Trials@uspto.gov
`571-272-7822
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`
`Paper 12
`Date: January 3, 2024
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`
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`___________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`DODOTS LICENSING SOLUTIONS LLC,
`Patent Owner.
`____________
`
`IPR2023-00939
`Patent 8,510,407 B1
`____________
`
`
`
`Before HUBERT C. LORIN, AMBER L. HAGY, and SHARON FENICK,
`Administrative Patent Judges.
`
`FENICK, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`
`
`571-272-7822
`
`
`Paper 12
`Date: January 3, 2024
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`___________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`DODOTS LICENSING SOLUTIONS LLC,
`Patent Owner.
`____________
`
`IPR2023-00939
`Patent 8,510,407 B1
`____________
`
`
`
`Before HUBERT C. LORIN, AMBER L. HAGY, and SHARON FENICK,
`Administrative Patent Judges.
`
`FENICK, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
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`I. INTRODUCTION
`
`A.
`
`Background
`
`Apple Inc. (“Petitioner”) filed a Petition (Paper 1, “Pet.”) requesting
`inter partes review of claims 1–24 (“the challenged claims”) of U.S. Patent
`No. 8,510,407 B1 (Ex. 1001, “the ’407 patent”). DoDots Licensing
`Solutions LLC (“Patent Owner”) filed a Preliminary Response (Paper 6,
`“Prelim. Resp.”). Petitioner also filed a Preliminary Reply (Paper 8,
`“Prelim. Reply”) and Patent Owner filed a Preliminary Sur-reply (Paper 10,
`“Prelim. Sur-reply”).1
`We have authority under 35 U.S.C. § 314, which provides that an
`inter partes review may not be instituted unless the information presented in
`the Petition, the Preliminary Response, Preliminary Reply, and Preliminary
`Sur-reply 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.” 35 U.S.C. § 314(a).
`Upon consideration of the arguments and evidence presented by
`Petitioner, we deny Petitioner’s request to institute an inter partes review as
`to the challenged claims of the ’407 patent on the grounds of unpatentability
`presented.
`
`B.
`
`Related Proceedings
`
`The parties indicate that the ’407 patent is the subject of Samsung
`Electronics Co., Ltd. v. DoDots Licensing Solutions LLC, IPR2023-00701;
`DoDots Licensing Solutions LLC v. Apple Inc. et al., No. 6:22-cv-00533,
`
`
`1 The Board authorized the filing of these papers. See Order (Paper 7).
`2
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`(W.D. Tex. May 24, 2022); and DoDots Licensing Solutions LLC v.
`Samsung Electronics Co., Ltd. et al., No. 6:22-cv-00535 (W.D. Tex. May
`24, 2022). Pet. 77; Paper 3 (Patent Owner’s Mandatory Notices), 1–2.
`Petitioner notifies us that the ’407 patent was the subject of IPR2019-
`01279 filed by Lenovo Holding Company, Inc., et al. 2 Pet. 6 & n.1. Patent
`Owner refers to IPR2019-00988 as involving the validity of the ’407 patent;
`however, that inter partes review involved a related patent. Prelim. Resp. 1,
`8–10 (citing Ex. 2001).
`
`C.
`
`Real Parties in Interest
`
`Petitioner identifies only itself as a real party in interest. Pet. 77.
`Patent Owner identifies only itself as a real party in interest. Paper 3, 1.
`
`D.
`
`The ’407 Patent (Ex. 1001)
`
`The title of the ʼ407 patent is “Displaying Time-Varying Internet
`Based Data Using Application Media Packages.” Ex. 1001, code (54). The
`’407 patent discloses, in part, a software component for accessing and
`displaying network content. Id. at code (57). A Networked Information
`Monitor (NIM) is a “fully configurable frame with one or more controls”
`with content optionally presented through the frame. Id. at 2:61–63, 5:21–
`24. When a NIM is opened by a user, the frame is presented in the user’s
`display and network content is retrieved and presented in a viewer enclosed
`by the frame. Id. at 19:63–20:30. The network content may be identified
`
`
`2 The Board’s decision in IPR2019-01279 (Ex. 1008), which determined no
`challenged claims were unpatentable, was affirmed by the Federal Circuit.
`See Lenovo Holding Company, Inc. v. DoDots Licensing Solutions LLC,
`2021 WL 5822248 (Fed. Cir. 2021); Ex. 1009; Ex. 2002.
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`via URLs included in the NIM definition. Id. at code (57), 20:24–27. The
`network content is time-varying, e.g., as in an image that varies over time.
`Id. at code (57). The specification describes that the frame according to the
`invention “stands in contrast to present web browsers, which are branded by
`the browser vendor and which have limited means by which to alter the
`controls associated with the browser.” Id. at 5:24–28.
`
`E.
`
`Illustrative Claim
`
`Claims 1 and 13 are the only independent claims among the
`challenged claims. Claim 1 is reproduced below:
`1. A client computing device configured to access content over
`a network, the client computing device comprising:
`electronic storage configured to store networked information
`monitor template associated with a networked information
`monitor, the networked information monitor template having
`therein a definition of a viewer graphical user interface having
`a frame within which time-varying content in a web browser-
`readable language may be presented on a display associated
`with the client computing device, wherein the frame of the
`viewer graphical user interface lacks controls for enabling a
`user to specify a network location at which content for the
`networked information monitor is available; and
`one or more processors configured to execute one or more
`computer program modules, the one or more computer
`program modules being configured to access the networked
`information monitor defined by the networked information
`monitor
`template, wherein accessing the networked
`information monitor defined by the networked information
`monitor template results in:
`transmission, over a network to a web server at a network
`location, of a content request for content to be displayed
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`within the frame of the viewer graphical user interface
`defined by the networked information monitor template;
`reception, over the network from the web server at the
`network location, of content transmitted from the web
`server in response to the content request, the content being
`time-varying;
`presentation, on the display, of the viewer graphical user
`interface defined by the networked information monitor
`template outside of and separate from any graphical user
`interface of any other application; and
`presentation, on the display within the frame of the viewer
`graphical user interface defined by the networked
`information monitor, of the time-varying content received
`from the web server.
`Ex. 1001, 42:38–64.
`
`F.
`
`Asserted References
`
`Petitioner relies on the following references:
`
`Reference
`Name
`Slivka et al. 3 U.S. Patent No. 6,061,695, issued May 9, 2000
`Anabuki U.S. Patent No. 6,091,518, issued Jul. 18, 2000
`Votipka U.S. Patent No. 6,185,589 B1, issued Feb. 6,
`2001
`
`Ex. No.
`1004
`1006
`1014
`
`
`3 We refer here only to U.S. Patent No. 6,061,695 (“the ’695 patent”).
`See Pet. 10 (“U.S. Patent No. 6,061,695 to Slivka, et al. (‘Slivka’) . . . Slivka
`(Ex. 1004) . . .”). Although Petitioner contends that certain appendices
`included in the ’695 patent’s file history are part of the ’695 patent (see id.
`(referring to Ex. 1005, 69–245)), we consider these appendices to be
`separate from the patent for purposes of this decision, as explained infra in
`our analysis. .
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`Powell, Thomas A., “HTML: The Complete
`Reference”
`
`Powell
`
`1013
`
`Pet. 7.
`Petitioner also relies on the Declaration of Dr. Loren Terveen
`(Ex. 1003, “Terveen Decl.”).
`
`G.
`
`Asserted Grounds
`
`Petitioner contends that claims 1–24 of the ’407 patent are
`unpatentable under the following grounds:
`
`Claims Challenged
`1–4, 6–11, 13–16, 18–23
`5, 17
`12, 24
`
`35 U.S.C. §
`§ 1034
`§ 103
`§ 103
`
`Reference(s)/Basis
`Slivka5, Powell
`Slivka, Powell, Votipka
`Slivka, Powell, Anabuki
`
`Pet. 7.
`
`II. ANALYSIS
`“In an [inter partes review], the petitioner has the burden from the
`onset to show with particularity why the patent it challenges is
`unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed.
`Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review
`
`4 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
`(2011) (“AIA”), amended 35 U.S.C. §§ 102 and 103. Because the
`challenged claims of the ’407 patent claim an effective filing date before the
`effective date of the applicable AIA amendments (see Ex. 1001, code (22)),
`we refer to the pre-AIA versions of 35 U.S.C. §§ 102 and 103 throughout
`this Decision.
`
` See supra n.3.
`
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`petitions to identify “with particularity . . . the evidence that supports the
`grounds for the challenge to each claim”)). This burden of persuasion does
`not shift to Patent Owner. See Dynamic Drinkware, LLC v. Nat’l Graphics,
`Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (discussing the burden of proof in
`inter partes review).
`We determine that Petitioner has not satisfied its burden from the
`onset to show with particularity why the patent it challenges is unpatentable.
`Our determination is based on finding that Petitioner’s challenge relies on
`appendices (Ex. 1005, 69–245) that were not published with the ’695 patent
`(Ex. 1004). As discussed herein, we conclude, on the record before us, that
`Petitioner has insufficiently shown that the relied-upon appendices qualify as
`prior art under 35 U.S.C. § 102(e), as Petitioner asserts. See Pet. 10.
`
`A.
`
`’695 patent and Slivka Appendices
`
`The primary reference in both grounds is denominated “Slivka.”
`Petitioner contends that “Slivka” references both (a) U.S. Patent No.
`6,061,695 (Ex. 1004) and (b) appendices contained in the file history of the
`’695 patent (Ex. 1005, 69–245 (the “Slivka Appendices”)). Pet. 10. This is
`reflected in Petitioner’s invalidity contentions which rely on disclosures
`from both the ’695 patent and the Slivka Appendices. See, e.g., Pet. 10–16;
`see also Prelim. Resp. 20, 30–31 (noting Petitioner’s reliance on the Slivka
`Appendices).
`It is not disputed that the ’695 patent qualifies as prior art under
`35 U.S.C. § 102(e), as Petitioner asserts.
`There is a dispute, however, over whether the Slivka Appendices
`qualify as prior art under § 102(e), as Petitioner asserts. Id.; see, e.g.,
`
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`Prelim. Resp. 21 (“[Petitioner] cannot identify which 102(e) provision
`covers the unpublished Slivka application or the appendices because neither
`are prior art under §102(e).”)
`The dispute stems from the fact that the Slivka Appendices were not
`published in the ’695 patent (i.e., the document Petitioner submitted into
`evidence (Ex. 1004)). It is plainly evident from perusing the ’695 patent that
`the Slivka Appendices are not there. On its face, the ’695 patent does not
`include the contents of any of the Slivka Appendices and the public would
`be justified in believing the ’695 patent does not include them.
`The Slivka Appendices were filed with the specification of the Slivka
`application on December 6, 1996. Petitioner correctly points out that the
`Slivka Appendices have a date stamp of “DEC 6 1996,” the filing date of the
`’695 patent. Pet. 10; see Ex. 1005, 69. There is also a Transmittal Letter in
`the file history stating that a patent application is “[t]ransmitted herewith for
`filing” and “[e]nclosed are . . . 34 pages of specification, 4 pages of claims,
`an abstract, an unsigned Combined Declaration and Power of Attorney and
`177 pages of appendices” and “7 sheet(s) of formal drawings,” also with the
`same date stamp of “DEC 6 1996.” Ex. 1005, 254.
`The question is whether the Slivka Appendices, though not published
`in the ’695 patent, were made part of the specification when they were filed.
`Otherwise, they should be treated as separately-filed documents that do not
`qualify as prior art under § 102(e).
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`Incorporation
`
`B.
`
`Parties’ Views and Our Analysis
`1.
`Petitioner provides several reasons for why it believes the Slivka
`Appendices were incorporated in the specification of the ’695 patent when
`they were filed on December 6, 1996. See Pet. 10; Prelim. Reply 1, 3
`(“Because Slivka’s appendices were incorporated in the [’695 patent]
`disclosure at the time of filing, it is proper for Petitioner to rely on the
`appendices as part of ‘the entire disclosure’ of the [’695 patent] as a §102(e)
`reference.”) (quoting “MPEP 2136.02”).
`First, Petitioner argues that there are “clear and consistent references
`to the appendices throughout the specification.” Prelim. Reply 1 (citing
`Ex. 1004, 18:56 (Appendices A and B), 18:64–65 (C–F), 19:24–29 (I–L),
`6:41, 17:22–24 (Q), 12:34–36 (R), 15:32–33 (S), and 17:1–3 (T)).
`Patent Owner disagrees. “Every appendix is characterized as simply
`being ‘attached hereto’ or ‘attached … respectively.’ Referencing
`appendices as being attached is not incorporating the contents of the
`appendices into the ‘entire disclosure’ of [the] specification.” Prelim. Sur-
`reply 3 (quoting MPEP 2136.02).
`The ’695 patent states that the appendices are “attached.” In fact, they
`are not attached. They are missing from the ’695 patent as published. The
`material relied on under 102(e) must be present in the issued patent or
`application publication. See MPEP § 2136.02 (6th ed. Rev. 2) (“When a
`U.S. patent is used to reject claims under pre-AIA 35 U.S.C. 102(e), the
`disclosure relied on in the rejection must be present in the issued patent.”).
`Here, the appendices were not “present” in the ’695 patent as issued because
`they were not incorporated by reference. See Advanced Display Sys., Inc. v.
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`Kent State Univ., 212 F.3d 1272, 1282–83 (Fed. Cir. 2000) (citing In re de
`Seversky, 474 F.2d 671, 674 (CCPA 1973)) (“To incorporate material by
`reference, the host document must identify with detailed particularity what
`specific material it incorporates and clearly indicate where that material is
`found in the various documents.”); see also Callaway Golf Co. v. Acushnet
`Co., 576 F.3d 1331, 1346 (Fed. Cir. 2009) (quoting de Seversky, 474 F.2d at
`674) (“[M]ere reference to another application, or patent, or publication is
`not an incorporation of anything therein.”)
`For these reasons, we agree with Patent Owner that the references to
`appendices throughout the specification of the ’695 patent do not in
`themselves mean the contents of the Slivka Appendices were incorporated in
`the ’695 patent.
`Second, Petitioner argues that the Slivka Appendices were included
`“with the originally filed application, stamped with the filing date.” Prelim.
`Reply 1 (citing Ex. 1005, 69–245).
`Patent Owner responds that it
`agrees that the appendices were filed with the application and
`other documents, and that all of the documents were stamped
`with the same filing date. Reply at 1. But that fact carries no
`weight. Filing a collection of documents that includes an
`application and appendices does not mean that the appendices are
`incorporated into the patent specification.
`Sur-reply 2. We agree. The fact that the Slivka Appendices were filed with,
`and on the same day as, the patent application, which is not disputed, does
`not provide us any insight into whether the missing Slivka Appendices were
`or were not incorporated in the ’695 patent on December 6, 1999, such that
`they should be considered part of the ’695 patent.
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`Third, Petitioner argues that the “Applicant expressly not[ed] the
`
`incorporation of the appendices to the Examiner during prosecution of the
`[’695 patent].” Prelim. Reply 1 (citing Ex. 1005, 254).
`We agree with Patent Owner that “Slivka did not note that he was
`incorporating the appendices to the specification.” Prelim. Resp. 2
`(emphasis original). Petitioner cites to the Transmittal Letter (“Ex. 1005,
`254”), but there is no mention there about the Slivka Appendices having
`been incorporated. Prelim. Reply 1; Ex. 1005, 254.
`
`For its part, Patent Owner contends that “appendices A, C, D, E and F
`are ‘computer program listing[s]’ because they list instructions or routines of
`a HTM program,” in accordance with the meaning of “computer program
`listing” set forth in the then-current version of MPEP 608.05. Prelim. Resp.
`24 (citing the “BACKGROUND” section of then-current MPEP 608.05),
`25–26 & n.4. Patent Owner contends that “the appendices cannot be
`considered part of the Slivka application because Slivka failed to comply
`with [then-current] MPEP 608.05 and 37 C.F.R. § 1.96[6], which set forth the
`specific steps an applicant is required to take when depositing computer
`program listings with a patent application.” Prelim. Resp. 24–25.
`Petitioner disputes that any of the appendices are computer program
`listings of the type to be subject to the then-current version of 37 C.F.R.
`
`
`6 At the time of submission in 1996, 37 C.F.R. § 1.96(a) stated that “[i]f the
`computer program listing is contained on 10 printout pages or less, it must
`be submitted either as drawings or as part of the specification.” 37 C.F.R.
`§ 1.96(b) stated that “[i]f a computer program listing printout is 11 or more
`pages long, applicants may submit such listing in the form of microfiche
`. . . .” See Ex. 2008, 21–22.
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`1.96. Pet. Reply 1–3. Moreover, according to Petitioner, “even if the
`‘Computer Program Listings’ requirements did apply to Slivka’s appendices,
`[Patent Owner] cites no support for its assertion that failure to comply with
`such requirements results in the appendices being excluded from the patent
`disclosure.” Id. at 3.
`
`We agree with Petitioner on the latter point. On the present record,
`the relevant guidance and regulation at the time described how appendices
`containing computer program listings should be submitted and how proper
`submissions would be handled, but does not describe the effect if
`submissions were not compliant. Patent Owner does not adequately explain
`the connection between compliance with computer program listing
`requirements and the effective incorporation of such listings in a patent
`specification. But this does not change the ultimate result in this case.
`
`We note Petitioner’s discussion about the “policy rationale underlying
`§ 102(e).” Prelim. Reply 3. It is similarly wanting. According to Petitioner,
`Ҥ102(e) dictates that prior art disclosed to the patent office before the
`priority date qualifies as prior art even if it does not become publicly
`available until later.” Id. (citing in support Hazeltine Research, Inc. v.
`Brenner, 382 U.S. 252, 255–256 (1965) and Alexander Milburn Co. v.
`Davis-Bournonville Co., 270 U.S. 390 (1926)). But Petitioner’s cited
`authorities do not help settle the incorporation question before us; the
`holding in these cases assumes incorporation is already established.
`Cf. Hazeltine Research, 382 U.S. at 253 (describing the issue as involving
`“disclosures made by patents previously issued”); Alexander Milburn, 270
`U.S. at 399–401 (discussing disclosure in “Clifford’s application” that
`matured into a patent and noting that “Clifford had done all that he could do
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`to make his description public. He had taken steps that would make it public
`as soon as the Patent Office did its work.”).
`
`2. Southwest Software
`We find a different decision by our reviewing court, Southwest
`
`Software, Inc. v. Harlequin Inc., 226 F.3d 1280, 1295 (Fed. Cir. 2000)
`(“Southwest Software”), not cited by either party, instructive on how to
`assess whether the Slivka Appendices are a part of the specification of the
`’695 patent.
`Southwest Software concerned, inter alia, U.S. Patent No. 5,170,257
`B1 (“ʼ257 patent”). The ʼ257 patent expressly states that “a computer
`program listing printout appendix” is “[i]ncorporated herein.” Southwest
`Software, 226 F.3d at 1291 (quoting the ʼ257 patent, col. 1, ll. 8–19).
`Although this language appeared in the published patent, the “Program
`Printout Appendix” was discovered, during a trial involving that patent, to
`be missing from a certified copy of the ʼ257 patent. To correct the omission,
`the patent owner requested that the Patent and Trademark Office (PTO)
`issue a certificate of correction under 35 U.S.C. § 254. Id. The Federal
`Circuit noted the following:
`[T]he PTO granted the request and issued a certificate of
`correction adding the Program Printout Appendix to the patent.
`The PTO determined that the appendix had been filed with the
`application for the ʼ257 patent and that the separation and loss of
`the appendix, as well as the failure to print the appendix in the
`issued patent, were the result of an error on its part. The PTO
`effected the correction by doing two things. First, it added the
`following sentence at the end of the paragraph quoted above: “A
`complete copy of the Program Printout Appendix is included.”
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`Second, it inserted the Appendix after line 63 in column 13 of
`the patent, immediately before the recitation of the claims.
`
`Id.
`
`One of the issues in the case was whether the PTO’s certificate of
`correction (that added the Program Printout Appendix to the patent) was
`effective for causes of action arising before it issued (so as to be effective in
`the then-pending district court litigation, which was on appeal to the Federal
`Circuit). In the course of deciding that issue, the Federal Circuit made this
`observation:
`For example, a patent with a single claim in means-plus-function
`form might, through a PTO mistake, omit from the specification
`the structure, material, or acts corresponding to the function
`recited in the claim. Until the PTO issues a certificate of
`correction pursuant to 35 U.S.C. § 254 adding the corresponding
`structure, such a claim would appear invalid to the public, and
`reasonable competitors would be justified in conducting their
`affairs accordingly. In such a case, where the claim is invalid on
`its face without the certificate of correction, it strikes us as an
`illogical result to allow the patent holder, once the certificate of
`correction has issued, to sue an alleged infringer for activities
`that occurred before the issuance of the certificate of correction.
`Moreover, it does not seem to us to be asking too much to expect
`a patentee to check a patent when it is issued in order to
`determine whether it contains any errors that require the issuance
`of a certificate of correction. In this case, the omission of the
`Program Printout Appendix from the ʼ257 patent resulted in the
`absence of approximately 330 pages of text from the
`specification. It would seem that such an error would be readily
`apparent.
`Southwest Software, 226 F.3d at 1295–1296 (emphasis added). The Federal
`Circuit remanded to determine if the uncorrected patent would have been
`invalid for failure to comply with the enablement and best mode
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`requirements then in effect without the disclosure in the Program Printout
`Appendix. Id. at 1297.
`Similar to the ʼ257 patent at issue in Southwest Software, the ’695
`patent omits the Slivka Appendices. In contrast to the ʼ257 patent, the ’695
`patent does not even contain an express statement about the incorporation of
`appendices. Accordingly, as was the case for the ʼ257 patent with respect to
`the Program Printout Appendix prior to the filing of the certificate of
`correction, we find the’695 patent does not include the contents of the Slivka
`Appendices.
`
`C.
`
`Prior Art Status of the Slivka Appendices
`
`We have determined that Petitioner’s challenge relies on the Slivka
`Appendices (Ex. 1005, 69–245) missing from the ’695 patent (Ex. 1004) as
`published because the Slivka Appendices were not incorporated by reference
`into the ’695 patent specification. Thus, there is no sufficient indication on
`this record to establish a reasonable likelihood that the Slivka Appendices
`are available prior art for an inter partes review, as they are not part of the
`patent. 35 U.S.C. § 311(b); see Hulu, LLC v. Sound View Innovations, LLC,
`IPR2018-01039, Paper No. 29 at 12–13 (December 20, 2019) (precedential)
`(discussing the standard at institution for a showing regarding the public
`availability of non-patent art).
`On this record, Petitioner has not sufficiently shown that the Slivka
`Appendices, as separately-filed documents, should be accorded their
`stamped “DEC 6 1996,” date for prior art purposes. As Patent Owner
`correctly explains, “the rule requiring publication of applications ‘after the
`expiration of a period of eighteen months from the earliest filing date for
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`
`which a benefit is sought’ was not effective until November 29, 2000.”
`Prelim. Resp. 14–15, 21 (citing 65 Fed. Reg. 57,024). For applications filed
`before November 29, 2000, as here, “the prosecution history of an
`application remain[ed] confidential until the application itself issue[d] as a
`patent.” Hyatt v. U.S. Patent and Trademark Office, 797 F.3d 1374, 1378
`(Fed. Cir. 2015). The current record, at most, might support a likelihood
`that the Slivka Appendices could be accorded the date they were first made
`publicly available, which is May 9, 2000, the date the ’695 patent issued.
`See 37 C.F.R. § 1.11 (a) (“After a patent has been issued or a statutory
`invention registration has been published, the specification, drawings, and
`all papers relating to the case in the file of the patent or statutory invention
`registration are open to inspection by the public, and copies may be obtained
`by paying the fees therefore.”). As Patent Owner points out, however, this is
`“at least thirteen months after the ’407 patent’s effective filing date,” i.e.,
`April 26, 1999 (based on a claim for priority to, inter alia, U.S. Provisional
`Application Ser. No. 60/131,083). Prelim. Resp. 29; Ex. 1001, code (60),
`1:8–19. In addition, Petitioner only presents a case for availability of the
`Slivka reference under pre-AIA § 102(e). Pet. 10; Prelim. Reply.
`On this record, Petitioner does not establish a reasonable likelihood
`that the Slivka Appendices are “(1) an application for patent, published
`under section 122(b), . . . or (2) a patent granted on an application for
`patent.” 35 U.S.C. § 102(e). Accordingly, the relied-upon Slivka
`Appendices do not qualify as prior art under § 102(e), as Petitioner asserts.
`See Pet. 10.
`
`16
`
`
`
`IPR2023-00939
`Patent 8,510,407 B1
`
`
`III. CONCLUSION
`Each of Petitioner’s invalidity contentions relies, in part, on
`disclosures from the Slivka Appendices, which Petitioner asserts qualify as
`prior art under § 102(e). Pet. 7. Because Petitioner has not established a
`reasonable likelihood of showing that the material it relies on was available
`as prior art at the time of the invention, we determine that the Petitioner has
`not satisfied its burden from the onset to show with particularity why the
`patent claims it challenges are unpatentable. 35 U.S.C. § 312(a)(3).
`Petitioner has not demonstrated a reasonable likelihood that it would
`prevail in showing the unpatentability of any of claims 1–24 of the ’407
`patent under the asserted grounds, all of which rely on the Slivka
`Appendices.
`
`IV. ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED that, pursuant to 35 U.S.C. § 314(a), inter partes review
`of claims 1–24 of the ’407 patent is denied.
`
`
`
`
`
`
`17
`
`
`
`IPR2023-00939
`Patent 8,510,407 B1
`
`For PETITIONER:
`Paul R. Hart
`Adam P. Seitz
`Keving Rongish
`ERISE IP, P.A.
`paul.hart@eriseip.com
`adam.seitz@eriseip.com
`kevin.rongish@eriseip.com
`
`For PATENT OWNER:
`Jason S. Charkow
`Richard Juang
`Chandran B. Iyer
`DAIGNAULT IYER LLP
`jason.s.charkow@gmail.com
`richard.juang@gmail.com
`cbiyer@daignaultiyer.com
`
`
`
`
`
`
`
`
`18
`
`
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