Trials@uspto. gov
`Tel: 571-272-7822
`
`Paper13
`Date: May 31, 2023
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`MICROSOFT CORPORATION,
`Petitioner,
`
`V.
`
`THROUGHPUTER,INC.,
`Patent Owner.
`
`IPR2022-01566
`Patent 11,036,556 B1
`
`Before MICHAEL R. ZECHER, MATTHEW S. MEYERS, and
`JULIET MITCHELL DIRBA,Administrative Patent Judges.
`
`DIRBA,Administrative Patent Judge.
`
`DECISION
`Denying Institution of /nter Partes Review
`35 US.C. $314
`
`
`Tel: 571-272-7822
`
`Paper13
`Date: May 31, 2023
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`MICROSOFT CORPORATION,
`Petitioner,
`
`V.
`
`THROUGHPUTER,INC.,
`Patent Owner.
`
`IPR2022-01566
`Patent 11,036,556 B1
`
`Before MICHAEL R. ZECHER, MATTHEW S. MEYERS, and
`JULIET MITCHELL DIRBA,Administrative Patent Judges.
`
`DIRBA,Administrative Patent Judge.
`
`DECISION
`Denying Institution of /nter Partes Review
`35 US.C. $314
`
`
`
`IPR2022-01566
`Patent 11,036,556 B1
`
`On November7, 2022, Microsoft Corporation (“Petitioner”)filed a
`
`Petition requesting interpartes review of claims 1—8 of U.S. Patent
`
`No. 11,036,556 B1 (Ex. 1001, “the °556 patent”). Paper 2 (“‘Pet.”).
`
`ThroughP uter, Inc. (“Patent Owner”) timely filed a Preliminary Response.
`
`Paper 8 (Prelim. Resp.”). With our authorization (Paper 10), Petitioner
`
`filed a Preliminary Reply (Paper 11, “Prelim. Reply”), and Patent Owner
`
`filed a Preliminary Sur-Reply (Paper12, “Prelim. Sur-Reply”).
`
`An interpartes review may not be instituted unless “the information
`
`presentedin the petition .. . and any response. .
`
`. showsthat there 1s 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).
`
`For the reasons given below, on this record, Petitioner has not
`
`established a reasonable likelihood that it would prevail in showing the
`
`unpatentability of at least one challenged claim. Accordingly, we do not
`
`institute an interpartes review ofthe *556 patent.
`
`I. BACKGROUND
`
`A. RelatedMatters
`
`Theparties indicate that the ’556 patent has been asserted in
`
`ThroughPuter, Inc. v. Microsoft Corp., No. 2:22-cv-00492-BJR(W.D.
`
`Wash.), which wasconsolidated with ThroughPuter, Inc. v. Microsoft Corp.,
`
`No. 2:22-cv-00344-BJR (W.D. Wash. ). Pet. 76; Paper 4 (Patent Owner’s
`
`Mandatory Notices), 2. The parties also state that Petitioner has challenged
`
`other patents from thatlitigation in IPR2022-00527, IPR2022-00528,
`
`IPR2022-00574, IPR2022-00757, and IPR2022-00758. Id.
`
`
`
`IPR2022-01566
`Patent 11,036,556 B1
`
`B. The Petition’s Asserted Grounds
`
`Petitioner asserts the following groundsof unpatentability (Pet. 2):
`
`Kupferschmidt?, Tuan?
`
`103
`
`Kupferschmidt, Tuan, Brent*
`
`Kupferschmidt, Tuan, Brent, Sandstrom-501
`
`Kupferschmidt, Tuan, Sandstrom-501°
`
`In support of its contentions, Petitioner relies on the testimonyofJeffreyS.
`
`Chase, Ph.D. (Ex. 1003) and June Ann Munford (Ex. 1007).
`
`C. Summary ofthe ’556 Patent
`
`The *556 patentis titled “Concurrent Program Execution
`
`Optimization.” Ex. 1001, code (54). The application that led to the °556
`
`' The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125
`Stat. 284, 285-88 (2011), revised 35 U.S.C. § 103 effective March 16, 2013.
`The challenged patent wasfiled after March 16, 2013 and claimspriority to
`applicationsfiled after that date. As a consequence, werefer to the current
`version ofthe statute. Accord Pet. 2.
`
`2 US 2010/0333099 A1, published Dec. 30, 2010 (Ex. 1004).
`3 Vu Manh Tuan,“A Study on a Multitasking Environment for Dynamically
`Reconfigurable Processors,” Doctoral Dissertation, School of Science for
`Open and Environmental Systems Graduate School of Science and
`Technology, Keio University (2009) (Ex. 1005).
`+ US 2010/0131955 Al, published May 27, 2010 (Ex. 1006).
`5 US 2012/0079501 Al, published Mar. 29, 2012 (Ex. 1010).
`
`
`
`IPR2022-01566
`Patent 11,036,556 B1
`
`patent wasfiled on March8, 2021, claiming priority to applicationsfiled as
`
`early as August 23, 2013.
`
`/d. at (22), (60), (63).
`
`The Specification is directed to “managing execution of multiple
`
`concurrent, multi-task software programson parallel processing hardware.”
`
`Ex. 1001, 1:45—48. Figure 2 of the 556 patent is reproduced below.
`
` App.
`
`load
`adaptive
`
`
`| manyeore
`
`puis 49 10 systef
`30 | prosessing
`(form inter-system toad balancers}
`system
`
`GE (entry
`
`
`j Worket siage #1
`
`\
`vOpore 4g
`fA (worker:
`
`
`
`inter
`™ f{ sage #1 :
`
`
`stage
`|
`packet
`switch
`|
`(FS)
`|
`
`20woven siage #2
`\) 308
`\ YOporis aefWworKer |
`
`
`
`\ pens 8006825 |
`
`AY
`ed
`
`i
`
`ji
`
`
`
`
`
`sfuls-stege
`i manyoore
`: processing
`i system d
`
`
`
`|
`
`|
`
`Worker stage #3
`¥O ports 40
`
`FIG. 2
`
`Figure 2 is a functional block diagram of multi-stage manycore processing
`
`system 1, which is shared dynamically among tasks of multiple application
`
`programs(apps) andinstances(insts) thereof.
`
`/d. at 5:18—21, 10:29-32. For
`
`each of the apps, each task is located at one of the processing stages 300. Jd.
`
`at 10:32—33. Nevertheless, for any given app-inst, copies of same task
`
`
`
`IPR2022-01566
`Patent 11,036,556 B1
`
`software can be located at more than one ofthe processing stages 300 of a
`
`given system 1, thus supporting any combination ofpipelined and/or
`
`parallelized processing.
`
`/d. at 10:34—41. Hardwarelogic is implemented for
`
`scheduling tasks of application program instancesandprioritizing inter-task
`
`communications (ITC) among tasks of a given app instance.
`
`/d. at 10:10—
`
`13.
`
`D. Challenged Claims
`
`Petitioner challengesall eight claims of the ’556 patent. Ofthese,
`
`only claim 1 1s independent. It recites:
`
`A methodperformedin a data processing system,
`1.
`the method comprising:
`
`receiving, by hardware logic and/or softwarelogic,
`requests to perform different tasks on behalf of instances of a
`plurality of programs managedby a data processing system;
`identifying, by the hardwarelogic and/or softwarelogic
`for each of the instances, communication interdependencies
`between different processing stages of a set of processing stages
`of the respective instance;
`based on conditions in the data processing system,
`dynamically varying, by the hardware logic and/or software
`logic, structures of field-programmable gate arrays used to
`processdifferent tasks of the instancesof the plurality of
`programs, the structures being dynamically varied by
`
`identifying available field-programmable gate
`arrays of the data processing system that are available to
`processdifferent processing stages of requesting
`instances ofrespective programs,
`
`basedat least on the conditions in the data
`processing system, identifying selectedfield-
`programmable gate arrays from the available field-
`programmable gate arrays to execute the different
`
`
`
`IPR2022-01566
`Patent 11,036,556 B1
`
`processing stages of the requesting instances of the
`respective programs,
`
`configuring the selected field-programmable gate
`arrays to process a respective processing stage of a
`respective requesting instance, and
`
`configuring certain selected field-programmable
`gate arrays to support communicating, by the task
`executing on the respective field-programmable gate
`array, final results to a requesting client over a network in
`the data processing system.
`
`Ex. 1001, 21:26—22:11.
`
`Il. ANALYSIS
`
`A. Law on Obviousness
`
`The legal question of obviousnessis resolved on the basis of
`
`underlying factual determinations including (1) the scope and contentof the
`
`priorart; (2) any differences between the claimed subject matter and the
`
`priorart; (3) the level of ordinary skill in the art; and (4) whenin evidence,
`
`objective evidence of nonobviousness. Grahamy. John Deere Co. ofKan.
`
`City, 383 U.S. 1, 17-18 (1966). One seekingto establish obviousness based
`
`on more than one reference also mustarticulate sufficient reasoning with
`
`rational underpinnings to combine teachings. See KSR Int’] Co. v. Teleflex
`
`Inc., 550 U.S. 398, 418 (2007).
`
`B. Level ofOrdinary Skill in the Art
`
`Petitionerasserts that the level of ordinary skill in the art corresponds
`
`to “a Master’s degree in computer science, computer engineering, or a
`
`related field, and 2—3 years of practical computer programmingor
`
`engineering experience, including experience designing or researching
`
`
`
`IPR2022-01566
`Patent 11,036,556 B1
`
`parallel processing systems.” Pet. 6 (citing Ex. 1003 9] 18-20). Patent
`
`Ownerdoesnot address the level of ordinary skill in the art. See Prelim.
`
`Resp.
`
`On the present record, weare satisfied that Petitioner’s proposed
`
`definition generally comports with the level of skill necessary to understand
`
`and implement the teachings of the 556 patent (see Ex. 1003 § 19), and for
`
`purposesofthis Decision, we adopt Petitioner’s proposedlevelofskill.
`
`C. Obviousness Grounds Based on Kupferschmidt and Tuan
`
`Petitioner relies on a combination of Kupferschmidt and Tuan for
`
`each of the groundspresentedin the Petition. Pet. 2,7—71. According to
`
`Petitioner, “Tuanis a doctoral dissertation” published in October 2009, over
`
`three years before the earliest possible priority date for the °556 patent.
`
`/d.
`
`at 2, 10; Prelim. Reply 3-7. Patent Ownerarguesthat Petitioner does not
`
`establish that Tuan qualifies as a printed publication. Prelim. Resp. 14-20;
`
`Prelim. Sur-Reply 4—7. For the reasons explained below, we agree with
`
`Patent Owner.
`
`1. Legal Standard
`
`For a reference to qualify as a printed publication, it “must have been
`
`sufficiently accessible to the public interested tn the art.” /n re Lister, 583
`
`F.3d 1307, 1311 (Fed. Cir. 2009) (quoting /n re Cronyn, 890 F.2d 1158,
`
`1160 (Fed. Cir. 1989)). The touchstoneis “public accessibility,” and this “is
`
`determined on a case-by-case basis based on the ‘facts and circumstances
`
`surrounding the reference’s disclosure to membersof the public.’” /d.
`
`(quoting /n re Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004); In re
`
`Hall, 781 F.2d 897, 898-99 (Fed. Cir. 1986)). “A given referenceis
`
`
`
`IPR2022-01566
`Patent 11,036,556 B1
`
`“publicly accessible’ uponasatisfactory showing that such document has
`
`been disseminated or otherwise made available to the extent that persons
`
`interested and ordinarily skilled in the subject matteror art[, | exercising
`
`reasonable diligence, can locate it.” SR/Int'l, Inc. v. Internet Sec. Sys., Inc.,
`
`511 F.3d 1186, 1194 (Fed. Cir. 2008) (quoting Bruckelmyer v. Ground
`
`Heaters, Inc., 445 F.3d 1374, 1378 (Fed. Cir. 2006)).
`
`“Whenareference 1s uploaded to a website or deposited in a library,
`
`the fact that the referenceis indexed or cataloged in some waycanindicate
`
`that it is publicly accessible.” Samsung Elecs. Co. v. Infobridge Pte. Ltd.,
`
`929 F.3d 1363, 1369 (Fed. Cir. 2019). “In certain situations, particularly for
`
`manuscripts or dissertations stored in libraries, courts may inquire whether a
`
`reference wassufficiently indexed, catalogued, and shelved.” Hulu v. Sound
`
`View Innovations, LLC, IPR2018-01039, Paper 29 at 9 (PTAB Dec. 20,
`
`2019) (precedential). There ts no strict requirement for indexing,
`
`searchability, cataloging, or shelving. See, e.g., Samsung, 929 F.3d at 1369;
`
`Jazz Pharms., Inc. v. Amneal Pharms., LLC, 895 F.3d 1347, 1359 (Fed. Cir.
`
`2018). Butit is “critical” that there be “some evidencethat a person of
`
`ordinary skill could have reasonably found”the reference. Samsung, 929
`
`F.3dat 1369. A reference “is not publicly accessible if the only people who
`
`know howtofind it are the ones whocreated it.” /d. at 1372.
`
`“TAJt the institution stage, the petition mustidentify, with
`
`particularity, evidence sufficient to establish a reasonable likelihood that the
`
`reference was publicly accessible before the critical date of the challenged
`
`patent and therefore that there is a reasonable likelihood thatit qualifies as a
`
`printed publication.” Hulu, IPR2018-01039, Paper 29 at 13. “[T]here is no
`
`
`
`IPR2022-01566
`Patent 11,036,556 B1
`
`presumption in favorof institution or in favor of finding a reference to be a
`
`printed publication.” /d. at 16.
`
`2. The Parties’ Dispute
`
`Petitioner contends that Tuan, a doctoral dissertation, was published
`
`in the Keio University library in October 2009. Pet. 2,10. To support this
`
`contention, Petitioner relies upon the testimony of Ms. Munford,“an
`
`experienced expert in library and information sciences.” /d. at 10 (citing
`
`Ex. 1007 ff 1-11, pp. 22-30). Ms. Munfordtestifies that she secured the
`
`MARC*record for Tuan as held by the Keio University library, and she
`
`includes the MARCrecord and a certified translation of it as an appendix to
`
`her declaration. Ex. 10074 10 (citing id. at 22-30). Ms. Munfordalso
`
`testifies that the “008 field” of this MARCrecord“indicates the Keio
`
`Unversity library first acquired this dissertation as of October 1, 2009,” and
`
`from this, Ms. Munfordtestifies that Tuan “was made available to the public
`
`shortly after its mitial acquisition in Fall 2009.” /d. 4 11. Petitioner submits
`
`that this date is consistent with the year on Tuan’s title page. Pet. 10 (citing
`
`Ex. 1005, 1).
`
`Patent Ownercontendsthat Petitioner fails to establish that Tuan
`
`qualifies as a printed publication for two independent reasons. Prelim.
`
`Resp. 14—20. First, Patent Ownerarguesthat Petitionerfails to sufficiently
`
`show that the MARCrecordrelates to the version of Tuanfiled in this
`
`proceeding(1.e., Exhibit 1005) and, thus, that “Ms. Munfordat best
`
`establishes that a different documentthat is not Ex. 1005 wasavailable in
`
`2008.” /d. at 15—17 (emphasis omitted and added). Second, Patent Owner
`
`° “MARC”is an acronym for Machine Readable Catalog. Ex. 100775.
`
`
`
`IPR2022-01566
`Patent 11,036,556 B1
`
`arguesthat, even if Petitioner showstechnical availability, it fails to show
`
`public accessibility.
`
`/d. at 17-20; see id. at 19 (arguing that this “1s a classic
`
`example of technical accessibility, which is insufficient to meet Hulu’s
`
`public accessibility requirement’) (citing Hulu, IPR2018-01039, Paper 29 at
`
`10). According to Patent Owner,Petitionerfails to provide any explanation
`
`of how an ordinary artisan could have found Tuan with the exercise of
`
`reasonable diligence (id. at 18), and Petitionerfails to provide evidence to
`
`support such a finding (id. at 18-19).
`
`3. Analysis
`
`On this record, we agree with Patent Ownerthat Petitionerfails to
`
`provide evidence sufficient to show that Tuan (a doctoral thesis) was
`
`publicly accessible before the critical date, and as a result, we determine that
`
`Petitionerfails to sufficiently establish that Tuan qualifies as a printed
`
`publication. See Hulu, IPR2018-01039, Paper 29 at 13. For purposes of our
`
`analysis, we have assumed (without deciding) that all of Petitioner’s
`
`evidencerelates to the same version of Tuan (1.e., Exhibit 1005), and we
`
`assume that Tuan wasreceived by the Keio University library on October1,
`
`2009, as indicated by the MARCrecord located by Ms. Munford (see
`
`Ex. 1007, pp. 23-24).
`
`Webegin by observingthat the Petition never squarely addresses
`
`whether Tuan waspublicly accessible, andit also does not expressly contend
`
`that an ordinary artisan could have located Tuan with reasonable diligence.
`
`See Pet. 2,10. Petitioner’s entire argument for qualifying Tuan asaprinted
`
`publication is reproduced below:
`
`Tuan is a doctoraldissertation titled “A Study ona
`Multitasking Environment for Dynamically Reconfigurable
`
`10
`
`
`
`IPR2022-01566
`Patent 11,036,556 B1
`
`Processors,” which published in 2009—1.e., somefour years
`before the earliest possible priority date of the °556 Patent.
`According to Ms. June Munford, an experienced expert in
`library and information sciences, Tuan “was madeavailable to
`the public shortly after its mitial acquisition [by the Keio
`Unversity library] in Fall 2009.” Ms. Munford’s determination
`is supported bylibrary records that demonstrate Keio
`Unversity library’s acquisition of Tuan in October 2009, andis
`consistent with the year (2009) printed on Tuan’s title page.
`
`7d. at 10 (citing Ex. 1003 4] 48-51; Ex. 1005, 1; Ex. 1007 4] 1-11, pp. 22-
`
`30). Although these contentions are relevant to Tuan’s date, they are not
`
`sufficient to establish its accessibility to an ordinary artisan. See
`
`Acceleration Bay, LLC v. Activision BlizzardInc. , 908 F.3d 765, 773 (Fed.
`
`Cir. 1998) (““[P Jublic accessibility’ requires more than technical
`
`accessibility.”).
`
`Wehave considered the evidencePetitionercites, but it also falls
`
`short. See Pet. 10. Petitioner points to Dr. Chase’s testimony and Tuan
`
`itself, but neither is probative of Tuan’s public accessibility—Dr. Chase
`
`simply summarizesthe contents of Tuan (see Ex. 1003 4] 48-51), and Tuan
`
`itself has no conventional markersofpublication (see Ex. 1005, 1).
`
`Petitioneralso relies upon Ms. Munford’s declaration, but her testimony
`
`doesnot indicate that an ordinary artisan could have located Tuan with
`
`reasonable diligence. See Ex. 1007 4 1-11, pp. 22-30. Ms. Munford
`
`testifies regarding her credentials (Ex. 1007 4] 1-5), provides background
`
`information on MARCrecords(id. 4 5—8), and states that she located the
`
`MARCrecordfor Tuan from the library’s public catalog (id.9-10). She
`
`also addresses Tuan’s date, stating:
`
`The 008 field of the MARCrecord in Appendix
`TUANO1 indicates the date of record creation. The 008 field of
`Appendix TUANO1 indicates the Keio University library first
`
`11
`
`
`
`IPR2022-01566
`Patent 11,036,556 B1
`
`acquired this dissertation as of October 1, 2009. Considering
`this information, it is my determination that Exhibit 1005 4
`Study on a Multitasking Environmentfor Dynamically
`Reconfigurable Processors was madeavailable to the public
`shortly after its mitial acquisition in Fall 2009.
`
`Id. { 11; see id. at pp. 22-30 (Appendix TUANO1). Ms. Munford does not
`
`otherwise address Tuan, and Ms. Munford’s conclusory assertion that Tuan
`
`“was madeavailable to the public” (id. § 11) is insufficient. As our
`
`reviewing court has explained,it is “critical” that there be “some evidence
`
`that a person of ordinary skill could have reasonably found”the reference.
`
`Samsung, 929 F.3d at 1369; see also id. at 1372 (stating that a reference “‘is
`
`not publicly accessible if the only people who know howtofindit are the
`
`ones whocreated it”). In other words, even assuming that Ms. Munford
`
`establishes Tuan was technically available to the public in October 2009, her
`
`testimonyfails to support a finding that an ordinary artisan could have
`
`located Tuan with reasonablediligence.
`
`In its Preliminary Reply, Petitionerrelies on “the MARC. .
`
`. itself,”
`
`arguing that it “provides meaningful evidence of indexing and public
`
`accessibility.” Prelim. Reply 5—6. Petitioner’s argumentis as follows:
`
`For instance, the MARCrecorditself indicates that Tuan was
`“la|vailable” and shelvedat the “Main Building.” It further
`includes a range of searchable metadataincludingthetitle,
`author, and academic dissertation details. Tuan’s title is plainly
`descriptive ofits subject matter, and would have ensuredthat
`the thesis could be readily accessed exercising reasonable
`diligence (e.g.,a keyword search). The declaration even shows
`[the] webpage from which the MARCrecord wassearched.
`
`Id. at 6 (citing Ex. 1007, pp. 25-28; Lister, 583 F.3d at 1316; M&K
`
`Holdings, 985 F.3d at 1382). In addition, Petitioner contendsthat “[t]he
`
`specific function of MARCrecordsis to provide searchable entries for
`
`12
`
`
`
`IPR2022-01566
`Patent 11,036,556 B1
`
`catalogued worksin a library.” /d. at 6n.2. Petitioner’s argumentis not
`
`persuasive for several reasons.
`
`First, Petitioner’s argument improperly conflates the MARCrecord
`
`itself with the website from which the MARCrecord was obtained. The
`
`Appendix at issue includes the MARCrecorditself (Ex. 1007, p. 23) andits
`
`translation (id. at p. 24), as well as a December 2021 screenshot ofthe
`
`library catalog used by Ms. Munford to obtain that record (id. at p. 25) anda
`
`translation of this screenshot(id. at pp. 26-29). See also id. pp. 25
`
`(“screenshot-search.lib. keto. ac.jp-2021.12.10-072947” (emphasis added)),
`
`30 (translator’s certification attesting to translation of two documents);
`
`Prelim. Resp. 6 (“The declaration even shows[the] webpage from which the
`
`MARCrecord wassearched.”(citing Ex. 1007, pp. 25—26)). In its
`
`Preliminary Reply, Petitioner cites the website screenshot when purporting
`
`to discuss “the MARCrecorditself” (Prelim. Reply 6 (citing Ex. 1007, pp.
`
`25—28)), but the two are not the same (compareEx. 1007 p. 23, with id. at
`
`p. 25).
`
`This is important becausethe screenshotofthe library catalog is dated
`
`December 2021 (Ex. 1007, p. 25), over eight years after the August 2013
`
`critical date (see Pet. 2). Neither Petitioner nor Ms. Munforddiscuss the
`
`library catalog itself or the screenshot provided, and the record includes no
`
`evidence that the screenshot depicts an archived version ofthe library’s
`
`catalog. In fact, there is no evidencethat this catalog (or a substantially
`
`similar one) existed on or beforethecritical date. Accordingly, we
`
`determine that the December 2021 screenshot (Ex. 1007, pp. 25—29) is not
`
`probative of whether Tuan waspublicly accessible before the critical date.
`
`As a result, the evidence does not support Petitioner’s contention that Tuan
`
`13
`
`
`
`IPR2022-01566
`Patent 11,036,556 B1
`
`was“available” and shelvedat the “Main Building” before thecritical date,
`
`as this information 1s not apparent from the MARCrecorditself. Prelim.
`
`Reply 6 (cleaned up) (citing Ex. 1007, pp. 25—26); see Ex. 1007,p. 24.
`
`Second, Petitioner’s speculation that an ordinary artisan might have
`
`found Tuan using a keywordsearchofthetitle field (see Prelim. Reply 6) is
`
`also unavailing. As Patent Ownerobserves, “Petitioner stops short of even
`
`providing attorney argument that Ex. 1005 could have been located through
`
`a keyword search in 2013.” Prelim. Sur-Reply 7. Weagree. In our view,
`
`Petitioner’s vague reference to a keywordsearchis insufficient—it fails to
`
`explain How or why an ordinary artisan, exercising reasonable diligence,
`
`would have located Tuan. For example, Petitioner does not even propose a
`
`hypothetical keyword search that an ordinary artisan would have used. Cf
`
`Lister, 583 F.3d at 1315—16 (finding public accessibility based on particular
`
`keyword search that would have yielded reference). This is problematic
`
`because Tuan’s title appears to have only two termsthat could be relevantto
`
`sucha search: “multitasking” and “dynamically reconfigurable processors.”
`
`Ex. 1007, p. 24. Petitioner does not explain why an ordinary artisan would
`
`have searched for both of these terms, and we question whethera search for
`
`only one of them would yield an excessive numberofresults.
`
`Moreover, Petitioner fails to provide evidence that would support such
`
`an argument. The record includes no evidence that a keyword searchofthe
`
`title field could have been performed at the time. Although thelibrary
`
`catalog allowed a “search” in December 2021 (see Ex. 1007, pp. 25—26
`
`(“New search’’)), there is no evidence regarding any search functionality
`
`before the critical date, over eight years prior. We are tempted to assume
`
`that at least one of the MARCfields would have been searchableat the
`
`14
`
`
`
`IPR2022-01566
`Patent 11,036,556 B1
`
`relevant tmme—the MARCrecordis, by definition, “Machine Readable”
`
`(Ex. 1007 4 5)—butthere is no evidence that any software (such as an online
`
`catalog) allowed a keywordsearch onthe ‘title field of the MARCrecords
`
`before the critical date.’ It is not our role to assumefacts not in evidence.
`
`Rather, it is Petitioner’s burdento “identify, withparticularity, evidence
`
`sufficient to establish a reasonable likelihood that the reference waspublicly
`
`accessible before the critical date.” Hulu, IPR2018-01039, Paper 29 at 13
`
`(emphasis added).
`
`Finally, Petitioner argues that previous Board decisions “have
`
`repeatedly sustained publication evidence based on MARCrecords and
`
`similar librarian analysesto those offered by Ms. Munford.” Prelim.
`
`Reply 7. Wedisagree. Petitioner cites four non-precedential Board
`
`decisions in support of its argument, but each 1s readily distinguishable.
`
`In
`
`the decision discussed by Petitioner, the Board did not find a MARCrecord
`
`alone sufficient to show public accessibility, as Petitioner suggests (id. ), but
`
`rather determinedthat three articles published in conference proceedings
`
`were publicly accessible given “the indicia of publication and public
`
`accessibility on the face of each ofthe references, availability of the
`
`references on the IEEE website, and the cataloguing of the Proceedingsfor
`
`each of the papers in variouslibraries.” /ntel Corp. v. FG SCRLLC,
`
`IPR2020-01449, Paper 13 at 43-44 (PTAB Mar.3, 2021); see id. at 39-41,
`
`43. Fortwo other decisions, the disputed issue was whetherthe petitioner
`
`had sufficiently shownthat an article was actually included in a conference’s
`
`7 Cf Lister, 583 F.3d at 1315 (indicating that, in the mid-1990s, the
`Copyright Office’s automated, electronic catalog “could only be searched by
`either the author’s last nameorthe first wordof thetitle ofthe work”).
`
`15
`
`
`
`IPR2022-01566
`Patent 11,036,556 B1
`
`proceedings, and it appears the patent ownerdid not dispute that the
`
`conference proceedings themselves were publicly accessible. Nearmap US,
`
`Inc. v. Eagle View Techs., Inc. ,1PR2022-01009, Paper 7 at 18-19 (PTAB
`
`Dec. 14, 2022); Apple Inc. v. AliveCor, Inc. , 1PR2022-00872, Paper 7 at 34—
`
`35 (PTAB Nov. 10, 2022). The final decision addresseda different issue
`
`(1.e., whether the MARCrecord submitted by petitioner wasfor a different
`
`version of the document), and the documentitself was a book with indicia of
`
`publication including a publisher and ISBN information. Microchip Tech.
`
`Inc. v. Bell Semiconductor, LLC, IP R2021-00148, Paper 19 at 28-30 (PTAB
`
`May14, 2021). Asa result, none of these four decisions support Petitioner’s
`
`contention that a MARCrecord (showing,at best, a library’s receipt of the
`
`document beforethe critical date) is sufficient by itself, without additional
`
`explanation or evidence, to show that a doctoral thesis was publicly
`
`accessible at that time.
`
`4. Conclusion
`
`For the reasons explained above, we determinethat Petitionerfails to
`
`identify, with particularity, evidence sufficient to establish a reasonable
`
`likelihood that Tuan waspublicly accessible beforethe critical date. See
`
`Hulu, 1PR2018-01039, Paper 29 at 13. Asa result, we determine that
`
`Petitioner fails to showareasonable likelihood that Tuan qualifies as a
`
`printed publication. See id.
`
`Eachofthe groundspresented in the Petition relies on a combination
`
`of Kupferschmidt and Tuan (Pet. 2), so we determine that Petitioner has not
`
`shown a reasonable likelihood that it will prevail with respectto its
`
`assertions that claims 1—8 would have been unpatentable over the proposed
`
`16
`
`
`
`IPR2022-01566
`Patent 11,036,556 B1
`
`combinations of Kupferschmidt and Tuan. As a consequence, wedo not
`
`institute an interpartes review.
`
`IH. ORDER
`
`It is ORDEREDthatthe Petition is denied and no interpartes review
`
`1s instituted.
`
`17
`
`
`
`IPR2022-01566
`Patent 11,036,556 B1
`
`FOR PETITIONER:
`
`W.Karl Renner
`David L. Holt
`Jennifer Huang
`Nicholas Stephens
`FISH & RICHARDSON P.C.
`axf-ptab@fr.com
`holt2@fr.com
`yh@fr.com
`nstephens@fr.com
`
`FOR PATENT OWNER:
`
`Scott A. McKeown
`ROPES & GRAY LLP
`scott. mckeown@ropesgray.com
`
`Michael A. Dorfman
`GARDELLA GRACE P.A.
`mdorfman@gardellagrace.com
`
`18
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
