Takeaway: Large licensing costs to access a document could lead to a finding that the document is not sufficiently accessible to constitute a printed publication.

In its Decision, the Board denied Petitioner’s request for rehearing of its determination that the Petrel 2005 reference did not constitute a printed publication. The Board reviews decisions on institution for an abuse of discretion. The party requesting rehearing bears the burden and “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, opposition, or a reply.”

Petitioner argued that the Board’s decision incorrectly required “evidence of ‘widespread dissemination’ despite sufficient evidence of accessibility.” Petitioner also argued that the “Board erred in requiring Petitioner to prove access, e.g., widespread dissemination, in light of Petitioner’s clear evidence of the accessibility of Petrel 2005 and its accompanying documents.”

The Board disagreed, indicating that widespread dissemination was not required by the holding of the Institution Decision. Quoting its Decision on Institution, the Board stated: “On balance, Petitioner does not show dissemination or public accessibility.” Inst. Dec. 36 (emphasis added). The Board also stated in its Institution Decision “‘[i]f accessibility is proved, there is no requirement to show that particular members of the public actually received the information.’” Instead, the Board indicated that Petitioner commingled “the analysis of accessibility with ‘public use’ or ‘sale.’”

The Board addressed the argument that advertisements hinted at the path to certain Petrel 2005 files (Release Notes and Help Files). In particular, the Board had found that large licensing fees for Petrel 2005 “‘obscured any path’ to the Release Notes and Help Files.” Citing Bruckelmeyer v. Ground Heaters, Inc., 445 F.3d 1374 (Fed. Cir. 2006), the Board noted that a reference could be made accessible if “it was prominently displayed for several days to a wide variety of interested viewers who were free to take notes or photographs, and copying would have been a simple undertaking.” The Board held that “Petitioner neither explains in its Rehearing Request, nor in its Petition, whether the software manuals themselves were ‘prominently displayed,’ whether members of the interested public, in general, knew about them, or how garnering the sum of hundreds of thousands of dollars to obtain Petrel 2005 ‘would have been a simple undertaking’ for ‘a wide variety of interested’ artisans.”

The Board also found unpersuasive Petitioner’s reliance upon an ex parte reexamination decision (Ex Parte ePlus, Inc., Appeal 2010-00784 (BPAI May 18, 2011) (Rexam. No. 90/008,104)). In that decision, the cost of a license was found to not be necessarily material to accessibility; however, the decision relied upon actual sales to support the finding of accessibility. Petitioner provided no evidence of actual sales related to Petrel 2005.

Petitioner also argued that the proprietary notice on the reference was only a copyright restriction. However, quoting the proprietary notice, the Board found that the notice indicated that the application contained confidential information and restricted use, distribution, or transmission “without the express written permission of the copyright owner.”

Finally, Petitioner argued that members of the interested public had access to Petrel 2005 based on a donated “site license.” However, the Board found the argument did not address the previous finding that the Petition established at most “a small number of ordinary skilled artisans (i.e., a closed group) had special access restricted by the propriety notice and dongle key at a single computer in a lab.”

Thus, the Board was not persuaded to reverse its determination, finding again that Petitioner had not met its burden to show that Petrel 2005 is a printed publication.

Haliburton Energy Services, Inc. v. Dynamic 3D Geosolutions LLC, IPR2014-01186
Paper 18: Decision on Request for Rehearing
Dated: February 18, 2015
Patent: 7,986,319 B2
Before: Karl D. Easthom, David C. McKone, and Kevin W. Cherry
Written by: Easthom
Related Proceedings: IPR2014-01189; IPR2014-01190