Paper 14
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_______________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_______________
`
`
`RIOT GAMES, INC.,
`Petitioner,
`
`v.
`
`PALTALK HOLDINGS, INC.,
`Patent Owner.
`
`_______________
`
`
`Case IPR2018-00132
`Patent 6,226,686
`_______________
`
`
`
`REQUEST FOR REHEARING
`
`
`
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_______________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_______________
`
`
`RIOT GAMES, INC.,
`Petitioner,
`
`v.
`
`PALTALK HOLDINGS, INC.,
`Patent Owner.
`
`_______________
`
`
`Case IPR2018-00132
`Patent 6,226,686
`_______________
`
`
`
`REQUEST FOR REHEARING
`
`
`
`
`
`
`
`
`
`
`
`
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`TABLE OF CONTENTS
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`INTRODUCTION ............................................................................................ 1
`I.
`II. LEGAL STANDARD ...................................................................................... 1
`III. STATEMENT OF FACTS .............................................................................. 1
`IV. ARGUMENT .................................................................................................... 2
`V. CONCLUSION................................................................................................. 8
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`
`
`i
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`
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`IPR2018-00132 (Patent 6,226,686)
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`I.
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`INTRODUCTION
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`Patent Owner, Paltalk Holdings, Inc. (“Patent Owner”) respectfully requests
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`rehearing and modification of the Board’s May 15, 2018, Decision (Paper 11),
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`granting institution of inter partes review on the challenged claims.
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`II. LEGAL STANDARD
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`A rehearing request “must specifically identify all matters the party believes
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`the Board misapprehended or overlooked.” 37 C.F.R. § 42.71(d). The Board
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`reviews a decision for an abuse of discretion. 37 C.F.R. § 42.71(c).
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`III. STATEMENT OF FACTS
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`Petitioner, Riot Games, Inc. (“Petitioner”) requested inter partes review of
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`various claims of United States Patent No. 6,226,686 (“the ‘686 Patent”) in a
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`Petition filed November 2, 2017 (Paper No. 1). Petitioner provided RFC 1692 (Ex.
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`1010), titled “Transport Multiplexing Protocol (TMux),” as a 35 U.S.C. § 103
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`reference. In the Petition, Petitioner relies on the Declaration of David H. Crocker
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`(Ex. 1026) (“the Crocker Declaration”) as evidence that RFC 1692, and other RFC
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`documents, namely, RFC 791, RFC 1001, and RFC 1459, are prior publications
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`under 35 U.S.C. §§ 102(a)-(b). Pet. at 15-17. The Crocker Declaration explains
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`Mr. Crocker’s role with the Internet Engineering Task Force, his status as an
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`author of RFC 1692, and the general standard practices for RFC submissions and
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`publications. See Ex. 1026.
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`1
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`IPR2018-00132 (Patent 6,226,686)
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`In Patent Owner’s Preliminary Response, Patent Owner asserted that the
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`Petition did not provide sufficient evidence that, on or before the critical date, RFC
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`1692 was actually available to the public online, that the RFC was actually
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`accessed or downloaded by any member of the public, or whether and how any
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`alleged source such as the anonymous FTP hosts or the RFC Editor’s Website was
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`indexed or cataloged. Prelim. Response at 15-21. The Board disagreed,
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`concluding that Petitioner established, for purposes of institution, that RFC 791,
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`RFC 1692, and RFC 1459, “were available to persons of ordinary skill in computer
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`networking and security sufficiently to be deemed ‘publicly accessible’ at the
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`relevant time.” Institution Decision at 32 (citing SRI Int’l, Inc. v. Internet Security
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`Sys., Inc., 511 F.3d 1186, 1194 (Fed. Cir. 2008)).
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`IV. ARGUMENT
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`Patent Owner respectfully submits that the Board abused its discretion in
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`accepting Petitioner’s evidence that RFC 1692 is a prior art publication to the ‘686
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`Patent. “Public accessibility” has been called the touchstone in determining
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`whether a reference constitutes a “printed publication.” See Int’l Bus. Mach. Corp.
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`v. EnvisionIt, LLC, IPR2017-01246, Paper 7, page 14 (October 16, 2017)(citing
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`Kyocera Wireless Corp. v. Int’l Trade Comm’n, 545 F.3d 1340, 1350 (Fed. Cir.
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`2008) (quoting In Re Hall, 781 F.2d 897, 899 (Fed. Cir. 1986)). In EnvisionIt, the
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`Board notes that evidentiary matters concerning Internet publications used as
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`2
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`IPR2018-00132 (Patent 6,226,686)
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`references are similar in nature to that of references stored in libraries, where
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`“competent evidence of the general library practice” coupled with evidence that the
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`reference “was sufficiently indexed or cataloged” is generally sought. IPR2017-
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`01246, Paper 7, at 14 (citing In Re Hall, 781 F.2d at 899); (also citing Blue
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`Calypso, LLC v. Groupon, Inc., 815 F.3d 1331, 1348 (Fed. Cir. 2016)). The Board
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`in EnvisionIt, indicates that, “just as indexing plays a significant role in evaluating
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`whether a reference in a library is publicly accessible,” indexing, such as via search
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`engines, is an important consideration when determining whether a reference on a
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`given webpage is “publicly accessible.” IPR2017-01246, Paper 7, at 14-15
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`(quoting Blue Calypso, 815 F.3d at 1349).
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`The Crocker Declaration states that RFC 791, RFC 1001, RFC 1459, and
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`RFC 1692 are currently available at www.rfc-editor.org (“the RFC Editor’s
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`Website”), and states that Mr. Crocker recently downloaded these RFCs from the
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`RFC Editor’s Website. Ex. 1026 at ¶¶ 32, 36, 41, 45. The Crocker Declaration
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`states that the current RFC Editor’s Website has a search function, but provides no
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`evidence that the RFC Editor’s Website included a search function on or before the
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`critical date. Id. at ¶¶ 26-27. The Board believes this is not an issue, since the
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`Crocker Declaration states that the RFCs were available via FTP sites and because
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`Mr. Crocker states that “[a]nyone involved with the Internet technical community
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`during the 1993-1995 time period would have known where and how to obtain a
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`3
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`IPR2018-00132 (Patent 6,226,686)
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`copy of RFC 1692.” Institution Decision at 31 (citing Ex. 1026 at ¶ 35).
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`With respect to RFC 1692 specifically, since the alleged publication date of
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`RFC 1692 is August 1994, the standards used at that time according to the Crocker
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`Declaration would be contained in RFC 1602 (Ex. 1021). Prelim. Resp. at 17.
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`RFC 1602 mentions that “RFCs are available for anonymous FTP from a number
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`of Internet hosts,” but RFC 1602 does not list these hosts. Ex. 1021 at 8. The
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`Board relies on the statement in the Crocker Declaration that those involved with
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`the Internet technical community would have known where and how to obtain a
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`copy of RFC 1692 via anonymous FTP hosts. Institution Decision at 31.
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`However, the Crocker Declaration does not provide evidence for this naked
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`statement, and the Crocker Declaration does not provide any evidence as to what
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`these hosts were or where they could be found in 1994. Ex. 1026 at ¶ 30.
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`The Crocker Declaration and the cited exhibits also do not provide any
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`indication that RFC 1692, specifically, was made available on these hosts, or that
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`that anyone actually accessed or downloaded RFC 1692. Ex. 1026, ¶ 30. Similar
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`problems are present in the Crocker Declaration and the relied upon exhibits with
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`respect to RFC 791, RFC 1001, and RFC 1459. The Crocker Declaration also
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`states that a summary of RFCs appeared in each issue of the Internet Society’s
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`newsletter, but does not evidence this statement, such as by providing a copy of
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`such a newsletter. Id. at ¶ 24.
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`4
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`IPR2018-00132 (Patent 6,226,686)
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`The Board states that “Mr. Crocker need not have been ‘personally
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`responsible for publishing’ RFCs in order to provide credible testimony.”
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`Institution Decision at 30. However, while Mr. Crocker may not need to have
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`personally been tasked with publishing the RFCs, Mr. Crocker provides no
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`testimony that he has actual knowledge that the dates listed on the RFCs are the
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`actual dates of publication. With respect to RFC 1692, Mr. Crocker merely states
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`that RFC 1692 was accepted for publication. Ex. 1026 at ¶ 28. Mr. Crocker does
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`not state that he ever personally retrieved RFC 1692 once published. Mr. Crocker
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`only states
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`that he recently retrieved RFC 1692 from https://www.rfc-
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`editor.org/rfc/rfc1692.txt, and compared the document with Exhibit 1010. Id. at ¶
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`32. Thus, Petitioner provides no evidence that Mr. Crocker is in a position to have
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`actual knowledge that, on or before the critical date, the publication was 1) actually
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`stored on any publically available FTP site, 2) that the FTP web site was active, 3)
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`that anyone was notified of any FTP link or 4) that anyone actually downloaded
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`the publication. See Ex. 1026, ¶ 28.
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`The Board also ignores Patent Owner’s comments concerning the RFC
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`Editor’s Website presented in the Preliminary Response. Prelim. Resp. at 19-20.
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`The publication standards provided in the Crocker Declaration, such as RFC 1602,
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`do not mention the RFC Editor’s Website as a source for retrieving RFCs on or
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`before the critical date. Ex. 1026 at ¶ 32. The Crocker Declaration only states that
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`5
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`IPR2018-00132 (Patent 6,226,686)
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`the “RFC Editor’s website today is the authoritative source page for RFCs on the
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`Internet.” Id. at ¶ 26 (emphasis added). Crocker’s testimony that RFCs are
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`currently available on the RFC Editor’s Website is not sufficient for Petitioner to
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`establish that RFC 1692, or RFC 791, RFC 1001, and RFC 1459, were available on
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`the RFC Editor’s Website on or before the critical date. Id. at ¶ 32.
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`The Board also cites to other cases in which it was decided that certain RFCs
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`were prior publications to the patent(s) at issue in those cases. Institution Decision
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`at 31-32 (citing, e.g., VirnetX Inc. v. Apple Inc., 2018 WL 1371144 (Fed. Cir. Mar.
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`16, 2018) (IPR 2015-00870 & IPR2015-00871) (Rule 36)). However, as
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`mentioned by the Board in the institution decision, the “determination of whether a
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`document is a ‘printed publication’ under 35 U.S.C. § 102(b) involves a case-by-
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`case inquiry into the facts and circumstances surrounding its disclosure to members
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`of the public.” Institution Decision at 29 (citing In re Klopfenstein, 380 F.3d 1345,
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`1350 (Fed. Cir. 2004)) (emphasis added). Thus, the other cases cited by the Board
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`should not weigh against Patent Owner’s position, or ease Petitioner’s burden of
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`proof in demonstrating that the RFCs are prior publications to the ‘686 Patent.
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`The Board also notes that RFC documents “constitute the type of documents
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`with a main purpose being for public disclosure and consideration.” Institution
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`Decision at 32. The Board mentions immediately thereafter that the Crocker
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`Declaration specifically references the RFCs and their publication dates. Id.
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`6
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`IPR2018-00132 (Patent 6,226,686)
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`Patent Owner however contends here that the purpose of the RFCs, and the dates
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`listed at the top of the RFCs, are not sufficient proof that the RFCs were published
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`prior to the ‘686 Patent. A date listed on a document such as on RFC 1692, alone,
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`is not self-proving. Rather, the burden is on the Petitioner to provide evidence that
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`the RFCs, and specifically RFC 1692 as a § 103 reference, were in fact published
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`prior to the critical date. While Petitioner provides evidence of general RFC
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`practice, Petitioner has not provided sufficient evidence that RFC 1692 was
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`published on the date listed in RFC 1692.
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`Thus, since the Crocker Declaration does not provide sufficient evidence
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`that, on or before the critical date, RFC 791, RFC 1001, RFC 1459, and/or RFC
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`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
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`alleged source such as the anonymous FTP hosts or the RFC Editor’s Website was
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`indexed or cataloged, Petitioner has not sufficiently shown that RFC 791, RFC
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`1001, RFC 1459, and/or RFC 1692 were “publicly accessible” on or before the
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`critical date.
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`Therefore, Patent Owner asserts that Petitioner has failed to sufficiently
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`establish with the evidence on record that RFC 791, RFC 1001, RFC 1459, and
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`RFC 1692 can be used as prior art references under 35 U.S.C. § 102 and requests
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`that the Board modify the Institution Decision dated May 15, 2018, accordingly.
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`7
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`IPR2018-00132 (Patent 6,226,686)
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`V. CONCLUSION
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`Patent Owner respectfully requests that the Board grant this rehearing
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`request and modify its Decision to institute the inter partes review of the ‘686
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`Patent for the reasons described herein. Specifically, Patent Owner respectfully
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`requests that the Decision be modified to deny institution because Petitioner has
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`not sufficiently established that all the 35 U.S.C. § 103 references cited in the
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`grounds for institution are prior art publications to the ‘686 Patent.
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`
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`Dated: May 29, 2018
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`Respectfully submitted,
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`By:
`
`
`
`
`
`/Gregory M. Howison, Reg. #30646/
`Gregory M. Howison
`Registration No. 30,646
`ghowison@munckwilson.com
`
`MUNCK, WILSON, MANDALA, LLP
`12770 Coit Road, Suite 600
`Dallas, Texas 75251
`Telephone: (972) 628-3600
`Facsimile: (972) 628-3616
`
`
`LEAD COUNSEL FOR PATENT OWNER
`PALTALK HOLDINGS, INC.
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`
`
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`8
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`IPR2018-00132 (Patent 6,226,686)
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`
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that, pursuant to 37 C.F.R. § 42.6(e), a
`copy of the foregoing Request for Rehearing was served via electronic mail on
`May 29, 2018, in its entirety on the following:
`
`Joseph A. Micallef (Lead Counsel)
`Reg. No. 39,772
`SIDLEY AUSTIN LLP
`1501 K Street, N.W.
`Washington, D.C. 20005
`P: 202-736-8492
`Riot_paltalk@sidley.com
`
`
`Samuel A. Dillon (Backup Counsel)
`Reg. No. 65,197
`SIDLEY AUSTIN LLP
`1501 K Street, N.W.
`Washington, D.C. 20005
`P: 202-736-8298
`Riot_paltalk@sidley.com
`
`
`By:
`
`/Gregory M. Howison, Reg. #30646/
`Gregory M. Howison
`Registration No. 30,646
`Lead Counsel for Patent Owner
`
`
`
`
`
`
`
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