Trials@uspto.gov
`571-272-7822
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` Paper 8
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` Entered: 9 May 2016
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`HOSPITALITY CORE SERVICES, LLC,
`Petitioners,
`
`v.
`
`NOMADIX, INC.,
`Patent Owner.
`_______________
`
`Case IPR2016-00077
`Patent 8,266,266 B2
`____________
`
`
`Before HOWARD B. BLANKENSHIP, GLENN J. PERRY, and TREVOR
`M. JEFFERSON, Administrative Patent Judges.
`
`
`JEFFERSON, Administrative Patent Judge.
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`EXHIBIT 1002
`Guest-Tek v. Nomadix, IPR2018-00376
`
`
`571-272-7822
`
`
`
`
`
`
`
`
`
`
`
` Paper 8
`
`
`
` Entered: 9 May 2016
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`HOSPITALITY CORE SERVICES, LLC,
`Petitioners,
`
`v.
`
`NOMADIX, INC.,
`Patent Owner.
`_______________
`
`Case IPR2016-00077
`Patent 8,266,266 B2
`____________
`
`
`Before HOWARD B. BLANKENSHIP, GLENN J. PERRY, and TREVOR
`M. JEFFERSON, Administrative Patent Judges.
`
`
`JEFFERSON, Administrative Patent Judge.
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`EXHIBIT 1002
`Guest-Tek v. Nomadix, IPR2018-00376
`
`
`
`IPR2016-00077
`Patent 8,266,266 B2
`
`
`I.
`
`INTRODUCTION
`
`Hospitality Core Services, LLC (“Petitioner”) filed a Petition (Paper
`
`2, “Pet.”) to institute an inter partes review of claims 1–28 of U.S. Patent
`
`No. 8,266,266 B2 (Ex. 1001, “the ’266 patent”) pursuant to 35 U.S.C.
`
`§§ 311–319. Nomadix Inc. (“Patent Owner”) filed a Preliminary Response
`
`to the Petition. (Paper 6, “Prelim. Resp.”). We have jurisdiction under 35
`
`U.S.C. § 314(a). Section 314(a) provides that an inter partes review may
`
`not be instituted “unless . . . there is a reasonable likelihood that the
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`petitioner would prevail with respect to at least 1 of the claims challenged in
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`the petition.” After considering the Petition, the Preliminary Response, and
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`associated evidence, we conclude that Petitioner has demonstrated a
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`reasonable likelihood that it would prevail in showing unpatentability of
`
`claims 1–28.
`
`A. Related Proceedings
`
`Petitioner states that Nomadix, Inc. v. Hospitality Core Services LLC,
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`d/b/a Blueprint RF, No. 2:14-CV-08256-DDP (VBKx) (C.D. Cal.) is related
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`to the ’266 patent. Pet. 9–10.
`
`B. The ʼ266 Patent
`
`The ’266 patent generally describes systems and methods “selectably
`
`controlling and customizing source access to a network, where the source is
`
`associated with a source computer, [which] has transparent access to the
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`network via a gateway device” without the need for configuration software
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`to be installed on the source computer to access the network. Ex. 1001, at
`
`[57]. In one embodiment, a gateway manages a user’s access to a network.
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`
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`2
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`IPR2016-00077
`Patent 8,266,266 B2
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`For example, a hotel guest’s web page request may be redirected to a portal
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`page, as shown in the figure below reproduced from page 5 of Patent
`
`Owner’s Preliminary Response.
`
`
`
`The above figure, reproduced from page 5 of the Preliminary
`
`Response, shows a login portal for purchasing Internet Access.
`
`Figure 1 of the ’266 patent provided below is a block diagram of an
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`embodiment described in the Specification.
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`
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`3
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`Figure 1 shows computer system 10, which includes Access Controller 16,
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`Gateway Device 12, DHCP Server 24, and AAA Server (authenticating,
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`authorizing and accounting server) 30, for accessing networks and/or online
`
`
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`services.
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`
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`C. Illustrative Claim
`
`Independent claim 1 is illustrative and reproduced below (Ex. 1001,
`
`38:4–36):
`
`1. A method of redirecting a session directed to an
`HTTP server to a redirected destination HTTP server, the
`method comprising the steps of:
`receiving, at a communications port of a network
`system, a request from a user device to open a TCP
`connection with a server located external to the network
`system;
`
`
`
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`4
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`IPR2016-00077
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`sending, from the network system, TCP connection
`handshake completion data to the user device in response
`to the request to open the TCP connection, the handshake
`completion data being configured to appear to be from the
`server located external to the network system, wherein the
`network system need not communicate with the server
`located external to the network system;
`receiving, at the communications port of the
`network system, an HTTP server request for access to the
`server located external to the network system, the HTTP
`server request originating from the user device; and
`generating response data customized for the HTTP
`server request, the response data including alternate
`content different from content requested by the HTTP
`server request, wherein the response data is customized for
`the HTTP server request at least in part by appearing to be
`from the server located external to the network system,
`wherein the response data appears to be from the server
`located external to the network system at least in part by
`including, in a header of the response data, a source
`address corresponding to the server located external to the
`network system; and
`sending, from the network system, a response to the
`HTTP server request, the response configured to cause the
`user device to receive the alternate content, the response
`comprising the generated response data customized for the
`HTTP server request.
`
`D. Asserted Grounds of Unpatentability
`
`The information presented in the Petition sets forth proposed grounds
`
`of unpatentability for the ’266 patent as follows (Pet. 11):
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`
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`5
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`IPR2016-00077
`Patent 8,266,266 B2
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`Reference[s]
`
`Basis
`
`Claims Challenged
`
`Slemmer1
`
`Slemmer and Vu2
`Slemmer, IPORT,3 and
`Applegate4
`
`35 U.S.C. § 102(e)
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`35 U.S.C. § 103(a)
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`35 U.S.C. § 103(a)
`
`1–28
`
`1–28
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`1–28
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`II. ANALYSIS
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`A. Claim Interpretation
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`In an inter partes review, claim terms in an unexpired patent are given
`
`their broadest reasonable construction in light of the specification of the
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`patent in which they appear. 37 C.F.R. § 42.100(b); In re Cuozzo Speed
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`Techs., LLC, 793 F.3d 1268, 1278–79 (Fed. Cir. 2015), cert. granted sub
`
`nom. Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 890 (mem.) (2016). There
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`is a presumption that a claim term carries its ordinary and customary
`
`meaning. CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed.
`
`Cir. 2002). The “ordinary and customary meaning” is that which the term
`
`would have to a person of ordinary skill in the art in question. In re
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`Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Any special
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`definition for a claim term must be set forth with reasonable clarity,
`
`
`1 US Patent 6,226,677 B2, issued May 1, 2001 (Ex. 1005, “Slemmer”).
`2 US Patent 5,623,601, issued April 22, 1997 (Ex. 1006, “Vu”).
`3 IPORTTM INTERNET ACCESS SYSTEM, CONNECTION METHODS AND
`CONCEPTS FOR IPORTTM V2.X WHITE PAPER (Nov. 1998) (“IPORT V2x”).
`(Ex. 1007) and IPORTTM INTERNET ACCESS SYSTEM, IPORT CENTRAL
`OFFICE SOLUTION WHITE PAPER (Nov. 1998) (“IPORT CO”) (Ex. 1008),
`collectively referenced as “IPORT.”
`4 US Patent 6,321,336 B1, issued November 20, 2001 (Ex. 1009,
`“Applegate”).
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`6
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`deliberateness, and precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir.
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`1994). Only those terms which are in controversy need to be construed, and
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`only to the extent necessary to resolve the controversy. Vivid Techs., Inc. v.
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`Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).
`
`1. “redirection data generation module” (claim 11)
`
`Petitioner asks that we construe “redirection data generation module,”
`
`appearing in independent claim 1, “to cover a software proxy running on a
`
`gateway.” Pet. 37; see Pet. 33 (discussing construction). Claims 1 and 24
`
`do not explicitly recite “redirection data generation module” and use
`
`different language to describe “generating response data” that correspond to
`
`the “redirection . . . module” term. Pet. 33. Petitioner argues that the
`
`independent claims merely describe “transparent redirection” to “alternate
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`content,” and the dependent claims merely add “minor implementation
`
`details.” Pet. 37. Patent Owner suggests that we need not construe this term
`
`because Petitioner fails to address many of the terms actually used in the
`
`challenged claims. Prelim. Resp. 10–11.
`
`We find no explicit definition of “redirection data generation module”
`
`in the Specification. The Specification describes several ways that
`
`redirection can be carried out. One way described is “Proxy ARP Packet
`
`Interception and Host Reconfiguration.” Ex. 1001, 28:48−52.
`
`The claim drafter seizes upon the phrase “redirection data generation
`
`module” as a handle to describe a certain bundle of functions to be
`
`performed as set forth in the claims.
`
`We preliminarily construe “redirection data generation module” to be
`
`hardware and/or software for carrying out functions attributable to the
`
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`7
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`Patent 8,266,266 B2
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`“redirection data generation module” as set forth in the claims. We do not
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`regard “redirection data generation module” as excluding a “software proxy
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`running on a gateway” if it is established that a “software proxy running on a
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`gateway” carries out the functions required by the claims. Nor do we equate
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`“redirection data generation module” with “software proxy running on a
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`gateway” in the absence of a clear statement of functions attributable to a
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`“software proxy.” Thus, if the Petitioner demonstrates that a prior art
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`“software proxy running on a gateway” carries out the functions required by
`
`a particular claim, such prior art would describe the recited “redirection data
`
`generation module.”
`
`B. Anticipation based on Slemmer (Ex. 1005)
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`1. Slemmer (Ex. 1005)
`
`Slemmer describes “controlled communications over a global
`
`computer network.” Ex. 1005, Title. Slemmer Figure 1 is reproduced
`
`below.
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`8
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`Figure 1 depicts system 100, which includes user machines 120 that are a
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`part of intranet 110 isolated from Internet 140 by a firewall that may be
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`implemented on a forced proxy server 130 that handles signal traffic to/from
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`user machines 120. The output side of server 130 includes ports that
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`communicate with the Internet 140. Ex. 1005, 3:65−4:2. The Specification
`
`describes controlling communication of a TCP (Transmission Control
`
`Protocol) packet from a user machine 120. During a browser request, a TCP
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`packet from user machine 120 arrives at forced proxy server 130. The TCP
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`packet includes a field holding a first destination IP address. If the packet is
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`intended to be transmitted over the Internet, its port designation is “80.” Id.
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`at 4:19−31. Forced proxy server 130 analyzes the TCP packet. Port 80
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`packets that 1) have a first destination IP address, and 2) do not correspond
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`to a “sandboxed” domain, are changed so as to be delivered to a different
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`port, and the destination address is changed to a predetermined second
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`destination IP address to reroute the TCP packet to another IP address on the
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`Internet. The rerouted IP address provides content to the user machine in
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`which at least a majority of the content is different from that expected to be
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`obtained by the user machine. Id. at 4:31−50.
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`A software control program running on the server 130 is in
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`communication with that software port to which the packet is redirected. Id.
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`at 4:4:40-42. This software port responds to the user machine request as if it
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`were the web server on the Internet 140 to which the request was originally
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`directed. Id. at 4:42-44. The proxy server program or control program
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`assumes control of the web request by fulfilling the actual request from the
`
`user machine 120 or implementing other predetermined steps. Id. at
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`
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`9
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`IPR2016-00077
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`4:40−51. Such other predetermined steps relate to providing information to
`
`the user machine 120 from one or more particular web pages of a web site
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`different from the user machine 120’s requested site. The identification of
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`the web pages to be directed to the particular user machine can be based on a
`
`number of factors including: the input to the user machine 120 by the user or
`
`operator of that machine and provided to the browser on the user machine
`
`120; the Internet or MAC address associated with the particular user
`
`machine 120; and other factors such as whether or not the Internet 140 is
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`accessible to the capability of deactivating or essentially bypassing such
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`controls in the sense of allowing a particular user machine 120 to freely
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`access the Internet 140 as if the proxy server 130 were not interposed
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`between the particular user machine 120 and the Internet 140. Id. at
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`4:51−63.
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`2. Analysis
`
`According to Petitioner, Slemmer describes a hotel gateway that
`
`differs from the ʼ266 patent claims only in that the proxy handshake is
`
`described implicitly rather than explicitly. Pet. 37. An anticipation
`
`argument can be based on an “implicit” teaching. See Standard Havens
`
`Prods., Inc. v. Gecor Indus., Inc., 953 F.2d 1360, 1369 (Fed. Cir. 1991)
`
`(“Anticipation can occur when a claimed limitation is ‘inherent’ or
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`otherwise implicit in the relevant reference.”); In re Baxter Travenol Labs.,
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`952 F.2d 388, 390 (Fed. Cir. 1991) (the dispositive question for anticipation
`
`is “whether one skilled in the art would reasonably understand or infer” the
`
`unstated element).
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`
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`10
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`Patent Owner frames Petitioner’s “implicit disclosure” argument as
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`one of “inherency” and argues that Petitioner fails to make the case that the
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`handshake limitations are inherent in Slemmer for three reasons. Prelim.
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`Resp. 16−18.
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`First, Patent Owner argues that Petitioner’s position conflicts with
`
`express disclosure in Slemmer. Prelim. Resp. 18. Slemmer explains that the
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`program returns the HTTP redirect message because this request “is the first
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`time it has seen this user machine.” Prelim. Resp. 18 (citing Ex. 1005, 6:63–
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`65). Patent Owner reasons that if completing a handshake with the user
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`machine while appearing to be an external device were a prerequisite to the
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`Slemmer program receiving the URL request and responding with the HTTP
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`redirect message (as Petitioner contends), then the URL request for
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`home.browserid.com would not have been the first time the Slemmer
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`program had seen the user machine, contrary to what Slemmer expressly
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`states. Prelim. Resp. 18. Second, Patent Owner argues that Petitioner fails
`
`to justify its inherency contention technologically. Prelim. Resp. 19.
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`Finally, Patent Owner argues that Petitioner admits that its inherency
`
`argument is incorrect. Prelim. Resp. 19–20. This argument relies on
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`Petitioner’s argument that the ’266 patent is not entitled to priority to
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`provisional application 60/111,497. Id. (citing Pet. 35−36).
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`Although Petitioner presents argument that “numerous references
`
`explain that the proxy handshake was an inherent and a very well-known
`
`part of any transparent proxy” (Pet. 37), we have reviewed Slemmer and
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`determine that there is insufficient disclosure in the reference to satisfy the
`
`necessarily-present inherency standard articulated in, for example,
`
`
`
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`11
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`IPR2016-00077
`Patent 8,266,266 B2
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`Transclean Corp. v. Bridgewood Services, Inc., 290 F.3d 1364, 1373 (Fed.
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`Cir. 2002) (“[A]nticipation by inherent disclosure is appropriate only when
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`the reference discloses prior art that must necessarily include the unstated
`
`limitation.”). It is Petitioner’s burden to persuade us that Slemmer describes
`
`all of the features that are claimed. Based on the present record, we are not
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`persuaded that the required “handshake” is implicitly described in Slemmer.
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`Therefore, Petitioner has not established a reasonable likelihood of success
`
`in showing that the independent claims 1, 11, and 24, and their respective
`
`dependent claims, are anticipated by Slemmer.
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`C. Obviousness based on Slemmer (Ex. 1005) and Vu (Ex. 1006)
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`1. Vu (Ex. 1006)
`
`Vu describes providing a secure gateway for communication and data
`
`exchanges between networks. Ex. 1006, Title. The Petition explains that
`
`Vu (Ex. 1006) describes a “transparent proxy” with an explicit description of
`
`a proxy handshake as part of a gateway authentication procedure. Pet. 21
`
`(citing Ex. 1011 ¶ 10). Vu describes that:
`
`When the gateway station 14 receives the client packet
`containing the Telnet command, a process is initiated on the
`gateway station 14 which responds to the client 16 to establish a
`communication session 17 as if it were the target machine. As
`will be explained below in detail, the process then authenticates
`the client's authorization to access the requested service.
`
`Ex. 1006, 8:50−56.
`
`If it is determined that a proxy process 15 is bound to a port
`which can serve the destination port number 38 in either of steps
`70 or 72, a session (TCP or UDP) is initiated with the packet
`source IP address 32 in step 76 and in step 78, the packet is
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`12
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`delivered by the kernel to the proxy process designated in steps
`70, 72.
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`Ex. 1006, 10:14−19.
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`2. Analysis
`
`Patent Owner correctly notes that Petitioner relies on Vu (Pet. 45)
`
`only for the connection-handshake limitations. Prelim. Resp. 26–27.
`
`Petitioner relies on Slemmer for the remaining limitations of the challenged
`
`claims. Pet. 37–45. Petitioner provides claim charts (Pet. 50–58), a
`
`motivation to combine the references (Pet. 58–60), and citations to the
`
`Declaration by Mr. Keith Olsen (Ex. 1011) (Pet. 20–29), in support of its
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`contentions that Slemmer and Vu teach the limitations of the challenged
`
`claims.
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`Patent Owner argues that Vu’s disclosure is limited to systems using a
`
`“Telnet protocol.” Prelim. Resp. 27. We are not persuaded on the record as
`
`developed thus far that this difference (Slemmer uses HTTP) would
`
`discourage one of ordinary skill from utilizing a handshake, such as
`
`described in Vu, in a system such as described by Slemmer. We conclude
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`for purposes of this decision that one of ordinary skill, based on Vu, would
`
`have utilized a handshake in Slemmer’s gateway. We encourage, during
`
`trial, further development of the record with respect to whether the claims
`
`are obvious in view of Slemmer in combination with Vu.
`
`With respect to Slemmer, Patent Owner argues that Slemmer does not
`
`disclose the “response data limitations” of challenged claims 1, 11, and 24.
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`Prelim. Resp. 21–23. Based on the present record, we disagree, finding that
`
`Petitioner has provided sufficient claim charts (Pet. 50–58) and evidence
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`13
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`(Pet. 20–28) to support the response data limitations as part of the software
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`responding to requests as if they were the web server (see Pet. 53 (citing Ex.
`
`1005 4:37–47)).
`
`Patent Owner separately argues that Slemmer fails to disclose the
`
`limitations of dependent claims 10, 12, 18. Prelim. Resp. 24−26.
`
`Claim 10 recites a determination on “whether to send a second
`
`response configured to cause the user device to receive second alternate
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`content, the determination being based at least in part upon a MAC address
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`associated with the user device.” Ex. 1001, 39:10–14. Dependent claims 21
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`and 26 recite similar MAC address limitations.
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`For these limitations, Petitioner relies upon the following portion of
`
`the Slemmer Specification, which states:
`
`The identification of the web pages to be directed to the
`particular user machine can be based on a number of factors
`including: the input to the user machine 120 by the user or
`operator of that machine and provided to the browser on the user
`machine 120; the Internet or MAC address associated with the
`particular user machine 120; and other factors such as whether or
`not the Internet 140 is accessible to the particular user machine
`120.
`
`Ex. 1005, 4:51–58.5
`
`Patent Owner argues that although Slemmer mentions a MAC address
`
`in this passage, it does not describe using the MAC address to determine
`
`whether a computer should be redirected in response to a second request.
`
`According to Patent Owner, Slemmer describes how, if the control program
`
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`5 Pet. 42 (incorrectly citing Ex. 1005, col 5, ll. 8–13).
`
`14
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`decides not to fulfill the user’s request, it can use the MAC address to decide
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`which page to provide to the user:
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`This proxy server program or control program assumes control
`of the web request by [1] fulfilling the actual request from the
`user machine 120 or [2] implementing other predetermined steps.
`Such other predetermined steps relate to providing information
`to the user machine 120 from one or more particular web pages
`of a web site different from the user machine’s 120 requested
`site. The identification of the web pages to be directed to the
`particular user machine can be based on a number of factors
`including: the input to the user machine 120 by the user or
`operator of that machine and provided to the browser on the user
`machine 120; the Internet or MAC address associated with the
`particular user machine . . . .
`
`Ex. 1005, 4:44–57 (bracketed numbering and emphasis added). Patent
`
`Owner argues that using a MAC address to decide which page to provide to
`
`a user after having already decided not to fulfill the user’s request is not the
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`same as using a MAC address to determine in the first place whether to
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`redirect a user’s computer. Prelim. Resp. 24−25. Moreover, according to
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`Patent Owner, this passage from Slemmer does not address a determination
`
`made in connection with a second request or incoming data as recited in
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`claims 10, 21, and 26. Id.
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`Patent Owner is correct in that Slemmer does not address specifically
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`a second incoming request (as recited in, e.g., claim 10). However the
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`disclosure relied upon by Petitioner does not preclude using a MAC address
`
`as part of a determination to redirect second, third, or additional incoming
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`requests.
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`Based on the present record, we determine that the Petitioner has
`
`established a reasonable likelihood of prevailing on the asserted ground that
`15
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`claims 1−28 of the ’266 patent are unpatentable as obvious under 35 U.S.C.
`
`§ 103(a) over Slemmer and Vu.
`
`D. Slemmer, IPORT (Exs. 1007 and 1008), and Applegate (Ex. 1009)
`
`1. Printed Publication of IPORT
`
`As a threshold issue, Patent Owner’s Preliminary Response contests
`
`that the IPORT references are prior art “printed publications” in accordance
`
`with 35 U.S.C. §§ 102 and 311(b). Prelim. Resp. 28−29. We look to the
`
`underlying facts to make a legal determination as to whether a document is a
`
`printed publication. Suffolk Techs., LLC v. AOL Inc., 752 F.3d 1358, 1364
`
`(Fed. Cir. 2014). The determination of whether a document is a “printed
`
`publication” under 35 U.S.C. § 102(b) involves a case-by-case inquiry into
`
`the facts and circumstances surrounding its disclosure to members of the
`
`public. In re Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004). Public
`
`accessibility is a key question in determining whether a document is a
`
`printed publication and is determined on a case-by-case basis. Suffolk
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`Techs., 752 F.3d at 1364. To qualify as a printed publication, a document
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`“must have been sufficiently accessible to the public interested in the art.”
`
`In re Lister, 583 F.3d 1307, 1311 (Fed. Cir. 2009)(citations omitted).
`
`Petitioner relies on the Declaration by Mr. Keith Olsen (Ex. 1011) to
`
`“authenticate[] the publication and content” of the IPORT documents and a
`
`number of supporting documents (Ex. 1032–1037). Pet. 29–32. Mr. Olsen
`
`testifies that he served as the lead software programmer for ATCOM, Inc.
`
`from 1996 through the sale of the company in 2000. Ex. 1011 ¶ 1. ATCOM
`
`developed and released the IPORT system. Id. at ¶¶ 3, 4. According to Mr.
`
`Olsen, Exhibit 1007 is a true and accurate copy of a “white paper” entitled
`16
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`Patent 8,266,266 B2
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`“Connection Methods and Concepts for IPORT V2x” dated November 1998.
`
`Id. ¶ 46. Exhibit 1008 is a “true and accurate copy” of a “white paper” titled
`
`“IPORT Central Office Solution” dated November 1998. Id. ¶ 47. Also
`
`according to Mr. Olsen, both IPORT documents were “created for marketing
`
`purposes, published and distributed to potential customers as part of an
`
`aggressive and successful marketing campaign for the IPORT ‘server only’
`
`systems.” Id. ¶ 48. Mr. Olsen testifies further that a World Wide Web
`
`Uniform Resource Locator (hyperlink) on the third page of IPORT indicates
`
`that both IPORT documents were published on the company’s web site. Id.
`
`¶ 49. Mr. Olsen testifies further:
`
`Due to the high level of customer interest and the fast pace of
`product development, the company published the white papers
`on its website as soon as they were available. The specific
`versions of the white papers dated November 1998 were
`therefore published on the IPORT website in November of 1998
`and distributed to a number of major hotel chains we were
`actively working with at the time including Hilton, Hyatt,
`Wingate Inns, and many other existing and prospective
`customers.
`
`Id. ¶ 50.
`
`IPORT contains the month and year “November 1998” on the face of
`
`the document, and at page 3, an apparent copyright notice without a
`
`specified year or date. Ex. 1008, 1, 3. The front page, at the lower right,
`
`contains the notation “CONFIDENTIAL” and underneath that notation
`
`“SEC00732.” Id. at 1. Each page, in fact, contains a similar
`
`“CONFIDENTIAL” notation, numbered sequentially to “SEC00753.” Id. at
`
`22. Neither the Petition nor Mr. Olsen indicates why a “true and accurate
`
`
`
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`17
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`copy” (Ex. 1011 ¶ 47) would have been published on the company’s web
`
`site despite being “CONFIDENTIAL.”
`
`Regardless of the confidential markings, Mr. Olsen does not indicate
`
`why, in his service as the lead software programmer (Ex. 1011 ¶ 1) with the
`
`“role [of] software development,” which included “working on all aspects of
`
`IPORT system including the development, implementation, and
`
`documentation” relating to the IPORT system (id. ¶ 3), he was privy to
`
`when, or whether, particular documents were placed on the company’s
`
`website. Further, although Mr. Olsen submits that documents including
`
`IPORT were “distributed to a number of major hotel chains,” and “many
`
`other existing and prospective customers” (id. ¶ 50) — with no clear
`
`indication of when — the Declaration does not allege or explain that
`
`distribution to those entities means that the document “must have been
`
`sufficiently accessible to the public interested in the art.” Lister, 583 F.3d at
`
`1311. “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.” SRI
`
`Int’l, Inc. v. Internet Sec. Sys., Inc., 511 F.3d 1186, 1194 (Fed. Cir. 2008)
`
`(quoting Bruckelmyer v. Ground Heaters, Inc., 445 F.3d 1374, 1378 (Fed.
`
`Cir. 2006)). Further, although Mr. Olsen testifies (Ex. 1011 ¶ 49) that
`
`information “describing IPORT” was “published on [ATCOM’s] website”,
`
`the testimony does not indicate how one of ordinary skill in the art,
`
`exercising reasonable diligence, could locate the IPORT documents in
`
`question. See SRI Int’l, 511 F.3d at 1186.
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`18
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`We conclude that, on this record, Petitioner has failed to meet its
`
`burden of at least a preliminary showing that IPORT are printed publications
`
`as contemplated by 35 U.S.C. §§ 102 and 311(b).
`
`2. Analysis
`
`Petitioner explicitly relies on IPORT to describe a system showing
`
`“the gateway (network management system) and the redirection server
`
`(portal page redirection unit) in the IPORT system are located in different
`
`premises” to disclose the “redirection data generation module” of claim 11
`
`“and its comparable components in claims 1 and 24” of the ’266 patent. Pet.
`
`45–46.
`
`In view of our conclusion with respect to the IPORT documents not
`
`being publications citable against the ’266 patent, this challenge reduces to
`
`Slemmer and Applegate. Petitioner has not demonstrated that Slemmer and
`
`Applegate, without IPORT, meet the limitations of the challenged claims.
`
`Therefore, Petitioner has not demonstrated that there is a reasonable
`
`likelihood that it would prevail in showing that claims 1–28 are unpatentable
`
`as obvious under 35 U.S.C § 103(a) over Slemmer, IPORT and Applegate.
`
`III. ORDER
`
`For the reasons given, it is
`
`
`
`ORDERED that the Petition is granted as to claims 1−28 of the
`
`’266 patent on the ground that claims 1−28 are unpatentable as obvious
`
`under 35 U.S.C. § 103 based on Slemmer and Vu.
`
`
`
`FURTHER ORDERED that pursuant to 35 U.S.C. § 314(a),
`
`inter partes review of the ʼ266 patent is hereby instituted commencing on
`
`
`
`
`19
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`the entry date of this Order, and pursuant to 35 U.S.C. § 314(c) and 37
`
`C.F.R. § 42.4, notice is hereby given of the institution of a trial.
`
`
`
`FURTHER ORDERED that the trial is limited to the grounds
`
`listed in this Order. No other grounds are authorized.
`
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`PETITIONER:
`
`Michael Mehrman
`mike@mehrmanlaw.com
`
`Stephanie Scruggs
`sscruggs@sgrlaw.com
`
`
`
`PATENT OWNER:
`
`Doug Muehlhauser
`2dgm@knobbe.com
`
`William Shreve
`William.shreve@knobbe.com
`
`
`
`
`
`21
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`
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