Takeaway: When the public accessibility of a reference relied upon to establish unpatentability may be challenged, Petitioner should identify the circumstances and manner in which persons interested and ordinarily skilled in the subject matter could locate the reference.

In its Decision, the Board denied institution of inter partes review of claims 1-25 and 34-41 of U.S. Patent No. 6,845,389 B1.

The ’389 patent is directed to “a system and method of broadband multi-user communication sessions.” For example, in a gaming application, the ’389 patent “supports QoS [quality of service] provisioning and avoids the bottleneck of routine gaming communications . . . through a game server.” The ’389 patent discloses “using SIP [Session Initiation Protocol], Sessional Announcement Protocols, and Session Description Protocols to identify the QoS requirements for the session, and reserve the necessary resources.”

Petitioner alleged that claims 1-3, 5-16, 18-25, and 34-41 were obvious over RFC2543, RFC2205, RFC2327, and Rosenberg. It alleged that claims 4 and 17 were obvious over this combination in view of Leigh and Schulzrinne, respectively.

The Board began by rejecting Petitioner’s arguments that several claim terms should be “construed specifically in accordance with the ’389 specification as supported by” an expert declaration instead of with their plain and ordinary meaning. The Board determined that Petitioner had not “shown that the inventor acted as his or her own lexicographer.”

The Board then turned to the “dispositive issue” of “[w]hether Rosenberg is a printed publication.” Each of Petitioner’s asserted grounds of unpatentability was based, in part, on Rosenberg. But Patent Owner contended that Petitioner failed to provide any evidence supporting its assertion that Rosenberg is a prior art printed publication that was published in June 1999.

The Board stated that Rosenberg is described on its face as an “Internet-Draft[]” and describes “Internet-Drafts” as “documents that are ‘valid for a maximum of six months and may be updated, replaced, or obsoleted by other documents at any time.’” Further Rosenberg states that “[i]t is inappropriate to use Internet-Drafts as reference material or to cite them other than as work in progress.” These facts apparently were not in dispute, so whether Rosenberg qualifies as a printed publication was an issue of law. The determination of whether a document is a ‘printed publication’ under 35 U.S.C. § 102(b) involves a case-by-case inquiry into the facts and circumstances surrounding its disclosure to members of the public.”

In this case, the Board agreed with Patent Owner “that Petitioner’s lack of evidence supporting its contention that Rosenberg was accessible publicly to those interested in the art is fatal to its Petition.” Specifically the Board, stated that “Petitioner fail[ed] to present sufficient argument, declaration testimony, or evidence that indicates that Rosenberg, an Internet-Draft, which was ‘valid’ for only a limited time and was deemed inappropriate for citation . . . was accessible to the interested public.” Accordingly, the Board determined that Petitioner did not make a sufficient showing that Rosenberg qualifies as a printed publication and falls within the proper scope of an IPR.

The Board therefore concluded that Petitioner did not show a reasonable likelihood of prevailing on the asserted grounds and denied the petition

Cisco Systems, Inc. v. Constellation Technologies L.L.C., IPR2014-00871
Paper 12: Decision Denying Institution of Inter Partes Review 
Patent: 6,845,389 B1
Dated: December 19, 2014 
Before: Michael R. Zecher, Trevor M. Jefferson, and Peter P. Chen 
Written by: Jefferson Related Proceedings: Cisco Systems, Inc. v. Constellation Technologies L.L.C., IPR2014-01085;Constellation Technologies LLC v. Time Warner Cable Inc., No. 2:13-CV-01079 (E.D. Tex.); Charter Communications, Inc. v. Rockstar Consortium US LP, No. 1:14-CV-00055 (D. Del.);Rockstar Technologies LLC v. Cisco Systems, Inc., No. 1:13-CV-02020 (D. Del.); and In re Constellation Technologies LLC Patent Litigation, MDL No. 2558