`cooperation and consensus of its users, and IETF represents an
`effort to meet that goal. The situation is well summarized in
`NSI’s 1997 S-1 filing with the SEC[.]
`Id. at 391 n.5 (emphasis added). In context to the 1987 RFC 1034 document
`cited, and given that the court cites over 2000 RFC published documents
`(numbered accordingly), the “situation” regarding RFCs and the IETF, as
`summarized by the court employing, in part, evidence including a 1997 SEC
`(Securities Exchange Commision”) filing, would not have changed
`materially prior to the critical date (February, 1996) involved here.
`
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`IPR2018-00131
`Patent 6,226,686 & 6,226,686 C1
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`critical date, wherein a skilled artisan could have determined how to access
`particular RFCs based on mailing lists and newsletters discussing the RFCs.
`See Dec. 28–30. In particular, Mr. Crocker’s testimony included the
`following: 1) “an official summary of published RFCs appeared in each
`issue of the Internet Society’s newsletter” which “was well-known to
`members of the Internet technical community as a source for an official
`summary of published RFCs” (Dec. 28 (citing Ex. 1026 ¶ 24)); 2) a well-
`known mailing list announced RFCs to which anyone could subscribe since
`the late 1980s (id. (citing Ex. 1026 ¶ 21)); and 3) an RFC Editor publication
`“ summarize[d] the status of all Internet protocol and service specifications”
`wherein “[t]hese RFCs are made publicly available pursuant to the standard
`RFC publication process.” Id. (citing Ex. 1026 ¶ 23). Mr. Crocker further
`testifies as follows: “Since the early 1990s, the RFC Editor repository has
`been freely accessible to the general public with no login, password, or
`membership requirement, and was similarly available to the Internet
`technical community since the 1970s.” Id. at 28–29 (citing Ex. 1026 ¶ 26).
`Patent Owner’s argument that Petitioner fails to show actual
`publication, and fails to show indexing or cataloging, does not show an
`overlooked or misapprehended point. See Req. Reh’g. 7. Even Patent
`Owner concedes, “Petitioner provides evidence of general RFC practice.”
`Req. Reh’g 7. As Mr. Crocker testifies, “[t]he Internet Society’s newsletter
`was well-known to members of the Internet technical community as a source
`for an official summary of published RFCs,” and “[a]nyone with an interest
`in Internet and Internet-connected technologies would have been able to
`locate this mailing list, subscribe, and then receive announcements of new
`RFCs.” Ex. 1026 ¶ 21, 24. In other words, an RFC is a “Request for
`
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`Patent 6,226,686 & 6,226,686 C1
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`Comment” from recipients on the mailing list and the newsletter at the time
`of the announcement.
`In a recent case, our reviewing court clarified that documents (videos
`and slides) disseminated to members of even a somewhat closed group
`without restriction as to further dissemination may tend to indicate public
`accessibility of the documents, in light of other factors, even in the absence
`of indexing for search purposes. See Medtronic, Inc. v. Barry, No. 2017-
`1169, 2018 WL 2769092, at **8–9 (Fed. Cir. June 11, 2018) (“Further, even
`if the Board were correct in its assumption that Medtronic only gave the
`Video and Slides to the SDSG members, it did not address whether the
`disclosures would remain confidential.”)4 On this preliminary record,
`Petitioner’s evidence shows sufficiently that mailing list members would
`have been apprised of a new RFC’s contents, at least via the Internet
`Society’s newsletter’s summary, if not via the mailing list (coupled with
`prior knowledge of the documents via group circulation thereof), with
`unrestricted access to the newly published RFC documents, and without any
`further restriction as to dissemination. See Ex. 1026 ¶¶ 18–24. In other
`words, prior to official publication of RFC documents, “[t]he Area Director .
`. . circulates the document to the wider IETF community, for comment, and
`
`
`4 The Medtronic court noted the following: “We have stated that a printed
`publication ‘need not be easily searchable after publication if it was
`sufficiently disseminated at the time of its publication.’” Id. at *8 (quoting
`Suffolk Techs., LLC v. AOL Inc., 752 F.3d 1358, 1365, 1364 (Fed. Cir. 2014)
`(characterizing Suffolk, id. at 1364, as “concluding that an electronic
`newsgroup post was sufficiently disseminated where the newsgroup was
`populated by those of ordinary skill in the art and ‘dialogue with the
`intended audience was the entire purpose of the newsgroup postings,’ even
`though the post was non-indexed and non-searchable”)).
`
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`IPR2018-00131
`Patent 6,226,686 & 6,226,686 C1
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`then decides whether to publish the document as an RFC.” Id. ¶ 18
`(emphases added). The latter testimony indicates each RFC document
`actually was disseminated prior to publication in order to provide further
`comments, and in any event, even if altered via the comment/circulation
`process into a final version, would have apprised group members of its
`contents to allow members to find each document in the future.
`Therefore, for purposes of institution, Mr. Crocker’s testimony
`sufficiently shows that RFC 1692, RFC 1459, and RFC 791 were publically
`accessible to persons of ordinary skill interested in computer networking and
`security prior to the critical date.
`Based on the foregoing discussion, Patent Owner fails to show an
`overlooked or misapprehended material matter amounting to an abuse of
`discretion in determining Petitioner shows sufficiently that RFC 1692, RFC
`1459, and RFC 791 qualify as prior art printed publications.
`
`
`III. CONCLUSION
`Patent Owner has not carried its burden of demonstrating that we
`misapprehended or overlooked any material matters in the Decision, and has
`not shown an abuse of discretion in the Decision to institute an inter partes
`review of claims 1–4, 7–21, 28–35, 39, 40, 47–54, 56, 57, and 64–70 of the
`’686 patent.
`
`
`IV. ORDER
`In consideration of the foregoing, it is hereby
`ORDERED that Patent Owner’s Request for Rehearing is denied.
`
`
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`7
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`IPR2018-00131
`Patent 6,226,686 & 6,226,686 C1
`
`
`
`PETITIONER:
`
`Joseph A. Micallef
`Samuel A. Dillon
`SIDLEY AUSTIN
`jmicallef@sidley.com
`samuel.dillon@sidley.com
`
`
`PATENT OWNER:
`
`Gregory M. Howison
`Keith D. Harden
`Brian D. Walker
`MUNCK, WILSON, MANDALA, LLP
`ghowison@munckwilson.com
`kharden@munckwilson.com
`bwalker@munckwilson.com
`
`
`
`
`
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`8
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