Paper 23
`Trials@uspto.gov
`Date: March 26, 2020
`571-272-7822
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________
`
`GUARDIAN ALLIANCE TECHNOLOGIES, INC.,
`Petitioner,
`v.
`TYLER MILLER,
`Patent Owner.
`____________________
`
`IPR2020-00031
`Patent 10,043,188 B2
`____________
`
`Before SALLY C. MEDLEY, DAVID C. MCKONE,
`and JOHN R. KENNY, Administrative Patent Judges.
`
`MCKONE, Administrative Patent Judge.
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`
`Trials@uspto.gov
`Date: March 26, 2020
`571-272-7822
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________
`
`GUARDIAN ALLIANCE TECHNOLOGIES, INC.,
`Petitioner,
`v.
`TYLER MILLER,
`Patent Owner.
`____________________
`
`IPR2020-00031
`Patent 10,043,188 B2
`____________
`
`Before SALLY C. MEDLEY, DAVID C. MCKONE,
`and JOHN R. KENNY, Administrative Patent Judges.
`
`MCKONE, Administrative Patent Judge.
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`
`
`IPR2020-00031
`Patent 10,043,188 B2
`
`INTRODUCTION
`I.
`A. Background and Summary
`Guardian Alliance Technologies, Inc. (“Petitioner”) filed a Petition
`(Paper 1, “Pet.”) requesting inter partes review of claims 1, 5, 9, and 15 of
`U.S. Patent No. 10,043,188 B2 (Ex. 1001, “the ’188 patent”). Pet. 1.
`Petitioner indicates that Guardian Alliance Holdings, Inc., and the City of
`Oklahoma City are real parties-in-interest. Id. Tyler Miller (“Patent
`Owner”) filed a Preliminary Response (Paper 7, “Prelim. Resp.”).
`We have authority to determine whether to institute an inter partes
`review. See 35 U.S.C. § 314; 37 C.F.R. § 42.4(a) (2019). The standard for
`instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which
`provides that an inter partes review may not be instituted “unless . . . there is
`a reasonable likelihood that the petitioner would prevail with respect to at
`least 1 of the claims challenged in the petition.” Under the circumstances of
`this case, for the reasons explained below, we deny institution of an inter
`partes review of the ’188 patent.
`Petitioner also filed a Motion to Correct a Clerical Mistake in the
`Petition Under 37 C.F.R. § 42.104(c) (Paper 11, “Mot. to Correct”) and
`Patent Owner filed a Motion to Terminate IPR Proceeding (Paper 10,
`“Mot. to Terminate”).
`
`
`B. Related Matters
`The parties indicate that Patent Owner’s exclusive licensee, Miller
`Mendel, Inc., has asserted the ’188 patent against Petitioner’s real party-in-
`interest, the City of Oklahoma City, in Miller Mendel, Inc. v. City of
`Oklahoma City, Case No. 5:18-cv-00990-M (W.D. Ok.). Pet. 1; Paper 3, 1.
`
`
`2
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`IPR2020-00031
`Patent 10,043,188 B2
`C. The ’188 Patent
`The ’188 patent describes software related to facilitating the process
`of performing background investigations on, for example, job applicants.
`Ex. 1001, 1:14–16. Figure 1, reproduced below, illustrates an example:
`
`Figure 1 is a block diagram of core components of a background
`investigation management system. Id. at 1:48–51.
`
`
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`3
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`IPR2020-00031
`Patent 10,043,188 B2
`Using software system 100, Organization A can create and customize
`electronic documents 104 to send to applicants, who complete documents
`via software system 100 and return them to software system 100. Id. at 4:5–
`9. Software system 100 includes document creation component 114 and
`document management component 116. Id. at 4:9–11. In one feature,
`applicant information 124 can be shared between Organization A and
`Organization B. Id. at 4:15–21. Organization A can send electronic
`documents 104 to applicant 120 by emailing applicant 120 a link to log into
`software system 100. Id. at 5:29–35. Organization A can send and receive
`documents (e.g., questionnaires) to and from references (e.g., relatives,
`employers, co-workers, and neighbors) in a similar manner. Id. at 8:31–39.
`The software system also can include a feature that will retrieve law
`enforcement and court names, addresses, and phone numbers for a pre-
`defined radius around an address for the applicant, the applicant’s employer,
`or the applicant’s relatives. Id. at 9:48–52.
`Claim 1, reproduced below, is illustrative of the invention:
`1. A method for a computing device with a processor and
`a system memory to assist an investigator in conducting a
`background investigation of an applicant for a position within a
`first organization, comprising the steps of:
`receiving a first set of program data comprising
`information identifying the applicant, the position,
`the first organization, and the investigator;
`storing a new applicant entry in the system memory, the
`new applicant entry associated with the first set of
`program data;
`transmitting an applicant hyperlink to an applicant email
`address associated with the applicant, the applicant
`hyperlink for viewing an applicant set of electronic
`documents;
`
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`IPR2020-00031
`Patent 10,043,188 B2
`receiving an applicant electronic response with a
`reference set of program data, wherein the
`reference set of program data comprises
`information regarding a reference source, wherein
`the reference source is a person, the program data
`including a reference email address associated with
`the reference source;
`determining a reference class of the reference source
`based on the reference set of program data;
`selecting a reference set of electronic documents based
`on the reference class of the reference source;
`transmitting a reference hyperlink to the reference email
`address, the reference hyperlink for viewing the
`reference set of electronic documents;
`receiving a reference electronic response to the reference
`set of electronic documents from the reference
`source;
`storing the reference electronic response in the system
`memory, associating the reference electronic
`response with the new applicant entry; and
`generating a suggested reference list of one or more law
`enforcement agencies based on an applicant
`residential address.
`
`
`
`5
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`IPR2020-00031
`Patent 10,043,188 B2
`D. Evidence
`Petitioner relies on the references listed below.
`Reference
`Date
`
`Background
`Solutions
`LaPasta
`
`Background Solutions, LLC,
`Background Assistant video
`US 2005/0033633 A1
`
`Peace Officer Background
`Investigation Tracking System
`and Manual
`US 2008/0306750 A1
`
`POBITS
`
`ADP
`
`
`
`Exhibit
`No.
`1002, 10271
`
`2009
`
`pub. Feb. 10,
`2005
`Feb. 1, 2011
`
`1003
`
`1004
`
`pub. Dec. 11,
`2008
`
`1015
`
`Petitioner also relies on the Declaration of Thomas Ward (Ex. 1009)
`and the Declaration of Kingsley Klosson (Ex. 1014).
`
`E. The Asserted Grounds of Unpatentability
`Claims Challenged
`35 U.S.C. §
`Reference(s)/Basis
`1, 5, 9, 15
`103
`Background Solutions, LaPasta
`
`103
`
`POBITS, ADP
`
`1, 5, 9, 15
`
`
`1 Exhibit 1002 is subject to Petitioner’s Motion to Correct, in which
`Petitioner seeks to substitute the video of Exhibit 1027 (“the 2009 Video”)
`as a correction to the video of Exhibit 1002 (“the 2012 Video”). Mot. to
`Correct 1. Patent Owner opposes (Paper 16, “Opp. to Mot. to Correct”).
`Concurrently, Patent Owner files its Motion to Terminate based on
`Petitioner’s failure to serve the correct video with the Petition by the bar date
`under 35 U.S.C. § 315(b). Petitioner opposes (Paper 12, “Opp. to Mot. to
`Terminate”).
`
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`
`II. ANALYSIS
`
`A. Claim Construction
`For petitions filed after November 13, 2018, we construe claims
`“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), including construing the
`claim in accordance with the ordinary and customary meaning of such claim
`as understood by one of ordinary skill in the art and the prosecution history
`pertaining to the patent.” 37 C.F.R. § 42.100(b) (2019). See also Phillips v.
`AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc).
`Petitioner proposes several claim terms for construction, essentially
`asking us to adopt constructions proposed by Patent Owner in the related
`district court litigation. Pet. 13–17. Petitioner also proposes constructions
`for two other terms not addressed in the district court litigation. Id. at 17–
`18. Patent Owner does not address claim construction in the Preliminary
`Response. Based on the record before us, we do not find it necessary to
`provide any express claim constructions. 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)).
`
`B. Printed Publication Status of References
`Patent Owner contends that neither Background Solutions nor
`POBITS qualifies as a printed publication and, thus, neither is prior art to the
`’188 patent. Prelim. Resp. 13–14, 19–34.
`Whether a reference qualifies as a “printed publication” is a legal
`conclusion based on underlying factual findings. See Nobel Biocare Servs.
`
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`AG v. Instradent USA, Inc., 903 F.3d 1365, 1375 (Fed. Cir. 2018) (citing
`Jazz Pharm., Inc. v. Amneal Pharm., LLC, 895 F.3d 1347, 1356 (Fed. Cir.
`2018)). The underlying factual findings include whether the reference was
`publicly accessible. See id. (citing In re NTP, Inc., 654 F.3d 1279, 1296
`(Fed. Cir. 2011)).
`“The determination of whether a reference is a ‘printed publication’
`under 35 U.S.C. § 102(b) involves a case-by-case inquiry into the facts and
`circumstances surrounding the reference’s disclosure to members of the
`public.” In re Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004).
`“Because there are many ways in which a reference may be disseminated to
`the interested public, ‘public accessibility’ has been called the touchstone in
`determining whether a reference constitutes a ‘printed publication’ bar under
`35 U.S.C. § 102(b).” Blue Calypso, LLC v. Groupon, Inc., 815 F.3d 1331,
`1348 (Fed. Cir. 2016) (quoting In re Hall, 781 F.2d 897, 898–99 (Fed. Cir.
`1986)). “A given reference is ‘publicly accessible’ upon a satisfactory
`showing that such document has been disseminated or otherwise made
`available to the extent that persons interested and ordinarily skilled in the
`subject matter or art exercising reasonable diligence, can locate it.” SRI
`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)).
`What constitutes a “printed publication” must be determined in light
`of the technology employed. See Samsung Elecs. Co. v. Infobridge Pte.
`Ltd., 929 F.3d 1363, 1369 (Fed. Cir. 2019) (citing In re Wyer, 655 F.2d 221,
`226 (CCPA 1981)). Public accessibility requires more than technical
`accessibility. See id. (citing Acceleration Bay, LLC v. Activision Blizzard
`Inc., 908 F.3d 765, 773 (Fed. Cir. 2018)). “[A] work is not publicly
`
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`IPR2020-00031
`Patent 10,043,188 B2
`accessible if the only people who know how to find it are the ones who
`created it.” Id. at 1372. On the other hand, “a petitioner need not establish
`that specific persons actually accessed or received a work to show that the
`work was publicly accessible.” Id. at 1374. “In fact, a limited distribution
`can make a work publicly accessible under certain circumstances.”
`Id. (quoting GoPro, Inc. v. Contour IP Holding LLC, 908 F.3d 690, 694
`(Fed. Cir. 2018)).
`“To prevail in a final written decision in an inter partes review, the
`petitioner bears the burden of establishing by a preponderance of the
`evidence that a particular document is a printed publication.” Hulu, LLC v.
`Sound View Innovations, LLC, Case IPR2018-01039 (PTAB Dec. 20, 2019)
`(Paper 29) (precedential), slip op. at 11. “[A]t the institution stage, the
`petition must identify, 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 that it qualifies as a printed publication.” Id. at 13.
`
`1. Background Solutions
`According to Petitioner, Background Solutions is a video
`demonstration of a Background Assistant background investigation system
`that was displayed at trade seminars as early as mid-2009 and publicly
`accessible on the Internet at Background Solutions, LLC’s website no later
`than November 23, 2009. Pet. 4–5. Patent Owner argues that the video in
`Exhibit 1002 has several indications that it was created no earlier than 2012
`and, thus, is not prior art to the ’188 patent. Prelim. Resp. 14–19. As noted
`above, Petitioner filed a Motion to Correct Exhibit 1002, seeking to
`substitute Exhibit 1027 in its place. Petitioner contends that it erroneously
`
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`IPR2020-00031
`Patent 10,043,188 B2
`marked and uploaded the 2012 Video as Exhibit 1002 instead of the 2009
`Video it sought to upload and now offers in substitution. Mot. to Correct 1.
`We grant Petitioner’s Motion to Correct for the limited purpose of
`considering the 2009 Video (Exhibit 1027). For the reasons that follow,
`however, Petitioner has not shown a reasonable likelihood that the 2009
`Video qualifies as a printed publication.
`Petitioner offers two theories as to why the 2009 Video was publicly
`accessible in mid-2009. First, Petitioner argues that Tom Ward, the founder
`and co-owner of Background Solutions, LLC, presented the 2009 Video at
`national background investigation seminars. Pet. 19. Second, Petitioner
`contends that the 2009 Video was publicly accessible on Background
`Solutions, LLC’s website, and that at the national background investigation
`seminars, Mr. Ward distributed pamphlets with the URL to that website. Id.
`According to Petitioner, “an oral presentation accompanied by distribution
`or display at a conference can establish a reference as a ‘printed
`publication.’” Id. at 20 (citing Klopfenstein, 380 F.3d at 1347–52).
`In Klopfenstein, a fourteen-slide poster presentation
`was shown to a wide variety of viewers, a large subsection of
`whom possessed ordinary skill in the art of cereal chemistry
`and agriculture. Furthermore, the reference was prominently
`displayed for approximately three cumulative days at
`[American Association of Cereal Chemists] and the
`[Agriculture Experiment Station] at Kansas State University.
`The reference was shown with no stated expectation that the
`information would not be copied or reproduced by those
`viewing it.
`380 F.3d at 1350. According to the Federal Circuit, in determining whether
`the presentation was publicly accessible,
`[t]he factors relevant to the facts of [the Klopfenstein] case
`[were]: the length of time the display was exhibited, the
`
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`expertise of the target audience, the existence (or lack thereof)
`of reasonable expectations that the material displayed would not
`be copied, and the simplicity or ease with which the material
`displayed could have been copied.
`
`Id.
`
`In support of its arguments, Petitioner offers the testimony of
`Mr. Ward. Mr. Ward testifies that Background Solutions began developing
`the Background AssistantTM software in 2006, “with product sales being
`generated in mid-2009 based on company records.” Ex. 1009 ¶ 5. Such
`“company records” are not part of the record in this proceeding. According
`to Mr. Ward, the product development team for the Background Assistant
`software “outsourced the production of a power point video demonstration
`(Ex. 1002) of Background AssistantTM background investigation software
`for marketing purposes.” Id. ¶ 6. Mr. Ward testifies that he “played the
`Background AssistantTM product video (Ex. 1002) for the seminar attendees”
`and “had embedded the video in my background investigation seminar
`power point presentation.” Id. ¶ 7. According to Mr. Ward, he “used the
`video to explain to seminar attendees that an electronic solution for police
`background investigations was available through the Background Assistant
`software.” Id. Petitioner argues that “Mr. Ward’s presentation and
`demonstration of the Background Solutions video to a national conference of
`background investigators, i.e. those interested and skilled in the subject
`matter, qualifies it as a printed publication.” Pet. 20–21.
`In response, Patent Owner argues that Mr. Ward does not identify any
`specific seminars at which he presented the 2009 Video, does not present
`any evidence of the backgrounds of the attendees of the seminars (or
`whether any attendees had backgrounds in software development), and does
`not address the length of the seminar presentation. Prelim. Resp. 21.
`
`11
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`IPR2020-00031
`Patent 10,043,188 B2
`According to Patent Owner, “Ward does not identify a single conference by
`name or date,” and “Petitioner provides no corroborating evidence regarding
`the audience size or the number of [persons of ordinary skill in the art] that
`attended any alleged presentation.” Id. at 25.
`We agree with Patent Owner. At the petition stage, Petitioner must
`identify “with particularity” the evidence it contends shows a reasonable
`likelihood that the 2009 Video is a printed publication. Hulu, at 13.
`Petitioner’s evidence lacks particularity. Although Mr. Ward testifies that
`he presented the 2009 Video at “law enforcement and background
`investigation seminars,” he does not testify as to how many such seminars he
`presented at, when or where those seminars were, who attended the
`seminars, or who watched the 2009 Video at the seminars.2 Ex. 1009 ¶¶ 7–
`9. Rather, his testimony is vague and conclusory.
`Petitioner cites Klopfenstein for the proposition that an oral
`presentation accompanied by a display at a conference can be enough to
`establish that a reference is a printed publication. Pet. 20 (citing
`Klopfenstein, 380 F.3d at 1347–52). However, Petitioner’s showing does
`not address any of the factors the Klopfenstein court considered in deciding
`that the reference in that case was a printed publication. Here, for example,
`Mr. Ward does not testify as to when or where he presented the 2009 Video,
`
`
`2 Mr. Ward testifies that “[a]mongst other customers, Background Solutions
`provided the Background AssistantTM product and background investigation
`services to King County (WA) Sheriff’s Department.” Ex. 1009 ¶ 12.
`However, Mr. Ward does not testify that he showed the video to the
`customer, or that the customer attended a seminar. He also does not testify
`as to when King County was a customer or whether it was prior to the
`effective filing date of the ’188 patent. Thus, this testimony does not
`support any of Petitioner’s arguments.
`
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`the length of time it was exhibited, or the expertise of the seminar audiences.
`See Klopfenstein, 380 F.3d at 1350. Moreover, because he does not provide
`any details about seminar dates or attendees, Mr. Ward does not indicate
`whether he presented the 2009 Video at any seminar prior to April 6, 2012,
`the earliest filing date on the face of the ’188 patent,3 or whether any skilled
`artisans4 attended those seminars. Ex. 1009 ¶¶ 7–9.
`Petitioner further argues that Background Solutions, LLC, made the
`2009 Video accessible on its website no later than November 23, 2009.
`Pet. 21–24. Mr. Ward testifies that, at the seminars discussed above, he
`“distributed a product brochure advertising the Background AssistantTM
`background investigation software, which provides the URL for the
`Background Solutions website, www.backgroundsolutions.com,” and that
`the 2009 Video “was made available to the public at the URL
`www.backgroundsolutions.com,” which “contained a link to the same
`Background AssistantTM product video presented at the above-described law
`enforcement and background investigation seminars.” Ex. 1009 ¶¶ 8–9.
`Patent Owner argues that “Petitioner provides no evidence that
`Ex. 1002 was distributed to any person at said unnamed conferences” and
`
`
`3 Patent Owner seeks to file a Petition for Correction of Priority Claim to
`claim the benefit of an earlier-filed provisional application. Paper 9. An
`earlier priority date would not affect our analysis, as Petitioner has not
`shown that the 2009 Video was publicly accessible before the later filing
`date on the face of the patent.
`4 The parties dispute the level of skill of a skilled artisan. Pet. 5–6; Prelim.
`Resp. 6–7. We need not resolve this dispute, as Mr. Ward does not testify as
`to the backgrounds of any seminar attendees. Thus, we are unable to
`ascertain whether any seminar attendee had either of the two proffered levels
`of skill.
`
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`that “there is no corroborating proof of what, if anything was on Ward’s
`website.” Prelim. Resp. 27.
`For a reference posted to a website, there are multiple ways that
`Petitioner could show that the reference was publicly accessible. For
`example, Petitioner could show that the website was indexed, through search
`engines or otherwise. See Blue Calypso, 815 F.3d at 1349. Petitioner and
`Mr. Ward, however, offer no evidence of how Background Solutions, LLC’s
`website was indexed, if at all.
`Petitioner also could show that the record indicates that, despite a lack
`of indexing, the website was well known to the community interested in the
`subject matter of the reference. See Voter Verified, Inc. v. Premier Election
`Solutions, Inc., 698 F.3d 1374, 1380–81 (Fed. Cir. 2012) (“[T]he
`uncontested evidence indicates that a person of ordinary skill interested in
`electronic voting would have been independently aware of the Risks Digest
`as a prominent forum for discussing such technologies. And upon accessing
`the Risks Digest website, such an interested researcher would have found the
`Benson article using that website’s own search functions and applying
`reasonable diligence.”). Petitioner does not allege, and Mr. Ward’s
`testimony does not suggest, that Background Solutions, LLC’s website was
`a well-known forum for the community interested in the subject matter of
`the 2009 Video. Pet. 19–24; Ex. 1009. See also Blue Calypso, 815 F.3d at
`1349–50 (“[I]n contrast to Voter Verified, the present case lacks any
`testimonial evidence that a person interested in e-commerce and peer-to-peer
`marketing would be independently aware of the web address for
`Dr. Ratsimor’s personal page. In other words, there was no evidence that
`the ordinarily skilled artisan would know of Dr. Ratsimor’s personal
`webpage or its web address.”).
`
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`Petitioner also could show that the 2009 Video was publicly
`accessible through the use of a “research aid,” such as a published article or
`patent that made reference to the 2009 Video. See Blue Calypso, 815 F.3d at
`1350. The research aid would need to provide “a sufficiently definite
`roadmap” to the 2009 Video, although “[a]n adequate roadmap need not
`give turn-by-turn directions, but should at least provide enough details from
`which we can determine that an interested party is reasonably certain to
`arrive at the destination: the potentially invalidating reference.” Id. To that
`end, as noted above, Mr. Ward testifies that he distributed at seminars
`product brochures with the URL to Background Solutions, LLC’s website,
`where the 2009 Video could be found. Ex. 1009 ¶¶ 8–9. Petitioner argues
`that “[t]he URL for the homepage of the website,
`www.backgroundsolutions.com, was distributed to all of the attendees at
`these background investigation seminars,” and, thus, a skilled artisan “could
`have gained access to the Backgrounds Solutions . . . demonstration video
`describing Background Assistant™, through either (1) attendance at the
`national background investigation seminar, or (2) the Background Solutions
`publicly accessible website.” Pet. 24. However, as also noted above,
`Mr. Ward does not testify as to when or where the seminars occurred or who
`attended them. Thus, the evidence does not show who, if anyone, would
`have been given such a brochure or when they would have received it.
`We further note that Mr. Ward does not testify as to when the 2009
`Video was posted on Background Solutions, LLC’s website, or whether it
`would have been posted before April 6, 2012. Ex. 1009. Nevertheless,
`Petitioner argues that the Internet Archive, in particular Exhibit 1023,
`supports Mr. Ward’s testimony and establishes that the 2009 Video was
`
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`posted before November 23, 2009. Pet. 23. A portion of Exhibit 1023 is
`reproduced below:
`
`
`
`The above figure is a portion of an Internet Archive capture of the webpage
`www.backgroundsolutions.com/index.html, purporting to have been
`captured on November 23, 2009. Ex. 1023, 1.
`Petitioner does not state with specificity where the 2009 Video can be
`found in this capture. However clicking on the “Background Assistant” icon
`leads to a product brochure; thus, we presume that Petitioner intended to
`point us to the “Demo” icon. As Patent Owner argues, however, clicking on
`the “Demo” icon leads to a blank webpage, without any indication that the
`2009 Video was reachable via that webpage. Prelim. Resp. 21–23. Thus,
`
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`Petitioner’s Internet Archive capture (Ex. 1023) does not provide evidence
`that the 2009 Video would have been available on Background Solutions,
`LLC’s website prior to April 6, 2012.
`In sum, we have considered Petitioner’s evidence, including
`Mr. Ward’s testimony (Ex. 1009) and Petitioner’s Internet Archive capture
`(Ex. 1023), and conclude that Petitioner has not shown a reasonable
`likelihood that the 2009 Video was publicly accessible before April 6, 2012.
`Neither Petitioner nor Mr. Ward provide enough specificity to determine
`when the 2009 Video was presented at seminars, when those seminars
`occurred, or who attended the seminars. Thus, even if we credit Mr. Ward’s
`testimony, it is not sufficient to show that Mr. Ward presented the 2009
`Video to skilled artisans at a seminar prior to April 6, 2012. The evidence
`also does not support a finding that the 2009 Video was posted to
`Background Solutions, LLC’s website prior to April 6, 2012, or, even if it
`was, that a skilled artisan exercising reasonable diligence would have been
`able to locate it. Thus, on this record, Petitioner has not shown a reasonable
`likelihood that the 2009 Video qualifies as a printed publication and,
`accordingly, that it qualifies as prior art to the ’188 patent. Therefore, on
`this record, Petitioner has not demonstrated a reasonable likelihood that it
`would prevail in showing that claims 1, 5, 9, and 15 would have been
`obvious over Background Solutions (i.e., the 2009 Video) and LaPasta.
`
`2. POBITS
`POBITS is an Internet Archive capture of an online user’s manual.
`As Petitioner notes (Pet. 24), POBITS bears a copyright date of 2010. See,
`e.g., Ex. 1004, 1. Petitioner contends that the testimony of Mr. Klosson,
`along with the Internet Archive capture, shows that POBTIS was available at
`
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`the website www.esdevllc.com/pobits/help/index.html no later than
`December 31, 2010. Pet. 24.
`Mr. Klosson testifies that he “began developing one of [his] products,
`the Peace Officer Background Investigation Tracking System (‘POBITS’),
`in 2005 and developed a web-based version of the product in 2008, which
`went live in 2010.” Ex. 1014 ¶ 6. According to Mr. Klosson, “[t]he
`POBITS product and system has been offered for sale since 2005 and the
`modernized system since 2010.” Id. ¶ 9. Mr. Klosson testifies that “[i]n
`conjunction with marketing and offering the POBITS product for sale,
`between 2005 and 2010, [he] posted a POBITS online user manual and
`technical reference (Ex. 1004) to [his] company’s website,” and that the
`Internet Archive corroborates that POBITS was available to the public no
`later than February 1, 2011. Id. ¶ 10. Mr. Klosson further testifies that
`Exhibit 1004 (POBITS) “is a collection of screenshots of the Internet
`Archive (http://web.archive.org) crawls or snapshots of the online POBITS
`user manual and technical reference, taken on February 1, 2011” and
`“correctly depicts the online POBITS user manual and technical reference as
`of February 1, 2011.” Id. ¶ 11. Mr. Klosson concludes that “Ex. 1004 is a
`true and correct copy of the POBITS online user’s manual that was available
`to the public through the Essential Software Development website no later
`than February 1, 2011.” Id. ¶ 12.
`Even if we credit Mr. Klosson’s testimony, it is insufficient to show a
`reasonable likelihood that POBITS was publicly accessible. As explained
`above, to establish public accessibility of a reference alleged to be available
`on a website, a petitioner could show that the website was indexed, through
`search engines or otherwise. See Blue Calypso, 815 F.3d at 1349. Petitioner
`and Mr. Klosson, however, offer no evidence of how Essential Software
`
`18
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`
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`IPR2020-00031
`Patent 10,043,188 B2
`Development’s website was indexed, if at all. A petitioner also could show
`that the website was well known to the community interested in the subject
`matter of the reference. See Voter Verified, 698 F.3d at 1380–81. Neither
`Petitioner nor Mr. Klosson has alleged facts that would support a finding
`that Essential Software Development’s website was well known to the
`community interested in the subject matter of POBITS. See Pet. 24;
`Ex. 1014. Nor do Petitioner or Mr. Klosson allege that some other public
`document could serve as a “research aid” that would lead skilled artisans to
`POBITS. See Blue Calypso, 815 F.3d at 1350.
`Other than arguing the existence of POBITS on a public website on
`February 1, 2011, Petitioner makes no allegations that would support a
`finding of public accessibility. Petitioner’s theory is, simply, that “[a]n
`interested [person of ordinary skill in the art] could have gained access to the
`POBITS printed publication through the publicly accessible website.”
`Pet. 24. Even if we accept this as true, it is not sufficient to show public
`accessibility. See Blue Calypso, 815 F.3d at 1349–50.
`Patent Owner also argues that the February 1, 2011, archive date only
`applies to the outer “frame” of POBITS, which essentially depicts a
`selectable table of contents, and not to the individual pages contained within
`the frame. Prelim. Resp. 29–33. We need not reach this argument. As
`explained above, even if we assume that the entirety of POBITS was
`available on a public website on February 1, 2011, that, without more, is
`insufficient to show public accessibility. See Blue Calypso, 815 F.3d at
`1349–50.
`As noted above, Petitioner also points out that POBITS carries a
`copyright date of 2010. Id. As Patent Owner notes (Prelim. Resp. 33–34),
`however, a copyright date does not, by itself, establish that a document was
`
`19
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`IPR2020-00031
`Patent 10,043,188 B2
`published by the copyright date. We may consider indicia such as copyright
`dates as “part of the totality of the evidence.” Hulu, at 17–18. In this case, a
`copyright date of 2010 would tend, at most, to corroborate that POBITS was
`posted on a public website around that time. As explained above, that, by
`itself, is not sufficient to show a reasonable likelihood that POBITS was
`publicly accessible. See Blue Calypso, 815 F.3d at 1349–50.
`In sum, Petitioner’s evidence, at most, supports a finding that POBITS
`was posted on a public website by February 1, 2011. That is insufficient to
`show that POBITS was publicly accessible by that date. On this record, we
`conclude that Petitioner has not shown a reasonable likelihood that POBITS
`is a printed publication and, accordingly, prior art to the ’188 patent.
`Therefore, on this record, Petitioner has not demonstrated a reasonable
`likelihood that it would prevail in showing that claims 1, 5, 9, and 15 would
`have been obvious over POBITS and ADP.
`
`C. Petitioner’s Motion to Correct and Patent Owner’s Motion to
`Terminate
`We grant Petitioner’s Motion to Correct for the limited purpose of
`considering Exhibit 1027, the 2009 Video, in the context of denying
`institution. As explained above, however, Petitioner still cannot show, on a
`record that includes Exhibit 1027, that Background Solutions is prior art to
`the ’188 patent.
`Because we deny the Petition for the reasons given above, it is not
`necessary to decide Patent Owner’s Motion to Terminate. We dismiss that
`motion as moot.
`
`20
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`IPR2020-00031
`Patent 10,043,188 B2
`
`III. CONCLUSION
`Petitioner has not shown a reasonable likelihood that either
`Background Solutions or POBITS
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