Hewlett-Packard Co.v.U.S. Philips Corporation

Patent Trials and Appeals Board

Jan 19, 2016

08488318 - (D) (P.T.A.B. Jan. 19, 2016)

Trials@uspto.gov Paper 15
571-272-7822 Entered: January 19, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

HEWLETT-PACKARD CO.,
Petitioner,

v.

U.S. PHILIPS CORPORATION,
ORANGE, S.A.,
TDF SAS, and
INSTITUT FÜR RUNDFUNKTECHNIK GMBH,
Patent Owners.
____________

Case IPR2015-01506
Patent 5,539,829
____________

Before BRIAN J. McNAMARA, SCOTT A. DANIELS, and
JENNIFER MEYER CHAGNON, Administrative Patent Judges.

DANIELS, Administrative Patent Judge.

DECISION
Denial of Inter Partes Review
37 C.F.R. § 42.108
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I. INTRODUCTION
A. Background
Petitioner, Hewlett-Packard Co. filed a Petition to institute an inter
partes review of claims 1–22 of U.S. Patent No. 5,539,829 (“the ’829
patent”). Paper 2 (“Pet.”). Patent Owners, U.S. Philips Corporation,
Orange, S.A., TDF SAS, and Institut Für Rundfunktechnik GmbH1 filed a
Preliminary Response. Paper 13 (“Prelim. Resp.”).
We have authority to determine whether to institute an inter partes
review under 35 U.S.C. § 314 and 37 C.F.R. § 42.4(a). Upon consideration
of the evidence and arguments in the Petition and the Preliminary Response,
we determine that Petitioner has failed to establish a reasonable likelihood of
prevailing on the claims challenged in the Petition. For the reasons
expressed below, we do not institute an inter partes review of claims 1–22
of the ’829 patent.
B. Additional Proceedings
Petitioner states that the ’829 patent is the subject of a civil action in
the U.S. District Court for the Eastern District of Virginia, Audio MPEG,
Inc. v. Hewlett-Packard Co., Case No. 2:15-cv-00073-HCM-RJK, filed
February 20, 2015, and is unaware of any other related matter involving the
’829 patent. Pet. 1.
C. The ’829 Patent and Illustrative Claim
The ’829 patent describes a digital transmission system for improving
the replication of a digital signal sent from a transmitter to a receiver,
specifically, “a wideband digital signal with a significant reduction of the

1 Patent Owners indicate Audio MPEG, Inc. is also a real-party-in-interest in
this proceeding. Paper 5, 2.
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distortion present in the replica generated in the receiver.” Ex. 1002, 2:22–
24. Claim 1 illustrates the claimed subject matter and is reproduced below:
1. A digital transmission system, for producing a replica
of a digital signal comprising at least a first component and a
second component, comprising:
an encoder including analysis means for altering said digital
signal to obtain a plurality of sub-signals, including at
least a first sub-signal and a second sub-signal from said
first component and said second component respectively,
signal combination means for combining said first sub-
signal and said second sub-signal to obtain a composite
sub-signal,
signal generator means for generating an indicator signal
indicating that said first sub-signal and said second sub-
signal are combined,
transmission means for transmitting said indicator signal,
said composite sub-signal, and sub-signals which have
not been combined,
receiving means for receiving the signals which were
transmitted,
means, responsive to the received indicator signal and
composite subsignal, for generating a signal related to at
least one of said first component and said second
component, and
a decoder including synthesis means for combining the
transmitted subsignals and the signal related to at least
one of said first component and said second component
to produce said replica of the digital signal.
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D. The Alleged Ground of Unpatentability
Petitioner contends that the challenged claims are unpatentable on the
following specific ground.2
References Basis Claims Challenged
MUSICAM3 § 102 1–22

II. CLAIM CONSTRUCTION
Because we do not reach the issue of anticipation based on our
determination below, no claim construction is necessary.
III. ANALYSIS
We address, below, the issue of whether MUSICAM, the only
purported prior art reference asserted in the Petition, is a printed publication
because it is dispositive of the sole asserted ground of unpatentability under
35 U.S.C. § 102 in the Petition and determinative of whether Petitioner has
met the threshold standard of 35 U.S.C. § 314(a).
A. Whether MUSICAM is a Printed Publication
The parties do not dispute that MUSICAM discloses the limitations
recited in the ’829 patent. Pet. 9. The threshold issue, therefore, is whether
MUSICAM qualifies as prior art for purposes of 35 U.S.C. § 102. Id.;
Prelim. Resp. 13–14. As explained below, we are not persuaded that
Petitioner has made a sufficient showing that MUSICAM is a printed
publication.

2 Petitioner supports its challenge with a Declaration of Dr. Nikil Jayant,
Ph.D. (Ex. 1004). See infra.
3 ISO/IEC JTC1/SC2/WG8, MUSICAM, Coded Representation of Picture
and Audio Information, MPEG 89/206, December 28, 1989 (Ex. 1027)
(“MUSICAM”).
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1. Legal Standard
Petitioner has the initial burden of production of evidence establishing
that asserted references are applicable as prior art. Dynamic Drinkware LLC
v. Nat’l Graphics, Inc., 800 F.3d 1375, 1379 (Fed. Cir. 2015).
The Federal Circuit has held that “public accessibility” is the
touchstone in determining whether a reference is a “‘printed publication’”
under § 102. In re Hall, 781 F.2d 897, 898–99 (Fed. Cir. 1986). “A
reference is publicly accessible ‘upon a satisfactory showing that such
document has been disseminated or otherwise made available to the extent
that persons interested and ordinarily skilled in the subject matter or art
exercising reasonable diligence, can locate it. . . .”’ Kyocera Wireless Corp.
v. Int’l Trade Comm’n, 545 F.3d 1340, 1350 (Fed. Cir. 2008) (quoting SRI
Int’l, Inc. v. Internet Sec. Sys. Inc., 511 F.3d 1186, 1194 (Fed. Cir. 2008)).
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 re
Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004). The party seeking to
introduce the reference “should produce sufficient proof of its dissemination
or that it has otherwise been available and accessible to persons concerned
with the art to which the document relates and thus most likely to avail
themselves of its contents.” In re Wyer, 655 F.2d 221, 227 (CCPA 1981).
2. Overview of MUSICAM
MUSICAM is a document that was submitted to an ISO (International
Organization for Standardization) sponsored working group called
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“MPEG/Audio group” on December 28, 1989.4 Pet. 3; Prelim. Resp. 8.
Petitioner explained that the MPEG/Audio group was formed in 1988
including various companies “to propose a standardized audio coder to be
used in conjunction with a planned standardized video coder.” Pet. 11
(citing Ex. 1004 ¶¶ 65–70). MUSICAM is an acronym for: Masking
Pattern Adapted Universal Sub-band Integrated Coding and Multiplexing.
Ex. 1027, 2. MUSICAM was one of the proposals for a standardized audio
coder, and according to Patent Owners, “MUSICAM includes a detailed
description of a sub-band coding algorithm, including the basic parameters,
the selection of sub-bands to be transmitted, the manner in which they are to
be formatted for transmission, and methods for decoding sub-bands and
reconstructing the replica.” Prelim. Resp. 8.
3. Discussion
Petitioner asserts that MUSICAM is a printed publication that
qualifies as prior art under 35 U.S.C. § 102(a) and thus anticipates claims 1–
22 of the ’829 patent. Pet. 3, 9–19. Patent Owners dispute this assertion,
pointing out that the USPTO has already determined that MUSICAM was
not a printed publication in two ex parte reexamination proceedings and
argues that the evidence of record in this proceeding also fails to support a
finding that MUSICAM is a printed publication.5 Prelim. Resp. 2–4, 14–26.
Petitioner argues specifically that all documents and proposals,
including MUSICAM, provided to the MPEG Audio/group were not subject

4 As stated in the February 1989 MPEG/Audio group meeting report, MPEG
stands for Moving Picture Coding Experts Group. Ex. 1010, 1.
5 See Ex parte Reexamination of Gerardus C.P. Lokhoff et al., U.S. Patent
No. 5,777,992 C1, No. 90/009,344; Ex parte Reexamination of Gerardus
C.P. Lokhoff et al., U.S. Patent No. 5,323,396 C1, No. 90/009,345.
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to non-disclosure or confidentiality agreements and were, therefore,
available to the interested public.6 Pet. 10–12. Petitioner points to an
October 1989 MPEG Audio/group meeting report as evidence that the
working group documents would be freely available to persons outside the
specific members of the MPEG Audio Group. Id. at 12. The report states in
relevant part:
[T]he Chairman stated again his intention to provide the full
collection of documents available at MPEG meeting to all
MPEG members and to suitably identified Corresponding
Members. The large attendance of MPEG meetings and the
associated load in copies and mailing however had to be
alleviated by defining precisely MPEG membership. He
proposed that the following individuals will receive the full
collection of documents corresponding to meeting:
• Those who took part in that meeting;
• Those who informed by fax/mail/telex their inability to
attend that meeting;
• Corresponding members in other standards bodies.
The membership list will be changed every meeting to
implement the above rule.
In addition to the above those who will express by
fax/mail/telex their interest to receive only the meeting reports
will receive them on permanent basis.
The meeting agreed to the proposal.

6 The meeting reports of the MPEG/Audio group generally refer to the
technical information, documents, and presentations, including MUSICAM,
that were to be submitted for consideration by the working group as part of
the standard, as a “proposal,” “proposal package,” or “proposals.” See
Ex. 1023, 1; Ex. 1010, 3; Ex. 1029, 14.
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Ex. 1010, 3. Petitioner alleges further evidence that subsequent
MPEG/Audio group meeting reports indicate that proposals to the group
should include a “level of detail sufficient for others to reproduce the
results will be required in October 1989.” Pet. 13 (citing Ex. 1023, 1).
Petitioner argues that
[a]ccordingly, MUSICAM was dated in October 1989,
submitted and then presented to dozens of parties – without any
evidence of an NDA or other confidentiality agreement – and
those parties were free to take MUSICAM with them back to
their own companies so that they could attempt to “reproduce
the results.”
Pet. 14 (citing Ex. 1026; Ex. 1028, 7; Ex. 1023, 1; Ex. 1004 ¶ 78).
Additionally, Petitioner cites to evidence purportedly indicating that
the working group had a procedure for circulating a non-disclosure
agreement but that no submissions or proposals were subjected to this
procedure. Id. Also, Petitioner notes that an updated version of MUSICAM
was provided at a working group meeting in December 1989 and formally
catalogued on December 28, 1989. Pet. 15 (citing Ex. 1027; Ex. 1004
¶¶ 77–78).
According to Petitioner, given the above evidence, the facts that
purportedly prove MUSICAM is a printed publication are that MUSICAM
was:
• Promised in May of 1989 to be provided by October of 1989
so that others could reproduce the results [Ex. 1023 at 1;
Ex. 1010 at 3–4]
• Provided and then described in October 1989 and December
1989 to over 30 individuals [Ex. 1026; Ex. 1029 at 1, 7, 16–17]
• Cataloged as MPEG document number 89-206 [Ex.1026,
Ex. 1029 at 14]
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• Labeled with a copyright date of October 11, 1989 [Ex. 1026]
• Revised and re-distributed by the end of December 1989
[Ex. 1027]
• Freely available to any member of the MPEG/Audio group,
without any member being subject to confidentiality or non-
disclosure obligations [Ex. 1029 at 15; Ex. 1025 at 2]
Pet. 15–16. We address each of these asserted facts below.
The MPEG/Audio group meeting report of May 1989 (Ex. 1023)
refers to, inter alia, a time line for meetings and submitting proposals to the
working group and the level of detail necessary for a proposal, i.e., items and
information the group believed necessary to appropriately evaluate any
proposal. Ex. 1023, 1. The report indicates that detailed proposals “will be
required in October 1989,” and as discussed above, be sufficiently detailed
“for others to reproduce the results.” Id. This evidence is helpful as an
initial matter to understand that the working group required essentially full
disclosure of algorithms and hardware implementations to develop the
standard. Petitioner, however, does not explain sufficiently how this fact
leads to the conclusion that the proposals as submitted to the working group
were publicly available. The working group’s stated desire, or requirement,
for reproducible information and a certain level of detail in proposal
documents, such as MUSICAM, certainly facilitates the efforts of the
working group, but does not inform us as to whether these proposals were
freely available to the interested public, or on the contrary, maintained with
some level of confidentiality. Petitioner appears to infer that the high level
of detail and disclosure in the proposals indicates that documents such as
MUSICAM were intended to be shared openly and publicly. Pet. 13–14.
On the other hand, it is at least as likely that the level of detail and
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information provided in the proposals, so that group members could
reproduce the results, was provided by submitting members due to some
level of confidentiality afforded such documents within the working group.
For example, as discussed in further detail below, the meeting records of the
MPEG/Audio group expressly state that submitted information and
proposals were restricted to the members of the MPEG/Audio group. Ex.
1029, 15. The level of detail and disclosure in the proposals, as requested by
the working group does not, therefore, persuade us that such documents
were publicly available to any interested person upon submission to the
MPEG/Audio group.
We are also not persuaded by the fact that these detailed and
reproducible proposals were disseminated “to over 30 individuals” indicates
that such documents were publicly available. Pet. 16. The 30 or so listed
individuals that participated in the working group meeting on October 18–
20, 1989 are apparently members of the MPEG/Audio working group, and
Petitioner has not alleged that any were not. Ex. 1029, 16–17. Indeed, as
recorded in the written meeting report (Ex. 1029), the listed individuals who
attended this meeting were reminded during the meeting “that the
distribution of the detailed descriptions of algorithms is restricted to the
MPEG/Audio group and therefore, nobody is allowed to distribute these
documents outside the MPEG/Audio group.” Id. at 15.
A first version of MUSICAM was submitted to the MPEG/Audio
group as a proposal at the October 18–20, 1989 working group meeting and
was provided with a copyright notice as reproduced below:

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Ex. 1026, 4. The copyright notice, illustrated above, includes the date of
October 11, 1989 and the submitting development group CCETT, IRT, and
Philips. Id.; Ex. 1029, 14. There were other proposals submitted at this
meeting as well, and MUSICAM was further designated as document MPEG
89/206 and dated October 18, 1989 as submitted to the working group.
Ex. 1026, 1. Petitioner does not explain, however, why the copyright notice
and the working group document designation are evidence of public
disclosure and availability. A copyright notice may be placed on a
document regardless of its level of confidentiality or disclosure, and the
evidentiary weight of the notice is statutorily defined as specifically
applicable to defense of copyright infringement. See 17 U.S.C. § 401(d).
Here, the fact that the authors attached a copyright notice to MUSICAM and
the working group designated the document with a specific paper number is
not, without more, persuasive evidence of public disclosure and availability
of MUSICAM as of any particular date.
We also are not persuaded that the revision of MUSICAM submitted
on December 28, 1989 to the MPEG/Audio group is an indication of public
disclosure and availability.7 Ex. 1027, 1. MUSICAM and its coding
algorithm apparently were revised in light of certain guidelines discussed at
the October 18–20, 1989 working group meeting. The meeting report states

7 MPEG 89/206 as submitted on October 18, 1989 was titled “Universal
Subband Coding,” not MUSICAM. Ex. 1026, 1. The revised version of
MPEG 89/206 submitted December 28, 1989 was titled “MUSICAM.”
Ex. 1027, 1. As do the parties, we refer to both documents as MUSICAM
and where necessary differentiate between the two documents according to
their respective submission dates to the working group. See Pet. 13–14;
Prelim. Resp. 18–19.
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that “[e]very algorithm proposer should – if necessary – revise his detailed
description in such a way that it matches the guideline.” Ex. 1029, 15.
Subsequently, the revised version of MUSICAM was submitted to the
working group December 28, 1989. Ex. 1027, 1. Petitioner has not
explained why the revised submission on December 28th, provides any more
evidence than does the October 18th submission, that MUSICAM was
disseminated outside of the MPEG/Audio group or made available to the
interested public. Petitioner argues that the December 28th submission is
corroborated by Professor Musmann at the University of Hanover, but this
fact does not provide any evidence of disclosure outside the working group
because Professor Musmann is listed as an MPEG/Audio group member in
the October 18–20, 1989 meeting report. See Ex. 1029, 16. Professor
Musmann is in fact designated as the Chairman of the MPEG/Audio group.
Id. at 1.
Petitioner alleges that MUSICAM was “[f]reely available to any
member of the MPEG/Audio group, without any member being subject to
confidentiality or non-disclosure obligations.” Pet. 16. This asserted fact by
Petitioner is not, in our review of the record, entirely accurate. First, there
was an obligation, or at least an expectation, of non-disclosure within the
working group. The meeting report from October 18–20, 1989 states clearly
that “[t]he chairman reminded all participants that the distribution of the
detailed descriptions of algorithms is restricted to the MPEG/Audio group
and therefore, nobody is allowed to distribute these documents outside the
MPEG/Audio group.” Ex. 1029, 15. Professor Musmann, the Chairman of
the MPEG/Audio group, not only reminded the participants at the meeting,
but additionally, his warning to not distribute the proposal documents
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outside the working group is explicitly reiterated in the written meeting
report. Id. Indeed, Professor Musmann stated in subsequent correspondence
that once given a MPEG document number, “documents identified in this
way were only accessible to the members of the MPEG standardization
group.” Ex. 2004.
We agree with Petitioner that there is no evidence of any member of
the MPEG/Audio group submitting, or signing a confidentiality or non-
disclosure agreement. Pet. 14. This fact, either alone or in combination with
those discussed above, is not persuasive because obligations of non-
disclosure and non-dissemination can arise apart from specific written and
executed agreements. Cordis Corp. v. Boston Sci. Corp., 561 F.3d 1319,
1333–34 (Fed. Cir. 2009) (“‘[W]here professional and behavioral norms
entitle a party to a reasonable expectation’ that information will not be
copied or further distributed, ‘we are more reluctant to find something a
‘printed publication.’” (quoting Klopfenstein, 380 F.3d at 1351)). The
Federal Circuit has not required explicit written agreements to affirm a
finding that disclosed material was not a printed publication. See N.
Telecom, Inc. v. Datapoint Corp., 908 F.2d 931, 936 (Fed. Cir. 1990).
We also are not persuaded by Petitioner’s assertion that the working
group’s discussion, at a meeting in July 1989, with respect to additional
safeguards of written non-disclosure agreements, means that documents or
proposals without such written agreements were free to be distributed
outside the MPEG/Audio group. See Pet. 14–15 (citing Ex. 1025, 2). First,
the meeting report from July 4–6, 1989 states that the MPEG/Audio group
agreed that “[d]etailed descriptions of algorithms and software should not be
disseminated.” Ex. 1025, 2. In the context of the meeting report, and
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membership in the MPEG/Audio group, a reasonable reading of this
admonition is that the detailed descriptions should not be disseminated
outside the working group. Second, the July meeting report noted that
discussion regarding the ISO’s position on written non-disclosure
agreements resolved into a recommendation that any non-disclosure forms
or agreements that members believed necessary should be circulated early
before the scheduled October 1989 meeting. Id. We discern no evidence in
this July meeting report that documents or proposals submitted to the
working group must be subject to a written non-disclosure or confidentiality
agreement to preclude dissemination outside the working group. In fact, we
understand the opposite. What we apprehend, in the context of the report
from the July meeting, is that the MPEG/Audio group members were
discussing, and in effect balancing, the factors of: (1) sufficient disclosure of
information under the group’s own self-regulated restrictions on
dissemination and disclosure so that a standard could be effectively
determined by the working group; with (2) an individual’s, or perhaps a
company’s, concern to maintain its technology proprietary and undisclosed
to all interested persons and the world at large. No further discussion of
non-disclosure agreements, or evidence of submission of any non-disclosure
documents, appears to have occurred following the July working group
meeting.8 Contrary to Petitioner’s assertion that “in July 1989, [] the parties

8 The Chairman of the MPEG/Audio group, Professor Musmann, posed two
questions for potential discussion in the October 1989 meeting in regards to
this balancing of factors:
• Are there regulations for non-disclosure agreements within the ISO?
• Is there any regulation for rejecting parties who insist on a
non-disclosure agreement?

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had agreed that anyone attempting to restrict dissemination of standards
documents would need to circulate a non-disclosure agreement” (Pet. 14),
we determine that a more reasonable understanding of this evidence is that
the MPEG/Audio group and its constituent members were sufficiently
assured that disclosure of documents including algorithms, and software and
hardware implementations for audio coding would be maintained within the
working group membership and not disseminated to parties outside the
MPEG/Audio group. See Ex. 1010, 3; Ex. 1025, 2 (July 1989 meeting
report admonishing members that “[d]etailed descriptions of algorithms and
software should not be disseminated”); Ex. 1029, 15 (October 1989 meeting
report reminding working group members that “distribution of the detailed
descriptions of algorithms is restricted to the MPEG/Audio group and
therefore, nobody is allowed to distribute these documents outside the
MPEG/Audio group”).
Turning to Petitioner’s assertion based on the meeting reports that the
members of the MPEG/Audio group “were free to take the reference back to
their company so that they could attempt to recreate the results,” we are not
apprised by any evidence that MUSICAM was ever disseminated outside the
working group. Pet. 17. As explained by Petitioner’s expert, Dr. Jayant,
group members “were free to take the information discussed at the MPEG
meetings and disclosed in the various documents back to their companies so
that they could use them to develop their proposals.” Ex. 1004 ¶ 78.
Dr. Jayant also testified “that those of us in the working group would have
the freedom to discuss the concepts from the working group with our

Ex. 1025, 2. No answers or further discussions as to these questions are
noted in the meeting report from October 1989. Ex. 1029.
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colleagues who were not in attendance and/or not part of the working
group.” Id. ¶ 68. Tellingly, Dr. Jayant does not state that the members
could freely disseminate or otherwise distribute the MUSICAM reference or
any other documents from the working group to anyone not a member of the
working group. Dr. Jayant testifies merely that as a member, he had
“freedom to discuss the concepts.” Id. Neither Dr. Jayant nor Petitioner
point to any evidence that persuades us that members disseminated
MUSICAM or any other reference or document, even once, to any party
outside the working group.9 See Pet. 10–19, Ex. 1004 ¶¶ 65–78. It appears
to the contrary, that Dr. Jayant treated MUSICAM and any other reference
including detailed descriptions of algorithms and related software and
hardware with confidential deference consistent with the working group’s
agreement to restrict access to MPEG/Audio group members. See Ex. 1029,
15.
We are unpersuaded also that the facts here comport with those in
Massachusetts Institute of Technology v. AB Fortia, 774 F.2d 1104, 1109
(Fed. Cir. 1985), as Petitioner contends. Pet. 17–18. In Massachusetts
Institute of Technology, the Federal Circuit determined a contested reference
was prior art where Dr. David Levine, a researcher in cell culturing at
Massachusetts Institute of Technology, gave a copy of his paper (“the
Birmingham paper”) to the head of the conference at which Dr. Levine

9 We note that the written report from the October 1989 meeting specifically
permitted dissemination of a single reference, “[t]he list of agreed test
sequences (document MPEG 89/166), which contains the exact source
informations, [sic] can be distributed without restrictions.” Ex. 1029, 16.
We find no such evidence, nor does Petitioner point to any, that such
permissions were applied to MUSICAM or any other reference.
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presented the paper, and “[a]fterward, copies were distributed on request,
without any restrictions, to as many as six persons, more than one year
before the filing date of the [ ] patents.” Id. at 1108–09. In Cooper
Cameron Corp. v. Kvaerner Oilfield Products, 291 F.3d 1317 (Fed. Cir.
2002), which Petitioner cites also in support of its position that MUSICAM
is a printed publication, the Federal Circuit was not persuaded that “a single
confidentiality notice relating to financial information on the fourth page of
its 130 pages,” rendered the documents inaccessible as prior art where
employees averred that the documents were not considered confidential and
were distributed to outside parties and contractors. Id. at 1324. In both
cases that Petitioner relies on, there was substantial evidence that no
restrictions were placed on dissemination of the papers and documents, and
further that the papers and documents were in fact freely distributed outside
of the scientific conference in Massachusetts Institute of Technology, and
distributed to entities beyond the joint venture members in Cooper Cameron
Corp.
The facts presented here are different. The MPEG/Audio group
through its Chairman and written meeting reports consistently cautioned the
working group members that the proposals and related information were
restricted to MPEG/Audio group membership and were not to be
disseminated beyond the group. See Ex. 1025, 2; Ex. 1029, 15. Indeed, no
evidence of dissemination outside of the working group has been presented
by Petitioner. The facts as presented here align more appropriately with our
colleagues’ Decision in Samsung Electronics Co. v. Rembrandt Wireless
Technologies, LP, Case IPR2014-00514 (PTAB Sept. 9, 2014) (Paper 18).
In Samsung, the Board determined that although non-members could attend
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meetings of the IEEE 802.11 working group and provide an email address to
the chair of the working group to receive information and a password to
access the documents on an open server, that the Standard Draft was not
publicly available. Id. at 6–10. The Board explained that there was no
evidence that the potentially interested public, or anyone outside the 802.11
working group, would have been made aware of the meetings or known to
contact the chair to be added to the email list and hence access the Standard
Draft on the open server. Id. at 9. In light of the dearth of evidence
suggesting public availability, the Board determined that the Standard Draft
was therefore not a printed publication. Id. at 9–10.
Moreover, in Samsung the Board noted “the fact that an interested
individual needed to contact IEEE in order to obtain a password or other
means of accessing Draft Standard (and needed to know who to contact in
the first place) weighs against public accessibility.” Id. at 9. Similarly, in
the present case although the MPEG/Audio group was not a “closed” group,
i.e., new members could be added, there was a protocol for defining
members of the working group to whom documents would be provided and
the protocol was generally known only to those in the working group. See
Ex. 1010, 3. Even more compelling than in Samsung, in the present case we
are not apprised of any evidence that MUSICAM or other reference
documents were available to anyone via the internet or posted on an open, or
even a secure, server of any type.
The evidence, particularly the working group’s written meeting
reports, in this proceeding is persuasive that access to references such as
MUSICAM and other algorithm informational documents beyond the
working group was restricted. The evidence of individual member behavior,
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such as Professor Musmann and Dr. Jayant, also shows consistent conduct of
the individual members of the MPEG/Audio group not disseminating such
documents. Also weighing in favor of MUSICAM not being a printed
publication is the lack of any evidence that it was ever accessed or even
available to anyone outside the working group. Altogether, the evidence
weighs in favor of finding MUSICAM is not a printed publication.
Therefore, based on the evidence Petitioner provided, we conclude Petitioner
has not made a sufficient showing that MUSICAM was a printed publication
as of December 28, 1989 or earlier, available to an interested individual in
MPEG audio coding upon the exercise of reasonable diligence.
4. Asserted Grounds of Unpatentability
Because Petitioner has not met its burden in establishing that
MUSICAM is a “printed publication,” and thus, prior art, Petitioner has not
shown a reasonable likelihood of prevailing on the ground asserted.
IV. SUMMARY
For the foregoing reasons, we determine that the information
presented in the Petition fails to establish a reasonable likelihood that
Petitioner would prevail on the alleged ground of unpatentability with
respect to each of claims 1–22 of the ’829 patent.
V. ORDER
For the reasons given, it is
ORDERED that no trial is instituted as to any of the challenged
claims.
IPR2015-01506
Patent 5,539,829

20
PETITIONER:

Walter Renner
Roberto Devoto
FISH & RICHARDSON P.C.
axf@fr.com
IPR18296-0055IP1@fr.com

PATENT OWNER:

Stephen Elliot
James Williams
SULLIVAN & CROMWELL LLP
elliotts@sullcrom.com
williamsj@sullcrom.com