Takeaway: Statements that are unsupported by evidence or a showing of facts essentially amount to mere pleadings, and therefore cannot be relied upon to antedate an applied reference.

In its Final Written Decision, the Board found that Petitioner had demonstrated by a preponderance of the evidence that claims 1, 2, 8, 12, 13, 15, 16, 19, 22, 23, 26, 29, and 30 of the ‘836 patent are unpatentable.  In particular, the Board found that claims 1, 2, 12, 13, 19, 22, 23, 26, 29, and 30 are unpatentable under 35 U.S.C. § 102(e) as anticipated by Dezonno; that claims 1, 2, 8, 12, 13, 15, 16, 19, 22, 23, 26, 29, and 30 are unpatentable under 35 U.S.C. § 103(a) as having been obvious in view of Dezonno; and that claim 22 and 29 are unpatentable under 35 U.S.C. § 103(a) as having been obvious in view of Dezonno taken in combination with the Mosaic Handbook.

The ’836 patent relates to the establishment of anonymous telephone communications.  Challenged claims 1 and 12 are independent claims, with challenged claims 2, 8, 22, 23, and 26 depending from independent claim 1, and challenged claims 13, 15, 16, 19, 29, and 30 depending from independent claim 12.  The Board had adopted Petitioner’s proposed claim constructions for various terms in its Decision to Institute, and did not depart from these in its Final Written Decision.

Patent Owner attempted to antedate the Dezonno reference, which forms a part of each proposed ground of rejection.  In support of this attempt, Patent Owner argued that the claimed invention was conceived before the earliest effective filing date of Dezonno (April 21, 1995), and was subject to a constructive reduction to practice via the application from which the ’836 patent issued being filed on August 9, 1995, and an actual reduction to practice on August 15, 1995.  Patent Owner also argued that reasonable diligence was exercised in the critical period from April 20, 1995 through August 9, 1995.  According to Patent Owner, these points disqualified Dezonno from being prior art under 35 U.S.C. § 102(e).

The Board concluded that Patent Owner did not provide sufficient evidence to corroborate the inventor’s testimony that there was reasonable diligence continuously exercised during the entire critical period.  In particular, the Board found that Patent Owner’s evidence did not sufficiently demonstrate the inventor’s diligence with regard to constructive reduction to practice or actual reduction to practice.  Among other things, the testimony relied upon by Patent Owner as to the preparation and review of the draft patent application was not specific “as to facts and dates for the entire critical period during which diligence is required.”  Accordingly, because Patent Owner’s evidence did not demonstrate the continuous exercise of reasonable diligence during the entire critical period – either with respect to constructive or actual reduction to practice – the Board found that Patent Owner had not sufficiently antedated Dezonno.  This led the Board to conclude that Patent Owner had not shown that Dezunno was not available as prior art against the ’836 patent under 35 U.S.C. § 102(e).

Oracle Corporation, Oracle OTC Subsidiary LLC, YP Interactive LLC, and Yellowpages.com LLC v. Click-to-Call Technologies LP, IPR2013-00312 
Paper 52: Final Written Decision 
Dated: October 28, 2014 
Patent 5,818,836 
Before: Michael R. Zecher, Thomas L. Giannetti, and Trenton A. Ward
Written by: Zecher
Related Proceedings: Click to Call Technologies LP v. Oracle Corporation, No. 1:12-cv-00468-SS; Call Technologies LP v. eHarmony, Inc., No. 1:12-cv-00469-SS; Click to Call Technologies LP v. AT&T, Inc., No. 1:12-cv-00465-SS, each of these having been filed in the U.S. District Court for the Western District of Texas