Takeaway: Expert testimony (in the form of declarations, for example) is particularly important when issues such as obviousness and whether a document was publicly available before the critical date of the challenged patent are before the Board.
In its Final Written Decision, the Board held that the only claim at issue in this matter, namely, claim 30 of the ‘662 patent, to be unpatentable under 35 U.S.C. § 103(a). According to the Board, this claim would have been obvious in view of the Kantor and Satyanarayanan references, viewed in combination. A single oral argument was conducted for this proceeding and five other related inter partes proceedings.
The ‘662 patent “relates to a data processing system that identifies data items using substantially unique identifiers, otherwise referred to as True Names, which depend on all the data in the data item and only on the data in the data item.” In its Decision on Institution, the Board construed the claimed term “data item” to mean a “sequence of bits” which, in the context of the specification, encompassed components such as “a portion of a file” and “a page in memory.” The parties agreed with this construction, which was accordingly used by the Board in its Final Written Decision.
Petitioner asserted that claim 30 is unpatentable under 35 U.S.C. § 103(a) as obvious over Kantor and Satyanarayanan. In support of this assertion, Petitioner cited the declaration of its expert, Dr. Clark. Patent Owner responded by asserting that Kantor does not disclose certain claim limitations that Petitioner attributed to this reference, that it would not have been obvious to have combined Kantor in the manner asserted by Petitioner, and that Kantor was not a printed publication under 35 U.S.C. § 102(b).
In conducting its obviousness analysis, the Board took into consideration the testimony of Petitioner’s expert Dr. Clark. The Board concurred with Dr. Clark that it would have been obvious to have combined Kantor and Satyanarayanan “to provide more reliable storage systems for the BBS’s files.” The Board further concluded that the combination of Kantor and Satyanarayanan would include all of the limitations recited in challenged claim 30.
Patent Owner attempted to rely on its licensing activities as secondary evidence of non-obviousness, including directing the Board’s attention to three licensing agreements and to the declaration of Mr. Kevin Burmeister. But the Board concluded that the evidence submitted by Patent Owner fell short of demonstrating the required nexus between its licensing activities and the subject matter of challenged claim 30. According to the Board, Patent Owner did not “present credible or sufficient evidence that the three licensing agreements arose out of recognition and acceptance of the claimed subject matter recited in claim 30.” Also, even if any success had been demonstrated by this evidence, it was nonetheless outweighed by the strong evidence of obviousness over Kantor and Satyanarayanan.
Considerable discussion in the Final Written Decision was directed to the issue of whether the Kantor reference was a printed publication under 35 U.S.C. § 102(b). In support of its position that Kantor was publicly available before the critical date of the challenged ‘662 patent, Petitioner proffered a declaration of Mr. Michael Sussell and declarations of Mr. Jason S. Sadofsky. Patent Owner’s position was that Petitioner had failed to establish that the specific relied-upon version of Kantor did not exist prior to the critical date, and that Petitioner had not submitted sufficient evidence to prove that “Kantor was disseminated publicly, catalogued, or indexed in a meaningful way.” Taking into account all of the evidence before it, the Board concluded that Petitioner had demonstrated by a preponderance of the evidence that Kantor was a printed publication under 35 U.S.C. § 102(b).
Petitioner had filed a Motion to Exclude in which it sought to exclude the aforementioned three licensing agreements and Mr. Bermeister’s declarations relating to such agreements (which Patent Owner had submitted as secondary evidence of non-obviousness), as well as the declaration of Mr. Thompson (which Patent Owner had submitted to evidence that Kantor was made sufficiently accessible to a person interested and ordinarily skilled in the art). The Board dismissed Petitioner’s Motion to Exclude as moot.
Patent Owner had also filed a Motion to Exclude. In this regard, Patent Owner sought to exclude the relied-upon Kantor reference, certain documents and the declarations of Messrs. Sussell and Sadofsky regarding those documents, the declarations of Messrs. Sussell and Sadofsky regarding Kantor, Mr. Sadofsky’s deposition, and Mr. Clark’s rebuttal declaration. Citing Federal Rules of Evidence §§ 901(b)(8), 901(b)(1), and 902, the Board denied Patent Owner’s Motion to Exclude.
EMC Corporation v. Personal Web Technologies, LLC and Level 3 Communications, LLC, IPR2013-00086
Final Written Decision
Dated: May 15, 2014
Patent 7,949,662 B2
Before: Kevin F. Turner, Joni Y. Chang, and Michael R. Zecher
Written by: Turner
Related Proceedings: PersonalWeb Technologies LLC v. EMC Corporation and VMware, Inc., No. 6:11-cv-00660-LED (E.D. Tex.), IPR2013-00082, IPR2013-00083, IPR2013-00084, IPR2013-00085, and IPR2013-00087