L-3 Communications Holdings, Inc.v.POWER SURVEY LLC

Patent Trials and Appeals Board

Nov 14, 2014

12321484 - (D) (P.T.A.B. Nov. 14, 2014)

Trials@uspto.gov Paper 9
571-272-7822 Date: November 14, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

L-3 COMMUNICATION HOLDINGS, INC. and
PREMIER UTILITY SERVICES, LLC,
Petitioners,

v.

POWER SURVEY, LLC,
Patent Owner.
____________

Case IPR2014-00832 (Patent 8,482,274 B2)
Case IPR2014-00835 (Patent 8,536,856 B2)
Case IPR2014-00838 (Patent 8,598,864 B2)
____________

Before KARL D. EASTHOM, KEVIN W. CHERRY, and
ROBERT J. WEINSCHENK, Administrative Patent Judges.

CHERRY, Administrative Patent Judge

DECISION
1

Denial of Inter Partes Review
37 C.F.R. § 42.108

1
The Board exercises its discretion to issue one identical Decision in each
case using this caption style. Unless otherwise authorized, the parties are
not permitted to use this style.
IPR2014-00832 (Patent 8,482,274 B2)
IPR2014-00835 (Patent 8,536,856 B2)
IPR2014-00838 (Patent 8,598,864 B2)

2

I. INTRODUCTION
L-3 Communications Holdings, Inc. and Premier Utility Services,
LLC (collectively, “Petitioners”) filed Petitions requesting inter partes
review in each of the above-listed cases. See IPR2014-00832, Paper 2
(“Pet.”)
2
; IPR2014-00835, Paper 2; IPR2014-00838, Paper 2. Power
Survey, LLC (“Patent Owner”) filed Preliminary Responses under 37 C.F.R.
§ 42.107(b). IPR2014-00832, Paper 7 (“Prelim. Resp.”); IPR2014-00835,
Paper 7; IPR2014-00838, Paper 7. Because the dispositive issues are similar
in the above-listed cases, we treat IPR2014-00832 (“the ’832 proceeding”)
as representative of these three proceedings, which involve three of Patent
Owner’s patents: U.S. Patent No. 8,482,274 B2 (“the ’274 patent”); U.S.
Patent No. 8,536,856 B2 (“the ’856 patent”); and U.S. Patent No.
8,598,864 B2 (“the ’864 patent”) (collectively, “the Power Survey Patents”).
We have jurisdiction under 35 U.S.C. § 314, which provides that an inter
partes review may not be instituted “unless . . . there is a reasonable
likelihood that the petitioner would prevail with respect to at least 1 of the
claims challenged in the petition.”
We determine that, based on the information presented in the Petitions
and supporting evidence, Petitioners have failed to show that there is a
reasonable likelihood that Petitioners would prevail with respect to at least
one challenged claim. Accordingly, we decline to institute an inter partes
review, as discussed below.

2
Record citations refer to the record in IPR2014-00832, unless otherwise
indicated.
IPR2014-00832 (Patent 8,482,274 B2)
IPR2014-00835 (Patent 8,536,856 B2)
IPR2014-00838 (Patent 8,598,864 B2)

3

A. Related Proceedings
The parties have identified the following related Petitions for inter
partes review:
Related IPR Proceedings
IPR Case No. Involved U.S. Patent No.
IPR2014-00832 8,482,274
IPR2014-00834 8,482,274
IPR2014-00835 8,536,856
IPR2014-00836 8,536,856
IPR2014-00838 8,598,864
IPR2014-00839 8,598,864
The parties have identified the following district court case as being
related: Power Survey, LLC v. Premier Utility Services, Civil Action No.
2:13-cv-05670-FSH-MAH (D.N.J., filed Sept. 23, 2013). Pet. 4; Prelim.
Resp. 5.
B. The Power Survey Patents
The Power Survey Patents all relate generally to apparatuses and
methods for detecting voltage anomalies in electric fields. Ex. 1003
3
,
Abstract. The Power Survey Patents explain that large power distribution
systems may occasionally generate undesirable or dangerous anomalies. Id.
at col. 1, ll. 31–34. According to the Power Survey Patents, voltage
anomalies can result when an object, such as a manhole cover, grating, or
street light pole, becomes electrically energized through an electrically

3
Citations here are to the Specification of the ’274 patent, which is
representative.
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4

conductive path between the network cabling of the power distribution
system and the object, due to physical damage to the electrical insulation on
the cable. Id. at col. 1, ll. 36–39. The Power Survey Patents note that these
energized objects present dangers to people and animals in the area. Id. at
col. 1, ll. 44–46.
The Power Survey Patents describe a sensor system that can receive
electric field measurements from one or more “sensor probes.” Id. at col. 2,
ll. 25–28. The Power Survey Patents explain that, based on the electric field
data, the system can identify a voltage anomaly in the electric field and then
send a signal to an indicator for alerting a user to the presence of the voltage
anomaly in the electric field. Id. at col. 2, ll. 28–35.
C. Illustrative Claim
The independent claims of the Power Survey Patents include
apparatus claims and method claims. Claim 1 of the ’274 patent is
illustrative of the claimed subject matter.
1. A mobile apparatus mounted to a motor vehicle for detecting
an electric field, comprising:
at least one sensor probe, coupled to an electrically non-
interfering support frame mounted to the vehicle, that generates
a signal corresponding to an electric field detected by the at
least one sensor probe as the sensor probe moves past a
plurality of conductive objects proximate a street, wherein the
at least one sensor probe comprises two or more electrodes, and
wherein the two or more electrodes are each separated by a
rigid insulator;
a processor, coupled to the at least one sensor probe, that
digitizes the signal to form electric field data represented as a
plurality of time domain samples, produces field strengths of
each of the at least one sensor probes using the plurality of time
IPR2014-00832 (Patent 8,482,274 B2)
IPR2014-00835 (Patent 8,536,856 B2)
IPR2014-00838 (Patent 8,598,864 B2)

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domain samples, and analyzes the field strengths to identify a
line frequency voltage anomaly in the electric field, wherein the
electric field data is analyzed based on an expected frequency
pertaining to the line frequency voltage anomaly and wherein
the voltage anomaly is generated by leakage of electric power
from a power grid to at least one energized object in the
plurality of conductive objects proximate the street; and
an indicator, coupled to the processor, that alerts a user to
a presence of the voltage anomaly in the electric field and
indicates that at least one conductive object proximate the street
is energized to a potentially harmful level.
Ex. 1003, col. 25, l. 53–col. 26, l. 13.

IPR2014-00832 (Patent 8,482,274 B2)
IPR2014-00835 (Patent 8,536,856 B2)
IPR2014-00838 (Patent 8,598,864 B2)

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D. References Relied Upon
The following alleged prior art is relied upon by the Petitioners:
Name Reference Alleged
Date
Proceeding
Used
Exhibit
4

Sarnoff
Report
Sarnoff Corporation,
Report: A Sensor
System for Detecting
Stay Voltages on
Covers, Grates, Light
Poles, and Other
Structures.
2002 832, 835, 838 Ex. 1009
IEEE 644 IEEE Standard 644-
1994: IEEE Standard
Procedures for
Measurement of
Power Frequency
Electric and Magnetic
Fields From AC
Power Lines
Dec. 13,
1994
832 Ex. 1010
Brigham E.O. BRIGHAM, THE
FAST FOURIER
TRANSFORM
1974 832, 835, 838 Ex. 1008
Greene US 6,002,348 Dec. 14,
1999
832, 835, 838 Ex. 1006
Harris US 6,230,105 B1 May 8,
2001
832, 835, 838 Ex. 1007

4
The Exhibit numbers for the individual references are the same for all of
the Petitions where that particular reference is used.
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IPR2014-00835 (Patent 8,536,856 B2)
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E. The Asserted Grounds
The three Petitions raise the following grounds of unpatentability:
IPR2014-00832
Claims Ground of
Unpatentability
References Relied Upon
1–4 § 103(a) Sarnoff Report, IEEE 644, and Brigham
5 § 103(a) Sarnoff Report, IEEE 644, Brigham, and
Greene
8 § 103(a) Sarnoff Report, IEEE 644, Brigham, and
Harris
IPR2014-00835
Claims Ground of
Unpatentability
References Relied Upon
1–4 § 103(a) Sarnoff Report and Brigham
5 § 103(a) Sarnoff Report, Brigham, and Greene
8 § 103(a) Sarnoff Report, Brigham, and Harris
IPR2014-00838
Claims Ground of
Unpatentability
References Relied Upon
1–5 § 103(a) Sarnoff Report and Brigham
8 § 103(a) Sarnoff Report, Brigham, and Harris
II. BACKGROUND
A. Sarnoff Report
All of Petitioners’ grounds of unpatentability in these Petitions rely on
the Sarnoff Report. The Sarnoff Report is a report by the Sarnoff
Corporation (“Applicant”)—the original applicant for the Power Survey
patents—regarding a study conducted by the Sarnoff Corporation to detect
stray voltages in the Consolidated Edison (“Con Ed”) power system in New
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IPR2014-00838 (Patent 8,598,864 B2)

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York City. Ex. 1009, 1. The Sarnoff Report discusses various tests and
potential solutions to the problem of detecting stray voltages in the Con Ed
power distribution system. Id. at 2–11.
B. Prosecution History of the Power Survey Patents
The ’274 patent issued on July 9, 2013, from application number
13/618,696 (“the ’696 application”), which was filed on September 14,
2012. Ex. 1003. The ’856 patent issued on September 17, 2013, from
application number 13/618,718 (“the ’718 application”), which was filed on
September 14, 2012. IPR2014-000835, Ex. 1002. The ’696 and ’718
applications are both continuations of application number 12/321,484 (“the
’484 application”), which was filed on January 21, 2009. IPR2014-000838,
Ex. 1001; IPR2014-000835, Ex. 1002, col. 1, ll. 9–23; Ex. 1003, col. 1, ll. 9–
22. The ’864 patent issued on December 13, 2013, from the ’484
application. IPR2014-000838, Ex. 1001.
The ’484 application is, in turn, a continuation-in-part of application
number 11/224,909 (“the ’909 application”). IPR2014-000838, Ex. 1001,
col. 1, ll. 9–19. The ’909 application was filed on September 13, 2005.
IPR2014-000838, Ex. 1001; IPR2014-000835, Ex. 1002; Ex. 1003. On July
24, 2007, the ’909 application issued as U.S. Patent No. 7,248,054 B2.
Ex. 1002.
On December 13, 2005, as part of the prosecution of the ’909
application, Applicant, filed an Information Disclosure Statement (“IDS”)
under 37 C.F.R. § 1.97. Ex. 2001. The IDS states that “Applicant[] by
making citation of the enclosed documents make[s] no statement or
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admission as to whether they have or have not been made public and
whether they are or are not prior art.” Ex. 2001, 2.
The IDS contains the following disclosure:

Ex. 2001, 3; Ex. 1013, 11. The above section of the IDS identifies two non-
patent documents authored by Applicant, one ten-page proposal entitled
“Advanced Stray Voltage Anomaly Detection System,” Proposal No.
2003121, dated July 24, 2002, and the Sarnoff Report, the 23-page document
Petitioners assert is prior art in their Petitions. Id.
On September 18, 2006, the Examiner of the ’909 application issued
an office action (“the Office Action”) rejecting a number of the pending
claims as unpatentable under 35 U.S.C. §§ 102(b) and 103(a) as anticipated
by the Sarnoff Report or rendered obvious by the Sarnoff Report in
combination with other references. Ex. 1013, 3–7.
On December 28, 2006, Applicant submitted a response to the Office
Action (“Response”). Ex. 1013, 24–34. In that Response, Applicant
amended the pending claims that had been rejected and argued that these
amended claims were now patentable over the references that the Examiner
had relied upon. Id. In the section of the Response entitled “Remarks,”
Applicant began by presenting a summary of the pending rejections. Id. at
32. Applicant stated that certain claims were “rejected under 35 U.S.C.
§ 102(b) as being anticipated by a publication entitled ‘A Sensor System for
IPR2014-00832 (Patent 8,482,274 B2)
IPR2014-00835 (Patent 8,536,856 B2)
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Detecting Stray Voltages on Covers, Grates, Light Poles and Other
Structures [i.e., the Sarnoff Report].’” Id. Applicant then presented
arguments asserting that the Sarnoff Report failed to disclose certain
limitations of the amended claims. Id. at 32–33. In addition, Applicant
explained that
[i]n the Sarnoff reference [i.e., Sarnoff Report], the
feasibility of developing a sensor/detector system configured to
identify the presence of dangerous stray voltages is examined.
More particularly, the Sarnoff reference discloses preliminary
tests conducted by Applicant[] for purposes of identifying the
challenges associated with developing the sensor/detector
system, which is described in detail and enabled solely by the
specification of Applicant[’s] claimed invention. Although the
results of the preliminary tests disclosed in the Sarnoff
reference provide useful insight and guidance in the
development of the robust stray voltage detection apparatus of
Applicant[’s] claimed invention, it severely lacks the essential
processing details necessary to successfully enable and
implement Applicant[’s] claimed invention. For instance, the
‘desirability’ to provide a sensor/detector system that could be
mounted on a vehicle to allow for drive-by inspection of
dangerous stray voltages is disclosed in the Sarnoff reference,
however, the processing requirements necessary for effectively
employing a mobile sensor/detector system are not disclosed.
Id. at 33.
None of the parties to this proceeding have identified any other
portions of the prosecution history of the ’909 application or any related
applications that discuss the Sarnoff Report.

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III. ANALYSIS
A. Issue
All of Petitioners’ proposed obviousness combinations rely on the
Sarnoff Report. The dispositive issue at this stage of the proceeding is
whether Petitioners have established that the Sarnoff Report is prior art for
purposes of 35 U.S.C. § 103(a).
B. Legal Standard
“Under §103, the scope and content of the prior art are to be
determined; differences between the prior art and the claims at issue are to
be ascertained; and the level of ordinary skill in the pertinent art resolved.
Against this background the obviousness or nonobviousness of the subject
matter is determined.” Graham v. John Deere Co., 383 U.S. 1, 17–18
(1966). “Before answering Graham’s ‘content’ inquiry, it must be known
whether a patent or publication is in the prior art under 35 U.S.C. Sec. 102,
— a legal question.” Panduit Corp. v. Dennison Mfg. Co., 810 F.2d 1561,
1568 (Fed. Cir. 1987). Under § 102, “[a] person shall be entitled to a patent
unless . . . the invention was patented or described in a printed publication in
this or a foreign country . . . more than one year prior to the date of the
application for patent . . . .” 35 U.S.C. § 102(b). The U.S. Court of Appeals
for the Federal Circuit has held that “public accessibility” is the touchstone
in determining whether a reference is a “printed publication” under § 102(b).
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
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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)).
Whether a reference is a printed publication is a legal question based on
underlying factual determinations. Id. 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).
“However, section 102 is not the only source of section 103 prior art.”
Riverwood Int’l Corp. v. R.A. Jones & Co., 324 F.3d 1346, 1354 (Fed. Cir.
2003). “Valid prior art may be created by the admissions of the parties.” Id.
(citing In re Fout, 675 F.2d 297, 300 (CCPA 1982)).
C. Discussion
Petitioners raise a number of related arguments in support of their
contention that the Sarnoff Report is prior art. All of them center on alleged
admissions made by Applicant during prosecution of the ’909 application.
First, Petitioners assert that Applicant admitted during prosecution of
the ’909 application that the Sarnoff Report is a printed publication under
35 U.S.C. § 102 by calling the Sarnoff Report a “publication” in the
Response to the Office Action discussed above. Pet. 23. Specifically,
Petitioners note that Applicant stated that certain claims “are rejected under
35 U.S.C. § 102(b) as being anticipated by a publication entitled ‘A Sensor
System for Detecting Stray Voltages on Covers, Grates, Light Poles and
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Other Structures[.]’” Pet. 23 (quoting Ex. 1013, 32) (emphasis added by
Petitioners).
Patent Owner argues that, when read in context, this statement is not
an admission. Prelim. Resp. 8–10. We agree with Patent Owner. Indeed, as
Patent Owner notes, Petitioners actually give this statement its correct
meaning when Petitioners state that “[Applicant] further argued for
patentability over ‘the other alleged prior art references,’ implying that [the
Sarnoff Report] was the primary alleged prior-art reference alleged by the
examiner.” Pet 23 (quoting Ex. 1013, 32–33 (emphasis added by Board,
emphasis by Petitioners omittted)). We agree with Patent Owner that
Applicant’s statement, which was made at the beginning of the “Remarks”
section and summarized the Examiner’s rejections, merely suggests that the
Examiner was alleging that the Sarnoff Report is a publication, not that
Applicant was acknowledging or admitting as much. Given the location of
this statement and Applicant’s explicit reference elsewhere in the Response
to “other alleged prior art,” Ex. 1013, 33, we agree with Patent Owner that
merely calling the Sarnoff Report a “publication,” when read in context,
does not amount to an admission that it is a prior art printed publication.
Second, Petitioners argue that the Sarnoff Report is Applicant’s own
publication, so Applicant was in the best position to know whether the
Sarnoff Report is a printed publication. Pet. 23–24. Patent Owner submits
that the fact that the Sarnoff Report is Applicant’s own document is
irrelevant because it does not alter Petitioners’ burden of proof. Prelim.
Resp. 11–12.
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In essence, Petitioners’ argument is that we should interpret
Applicant’s silence as an admission because Petitioners contend that
Applicant was in the best position to rebut the Examiner’s contention that
the Sarnoff Report is prior art. However, even if we consider Applicant’s
silence to be evidence, we do not find this evidence to be probative of
whether the Sarnoff Report is a printed publication under § 102(b). “As the
Supreme Court has recognized, ‘[i]n most circumstances silence is so
ambiguous that it is of little probative force.’” AZ v. Shinseki, 731 F.3d
1303, 1321 (Fed. Cir. 2013) (quoting United States v. Hale, 422 U.S. 171,
176 (1975)). “When evaluating whether the failure to make a statement may
be probative of a material fact, the underlying test is, would it have been
natural for the person to make the assertion in question?” Id. (citation and
quotation marks omitted). In other words, “the inference of assent may be
made only when no other explanation is equally consistent with silence.” Id.
(citation and quotation marks omitted); see also United States v. Flecha, 539
F.2d 874, 877 (2d Cir. 1976) (“Silence is not evidence of an admission,
unless there are circumstances which render it more reasonably probable that
a man would answer the charge made against him than that he would not.”)
(citation omitted).
We do not believe that Petitioners have shown that such
circumstances exist in this case as to create an admission by silence.
Petitioners failed to identify any cases placing Applicant under an obligation
to raise every possible argument before the Examiner. On the contrary, it is
recognized that positions often are taken during patent prosecution out of
convenience and expedience, and, therefore, such positions are not
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necessarily given preclusive effect. See Quad Envtl. Techs. v. Union
Sanitary Dist., 946 F.2d 870, 873–74 (Fed. Cir. 1991) (holding “[i]t is
improper to convert [the] simple expedient of ‘obviation’ [of a double
patenting rejection] into an admission or acquiescence or estoppel on the
merits”).
5
The situation here is similar. It was certainly reasonable for
Applicant to choose to make only one of several alternative arguments
available to it during prosecution of the ’909 application. Petitioners have
not shown that this was an instance where Applicant would have necessarily
responded to the Examiner’s assertion that the Sarnoff Report is prior art.
Thus, Petitioners have failed to show that that Applicant’s choice to amend
the claims and make a successful argument that the Sarnoff Report failed to
disclose the limitations of the amended claims, rather than contest the status
of the Sarnoff Report as a prior art reference, constitutes an admission by
silence.
6

5
The reissue recapture case cited by Petitioners does not convince us
otherwise. See Pet. 26 (citing Hester Indus. v. Stein, 142 F.3d 1472 (Fed.
Cir. 1998)). Petitioners have not cited any cases that hold that the
presumptions that exist to prevent the abuse of the reissue process also
create estoppel as to underlying facts in other contexts. We decline to
extend these presumptions beyond their normal bounds.
6 Indeed, this is also consistent with the Federal Circuit’s repeated warnings
about interpreting claims based on a silence during the course of the
prosecution. See, e.g., Salazar v. Procter & Gamble Co., 414 F.3d 1342,
1345 (Fed. Cir. 2005) (“an applicant’s silence regarding statements made by
the examiner during prosecution, without more, cannot amount to a ‘clear
and unmistakable disavowal’ of claim scope”); DeMarini Sports, Inc. v.
Worth, Inc., 239 F.3d 1314, 1326–27 (Fed. Cir. 2001) (refusing to rely on
ambiguity surrounding examiner’s silence or patentee’s lack of argument
during prosecution to construe claim term).
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Third, Petitioners contend that Applicant “admitted that [the Sarnoff
Report] constituted § 102(b) prior art by admitting that the document was
dated in 2002, two years prior to the earliest possible priority date for the
’274 patent.” Pet. 24. Petitioners further argue that Applicant cited the
publication on an IDS and stated that the publication was a report from “ca
2002.” Pet. 24 (citing Ex. 1013, 12). In response, Patent Owner argues that
“the IDS explicitly eschewed such an admission” by containing the
disclaimer discussed above. Prelim. Resp. 2 (quoting Ex. 2001, 2); see also
Prelim. Resp. 7–8. Patent Owner further asserts that, as a matter of law, the
listing of a document in an IDS—even where the document date precedes
the critical date—is not an admission that the disclosed reference is prior art.
Prelim. Resp. 2, 7–8 (citing ResQNet.com, Inc. v. Lansa Inc., 594 F.3d 860,
866 (Fed. Cir. 2010); 37 C.F.R. § 1.97(h); MPEP § 2001.04).
We agree with the Patent Owner that the IDS filed in connection with
the ’909 application does not constitute an admission that the Sarnoff Report
is prior art. The IDS expressly states that the submission of the IDS is not an
admission that any item listed therein is prior art. See Ex. 2001, 2.
Moreover, the Federal Circuit has repeatedly held that the submission of a
reference on an IDS does not constitute an admission that a cited reference
falls within the legal definition of prior art. See ResQNet.com, Inc. v. Lansa
Inc., 594 F.3d 860, 866 (Fed. Cir. 2010); Abbott Labs. v. Baxter Pharm.
Prod., Inc., 334 F.3d 1274, 1279 (Fed. Cir. 2003); Riverwood Int’l Corp.,
324 F.3d at 1355. As for the date included on the document and in the IDS,
the IDS only states that the document is “Dated: ca. 2002.” This may
suggest the date that the document was created, or perhaps, it may relate to a
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date the Sarnoff Report was circulated to select employees of Sarnoff
Corporation. It does not establish, by itself, with a reasonable likelihood,
that this was the date that the document was “publicly accessible.”
Fourth, Petitioner argues that “nowhere in its response to the office
action does [Applicant] suggest that the document is somehow not, as the
examiner asserted, a prior art publication under § 102(b).” Pet. 24.
Petitioners contend that, “[t]o the contrary, rather than arguing that the
reference was not a publication, [Applicant] amended its then-pending
claims to overcome the reference” and made extensive arguments regarding
patentability. Pet. 24. Patent Owner responds that this same type of
situation was considered in ResQNet and found to be insufficient to establish
that a reference was a printed publication. Prelim Resp. 3, 10–11.
We agree with Patent Owner that choosing to respond to a rejection
by amending the claims, rather by than proving that a reference is not prior
art, does not amount to an admission that the reference is prior art. As
Patent Owner notes, the Federal Circuit considered a similar situation in
ResQNet and found it did not amount to an admission. In ResQNet,
ResQNet submitted manuals to the Patent Office in an IDS and then
amended the claims of its patent in response to a rejection by the examiner
based on those manuals rather than arguing that the manuals were not prior
art. 594 F.3d at 865–66. The Federal Circuit held that ResQNet did not
admit that the manuals were prior art by these actions where no other
evidence of public availability was provided. Id. at 866.
Finally, Petitioners argue that, “under the totality of the
circumstances, [Applicant] treated the reference as a prior-art printed
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publication, and put the public on notice that the reference constituted a
prior-art printed publication.” Pet. 26–27. The foregoing analysis considers
the totality of the circumstances as set forth by the Petition and Patent
Owner’s response thereto. On this record, Petitioners fail to show that the
Sarnoff Report qualifies as prior art. Consequently, Petitioners have not
shown a reasonable likelihood that they would prevail in these Petitions.
IV. CONCLUSION
Based on the foregoing discussion, we determine that, on this record,
Petitioners have failed to show that the Sarnoff Report qualifies as prior art.
Each of the grounds of unpatentability alleged by Petitioners rely on the
Sarnoff Report. Thus, we conclude that Petitioners have failed to show a
reasonable likelihood of success on any ground of unpatentability raised in
these three Petitions. Accordingly, the following Petitions hereby are
denied: IPR2014-00832 (Patent 8,482,274 B2); IPR2014-00835 (Patent
8,536,856 B2); and IPR2014-00838 (Patent 8,598,864 B2).
V. ORDER
It is hereby ORDERED that the Petitions filed in IPR2014-00832,
IPR2014-00835, and IPR2014-00838, are denied, and no trial is instituted.

IPR2014-00832 (Patent 8,482,274 B2)
IPR2014-00835 (Patent 8,536,856 B2)
IPR2014-00838 (Patent 8,598,864 B2)

19

PETITIONER:
Daniel J. Goettle
John P. Donohue, Jr.
Baker & Hostetler LLP
dgoettle@bakerlaw.com
jdonohue@bakerlaw.com

PATENT OWNER:
Jon E. Wright
Ross G. Hicks
Michael B. Ray
STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
jwright-ptab@skgf.com
rhicks-ptab@skgf.com
mray-ptab@skgf.com