`Trials@uspto.gov
`571-272-7822
`
`Date Entered: December 10, 2014
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`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SAMSUNG ELECTRONICS CO. LTD., SAMSUNG ELECTRONICS
`AMERICA, INC., SAMSUNG TELECOMMUNICATIONS AMERICA,
`LLC, and SAMSUNG AUSTIN SEMICONDUCTOR, LLC,
`Petitioner,
`
`v.
`
`REMBRANDT WIRELESS TECHNOLOGIES, LP,
`Patent Owner.
`____________
`
`Case IPR2014-00889
`Patent 8,457,228 B2
`____________
`
`
`Before JAMESON LEE, HOWARD B. BLANKENSHIP, and
`JUSTIN BUSCH, Administrative Patent Judges.
`
`
`BLANKENSHIP, Administrative Patent Judge.
`
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`I. BACKGROUND
`
`
`
`Samsung Electronics Co. Ltd., Samsung Electronics America, Inc.,
`
`Samsung Telecommunications America, LLC, and Samsung Austin
`
`
`
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`Rembrandt Wireless
`Ex. 2015
`Apple Inc. v. Rembrandt Wireless Technologies, LP, IPR2020-00033
`Page 1 of 12
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`IPR2014-00889
`Patent 8,457,228 B2
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`Semiconductor, LLC (collectively, “Petitioner”) request inter partes review
`
`
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`of claims 1–3, 5, 10 and 11–21 of U.S. Patent No. 8,457,228 B2 (“the ’228
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`patent”) (Ex. 1001) under 35 U.S.C. §§ 311–319. Paper 2 (Petition, or
`
`“Pet.”). Rembrandt Wireless Technologies, LP (Patent Owner) filed a
`
`preliminary response (Paper 6, “Prelim. Resp.”) provided by 37 C.F.R.
`
`§ 42.107. We have jurisdiction under 35 U.S.C. § 314.
`
`
`
`For the reasons that follow, we do not institute an inter partes review
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`as to any of the challenged claims of the ’228 patent.
`
`
`Related Proceeding
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`According to Petitioner, the ’228 patent is involved in the following
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`lawsuit: Rembrandt Wireless Technologies, LP v. Samsung Electronics
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`Company, No. 2:13-cv-00213 (E.D. Tex. 2013). Pet. 1. The ’228 patent has
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`also been challenged in the following cases: IPR2014–00890; IPR2014–
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`00891; IPR2014–00892; IPR2014–00893; and IPR2014–00895.
`
`
`
`The ’228 Patent
`
`The ’228 patent issued from an application filed August 4, 2011,
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`which claimed priority, through a chain of intervening applications, under 35
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`U.S.C. § 120 to an application filed December 4, 1998, and which claimed
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`priority under 35 U.S.C. § 119 to a provisional application filed December 5,
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`1997.
`
`The technical field of the patent relates to data communications and
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`modulators/demodulators (modems), and in particular to a data
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`communications system in which a plurality of modems use different types
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`2
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`Ex. 2015
`Apple Inc. v. Rembrandt Wireless Technologies, LP, IPR2020-00033
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`of modulation in a network. Ex. 1001, col. 1, ll. 21–25; col. 1, l. 58–col. 2, l.
`
`23.
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`
`
`Illustrative Claim
`
`Claim 1 is illustrative.
`
`1. A master communication device configured to
`communicate with one or more slave transceivers according to
`a master/slave relationship in which a slave communication
`from a slave device to the master communication device occurs
`in response to a master communication from the master
`communication device to the slave device, the master
`communication device comprising:
`a master transceiver configured to transmit a first
`message over a communication medium from the master
`transceiver to the one or more slave transceivers, wherein the
`first message comprises:
`first information modulated according to a first
`modulation method,
`second information, including a payload portion,
`modulated according to the first modulation method, wherein
`the second information comprises data intended for one of the
`one or more slave transceivers and
`first message address information that is indicative
`of the one of the one or more slave transceivers being an
`intended destination of the second information; and
`said master transceiver configured to transmit a second
`message over the communication medium from the master
`transceiver to the one or more slave transceivers wherein the
`second message comprises:
`third information modulated according to the first
`modulation method, wherein the third information comprises
`information that is indicative of an impending change in
`modulation to a second modulation method, and
`fourth information, including a payload portion,
`transmitted after transmission of the third information, the
`fourth information being modulated according to the second
`
`3
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`Ex. 2015
`Apple Inc. v. Rembrandt Wireless Technologies, LP, IPR2020-00033
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`modulation method, the second modulation method being of a
`different type than the first modulation method, wherein the
`fourth information comprises data intended for a single slave
`transceiver of the one or more slave transceivers, and
`second message address information that is
`indicative of the single slave transceiver being an intended
`destination of the fourth information; and
`wherein the second modulation method results in a
`
`higher data rate than the first modulation method.
`
`PriorArt and Other Evidence Included with Petition
`
`Boer et al.
`(‘LBoer,,)
`
`US 5,706,428
`
`Jan. 6, 1998 (Ex 1006)
`
`Siwiak
`
`US 5,537,398
`
`July 16, 1996 (Ex 1007)
`
`IEEE P802.11, Draft Standardfor Wireless LAN, Medium Access Control
`WC) and Physical Layer (PHY) Specification, P802.11D4.0, May 20,
`1996 (EL 1004) (“Draft Standard”)
`
`Declaration of Robert O’Hara, Mar. 11, 2014 (EL 1023).
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`Asserted Grounds ofUnpatentabiIity
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`Petitioner asserts the following grounds of unpatentability (Pet. 2—3):
`
`Evidence
`
`Basis (35 U.S.C.)
`
`Claims
`
`1 1—20
`
`Draft Standard
`
`§ 102(b)/103(a)
`
`1—3, 5, 10, and
`1 1—20
`
`Draft Standard and Boer
`
`§ 103(a)
`
`1—3, 5, 10, and
`
`4
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`Rembrandt Wireless
`Ex. 2015
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`Apple Inc. v. Rembrandt Wireless Technologies, LP, IPR2020—00033
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`Page 4 of 12
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`IPR2014-00889
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`Patent 8,457,228 B2
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`Evidence
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`Basis (35 U.S.C.)
`
`Claims
`
`APA1 or Siwiak
`
`21
`
`21
`
`D‘afis‘m‘dm “-
`Draft Standardand mAPA, Siwiak, or Boer
`
`~ 103 a
`
`s 103 a
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`II- ANALYSIS
`
`A. AssertedAnticipation and Obviousness Grounds Based on Drafl
`Standard
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`The dispositive issue in this proceeding is whether Draft Standard, on
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`which both of Petitioner’s asserted grounds of unpatentability rely, is a
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`printed publication.
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`B. Overview ofDraft Standard (Ex. I 004)
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`Draft Standard is an unapproved draft of a proposed IEEE (Institute of
`
`Electrical and Electronics Engineers) Standard. Ex. 1004, i.2 The purpose
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`of the proposed standard was “[t]o provide wireless connectivity to
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`automatic machinery, equipment [, or] stations that require rapid
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`deployment, which may be portable, or hand—held or which may be mounted
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`on moving vehicles within a local area” and “[t]o offer a standard for use by
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`regulatory bodies to standardize access to one or more frequency bands for
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`the purpose oflocal area communication.” Id. at 1-
`
`l Admitted prior art.
`
`2 In this Decision, we refer to the original pagination of Draft Standard
`rather than the Exhlbit page number.
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`5
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`Apple Inc. v. Rembrandt Wireless Technologies, LP, IPR2020—00033
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`C. Declaration of Robert O’Hara (Ex. 1023)
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`
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`Mr. Robert O’Hara was an editor of the IEEE 802.11-1997 standard.
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`Ex. 1023 ¶ 1; Ex. 1004, iii. Mr. O’Hara states that drafts of the 802.11-1997
`
`standard, including Draft Standard, were available to members of the 802.11
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`Working Group for download from the 802.11 Working Group’s server. Ex.
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`1023 ¶ 9. According to Mr. O’Hara, announcements were sent to the
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`Working Group’s e-mail list when drafts became available, and a person
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`could be added to the Working Group’s e-mail list by providing an e-mail
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`address to the chair of the Working Group. Id. ¶¶ 9–10. Mr. O’Hara states
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`that there “were no restrictions on who could attend the 802.11 Working
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`Group’s meetings [or] on who could provide an e-mail address” and that,
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`according to his “recollection,” anyone who made a request to be added to
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`the e-mail list would be added. Id. ¶ 10.
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`Mr. O’Hara states that the copies of the drafts of the Standard
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`available on the Working Group’s servers were password-protected files,
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`and that the members of the e-mail list were provided with passwords to
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`access the documents, either as part of an announcement of a new draft or
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`via “another way.” Id. ¶ 11. According to Mr. O’Hara, the passwords were
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`intended to limit distribution to “interested individuals, as opposed to the
`
`entire [I]nternet.” Id. Mr. O’Hara also states that attending an 802.11
`
`Working Group meeting or asking for access prior to a meeting
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`demonstrated sufficient interest such that that person would receive the
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`password necessary to access the drafts on the Working Group’s server. Id.
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`Further, according to Mr. O’Hara, each of the 802.11 standard drafts,
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`including Draft Standard, would have been discussed at the Working Group
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`meetings and made available to all attendees. Id. ¶ 12. Mr. O’Hara also
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`6
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`states that the meetings were not limited to IEEE members but were open to
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`
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`the general public. Id.
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`
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`D. Analysis of Whether Draft Standard Is a Printed Publication
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`We look to the underlying facts to make a legal determination as to
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`whether a document is a printed publication. Suffolk Techs., LLC v. AOL
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`Inc., 752 F.3d 1358, 1364 (Fed. Cir. 2014). The determination of whether a
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`document is a “printed publication” under 35 U.S.C. § 102(b) involves a
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`case-by-case inquiry into the facts and circumstances surrounding its
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`disclosure to members of the public. In re Klopfenstein, 380 F.3d 1345,
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`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 Techs., 752 F.3d at 1364. To qualify as a printed
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`publication, a document “must have been sufficiently accessible to the
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`public interested in the art.” In re Lister, 583 F.3d 1307, 1311 (Fed. Cir.
`
`2009).
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`The O’Hara Declaration is the only extrinsic evidence that Petitioner
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`submits in support of its position that Draft Standard is a printed publication.
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`See Pet. 14–15. Petitioner asserts that Draft Standard “was completed on
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`May 20, 1996, and was available to anyone who wanted to view it on May
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`23, 1996.” Pet. 14–15 (citing Ex. 1023 ¶¶ 4, 5, 10, and 12) (emphasis
`
`added). Petitioner indicates, initially, that this availability resulted in a
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`publication date of May 23, 1996. Pet. 14. Petitioner also argues that Draft
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`Standard “was available to any interested parties” no later than July 8, 1996,
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`because it “was available to all members of the 802.11 Working Group’s
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`email list” and discussed and distributed at an 802.11 Working Group
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`7
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`Ex. 2015
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`meeting held July 8–12, 1996. Id. at 15. Thus, Petitioner concludes that this
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`alleged distribution and availability to any interested parties by July 8, 1996
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`renders Draft Standard a “printed publication” under 35 U.S.C. § 102(b).
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`Id. at 15–16.
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`Notably absent, however, from the Petition and Mr. O’Hara’s
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`declaration are any assertions or evidence in support of the availability of
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`Draft Standard to the public interested in the art. We do not find sufficient
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`argument or evidence to indicate that the July 8–12 meeting of the 802.11
`
`Working Group (or any other 802.11 Working Group meeting) was
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`advertised or otherwise announced to the public. Nor do we find sufficient
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`argument or evidence that any individual who was interested in the art
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`would have known about Draft Standard such that he or she would have
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`known to request a copy or ask to be added to an email list for access to the
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`document.
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`“A given reference is ‘publicly accessible’ upon a satisfactory
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`showing that such document has been disseminated or otherwise made
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`available to the extent that persons interested and ordinarily skilled in the
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`subject matter or art exercising reasonable diligence, can locate it.” SRI
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`Int’l, Inc. v. Internet Sec. Sys., Inc., 511 F.3d 1186, 1194 (Fed. Cir. 2008)
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`(quoting Bruckelmyer v. Ground Heaters, Inc., 445 F.3d 1374, 1378 (Fed.
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`Cir. 2006)). Although Mr. O’Hara declares that “[t]here were no restrictions
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`on who could attend the 802.11 Working Group’s meetings” (Ex. 1023 ¶ 10)
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`and that the meetings “were open to the general public” (id. ¶ 12), Petitioner
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`has not presented persuasive argument or evidence regarding how members
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`of the potentially interested public would have been made aware of these
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`meetings. Similarly, although Mr. O’Hara declares that an individual could
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`8
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`provide the chair with an e-mail address to be added to the Working Group’s
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`e-mail list (id. ¶ 10), the Petition has not established how an individual
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`would have known to attend a meeting or contact the chair in order to be
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`added to the e-mail list.
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`Based on the evidence before us, we find that the purpose of the
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`802.11 Working Group’s storage of drafts of the standard on a server is
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`similar to the placement of a file on an “FTP server solely to facilitate peer
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`review in preparation for later publication,” which the U.S. Court of Appeals
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`for the Federal Circuit found weighed against public accessibility of the file.
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`SRI Int’l, 511 F.3d at 1197. In SRI, even though the “paper was ‘posted’ on
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`an open FTP server and might have been available to anyone with FTP
`
`know-how and knowledge of the” subdirectory in which it resided, the
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`Federal Circuit found the fact that the paper was not publicized suggested an
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`absence of public availability. Id. In this case, the submitted evidence does
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`not show that the 802.11 Working Group’s server was an open server and, to
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`the extent that it was, the evidence shows that the documents were password
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`protected. Ex. 1023 ¶ 11.
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`Moreover, notwithstanding Mr. O’Hara’s statement that passwords
`
`were distributed to the 802.11 Working Group e-mail list (id.), the fact that
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`an interested individual needed to contact IEEE in order to obtain a
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`password or other means of accessing Draft Standard (and needed to know
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`who to contact in the first place) weighs against public accessibility. Cf.
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`Kyocera Wireless Corp. v. Int’l Trade Comm’n, 545 F.3d 1340, 1351 (Fed.
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`Cir. 2008) (finding facts weighed towards public accessibility because “[t]he
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`specifications themselves were visible to any member of the interested
`
`public without requesting them from an ETSI member”). Mr. O’Hara states
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`9
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`that the drafts of the 802.11 standards, including Draft Standard, were (and
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`
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`still are) protected by passwords in order to limit distribution to “interested
`
`individuals, as opposed to the entire [I]nternet.” Ex. 1023 ¶ 11. However,
`
`as previously discussed, the record does not contain persuasive evidence
`
`showing how an individual outside the 802.11 Working Group would have
`
`known of the existence of the Draft Standard, the 802.11 Working Group
`
`meetings, or the 802.11 Working Group itself. Therefore, we are not
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`persuaded that such an individual, exercising reasonable diligence, would be
`
`able to change his status from an anonymous member of “the entire
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`[I]nternet” to an “interested individual.” Moreover, the Working Group
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`created Draft Standard. See Ex. 1023 ¶ 2. Provision of a document to co-
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`authors of the document does not constitute dissemination, or availability, of
`
`the document to the public.
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`Therefore, based on the evidence Petitioner provided, we conclude
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`Petitioner has not made a sufficient showing that Draft Standard was a
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`printed publication as of July 1996 or earlier, as alleged, i.e., that Draft
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`Standard was available as of July 1996 or earlier to an ordinarily skilled
`
`individual, exercising reasonable diligence, who might have been interested
`
`in the subject matter of Draft Standard.
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`
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`E. Asserted Grounds of Unpatentability
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`Because Petitioner has not met its burden in establishing that Draft
`
`Standard is a “printed publication” and, thus, prior art, Petitioner has not
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`shown a reasonable likelihood of prevailing on the grounds asserted.
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`10
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`III. CONCLUSION
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`
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`The Petition fails to demonstrate a reasonable likelihood of prevailing
`
`on the grounds that the challenged claims are anticipated by, or obvious
`
`over, Draft Standard or obvious over Draft Standard and prior art references.
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`
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`In consideration of the foregoing, it is
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`IV. ORDER
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`ORDERED that the petition is denied as to all challenged claims and
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`no trial is instituted.
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`IPR2014-00889
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`For Petitioner:
`
`Jeffrey Miller
`millerj@dicksteinshapiro.com
`
`Daniel Cardy
`cardyd@dicksteinshapiro.com
`
`
`
`For Patent Owner:
`
`Thomas Engellenner
`engellennert@pepperlaw.com
`
`Reza Mollaaghababa
`mollaaghababar@pepperlaw.com
`
`Lana Gladstein
`gladsteinl@pepperlaw.com
`
`
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