Trials@uspto.gov Paper 28 571-272-7822 Entered: May 29, 2014 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD ELECTRONIC FRONTIER FOUNDATION Petitioner, v. PERSONAL AUDIO, LLC Patent Owner. Case IPR2014-00070 Before TRENTON A. WARD, SHERIDAN K. SNEDDEN, and GREGG I. ANDERSON, Administrative Patent Judges. ANDERSON, Administrative Patent Judge. DECISION Petitioner s Request for Rehearing 37 C.F.R. 42.71
I. INTRODUCTION Electronic Frontier Foundation ( Petitioner ) requests rehearing (Paper 24, Rehearing Req. ) on our decision to institute (Paper 21, Dec. ) an inter partes review of claims 31-35 of U.S. Patent No. 8,112,504 (Ex. 1001, the 504 patent ). We denied institution of the proposed challenges that NCSA GotW (Ex. 1019) anticipated claims 31-35, SurfPunk (Ex. 1020) anticipated claims 31-35, and that Geek of the Week Articles (Exs. 1008-1011) rendered claims 31-35 obvious. Dec. 20-26. We determined that Petitioner did not present sufficient evidence to provide adequate factual support that the person of ordinary skill, exercising reasonable diligence, would have been able to locate either NCSA GotW or Surfpunk. Dec. 23-24. As to the Geek of the Week articles (Exs. 1008-1011), we determined that there was insufficient evidence presented for us to determine any claim was obvious. Dec. 25. In particular, Petitioner failed to cite to evidence in the Geek of the Week articles as to where the elements of the claims can be found, and we found statements to the contrary made by Petitioner s expert, Mr. Chris Schmandt, were conclusory. Id. Petitioner argues that we overlooked evidence supporting the availability of the NCSA GotW and Surfpunk. Rehearing Req. 2-8. Petitioner contends we did not consider Geek of the Week articles included in Exhibits 1007 and 1022-1028. Further, Petitioner alleges we were mistaken in finding the exhibits to be undated materials, archival materials, and are not specifically referred to in the grounds related to Geek of the Week in the petition. Rehearing Req. 8-10. 2
II. ANALYSIS When rehearing a decision on institution, the Board reviews the decision for an abuse of discretion. 37 C.F.R. 42.71(c). An abuse of discretion may be indicated if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors. Star Fruits S.N.C. v. U.S., 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315-16 (Fed. Cir. 2000). The request for rehearing must specifically identify all matters the party believes the Board misapprehended or overlooked. 37 C.F.R. 42.71(d). 1. NCSA GotW (Ex. 1019) First, Petitioner argues that NCSA GotW (Ex. 1019) was publicly available. Rehearing Req. 3. The evidence of availability of NCSA GotW is an email dated April 13, 1993, from Marc Andreessen to group alt.radio.internet (Exhibit 1018). Id. at 3-4. The Petition argued Exhibit 1018 includes the URL address for NCSA GotW, that Exhibit 1018 was publicly available and therefore so was the web page NCSA GotW. Pet. 19. This argument was made and rejected in our Decision. Dec. 22-23. We determined there was insufficient evidence to show availability of Exhibit 1018. Id. We stated there was no evidence presented regarding this posting, the group, who is in the group, or the size of the group identified in Exhibit 1018. Id. Petitioner contends our determination is inconsistent with the evidence. Rehearing Req. 3-4 (citing Pet. 19; Declaration of Chris Schmandt (Ex. 1002) 50). Petitioner argues for the first time in the 3
Rehearing Request that Exhibit 1018 was a publicly accessible USENET announcement and relies upon Mr. Schmandt s testimony to support this proposition. Id. (citing Ex. 1002 50). Mr. Schmandt s testimony, however, does not establish that Exhibit 1018 was a publicly accessible USENET announcement. Mr. Schmandt does not expressly state Exhibit 1018 ever was posted on USENET. Petitioner does not cite us to any evidence that would tend to prove Exhibit 1018 was a post on USENET, as it now argues. See Rehearing Req. 3. To the extent Mr. Schmandt refers to both Exhibit 1018 and USENET, Exhibit 1018 is identified at the end of his testimony about USENET, i.e., ( see also Ex. 1018). Ex. 1002 50. The evidence is insufficient for us to determine that Exhibit 1018 was ever posted on USENET. 1 Second, Petitioner argues Exhibit 1025 was identified by EFF as showing the public distribution of Geek of the Week. Rehearing Req. 5. We disagree. The arguments in the Petition that [t]he NCSA s Geek of the Week Page is a printed publication do not mention Exhibit 1025. See Pet. 19. Indeed, Exhibit 1025 was never specifically discussed anywhere in the Petition. Exhibit 1025 appears in a listing of Exhibits that Petitioner identified as follows: (See Exs. 1003, 1007-1011, 1018-1028; see also Schmandt Decl. 44-45). Pet. 27. Furthermore, the declaration of Mr. Schmandt lists several exhibits as being considered, but Exhibit 1025 is neither listed nor discussed. Ex. 1002 44-45. Accordingly, the argument made regarding Exhibit 1025 improperly appears for the first time in Petitioner s Rehearing Request. 1 This is in contrast to Suffolk Technologies, LLC v. AOL Inc., No. 2013-1392, 2014 WL 2179274, at *5 (Fed. Cir. May 27, 2014), where the parties did not dispute that the alleged prior art was posted on USENET. 4
Third, Petitioner argues that NCSA GotW was actually copied and disseminated in 1993 because the URL was reproduced in Surfpunk (Exhibit 1020). Rehearing Req. 4 (citing Pet. 19). This argument is not persuasive because, as we previously determined, Surfpunk is a private email exchange. See Dec. 23. Furthermore, the arguments made in the Rehearing Request that NCSA GotW is a printed publication based on USENET and Exhibit 1025 were not made in the Petition. See Pet. 19. A request for rehearing is not an opportunity to present new arguments or evidence that could have been presented in the petition. 37 C.F.R. 42.71(d). 2. Surfpunk (Ex. 1020) Petitioner argues in the Rehearing Request that Surfpunk was available as a printed publication based on an argument not made in the Petition. Rehearing Req. 6-8. Again, a request for rehearing is not an opportunity to present new arguments or evidence that could have been presented in the petition. 37 C.F.R. 42.71(d). Petitioner represented Surfpunk (Ex. 1020) as a technical journal, but we noted in the Decision that it was not a technical journal, but a private mail exchange. Dec. 23. Petitioner argued in the Petition that the Surfpunk Technical Journal is listed in 1994 edition of the Directory Of Electronic Journals, Newsletters, and Academic Discussion Lists. (Ex. 1030 at 6). Pet. 26. Petitioner did not argue, let alone prove, the email exchange of Exhibit 1020 is the Surfpunk Technical Journal. Petitioner argued only that the Surfpunk Technical Journal is listed in the Directory. We determined this was insufficient to prove that the email exchange is the journal or that it was available. Dec. 23. 5
Regardless, the new argument fails to meet Petitioner s burden. Exhibit 1020 does not on its face disclose that it is the Surfpunk Technical Journal, only that it is an email exchange. Ex. 1020. Petitioner further argues that the excerpt from Exhibit 1030 indicates the Surfpunk Technical Journal was distributed as an email. Rehearing Req. 7. We determined that this is not sufficient to prove the private email exchange is the journal. Dec. 23. In the Rehearing Request, Petitioner points to various parts of the email exchange in an effort to establish otherwise. Rehearing Req. 7. None of the cited portions of the email exchange persuade us that we misapprehended or overlooked persuasive evidence establishing that the email is the journal. 3. Geek of the Week Articles (Exs. 1007, and 1023-1028) Petitioner failed to organize and argue the Geek of the Week articles. Again, Petitioner has the burden to identify and explain the specific evidence that supports its arguments in the petition. 35 U.S.C. 314(a). Nonetheless, in the Decision, we sorted through the exhibits and found a representative group of Geek of the Week articles, specifically Exhibits 1008-1011. Dec. 25. We determined they were not shown to render any claim obvious. Id. Petitioner does not distinguish the exhibits we allegedly overlooked from the exhibits we used. We need not reconsider the Decision with respect to the Geek of the Week articles we did not include in our analysis, as those articles are not adequately discussed in the Petition. III. CONCLUSION For the foregoing reasons, the Board did not abuse its discretion when it determined that: (1) NCSA GotW was not a printed publication; (2) Surfpunk was not a printed publication; and (3) Exhibits 1007 and 1023-6
1028 of the Geek of the Week articles did not render any claim of the 504 patent obvious. IV. ORDER Petitioner s request for rehearing is denied. 7
For PETITIONER: Richard Pettus pettusr@gtlaw.com Nicholas Brown brownn@gtlaw.com For PATENT OWNER: Michael Femal mfemal@muchshelist.com James Hanrath jhanrath@muchshelist.com 8