Trials@uspto.gov
`571-272-7822
`
`Paper 16
`Date: May 11, 2023
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`META PLATFORMS, INC. ET AL.,
`Petitioner,
`v.
`ANGEL TECHNOLOGIES GROUP LLC,
`Patent Owner.
`
`IPR2023-00059
`Patent 10,417,275 B2
`
`
`
`
`
`
`
`
`
`Before MIRIAM L. QUINN, SHARON FENICK, and MICHAEL T.
`CYGAN, Administrative Patent Judges.
`CYGAN, Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`
`571-272-7822
`
`Paper 16
`Date: May 11, 2023
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`META PLATFORMS, INC. ET AL.,
`Petitioner,
`v.
`ANGEL TECHNOLOGIES GROUP LLC,
`Patent Owner.
`
`IPR2023-00059
`Patent 10,417,275 B2
`
`
`
`
`
`
`
`
`
`Before MIRIAM L. QUINN, SHARON FENICK, and MICHAEL T.
`CYGAN, Administrative Patent Judges.
`CYGAN, Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`
`
`IPR2023-00059
`Patent 10,417,275 B2
`
`INTRODUCTION
`I.
`Background and Summary
`A.
`Meta Platforms, Inc. (“Petitioner”) filed a Petition (Paper 1, “Pet.”)
`requesting institution of inter partes review of claims 1–12 of U.S. Patent
`No. 10,417,275 (Ex. 1001, the “’275 patent”). Angel Technologies LLC
`(“Patent Owner”) filed a Preliminary Response (“Prelim. Resp.”). Paper 9.
`We authorized additional briefing on certain matters. Ex. 1036. Petitioner
`filed a Reply (Paper 14, “Pet. Reply”) and Patent Owner filed a Sur-reply
`(Paper 15, “PO Sur-reply”).
`Pursuant to 35 U.S.C. § 314(a), an inter partes review may be
`instituted only if “the information presented in the petition . . . and any
`[preliminary] response . . . shows that there is a reasonable likelihood that
`the petitioner would prevail with respect to at least 1 of the claims
`challenged in the petition.”
`For the reasons given below, on this record Petitioner has established
`a reasonable likelihood that it would prevail in showing the unpatentability
`of claim 1 of the ’275 patent. Accordingly, we institute an inter partes
`review as to claims 1–12 of the ’275 patent and both of the asserted grounds
`of unpatentability.
`
`Real Parties in Interest
`B.
`Petitioner identifies Meta Platforms, Inc. (formerly Facebook, Inc.)
`and Instagram, LLC as the real parties in interest. Pet. 2. Patent Owner
`identifies Angel Technologies Group LLC as the real party in interest. Paper
`4, 2.
`
`2
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`Patent 10,417,275 B2
`
`Related Matters
`C.
`Petitioner represents that the ’275 patent is involved in Angel Techs.
`Group LLC v. Facebook, Inc. and Instagram LLC, No. 2:21-cv-08459-
`CBM-JPR (C.D. Cal.), and that
`On June 30, 2022, the district court found the asserted patents,
`including the ’275 Patent, invalid under 35 U.S.C. § 101 and
`dismissed the case. On July 29, 2022, PO filed a Notice of
`Appeal. The case has been docketed as the following: Angel
`Techs. Group, LLC v. Meta Platforms, Inc., No. 2022-2100 (Fed.
`Cir.). The opening appeal brief is currently due on November 2,
`2022.
`Pet. 2–3. The parties represent that Petitioner has filed, at substantially the
`same time that this Petition was filed, petitions for inter partes review
`against related family members U.S. Patent No. 8,954,432 (IPR2023-
`00057), U.S. Patent No. 9,959,291 (IPR2023-00058), and U.S. Patent No.
`10,628,480 (IPR2023-00060). Pet. 3; Paper 4, 2.
`The ’275 Patent
`D.
`The ’275 patent is titled “Artificial Intelligence Assisted Tagging of
`Users in Digital Media Online.” Ex. 1001, code (54). The ’275 patent
`issued from Application Serial No 15/933,531, filed on March 23, 2018, and
`claims priority, via continuation applications, to Provisional Application No.
`60/248,949, filed on November 15, 2000. Id. at codes (21), (22), (60), (63).
`The ’275 patent relates to storing and sharing images through a
`communications network, and for supplying and receiving information about
`the existence of objects within images. Ex. 1001, 1:20–25. A users database
`(230) receives, stores, and provides information about people, who access
`the host computer, and may include information for each user such as a user
`identifier, the user’s name, and user’s email address. Id. at 7:18–25. An
`image database (250) receives and stores information about photos. Id. at
`
`3
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`IPR2023-00059
`Patent 10,417,275 B2
`7:27–34. An identifications database (240) receives, stores, and provides
`information about relationships between users and photos, such as whether
`the user is in the photo, including the coordinates of the user or other person
`within the photo. Id. at 7:45–56. The following is an example of the three
`databases:
`
`
`Id. at 8:45–66. Through uploading of user data by John Doe and Jane Doe
`to the user database, and creation of an image record in the Image database
`when a user uploads a photo to the host computer, a relationship is created
`between the user and the image that appears in the Identifications database.
`Id. at 7:58–9:3, 12:52–55.
`Following identification of an object within an image, artificial
`intelligence algorithms (e.g., an image recognition system) may be applied
`
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`Patent 10,417,275 B2
`to the images. Id. at 13:31–36. Such algorithms may be purposed to further
`define characteristics of images, obtain identifying information, and/or
`search a database for other possible matches to a named object. Id. at
`13:36–39.
`
`Illustrative Claim
`E.
`Claim 1 is illustrative, and recites as follows:
`A method implemented within a computer system including a
`plurality of computing devices connected via a communications
`network, the method associating users of the computer system
`with digital media accessible to the computer system, the method
`comprising:
`distinguishing between users of the computer system via one or
`more unique user identifiers stored in a computer-readable
`medium accessible to the computer system, the users of the
`computer system including a named user and an identifying user,
`the named user being different from the identifying user, the
`named user having naming information associated with a unique
`user identifier of the named user;
`in response to an input from the identifying user indicating a
`selection of an image, determining a unique image identifier
`corresponding to the image selected;
`receiving, from the identifying user, an input indicating a
`selection of the named user from a list of other users of the
`computer system, the list of other users including naming
`information previously provided by other users, the list of other
`users including one or more users in a contact list associated with
`the identifying user, the identifying user's contact list including
`the named user;
`in response to receiving from the identifying user the input
`indicating the selection of the named user from the list of other
`users, determining a unique user identifier of the named user;
`receiving, from the identifying user, one or more inputs
`indicating a set of coordinates corresponding to a location of the
`named user within the image; and
`
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`IPR2023-00059
`Patent 10,417,275 B2
`applying artificial intelligence algorithms to image data of other
`images accessible to said computer system to locate images
`matching characteristics of a subset of image data bound by the
`set of coordinates corresponding to the location of the named
`user within
`the
`image, wherein
`the set of coordinates
`corresponding to the location of the named user within the image
`is associated with the unique user identifier of the named user
`and the unique image identifier.
`Evidence
`F.
`Petitioner relies on the following patent evidence.
`Name
`Patent Document
`1005
`Sharpe
`U.S. 7,461,099 B1
`1006
`Eintracht
`U.S. 6,687,878 B1
`1007
`Carey
`U.S. 6,714,793 B1
`Petitioner further relies upon Kuchinsky et al., “FotoFile: A consumer
`Multimedia Organization and Retrieval System,” CHI ’99: Proceedings of
`the SIGCHI Conference on Human Factors in Computing Systems, 496–503
`(May 1999) (Ex. 1011, “FotoFile”).
`
`Exhibit
`
`Petitioner relies upon a declaration by Dr. Benjamin Bederson. Ex.
`
`1003.
`
`Prior Art and Asserted Grounds
`G.
`Petitioner asserts that claims 1–12 would have been unpatentable on
`the following grounds:
`Claim(s) Challenged
`1–12
`1–12
`
`Reference(s)/Basis
`Sharpe, Eintracht, FotoFile
`Sharpe, Eintracht, FotoFile,
`Carey
`
`35 U.S.C. §
`103(a)1
`103(a)
`
`
`1 Petitioner asserts, and we agree for purposes of institution, that the pre-
`AIA patentability scheme applies to the ’275 patent. See Pet. 5.
`
`6
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`
`II. ANALYSIS
`Legal Standards
`A.
`A patent claim is unpatentable under 35 U.S.C. § 103(a) if the
`differences between the claimed subject matter and the prior art are such that
`the subject matter, as a whole, “would have been obvious at the time the
`invention was made to a person having ordinary skill in the art [to which
`said subject matter pertains].” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
`406 (2007). The question of obviousness is resolved on the basis of
`underlying factual determinations including: (1) the scope and content of
`the prior art; (2) any differences between the claimed subject matter and the
`prior art; (3) the level of ordinary skill in the art; and (4) objective evidence
`of non-obviousness.2 See Graham v. John Deere Co., 383 U.S. 1, 17–18
`(1966).
`
`Level of Ordinary Skill in the Art
`B.
`Petitioner asserts that a person of ordinary skill in the art in 2001
`would have had at least a bachelor’s degree in computer science,
`electrical engineering, computer engineering, or a similar
`technical field, with at least two years of experience in the field
`of networked and Web-based media applications. Additional
`experience could substitute for less education, and additional
`education could likewise substitute for less experience.
`Pet. 13–14 (citing Ex. 1003 ¶ 39). Patent Owner submits an essentially
`identical description of this hypothetical person. Preliminary Resp. 15. We
`do not determine any meaningful significance to the differences between the
`parties’ representations. For purposes of this Decision, we adopt Petitioner’s
`
`
`2 Neither party presents evidence or arguments regarding objective evidence
`of non-obviousness at this stage.
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`proposed level of ordinary skill, as it appears to be consistent with the
`specification of the ’275 patent and the prior art of record.
`Claim Construction
`C.
`In an inter partes review, we construe a patent claim “using the same
`claim construction standard that would be used to construe the claim in a
`civil action under 35 U.S.C. § 282(b).” 37 C.F.R. § 42.100(b) (2019).
`Under this standard, the words of a claim generally are given their “ordinary
`and customary meaning,” which is the meaning the term would have to a
`person of ordinary skill at the time of the invention, in the context of the
`entire patent including the specification. Phillips v. AWH Corp., 415 F.3d
`1303, 1312–13 (Fed. Cir. 2005) (en banc).
`Here, Petitioner asserts that the term “user identifier” should be
`construed as “a series of characters identifying a user.” Pet. 14. Petitioner
`also asserts that the term “contact list” should be construed as a “list of
`people known to the user.” Id. at 16.
`Patent Owner asserts that Petitioner fails to provide any explanation as
`to why construction is necessary for either term. Prelim. Res. 30–31. Patent
`Owner asserts that no term requires express construction. Prelim. Resp. 16.
`We note that no term is in controversy, and therefore, we do not need
`to construe any term. See Nidec Motor Corp. v. Zhongshan Broad Ocean
`Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we need only
`construe terms ‘that are in controversy, and only to the extent necessary to
`resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g,
`Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). Consequently, each claim term is
`given its ordinary and customary meaning.
`In additional argument, Patent Owner asserts that the Petition should
`be denied because the Petition failed to provide any evidence to support its
`
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`IPR2023-00059
`Patent 10,417,275 B2
`claim construction. Prelim. Resp. 29–30. Patent Owner faults the Petition’s
`claim construction for relying only on conclusory statements from Dr.
`Bederson. Id. at 30.
`We disagree that a failure to support a proposed claim construction by
`evidence is, by itself, grounds for denial of the Petition. Patent Owner cites
`to a Board decision in which a Petition was denied not for failure of
`evidentiary support, but because the Board found it an “erroneous claim
`construction” such that the argument based thereon was not persuasive.
`Prelim. Resp. 29 (emphasis omitted). Further, Patent Owner’s argument
`admits that “most petitions . . . will rely on the affidavits of experts,” not that
`all petitions must provide evidentiary support for all statements therein. Id.
`at 30 (citing 77 Fed. Reg. at 48763). Here, we have determined that no term
`requires construction at this stage, and therefore, Petitioner’s statements as
`to construction of certain terms do not bear upon the decision to institute.
`D. Obviousness over Sharpe, Eintracht, and FotoFile
`Petitioner asserts that claims 1–12 are unpatentable under § 103(a) as
`obvious over Sharpe, Eintracht, and FotoFile. Patent Owner provides
`arguments and evidence against these assertions.
`Upon consideration of Petitioner’s explanations and the totality of
`evidence in this current record, we are persuaded that Petitioner has
`demonstrated a reasonable likelihood of prevailing in showing that claim 1 is
`unpatentable under § 103(a) as obvious over the combination of Sharpe,
`Eintracht, and FotoFile.
`
`Sharpe
`1.
`Sharpe is titled “Method and System for Archiving and Retrieving
`Items Based on Episodic Memory of Groups of People.” Ex. 1005, code
`(54). Sharpe relates to “the archiving and retrieval of digital media items
`
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`IPR2023-00059
`Patent 10,417,275 B2
`wherein the archiving and retrieval process is performed based on episodic
`memory of predefined groups of people.” Id. at 1:6–9. Sharpe describes
`that work in the storage and archiving techniques for digital media are
`concentrated on “facilitating the retrieval of a particular digital media item;
`i.e., one which matches the user’s requirements exactly.” Id. at 1:11–14.
`Sharpe contrasts prior work relying on semantic memory with the described
`invention, “based on the common episodic memory of a strong social
`group,” which relies upon and enhances “group ‘memory’” and “group
`nostalgia.” Id. at 1:14–32.
`To archive digital media items, a user identifies a group to which the
`user belongs, and then digital media items to be archived for the group are
`identified. Id. at 1:37–45. Using a pull-down menu on a graphical user
`interface [“GUI”], the user may associate each media item with one of three
`parameters: persons, an event, and time. Id. at 1:47–2:11. Later, other users
`may search and retrieve desired photos by searching using one or more of
`those parameters. Id. at 2:12–24.
`
`Status as Prior Art
`a)
`The burden of proving unpatentability in an inter partes review,
`including that a reference qualifies as prior art, rests solely with the
`Petitioner. 35 U.S.C. § 316(e); Dynamic Drinkware, LLC v. National
`Graphics, Inc., 800 F.3d 1375, 1378–1379 (Fed. Cir. 2015). Patent Owner
`bears no countervailing burden except that it, not Petitioner, need provide
`evidence to support its assertions that Sharpe is not actually prior art (the
`“burden of production”). Id. at 1381.
`Patent Owner argues that the Petitioner failed to provide evidence that
`would show Sharpe to not be antedated by prior inventor activity. PO Sur-
`reply 1–2. However, Petitioner carries its initial burden of production by
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`Patent 10,417,275 B2
`pointing to a reference having a date such that it qualifies as prior art.
`Dynamic Drinkware, 800 F.3d at 1379 (“Dynamic [the petitioner] also had
`the initial burden of production, and it satisfied that burden by arguing that
`[applied reference] Raymond anticipated the asserted claims of the ’196
`patent under § 102(e)(2)”). The burden of production then shifts to Patent
`Owner. Id. at 1380 (“The burden of production then shifted to [patentee]
`National Graphics to argue or produce evidence that . . . Raymond is not
`prior art because the asserted claims in the . . . patent are entitled to the
`benefit of a filing date (constructive or otherwise) prior to the filing date of
`Raymond.”). The burden of production returns to Petitioner after Patent
`Owner satisfies its burden of production. Id. (“the burden of production
`returned to [Petitioner] to prove that either the invention was not actually
`reduced to practice as argued, or that the Raymond prior art was entitled to
`the benefit of a filing date prior to the date of [Patentee’s] reduction to
`practice”). Thus, the Petition itself is not required to produce all possible
`evidence to support Petitioner’s assertion that Sharpe is prior art.
`(1) Earlier date of invention
`Patent Owner argues that the inventor of the ’275 patent was the first
`to invent the claimed invention, and that the evidence of record shows that
`the ’275 patent antedates the Sharpe reference. Prelim. Resp. 17.
`Legal Standards
`(a)
`For a patent in which at least one claim has an effective filing date
`prior to the March 16, 2013 applicability date of the American Invents Act’s
`revisions to 35 U.S.C. § 102, patentability reflects “the principle that the
`patent right is granted to the first inventor rather than the first to file a patent
`application.” Paulik v. Rizkalla, 760 F.2d 1270, 1272 (Fed. Cir. 1985). The
`applicable version of § 102 requires that a prior art reference be “before the
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`IPR2023-00059
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`invention thereof by the applicant for patent,” unless the reference qualifies
`under the statutory bar provisions of §§ 102(b),(d). 35 U.S.C. § 102 (Nov.
`2, 2002). Sharpe’s filing date of September 26, 2000 is asserted by
`Petitioner to qualify as prior art under pre-AIA § 102(e), and therefore
`neither statutory bar provision is applicable. Pet. 16; Pet. Reply 5 (pointing
`to the November 15, 2000 filing date of the ’994 provisional application as
`the critical date for the ’275 patent).
`Thus, Patent Owner may produce evidence to show that the filing date
`of Sharpe was not available as prior art before the date of invention of the
`’275 patent. Mahukar v. C. R. Bard, 79 F.3d 1572, 1576 (Fed. Cir. 1996). If
`an earlier date of invention is shown, Sharpe is no longer prior art. Id.
`To show an earlier date of invention, the inventor of the ’275 patent
`must be the first to conceive and the first to reduce to practice, because “the
`person who first reduces an invention to practice is ‘prima facie the first and
`true inventor.’” Id. at 1577 (quoting Christie v. Seybold, 55 F. 69, 76 (6th
`Cir. 1893)( (Taft, J.)). Alternately, the inventor must be “the first to
`conceive the invention and [have] exercised reasonable diligence in later
`reducing that invention to practice.” Id. (citing Price v. Symsek, 988 F.2d
`1187, 1190 (Fed. Cir. 1993)).
`Patent Owner does not clearly state whether its theory of antedating is
`based upon an actual reduction to practice prior to the filing date of Sharpe,
`or conception prior to the filing date of Sharpe coupled with reasonably
`continuous diligence from just prior to the filing date of Sharpe until the date
`of the invention’s reduction to practice. See, e.g., Prelim. Resp. 17 (“the
`inventor of the ’275 patent conceived of the invention claimed in the ’275
`patent before Sharpe was filed, and worked diligently to reduce it to
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`practice, both as an actual product and then also by filing the provisional
`application on November 15, 2000.”). We consider both possibilities.
`(b) Actual Reduction to Practice
`With respect to actual reduction to practice, Patent Owner states that
`“Mr. Frigon had conceived and reasonably continued activity to reduce to
`practice the concept of photo-tagging, in accordance with the Challenged
`Claims,” prior to September 26, 2000. Prelim. Resp. 21. Patent Owner
`asserts that Mr. Frigon developed and performed code for “each of the
`elements relied upon by Petitioner from the Sharpe reference in April 2000,”
`based upon a declaration by the inventor and other supporting evidence. Id.
`at 21–22. Patent Owner points to Mr. Frigon’s Declaration as establishing
`that code for this purpose was developed starting in April 2000. Id. at 22–26
`(citing Exs. 2005–2013). Patent Owner also asserts that “[the] code . . . was
`up and running” in September 2000. Prelim. Resp. 26. Patent Owner asserts
`that Mr. Frigon’s Declaration, corroborated by Chris Malone’s Declaration,
`“permits the Patent Owner to swear behind the Sharpe reference.” Id. (citing
`Exs. 2005, 2016).
`We determine that the current record lacks sufficient evidence to show
`an actual reduction to practice. For actual reduction to practice, no showing
`of diligence is required, but as recognized by Patent Owner, “an inventor
`must prove that he constructed his claimed invention and that it would work
`for its intended purpose.” Mazzari v. Rogan, 323 F.3d 1000, 1005 (Fed. Cir.
`2003) (cited at Prelim. Resp. 20–21). Additionally, in establishing that such
`an idea existed at the relevant time, an inventor’s testimony requires
`corroboration, and “[a]n evaluation of all pertinent evidence must be made
`so that a sound determination of the credibility of the inventor’s story may
`be reached.” Id. (quoting Price, 988 F.2d at 1195) (explaining that “[t]his
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`requirement arose out of a concern that inventors testifying in patent
`infringement cases would be tempted to remember facts favorable to their
`case by the lure of protecting their patent”).
`Mr. Frigon states that evidence of the reduction to practice of
`“elements of the invention claimed” is shown in attached copies of the code
`last modified on April 16, 2000. Ex. 2005 ¶¶ 4–5. In his declaration, and as
`reflected in Patent Owner’s mapping of claim elements to evidence
`supporting prior invention, Mr. Frigon does not provide any statement that
`his invention at that time included artificial intelligence algorithms to locate
`images as claimed. Id. at ¶ 15. At best, Mr. Frigon testifies that “it was
`known in the industry” that such algorithms could be applied. Id. Nor does
`any evidence tend to corroborate that artificial intelligence algorithms were
`part of Mr. Frigon’s invention at that time.
`Further, Patent Owner admits that the claim limitation of “filtering the
`input list to users in a contact list” is “not disclosed in the source code.” PO
`Sur-Reply, 3. Furthermore, that code is stated merely to be “a list of all
`users who have been associated with photos.” Prelim. Resp. 23–24.
`Although Patent Owner points to Mr. Frigon’s declaration for support,
`Patent Owner points solely to such code to show the multiple steps of
`receiving an input from the identifying user of a named user from a list of
`users including users in a contact list associated with the identifying user,
`and in response to that input, determining a unique user identifier of the
`named user. Prelim Resp. 24–25. Although Mr. Frigon indicates that this
`concept had “been conceived at this point, and was in development at the
`time of drafting the provisional application,” Mr. Frigon does not provide
`any statement tending to show that it was actually reduced to practice. Ex.
`2005 ¶ 15.
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`Because of the lack of evidence for the indicated claim requirements,
`there is insufficient evidence to show that Mr. Frigon “constructed his
`claimed invention.” Consequently, the current record does not show an
`actual reduction to practice of the invention of claim 1 prior to the effective
`date of Sharpe.
`
`(c) Constructive Reduction to Practice
`and Reasonably Continuous Diligence
`Conception requires “a definite and permanent idea of the complete
`and operative invention.” Mahukar, 17 F.3d at 1577 (citing Burroughs
`Wellcome Co. v. Barr Labs., Inc., 40 F.3d 1223, 1228 (Fed. Cir. 1994)).
`Patent Owner relies upon Mr. Frigon’s declaration, “subsequent
`corroborating evidence and additional third party declarations,” and the
`content of the provisional patent application to show conception. Prelim.
`Resp. 19; PO Sur-Reply 2.
`Patent Owner argues that Mr. Frigon’s Declaration shows that Mr.
`Frigon “was in possession of at least as much of the subject matter as relied
`upon . . . from the Sharpe reference.” Prelim. Resp. 21. Patent Owner
`points to the code exhibits as demonstrating that Mr. Frigon had conceived
`of the “concept of photo-tagging.” Id. However, as discussed supra, Mr.
`Frigon does not provide any statement pertaining to the claim requirements
`of applying artificial intelligence algorithms to image data as claimed. Ex.
`2005.
`
`Patent Owner further points to the August 15, 2000 provisional
`application as providing written description support for the disputed claim
`elements. However, the ’994 provisional application does not provide
`support for applying artificial intelligence algorithms to image data to locate
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`images as claimed. See Ex. 2017, 6 (describing user-controlled identifying
`and locating of images).
`Patent Owner seeks to prove conception of only those claim
`limitations that are being relied upon by Petitioner in Sharpe. Patent Owner
`cites In re Schreiber for the proposition that a reference may be antedated by
`showing prior invention “with respect to only so much of the claimed
`invention as the references disclose. . ., or only so much as to render the
`claimed invention obvious.” Prelim. Resp. 20 (citing In re Schreiber, 587
`F.2d 59 (CCPA 1978) and citing In re Stempel, 241 F.2d 755, 759 (CCPA
`1957) (discussing the extent of a generic claim needing to be shown for
`anticipation)). However, Patent Owner’s interpretation of Schreiber and
`Stempel has been expressly foreclosed, as an unwarranted expansion of the
`limited genus-species situation in Stempel and Schreiber. In re Tanczyn, 347
`F.2d 830 (CCPA 1965). As stated therein,
`We never intended by the language used in Stempel to authorize
`the overcoming of references by affidavits showing that the
`applicant had invented, prior to the reference date, a part, some
`parts, or even a combination of parts, used to create an
`embodiment of his claimed invention, where the part or parts are
`not within the scope of the claims being sought, as the species of
`Stempel shown by the reference was within his generic claims.
`Tanczyn, 347 F.2d at 833. The Tanczyn court further explained,
`It does not appear to us logical that one should be permitted to
`dissect the invention, in this instance the claimed combination,
`into several parts and then say because he has invented one such
`part prior to a reference disclosing that part that he has also
`invented the entire combination prior to that reference, even
`though other references combined therewith to meet ‘the
`invention’ bear an earlier date.
`
`16
`
`
`
`IPR2023-00059
`Patent 10,417,275 B2
`Id. at 832. Patent Owner’s suggested approach to antedating Sharpe by
`showing prior conception of only those elements described by Sharpe is,
`therefore, not an acceptable method of showing prior invention.
`
`For the above reasons, the evidence in the record at the present time
`does not show prior conception of the claimed invention.
`Reasonable diligence “must be shown throughout the entire critical
`period, which begins just prior to the competing reference’s effective date[,]
`and ends on the date of the invention’s reduction to practice.” Perfect
`Surgical Techniques, Inc. v. Olympus America, Inc., 841 F. 3d 1004, 1007
`(Fed. Cir. 2016). The diligence need only be “reasonably continuous,”
`permitting periods of inactivity within the critical period. Id. at 1010–1011.
`However, the showing of diligence must be sufficient “to assure that, in light
`of the evidence as a whole, ‘the invention was not abandoned or
`unreasonably delayed.’” Id. at 1009 (quoting Brown v. Barbacid, 436 F.3d
`1376, 1379 (Fed. Cir. 2006)). An inventor’s testimony regarding their
`reasonable diligence must be corroborated by evidence. Id. at 1007 (citing
`Brown, 436 F.3d at 1380).
`Thus, with respect to diligence, the critical period here begins just
`prior to Sharpe’s filing date of September 26, 2000, and ends on the date of
`the invention’s reduction to practice. As discussed, there is insufficient
`evidence to show actual reduction to practice of the claimed invention. The
`date of constructive reduction to practice is the date of the earliest filing of
`an application in the chain of priority that sufficiently describes the claimed
`invention. Here, Petitioner points to the ’994 provisional application in the
`chain of priority to which the ’272 claims benefit as providing that date. Pet.
`Reply 5. The effective filing date of that application is November 15, 2000.
`Ex. 1001, code (60).
`
`17
`
`
`
`IPR2023-00059
`Patent 10,417,275 B2
`Patent Owner acknowledges that diligence must be shown between
`those dates of September 26, 2000 and November 15, 2000. Prelim. Resp.
`19 (“Diligence must be shown from just prior to the competing reference’s
`effective date until the date of the invention’s reduction to practice. . . . The
`effective date of Sharpe is September 26, 2000.”) However, Patent Owner
`argues that the evidence shows diligence “between the conception in early
`2000 of the invention, and the critical date of Sharpe.” Id. Patent Owner
`has not provided any explanation of diligence from just prior to the critical
`date of Sharpe until the date of the invention’s reduction to practice. See
`Pet. Reply 6.
`Nor is such diligence over that period evident from the record. Patent
`Owner characterizes the provisional application as being completed as of
`August 15, 2000. Prelim. Resp. 21; PO Sur-reply 1, 6. Patent Owner states
`that the provisional application was filed on November 15, 2000. The
`showing of diligence relates only to that which is directly related to the
`reduction to practice of the invention, either in filing that application or
`through development towards actual reduction of that invention or a second
`invention. Naber v. Cricchi, 567 F.2d 382, 384 (CCPA 1977). Patent
`Owner does not address whether there was diligence in filing the patent
`application.3 The testimony of inventor Frigon addresses activities through
`September 28, 2000. Ex. 2005 ¶¶ 3, 4, 17, 18. The corroborating testimony
`of Mr. Malone only covers the period until “I had moved out of our
`apartment in August 2000.” Ex. 2016 ¶ 7. The corroborating testimony of
`Ms. Larson is similarly limited from “January 1999 . . . through September
`
`3 Patent Owner has been authorized to file a correction to testimony
`concerning the filing of the provisional application. See Ex. 3001. No
`corrected testimony has yet been filed.
`
`18
`
`
`
`IPR2023-00059
`Patent 10,417,275 B2
`2000.” Ex. 2018 ¶ 2. Although Ms. Larson mentions discussions with Mr.
`Frigon concerning his progress with the technology “over the course of the
`year 2000 and beyond,” her corroboration of diligence is focused on “the
`early 2000 time frame,” with no particular examples of activity by Mr.
`Frigon after September 28, 2000. Id. ¶¶ 3–7; Ex. 2015, 1 (discussing adding
`information to a database and mentioning “www.sacko.com”).
`Mr. Frigon’s evidence includes some record of computer-related
`purchases during the critical time period from September 28, 2000 through
`November 15, 2000. Ex. 2014, 2 (unpaginated).4 However, Mr. Frigon only
`relies upon purchases during August 2000 to support his “continued pursuit
`[of] the invention.” Ex. 2005 ¶ 16. Thus, the later purchases have not been
`shown to be related to diligence in developing the invention to practice.
`Patent Owner further provides a statement that it has shown diligence
`between conception and the reduction to practice in August, 2000, and that
`“both happened before Sharpe’s critical date.” Sur-reply 6. There are two
`problems with this statement. First, if Mr. Frigon had both conceived and
`reduced to practice the claimed invention before Sharpe’s critical date, no
`diligence need be shown. Second, the asserted August, 2000 reduction to
`practice is stated to be “when the provisional application was finalized.” Id.
`Finalizing a provisional application does not, by itse
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