`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GUARDIAN ALLIANCE TECHNOLOGIES, INC.
`Petitioner,
`
`v.
`
`TYLER MILLER
`Patent Owner.
`____________
`
`
`Case IPR2020-00031
`Patent 10,043,188 B2
`_____________________________
`
`
`
`PATENT OWNER’S PRELIMINARY RESPONSE
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`

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`IPR2020-01596
`Patent 10,043,188 B2
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`
`LIST OF EXHIBITS
`
`Description
`No
`Email to Board, October 30, 2019
`2001
`2002 Declaration of David Howell
`2003
`Curriculum Vitae for David Howell
`2004
`BYU Library, Web page Criminal Justice program
`2005
`Excerpt of BYU Course Catalog 1974-1975
`2006 National University, Business Admin Degree Flyer
`2007
`Internet Archive Standard Affidavit
`2008 HTML source for POBITS “Frame Set”
`2009 HTML source for POBITS Navigation Frame Content
`2010 HTML source for POBITS “Introduction” Child Page
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`Patent Owner’s Preliminary Response
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`IPR2020-01596
`Patent 10,043,188 B2
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`INTRODUCTION
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` LITIGATION BACKGROUND
`
` THE ‘188 PATENT
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`A. Effective Filing Date of Claims
`
`B. The Subject Matter of the ’188 Patent
`
` LEVEL OF ORDINARY SKILL IN THE ART
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` THE BOARD SHOULD NOT INSTITUTE TRIAL UNDER 314(A).
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`1
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`2
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`2
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`3
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`4
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`6
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`7
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`A. Petitioner’s PHOSITA Is Incapable of Combining the Cited References 8
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`B. The Petition Fails to State the Precise Grounds for Unpatentability
`
`C. Ex. 1002 Is Not Prior Art
`1. Ex. 1002 (Background Solutions Video) Bears a 2012 Copyright Date
`2. Declarant Ward’s Testimony Is Vague and Uncorroborated
`3. The Klopfenstein Factors Have Not Been Proven by Ward and
`Corroborating Evidence
`
`D. Exhibit 1004 (POBITS) Is Not Prior Art
`1. Ex. 1004 Substantially Consists of Material Captured No Earlier Than
`August 8, 2019
`2. A Copyright Date Does Not Establish Publication
`3. Miller’s Conception and Reduction to Practice Antedate POBITS
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` CONCLUSION
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`10
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`13
`14
`19
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`23
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`28
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`29
`33
`34
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`36
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`IPR2020-01596
`Patent 10,043,188 B2
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`TABLE OF AUTHORITIES
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`Cases
`
`Coleman v. Dines, 754 F.2d 353, 355-60 (Fed. Cir. 1985) ........................ 20, 21, 36
`DyStar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co., 464 F.3d
`1356, 1367 (Fed. Cir. 2006) ................................................................................... 9
`Graham v. John Deere, 383 U.S. 1 (1966) ................................................................ 9
`Honeywell v. Arkema, 939 F.3. 1345, 1349-51 (Fed. Cir. 2019) .................. 3, 36, 37
`In re NTP, 654 F.3d 1279, 1291-92 (2011) .............................................................13
`KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 417 (2007) ......................................... 9
`MIT v. AB Fortia, 774 F.2d 1104 (Fed. Cir. 1985) ..................................................27
`Regents of the University of Cal v. Howmedica, Inc. ...................................... passim
`The Barbed Wire Patent, 143 U.S. 275 (1892). .......................................................20
`United Servs. Auto. Ass’n v. Asghari-Kamrani, CBM2016-00063, Paper No. 10,
`Aug. 16, 2016) ......................................................................................................37
`
`Statutes
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`35 U.S.C. § 103 .......................................................................................................... 1
`35 U.S.C. § 255 ......................................................................................................3, 4
`35 U.S.C. § 312(a) ...................................................................................................13
`35 U.S.C. § 314(a) ..................................................................................................... 1
`
`Other Authorities
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`83 Fed. Reg. 39,989 ................................................................................................... 8
`
`Rules
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`37 C.F.R. § 42.8(a) ..................................................................................................... 1
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`IPR2020-00031
`Patent 10,043,188
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`Pursuant to 37 C.F.R. § 42.8(a), Patent Owner Tyler Miller (“PO” or
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`“Miller”) hereby submits this Preliminary Patent Owner Response (“POPR”):
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`
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`INTRODUCTION
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`The Board should not institute trial under 35 U.S.C. § 314(a) for several
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`reasons.
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`First, Petitioner’s grounds for unpatentability are based solely on 35 U.S.C.
`
`§ 103. In an attempt to qualify one of its references as prior art, it has asserted a
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`level of ordinary skill requiring no substantial experience, education or training in
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`software development/engineering. Such persons would be unable to arrive at the
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`claimed invention. Notably, Petitioner provides no expert testimony in support of
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`its assertions, including the level of skill in the art, the teaching of the alleged
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`references, or the ability to implement the invention. Miller’s expert testimony
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`therefore stands as uncontested evidence.
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`Second, one of the two grounds asserted by Petitioner is not clearly set forth
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`in the petition. It is difficult to determine if Petitioner’s primary reference is a
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`video plainly created after the effective filing date of the claims, whether it is
`
`trying to claim that the video was created (and shown to others) years prior to the
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`dates contained in the video itself, or whether it is trying to rely upon some version
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`of related documents that have not been provided to the Board and Patent Owner.
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`Patent Owner Miller cannot be expected to evaluate and counter uncorroborated
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`IPR2020-00031
`Patent 10,043,188
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`and vague assertions in an IPR proceeding where discovery of third-party
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`information is virtually unavailable.
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`Third, Petitioner’s primary references for each of its grounds are
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`demonstrably not prior art. Each bears plain indicia of publication after the
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`effective filing date of the claims, and in one case after the U.S. Patent No.
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`10,043,188 (“the ’188 Patent”) issued.
`
`These and other reasons are addressed in greater detail below.
`
` LITIGATION BACKGROUND
`
`U.S. Patent No. 10,043,188 is a continuation of U.S. Patent No. 9,070,098,
`
`filed April 6, 2012. The ’188 Patent further claims priority to U.S. Provisional
`
`61/472,566, filed April 6, 2011. Continuation application No. 16/024,622 is
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`pending before the Patent Office.
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`The ’188 Patent is being asserted against the City of Oklahoma. Petitioner,
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`Guardian Alliance Technologies, Inc., provides the accused product/service to the
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`City of Oklahoma. A motion to add GAT as a defendant to the litigation is
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`pending. The City of Oklahoma has moved to stay the litigation pending the
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`outcome of this IPR.
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` THE ‘188 PATENT
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`Tyler Miller is the named inventor of the ’188 Patent. He conceived of the
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`inventions claimed in the patent and engaged in software development at least as
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`early as September 1, 2010, long before the publication dates that are properly
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`attributed to Exhibits 1002 and 1004, the primary references in Petitioner’s
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`grounds.
`
`A. Effective Filing Date of Claims
`
`On its face, the ’188 Patent claims an effective filing date of April 6, 2011.
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`(‘188 Patent at col. 1.) The ’188 Patent also claims priority to U.S. Patent
`
`9,070,098, filed April 6, 2012. (’188 Patent, p. 1.) Petitioner alleges that Miller’s
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`priority claim to 2011 is defective because the Application Data Sheet (ADS) did
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`not include the provisional application data. Nevertheless, a priority claim can be
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`corrected pursuant to 37 C.F.R. § 1.78 and 35 U.S.C. § 255. Honeywell v. Arkema,
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`939 F.3. 1345, 1349-51 (Fed. Cir. 2019) (holding that the Director has the
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`authority to decide petitions to correct priority claims even if sought after
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`institution of trial). Miller requested authorization to seek correction shortly after
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`the Petition was filed (as Honeywell determined was proper), and was informed
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`that this issue would be addressed once a panel was assigned. (Ex. 2001.)
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`Correction of a delayed claim for benefit of priority to an earlier application is not
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`an uncommon, ministerial action. Indeed, the Director has created a form
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`expressly for that purpose, and Miller stands ready to file it. (See Ex. 2011.)
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`Correcting the text of the patent to reflect the updated ADS under 35 U.S.C. § 255
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`is similarly a ministerial act.
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`IPR2020-00031
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`If the Director grants the request to correct the priority claim, then the claims
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`will indisputably have an effective filing date of April 6, 2011, effectively
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`eliminating Petitioner’s primary references as prior art for reasons explained
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`below.
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`Regardless of the Director’s decision, the claims are subject to pre-AIA
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`versions of 35 U.S.C. §§ 102/103 based on the parent application.
`
`B.
`
`The Subject Matter of the ’188 Patent
`
`The ’188 Patent describes a web-based software system for processing pre-
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`employment background investigations, primarily for law enforcement
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`organizations, but potentially applicable to other types of organization.
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`The basic method described and claimed begins with the system receiving a
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`first set of data including information identifying the applicant, the position the
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`applicant is applying for, the organization with the position, and the investigator
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`that is evaluating the applicant. (’188 Patent Col. 14, lines 18-45.) This
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`information is stored as a new applicant entry in the system memory. An applicant
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`hyperlink is then transmitted to the applicant email address. The applicant
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`hyperlink provides the applicant a way to view an applicant set of electronic
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`documents. (Id. Col. 15, line 16 –line 23). The system then receives an electronic
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`response from the applicant with a reference set of data, including information
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`regarding a reference source and a reference source email address. (Id.). The
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`reference source is a person with knowledge about the applicant. The system then
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`determines a reference class of the reference source based on the reference set of
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`data. (Id. Col. 15, line 24 –line 31). Next, the system selects a reference set of
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`electronic documents based on the reference class of the reference source. (Id.).
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`The system then transmits a reference hyperlink to the reference email address.
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`The reference hyperlink provides the reference source a way to view the reference
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`set of electronic documents. (Id.). The system then receives an electronic response
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`from the reference source and stores the response in the system memory,
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`associating the reference electronic response with the new applicant entry. (Id. Col
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`15, line 35 –line 51). The system then generates a suggested reference list of one
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`or more law enforcement agencies based on an applicant residential address. (Id.).
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`Additionally, the system can search for a previous applicant entry in the
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`system memory associated with the same applicant and a second organization
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`different from the first organization. (Id. Col 14, line 45-53). The previous
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`applicant entry having a second set of data about the applicant, including
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`information regarding the applicant, the second organization, the position the
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`applicant applied for in the second organization, and status of a previous
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`application the applicant applied for in the second organization. (Id.). The system
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`presents the second set of program data to the investigator. (Id.).
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`The system is also capable of presenting to the investigator, prior to
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`transmitting the applicant hyperlink for viewing the applicant set of electronic
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`documents, an option of changing one or more documents in the applicant set of
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`electronic documents. (Id. Col 14, line 62-65). Optionally, one document of the
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`applicant set of electronic documents can be an inter-active questionnaire in which
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`a next question presented to the reference source is based on a response to a prior
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`question. (Id. Col. 5, line 64 – Col. 6 line 6).
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` LEVEL OF ORDINARY SKILL IN THE ART
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`Obviousness is evaluated from the perspective of persons having ordinary
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`skill in the art. The principal technology described by the ’188 Patent is a web-
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`based client-server architecture that securely manages the background
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`investigation process. ’188 Patent, Abstract.
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`In this case, the determination of the level of ordinary skill in the art should
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`result in the denial of institution. Petitioner’s arguments fall on the horns of a
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`dilemma resulting from the extremely low qualifications it asserts for the
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`PHOSITA, which is devoid of any background, education, or training in software
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`development, let alone the technologies associated with client-server systems,
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`incorporating a number of network protocols.
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`Petitioner asserts that its primary reference was presented at (unidentified)
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`national conferences and therefore should be considered a “printed publication.”
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`These conferences may be nothing more than trade shows attended by police
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`officers principally showing/selling weapons, body armor, etc. Petitioner has not
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`provided verifiable evidence on this point. More importantly, a police officer isn’t
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`the typical PHOSITA that produces “web based software applications.” (Ex. 2002
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`at ¶¶ 33-39, 84-87.) If one assumes that a typical police officer had been shown
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`the ’188 Patent, that person would no more able to implement the claimed systems
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`and methods any more than they could combine to teaching of the asserted art. Id.
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`at ¶ 89.
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`If the Board applies Petitioner’s low level of skill, trial should be denied
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`because such persons would be incapable of arriving at the claimed invention using
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`the teaching of the cited art. (See Section V.A below). By contrast, if the Board
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`adopted a level of skill appropriate for the software industry, then Petitioner will
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`have failed to establish that the “Background Solutions” video (Ex. 1002) is prior
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`art. (See Section V.C below).
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` THE BOARD SHOULD NOT INSTITUTE TRIAL UNDER 314(A).
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`The Board has discretion whether or not to institute trial under 35 U.S.C. §
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`314(a). The August 2018 Update to the Office Patent Trial Practice Guide, 83 Fed.
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`Reg. 39,989 (Aug. 13, 2018) (“TPGU”), invited parties to address factors that may
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`bear on the Board’s discretionary decision to institute or not institute under §§
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`314(a) and 325(d). TPGU 11, 13.
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`Where the Petitioner is vague as to one or more grounds, the Board may
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`deny institution as to the entire proceeding.
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`Where the Petitioner relies on documents that are not actually prior art, trial
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`should not be instituted.
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`Where the Petitioner has not advanced competent evidence of its assertions,
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`trial should not be instituted.
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`Where the Petitioner has not provided authentic copies of prior art
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`documents, trial should not be instituted.
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`Finally, where an administrative act would cure a defect upon which
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`Petitioner’s ground for unpatentability is premised, trial should not be instituted
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`because doing so would incur needless expense of time and money for the Board
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`and the parties.
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`All of these factors are present in this case. Nevertheless, any one of them
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`provides sufficient justification to deny institution of trial.
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`A.
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`Petitioner’s PHOSITA Is Incapable of Combining the Cited
`References
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`The basic obviousness inquiry was stated by the Supreme Court in Graham
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`v. John Deere, 383 U.S. 1 (1966). It would later clarify that a claim is non-obvious
`
`if the PHOSITA would be unable to combine the teaching of asserted references.
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`KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 417 (2007). In cases where the level
`
`or ordinary skill is disputed, this factor can be dispositive. See e.g., DyStar
`
`Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356,
`
`1367 (Fed. Cir. 2006) (distinguishing between the ability of a “dyer” and a “dye
`
`process designer” and ability to implement the prior art).
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`Here, Petitioner argues that a PHOSITA is essentially a high school graduate
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`with some knowledge of background investigation methods. See Section IV above.
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`Petitioner provides no expert opinion supporting this contention.
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`Miller advances the testimony of David Howell, a highly qualified software
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`developer with decades of experience in software engineering and design. (Ex.
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`2003.)
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`Using Petitioner’s asserted level of skill in the art, Mr. Howell readily
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`concludes that such persons, which could be characterized as police officers and
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`human resources personnel that interview candidates, are properly classified as
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`users of a software system, not designers. Ex. 2002 at ¶¶ 82-89. Users would not
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`be expected to have any software or engineering design experience, and highly
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`unlikely to be able to take the teachings in the cited prior art (both patent and non-
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`patent references) and combine the teaching to arrive at the claimed invention. Id.
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`Critically, there is no “battle of the experts” on this point because Petitioner
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`has not provided any expert testimony in support of its contentions. Under black
`
`letter law, attorney argument is not evidence, nor cannot attorney argument
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`substitute for evidence to create a dispute of material fact. Mr. Howell’s testimony
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`stands uncontested. Further, having failed to present expert testimony in the first
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`evidence, rebuttal testimony should not be permitted. It would be untimely and
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`effectively sandbagging.
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`Petitioner’s burden of establishing a reasonable likelihood of unpatentability
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`has not been met. Accordingly, the Petition should be denied under 314(a).
`
`B.
`
`The Petition Fails to State the Precise Grounds for
`Unpatentability
`
`The Office Patent Trial Practice Guide cautions that petitioners should
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`“avoid submitting a repository of all the information that a judge could possibly
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`consider, and instead focus on concise, well-organized, easy-to-follow arguments
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`supported by readily identifiable evidence of record.” 77 Fed. Reg. at 48,763.
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`The Board has denied petitions that have strayed from this guidance.
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`Petitioner first ground is substantially incomprehensible. It asserts that a
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`video of material bearing a copyright date of 2012 is prior art (Ex. 1002, red circle
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`in Fig 1 below), paradoxically alleging that the video was shown at unidentified
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`conferences to unidentified attendees as much as three years earlier. (Pet. at 4-5.)
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`IPR2020-00031
`Patent 10,043,188
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`Figure 1
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`
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`In addition to the November 2012 dates for the “Applicant” entries shown in
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`Fig. 1 above, the video contains further indications that it was created no earlier
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`than December 17, 2012 in subsequent screens (apparently as mockups). (Ex.
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`2002, ¶¶ 44-58).
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`Petitioner subsequently cites “screenshots” that are plainly not excerpted
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`from the 2012 video. Compare, e.g., Ex. 1022, page 1 with Ex. 1002 at 00:30.
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`Plainly, these are not captured from Ex. 1002.
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`Petitioner’s intent is unclear. Is it trying to pass off a 2012 reference as
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`being published in 2009? Is Petitioner trying to assert the existence of some
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`software, which has not been provided to Miller or the Board, as prior art? Is
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`Petitioner asserting that some software that once existed should be considered as a
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`“prior printed publication” by proxy?
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`Plainly, Ex. 1002 is not prior art on its face; other issues with Petitioner’s
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`alleged publication are detailed in Sections V.C below.
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`To the extent that Petitioner asserting that undisclosed “software” allegedly
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`associated with Ex. 1002 or the alleged related exhibits (Ex. 1021, 1022, 1024),
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`that effort is foreclosed by law. Petitioner must provide a copy of every printed
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`publication relied upon as part of its petition to the Board and patent owner. 35
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`U.S.C. § 312(a) (3), (5). Petitioner has not provided the thing alleged to be prior
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`art in this proceeding.
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`To the extent that Petitioner presents Ex. 1002 as proof of some earlier
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`document/disclosure, this effort is likewise foreclosed by statute and case law.
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`Petitioner cannot prove the existence, let alone teaching, of a document that
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`apparently no longer exists. See In re NTP, 654 F.3d 1279, 1291-92 (2011)
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`(holding that an inventor cannot provide the existence/content of an earlier
`
`document on the basis of document(s) with a later date). Like NTP, Petitioner
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`cannot assert unpatentability based upon a phantom “publication” on the basis of a
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`2012 video.
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`Accordingly, this favors denial under Section 314(a).
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`C. Ex. 1002 Is Not Prior Art
`
`Petitioner has not proven that Ex. 1002 (“BS Video”) qualifies as a “printed
`
`publication.” Petitioner’s primary reference for Ground 1 is a video allegedly
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`displayed in mid-2009 and available on a website in November 2009:
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`A printed publication, which is a video demonstration entitled
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`“Background Assistant” (Ex. 1002), which discloses Background
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`Solutions, LLC’s background investigation system, i.e. Background
`
`Assistant™, demonstrated and displayed at trade seminars as early as mid-
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`2009 and made publicly accessible on www.backgroundsolutions.com, no
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`later than November 23, 2009 (“Background Solutions”).
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`Pet. at 4-5 (emphasis added)..
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`Background Solutions commissioned the production of a video
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`demonstration, i.e. the Background Solutions printed publication. Id. at ¶ 6.
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`After the Background Solutions printed publication was complete, Mr.
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`Ward presented it at national background investigation seminars. Id. at ¶ 7.
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`Pet. at 19.
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`However, Petitioner provides no verifiable evidence of these claims. Rather,
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`there is no independent corroboration of substantially every relevant detail
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`regarding the alleged publication of the BS Video as detailed below.
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`First, the video itself contains material bearing a copyright date of © 2012,
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`an admission that cannot be controverted. See e.g., Fig. 1, above. Fig 2, below.
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`Second, Petitioner has no acceptable corroborating evidence establishing the
`
`asserted publication.
`
`1.
`
`Ex. 1002 (Background Solutions Video) Bears a 2012
`Copyright Date
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` Within seconds, Ex. 1002 displays a copyright date “(c) 2012 Background
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`Solutions, Inc.” See, e.g., Fig. 1 above.
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`Throughout the video, numerous screen captures contain the same
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`annotation as shown below (Fig. 2 below). This date is hearsay, except to the
`
`extent that it acts as an admission by the Petitioner that the video was published no
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`earlier than December 31, 2012, eight months after the non-provisional application
`
`for related patent U.S. 9,070,098 was filed on April 6, 2012. (’188 Patent, p. 1.)
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`There is no reasonable explanation why any person would use a copyright
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`date of 2012 if the video was being created and displayed in 2009 as alleged by
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`Petitioner. Rather, the singular reasonable conclusion is that the video was not
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`created until sometime in 2012.
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`Figure 2
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`Indeed, this screen and others also suggest that the software supposedly
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`displayed existed no earlier than December 17, 2012, as this appears to be the
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`“Creation Date” for each of the various records illustrated in this and other screens.
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`Mr Howell’s analysis (Exh. 2002, ¶¶ 44-58) is relied upon substantially verbatim
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`below:
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`Approximately five seconds (00:05) into the video, there is a screen
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`containing the legend “Applications in Progress.” The screen lists three names
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`with “Creation Dates” for the names as October 31, 2012, November 2, 2012, and
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`November 3, 2012 respectively. Although there appears to be space for a time of
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`day, the times are all zero. This may indicate that time was not actually
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`captured/stored by the underlying software (if any existed).
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`
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`As the video proceeds, the user selects the “Investigator Dashboard” tab at
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`approximately 00:50, then zooms into the third icon associated with the first name.
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`As the video zooms out, there appears to be a “jump cut” transition to a screen
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`titled “Generate Correspondence.”
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`At approximately 1:54, the number 10 is typed into the entry filed titled
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`“Mile Radius,” and the “Generate” button appears to be activated.
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`In another jump cut, a window titled “View Correspondence” appears. A
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`legend in green states that “Your documents have been successfully generated.”
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`Most notably, each of the entries on the page bears the “Creation Date” of
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`December 17, 2012 at the window is viewed from 2:04 to 2:21.
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`As the video proceeds, the user selects an item associated with a specific
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`police department (“Addison Police Dept.”), and there is a “jump cut” to a window
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`displaying a sample letter. The letter is dated December 17, 2012, however, it has
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`a blank logo for “Hometown Police” at the top. There is no information about the
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`Addison Police Dept in the letter.
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`At time 6:14, the video displays a page title Fax. This page also bears the
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`date December 17, 2012.
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`Around time 7:14, the user appears to click on the “check mark” icon for the
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`first entry at which point December 17, 2012 appears in the “Date Received”
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`column for the Addison Police Dept entry.
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`Around time 7:53, the user appears to click on the “check mark” icon one
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`more time for the first entry at which point December 17, 2012 appears in the
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`“Date Completed” column for the Addison Police Dept entry.
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`Around time 7:53, a “fade transition” appears to occur in which several
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`entries have been updated to show “12/17/12” in the Date Received column. This
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`transition confirms that this is not a video showing the real-time operation of a
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`software product. Rather, it appears to be a production made from source material
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`created on December 17, 2012.
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`Based on the material displayed in Ex. 1002, it is highly unlikely that this
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`video was created prior to December 17, 2012. Rather, Mr. Howell concludes that
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`the source material was likely created no earlier than December 17, 2012, and the
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`video itself was created later.
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`As a result, it would have been chronologically impossible for Ex. 1002 to
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`have been a “printed publication” prior to the filing of the parent application for
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`the ’188 Patent in April 2012.
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`As such, Ex. 1002 is not prior art, and Ground #1 fails.
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`2.
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`Declarant Ward’s Testimony Is Vague and Uncorroborated
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`As Coleman v. Dines, 754 F.2d 353, 355-60 (Fed. Cir. 1985),1 and its
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`progeny state, independent corroborating evidence is required to prove prior
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`invention. A challenger cannot qualify prior art with an alleged inventor’s
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`testimony and documents absent reliable third-party corroboration. With the
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`1 The corroboration requirement was applied to patent challengers as early as The
`Barbed Wire Patent, 143 U.S. 275 (1892).
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`exception of Ex. 1023, GAT’s evidence of publication of the Video rests solely on
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`the testimony and documents of Mr. Thomas Ward, who claims to be one of the
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`developers of the Background Assistant product and responsible for the production
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`of the 2012 Video. As explained below, Ex. 1023 does not corroborate Ex. 1002
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`or Ward’s testimony.
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`The BS Video appears to display screen captures bearing a copyright date of
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`2012. (Ex. 1002, passim; Fig 1, above; Ex. 2002 at 44-58, discussing this and
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`other dates.) Petitioner contradicts the dates illustrated in Ex. 1002 with
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`documents and testimony from the alleged inventor of the “Background Assistant.”
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`(Ex. 1009). Beyond contradicting Ex. 1002 itself, Ward’s testimony and
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`documents are uncorroborated and conclusory as to material facts, and therefore
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`cannot be used to establish the publication date of the reference. Coleman at 360-
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`61.
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`Ex. 1024 is an undated brochure, allegedly produced by Ward’s company.
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`Ex. 1022 is alleged to be screenshots of a video; allegedly taken from Ex.
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`1002, presumably created by Petitioner in preparing the IPR, not by a third party in
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`2009. However, even a cursory comparison proves otherwise.
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`Ex. 1022 is alleged to be a “power point video demonstration” related to the
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`Background Assistant – however, it is clearly not a video; it is undated; and again,
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`it does not resemble Ex. 1002.
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`In sum, none of these documents (attributable to Ward) prove the essential
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`facts alleged about Ex. 1002.
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`As to his testimony, Mr. Ward does not identify any specific conference that
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`can be investigated. Petitioner does not present actual (or even probable) evidence
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`of attendance by persons having a background in software development, or any
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`persons at all, in fact. Petitioner does not address the length of the presentation.
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`Ex. 1002 is a short video that does not explain how the underlying technology
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`might be implemented (three years prior to the video’s apparent creation).
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`Ultimately, Petitioner tacitly admits that no copies of the video were
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`distributed (again, three years prior to its creation). Rather, it asserts that an
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`undated brochure was distributed (Ex. 1024), and that the brochure contained a
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`link to a website where the video was available.
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`Finally, Ex. 1023 is alleged to be an archive of a web page containing a link
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`to the BS Video. Petitioner alleges that the Internet Archive corroborates that the
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`video was available no later than November 23, 2009. While there is no testimony
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`authenticating the exhibit, that would not help Petitioner’s case.
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`Critically, the Ex. 1002 video in not apparent on the 2009 page, nor the 2013
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`page, and the embedded link identified by Petitioner leads to another web page
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`“demo.html” – not a video file (e.g., bearing a file type suffix .mp4, like Ex. 1002).
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`The obvious question is “Where is the page showing Ex. 1002 as captured
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`by the Internet Archive in 2009?” If one clicks on the so-called “demo” link in Ex.
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`1023, the result appears to be essentially a blank page that says “DEMO,”
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`supposedly captured on November 23, 2009, captured below:
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`The same content appears when the same link is clicked on the 2013 page.
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`(Ex. 1023, p. 2). Obviously, if the Internet Archive had captured the video in Ex.
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`1002 in November 2009, Petitioner would have presented that as its primary
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`exhibit.
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`Of course, the Internet abounds with “placeholders” – blank web pages that
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`an author expected to complete, but for whatever reason remain unchanged for
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`years. Indeed, Ex. 1004 contains several “To be Developed” pages that for
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`whatever reason remain unchanged between their alleged creation in 2010 and
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`actual capture by the Internet Archive in 2019. See Ex. 1004, at 35, 36, 38, 39; Ex.
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`2002 at ¶¶ 76 and table listing capture links.
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`Even if one assumes that Ex. 1023 is authentic and accurate, it proves
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`nothing about what was actually displayed on the Background Solutions website at
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`the “Demo” page, any more than the