International Business Machines Corporationv.Intellectual Ventures II LLC

Patent Trial and Appeal Board

Nov 6, 2015

09422952 (P.T.A.B. Nov. 6, 2015)

Trials@uspto.gov Paper No. 57
571.272.7822 Entered: November 6, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

INTERNATIONAL BUSINESS MACHINES CORPORATION,
Petitioner,

v.

INTELLECTUAL VENTURES II, LLC,
Patent Owner.
____________

Case IPR2014-00587
Patent 6,826,694 B1
____________

Before JAMES T. MOORE, MEREDITH C. PETRAVICK, and
BENJAMIN D. M. WOOD, Administrative Patent Judges.

PETRAVICK, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING
37 C.F.R. § 42.71(d)

I. BACKGROUND
On September 29, 2015, International Business Machines Corporation
(“Petitioner”) filed a Request for Rehearing (Paper 55 (“Req.”)) asking the
Board to reconsider its Final Written Decision (Paper 54 (“Dec.”)).
In the Final Written Decision, we determined that Petitioner failed to
demonstrate by a preponderance of the evidence that claim 1 of U.S. Patent
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Patent 6,826,694 B1
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No. 6,826,694 B1 (“the 694 patent”) is unpatentable over Hughes1 and
Abraham2 because Hughes and Abraham are not prior art. Dec. 19. Hughes
and Abraham would qualify under prior art only under 35 U.S.C. §§ 102(a)
or 102(e). Id. at 11–12. Patent Owner sought to disqualify Hughes and
Abraham as prior art by demonstrating that the claimed invention of the ’694
patent was actually reduced to practice “at least as early as early 1996 but no
later than June 11, 1996,” which is prior to the filing dates of Hughes and
Abraham. Id. Patent Owner proffered a declaration of inventor Mr. Partha
Dutta, a set of AT&T documents, and a declaration of non-inventor Dr.
Dalibor Vrsalovic as evidence. Id. at 13. After weighing all of the evidence
and taking into account Petitioner’s arguments, we determined that the
evidence sufficiently established that the claimed invention was reduced to
practice “at least as early as early 1996 but no later than June 11, 1996.” Id.
at 18.
In Petitioner’s Reply, Petitioner argued that, contrary to Patent
Owner’s evidence, the claimed subject matter could not have been reduced
to practice by June 11, 1996. Paper 37, 11–12 (“Pet. Reply”). The ’694
patent has three named inventors, Mr. Partha Dutta, Mr. Mahesh Kumar, and
Dr. Michah Lerner. Ex. 1004, 1. Mr. Dutta, Mr.Kumar, and Dr. Lerner
were all employed by AT&T as part of the GeoPlex project, and Mr. Dutta
testified that the claimed subject matter was one part of the GeoPlex project.
See Dec. 13–14. Petitioner alleged that Mr. Kumar was not employed at
AT&T until July 1997 and, thus, argued that the claimed invention could not
have been conceived or reduced to practice earlier than July 1997. Pet.

1 Hughes et al., U.S. Patent No. 5,842,040 (issued Nov. 24, 1998)(Ex. 1006).
2 Abraham et al., U.S. Patent No. 5,983,270 (issued Nov. 9, 1999)(Ex.
1007).
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Patent 6,826,694 B1
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Reply 11–12. We were not persuaded by this argument because “the
discrepancy between Mr. Kumar’s alleged date of employment and the
alleged date of reduction to practice may be the result of an error in
ascribing inventorship, and is not persuasive evidence that the claimed
subject matter could not have been reduced to practice in 1996.” Dec. 17–
18.
In the Request for Rehearing, Petitioner argues that we “overlooked
the factual and legal argument showing that IV’s argument regarding
inventorship was both (i) unsupported by clear and convincing evidence and
(ii) improperly raised.” Req. 2. We have considered Petitioner’s request but
decline to modify our Decision for the reasons given below.

II. ANALYSIS
A. Standard of Review
When rehearing a decision on petition, the Board will review the
decision for an abuse of discretion. See 37 C.F.R. § 42.71(c). An abuse of
discretion may be determined 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. See Arnold Partnership v. Dudas, 362 F.3d 1338, 1340
(Fed. Cir. 2004). “The burden of showing a decision should be modified lies
with the party challenging the decision.” 37 C.F.R. § 42.71(d).

B. Analysis
Petitioner argues that “the panel overlooked that it is not sufficient to
find that IV’s argument [regarding the discrepancy with Mr. Kumar’s date of
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Patent 6,826,694 B1
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employment] may be true, because IV must prove misjoinder of an inventor
by clear and convincing evidence.” Req. 2–4.
Petitioner’s argument is unpersuasive. As Petitioner acknowledges,
Req. 4, it bears the ultimate burden of persuasion, by a preponderance of the
evidence, that Hughes and Abraham are prior-art references, which includes,
in this case, the burden of showing that IV is not entitled to an invention date
earlier than Hughes’s and Abraham’s earliest effective filing dates. This
means that “if the fact trier of the issue is left uncertain, the party with the
burden loses.” Dynamic Drinkware, LLC v. National Graphics, Inc., 800
F.3d 1375, 1379 (Fed. Cir. 2015) (internal citation and quotation marks
omitted). In contrast, Patent Owner bears a “second and distinct burden,”
the burden of production or of “going forward with the evidence,” that it is
entitled to an earlier invention date. See id. The burden of production “may
entail producing additional evidence and presenting argument based on new
evidence or evidence already of record.” Id. (internal quotation marks
omitted).
Patent Owner’s defense to the alleged ground of unpatentability was
to disqualify Hughes and Abraham as prior art by producing evidence that
the claimed subject matter was reduced to practice no later than June 11,
1996. See Paper 29, 33–54. Patent Owner proffered Mr. Dutta’s
declaration, Dr. Vrsalovic’s declaration, and the AT&T documents to meet
its burden of production. See id. We weighed all of Patent Owner’s
evidence, as well as Petitioner’s evidence and arguments, and determined
that Petitioner did not persuade us that Hughes and Abraham were prior-art
references. See Dec. 11–19.
Petitioner raised the issue of Mr. Kumar’s date of employment in the
Petitioner’s Reply in an attempt to rebut Patent Owner’s evidence of prior
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inventorship. Pet. Reply 11–12. Petitioner argued that the alleged
discrepancy with Mr. Kumar’s date of employment ipso facto established
that the date of conception and the reduction to practice of the subject matter
of claim 1 of the ’694 patent could not have occurred prior to July 1997. Id.
In essence, Petitioner argued Mr. Kumar’s alleged date of employment
outweighs all of Patent Owner’s evidence and necessarily leads to the
conclusion that the date of conception and the reduction to practice of the
subject matter of claim 1 of the ’694 patent could not have occurred prior to
July 1997.
Petitioner’s argument was and remains unpersuasive because, as we
determined in our decision, “the discrepancy between Mr. Kumar’s alleged
date of employment and the alleged date of reduction to practice may be the
result of an error in ascribing inventorship, and is not persuasive evidence
that the claimed subject matter could not have been reduced to practice in
1996.” Dec. 17–18. We are also not persuaded that Patent Owner was
required to prove by clear and convincing evidence that Mr. Kumar was
misjoined as an inventor of the ’694 patent in order to meet its burden of
going forward with evidence of prior invention. The clear-and-convincing-
evidence standard applies to burdens of persuasion, not to burdens of
production. See Dynamic Drinkware, 800 F.3d at 1378 (“The burden of
persuasion is the ultimate burden assigned to a party who must prove
something to a specified degree of certainty, such as by a preponderance of
the evidence or by clear and convincing evidence” (emphasis added)
(internal citation and quotation marks omitted)). Hess v. Advanced
Cardiovascular Sys., Inc., 106 F.3d 976 (Fed. Cir. 1997), the case on which
Petitioner relies in asserting this standard, is inapposite because there the
appellant sought to correct inventorship under 35 U.S.C. § 256. Id. at 978–
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Patent 6,826,694 B1
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79. Here, in contrast, Mr. Kumar’s status as a named co-inventor of the
‘694 patent is relevant only to the extent that it relates to Patent Owner’s
asserted date that the invention was reduced to practice. It is not an issue
that we need to decide per se, and thus it does not make sense under these
circumstances to impose on Patent Owner the burden of persuading us that
Mr. Kumar was improperly named as an inventor.
In its Petitioner’s Reply and Request, Petitioner cites to Davis v.
Reddy, 620 F.2d 885, 888 (C.C.P.A. 1980) for the proposition that “patent
owner could not claim a conception date that was before one of the joint
inventors began to work for the patent owner.” Pet Reply 11; Req. 6. In
Davis, a case regarding priority in an interference context, the court makes a
passing reference to the fact that the Board noted that the senior party was
not entitled to a conception date prior to when one of the co-inventors was
employed at the senior party’s patent’s assignee. Davis, 620 F.2d at 888.
Davis, however, does not include any discussion as to what facts the Board
relied upon to make such a determination, and thus, Petitioner’s reliance on
Davis v. Reddy is unpersuasive in this case because Petitioner has not
established that the facts of Davis are similar to the facts of this case.
Petitioner also argues that we overlooked Petitioner’s evidence
concerning the issue of inventorship and concerning Mr. Kumar’s alleged
date of employment because we dismissed Patent Owner’s motion to
exclude such evidence as moot. Req. 1–2. Patent Owner’s motion to
exclude sought to exclude Exhibits 1032, 1034, 1035 and 1036. Paper 40.
Petitioner proffered exhibit 1032 and 1034 to establish that Mr. Kumar was
an inventor. Pet. Reply 11. However, it is apparent from the ’694 patent,
itself, that Mr. Kumar was named as an inventor when the ’694 patent was
filed. Ex. 1004, 1. Petitioner proffered exhibits 1035 and 1036 to establish
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Patent 6,826,694 B1
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that Mr. Kumar did not start work at AT&T until July 1997. Pet. Reply 11–
12. In reaching our decision, we assumed that Petitioner was correct that
Mr. Kumar did not start until July 1997. See Dec. 17–18. We, thus,
dismissed Patent Owner’s motion to exclude as moot because we did not
rely upon exhibits 1032, 1034, 1035, and 1036 in reaching our Decision. Id.
at 19. As indicated in our Decision, even assuming that Mr. Kumar, a
named inventor, did not start work at AT&T until July 1997, we were not
persuaded that the alleged discrepancy between Mr. Kumar’s alleged date of
employment and Patent Owner’s alleged date of reduction to practice ipso
facto leads to the conclusion that the claimed subject matter could not have
been reduced to practice by June, 1996. See Id. at 17–18.
Petitioner further argues that consideration of Patent Owner’s
argument is improper procedurally because it was first raised in Patent
Owner’s motion to exclude. Req. 6–7. We acknowledge that previous
Board decisions have stated that a motion to exclude is not an opportunity
for submitting new arguments or a sur-reply. See Id. We, however, are not
persuaded this was an abuse of our discretion that requires us to modify our
decision to determine that Petitioner’s argument outweighs Patent Owner’s
evidence of prior invention. We note that Patent Owner responded to Patent
Owner’s argument regarding inventorship in its opposition to Patent
Owner’s motion to exclude and had an opportunity to respond to the issue
during oral argument. See Paper 48, 5–6; Paper 54, 14–16, 20–24.

III. CONCLUSION
We are not persuaded of an abuse of discretion by Petitioner.
Petitioner’s request for rehearing denied.
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Patent 6,826,694 B1
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IV. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that Petitioner’s Request for Rehearing is denied.

PETITIONER:

Kenneth R. Adamo
Eugene Goryunov
KIRKLAND & ELLIS LLP
kenneth.adamo@kirkland.com
Eugene.goryunov@kirkland.com

PATENT OWNER:

Brenton Babcock
Ted Cannon
KNOBBE, MARTENS, OLSON & BEAR, LLP
2brb@knobbe.com
2tmc@knobbe.com

Donald J. Coulman
Tim Seeley
INTELLECTUAL VENTURES MANAGEMENT
dcoulman@intven.com
tim@intven.com