Oracle Corporationv.Click-to-Call Technologies LP

Patent Trial and Appeal Board

Oct 28, 2014

08512820 (P.T.A.B. Oct. 28, 2014)

Trials@uspto.gov Paper 52
571-272-7822 Entered: October 28, 2014
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

ORACLE CORPORATION,
ORACLE OTC SUBSIDIARY LLC,
YP INTERACTIVE LLC, and
YELLOWPAGES.COM LLC,
Petitioners,

v.

CLICK-TO-CALL TECHNOLOGIES LP,
Patent Owner.
____________

Case IPR2013-00312
Patent 5,818,836
____________

Before MICHAEL R. ZECHER, THOMAS L. GIANNETTI, and
TRENTON A. WARD, Administrative Patent Judges.

ZECHER, Administrative Patent Judge.

FINAL WRITTEN DECISION
35 U.S.C. § 318(a) and 37 C.F.R. § 42.73

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I. BACKGROUND
Oracle Corporation, Oracle OTC Subsidiary LLC, YP Interactive
LLC,1 and Yellowpages.com LLC (collectively, “Oracle”) filed a Petition
requesting an inter partes review of claims 1, 2, 8, 12, 13, 15, 16, 18, 19,
22–24, and 26–30 of U.S. Patent No. 5,818,836 (Ex. 1001, “the
’836 patent”). Paper 1 (“Pet.”). Click-to-Call Technologies LP (“CTC”)
timely filed a Preliminary Response. Paper 14 (“Prelim. Resp.”). Taking
into account the information presented in Oracle’s Petition, as well as the
arguments presented in CTC’s Preliminary Response, the Board determined
that the information presented in the Petition demonstrated only that there
was a reasonable likelihood that Oracle would prevail in challenging claims
1, 2, 8, 12, 13, 15, 16, 19, 22, 23, 26, 29, and 30 as unpatentable under 35
U.S.C. §§ 102(e) and 103(a). Pursuant to 35 U.S.C. § 314, the Board
instituted this proceeding on October 30, 2013, only as to these claims of
the ’836 patent. Paper 26 (“Dec.”).
During this proceeding, CTC timely filed a Patent Owner Response
(Paper 41, “PO Resp.”), and Oracle timely filed a Reply to the Patent Owner
Response (Paper 43, “Pet. Reply”). An oral hearing was held on June 26,
2014. Paper 51 (“Tr.”).
We have jurisdiction under 35 U.S.C. § 6(c). This decision is a final
written decision under 35 U.S.C. § 318(a) as to the patentability of claims 1,
2, 8, 12, 13, 15, 16, 19, 22, 23, 26, 29, and 30 of the ’836 patent. For the

1 During trial, Petitioners filed an updated mandatory notice indicating that
Ingenio LLC, one of the original Petitioners in this proceeding, changed its
name to YP Interactive LLC. Paper 49, 1; Ex. 1026.
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reasons discussed below, Oracle has demonstrated by a preponderance of the
evidence that these claims are unpatentable.
A. The’836 Patent
The’836 patent generally relates to a method and system for
establishing anonymous telephone communications. Ex. 1001, 1:8–9.
Figure 1 of the ’836 patent, reproduced below, illustrates an anonymous
voice communication system. Id. at 4:35, 54–56.

As shown in Figure 1 of the ’836 patent, anonymous voice communication
system 10 uses circuit switched network (“CSN”) 12 and anonymous voice
system (“AVS”) 14 to establish an anonymous voice communication
between party A and party B. Ex. 1001, 4:56–59. In another embodiment,
system 10 uses packet switched network (“PSN”) 16 and on-line data system
(“ODS”) 18 to initiate an anonymous voice communication between party A
and party B. Id. at 4:59–63.
The ’836 patent discloses that each party has telephone station 20 or
22 associated therewith that is connected to CSN 12. Ex. 1001, 4:64–65.
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Telephone stations 20 and 22 may be ordinary telephones, integrated
services digital network telephones, or any device that can terminate an
access line, play an audio signal, and transmit a received audio signal. Id. at
5:24–27. System 10 uses CSN 12 to establish a voice connection between
telephone stations 20 and 22, as well as AVS 14. Id. at 4:65–67.
The ’836 patent further discloses that each party has data terminal 24
or 26 associated therewith that is connected to ODS 18 via CDS 12 and
PSN 16. Ex. 1001, 5:5–8. Data terminals 24 and 26 may be a personal
computer with the ability to process and store data, display information,
accept input via a keyboard, microphone, or writing tablet, and communicate
with other devices via a serial port, modem, or local area network. Id. at
5:28–32. Each party may use its respective data terminals 24 or 26 to
exchange messages through ODS 18 to request an anonymous voice
connection, which, in turn, causes ODS 18 to generate a command that
prompts AVS 14 to establish a telephone connection between the parties. Id.
at 5:8–13.
The ’836 patent discloses at least three different methods of creating
an anonymous voice communication using system 10 illustrated in Figure 1:
(1) standalone; (2) on-line; and (3) single party initiated. Ex. 1001, 9:45–47.
With respect to the on-line method of establishing an anonymous voice
communication, the parties initiate an anonymous voice call using ODS 18.
Id. at 16:54–55. Each party may use its data terminal 24 or 26 to log on to
ODS 18. Id. at 16:55–57. The parties may contact each other via ODS 18
using public chat, private chat, electronic mail, or newsgroups. Ex. 1001,
16:57–59. The parties can communicate via ODS 18 without revealing their
identity to each other, i.e., they are identified by screen names, handles, or
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subscriber identifications, which only the operator of ODS 18 can translate
into the subscriber’s identification. Id. at 16:59–64. According to the ’836
patent, either party A or party B may initiate an anonymous voice
communication using the on-line method. Id. at 16:65.
B. Illustrative Claim
Of the challenged claims, claims 1 and 12 are independent claims.
Claims 2, 8, 22, 23, and 26 directly or indirectly depend from independent
claim 1, and claims 13, 15, 16, 19, 29, and 30 directly or indirectly depend
from independent claim 12. Independent claim 1 is illustrative of the ’836
patent and is reproduced below:
1. A method for creating a voice connection over a
circuit switched network between a first party and a second
party using an on-line data service to initiate the connection,
comprising the steps of:
a) establishing an electronic communication between
the first party and the second party through the on-line data
service between the first party and the second party, wherein
the first party is anonymous to the second party prior to
establishing a first electronic communication between the first
party and the second party, wherein the establishing includes
providing over the Internet, to a data terminal of the first party
coupled to the Internet, information publicly accessible over the
Internet, wherein the information publically accessible over the
Internet is suitable for presentation within a graphical user
interface of the data terminal of the first party, wherein the
information publicly accessible over the Internet includes:
(1) first information characterizing a second
party,
(2) second information representing a
communication from the second party, and
(3) third information specifying a user-
selectable element for display within the graphical user
interface of the data terminal of the first party, wherein the user-
selectable element is visually associated, within the graphical
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user interface of the data terminal of the first party, with the
first information and the second information, when the first
information, second information and user-selectable element
are presented within the graphical user interface of the data
terminal of the first party; and
(b) following the establishment of an electronic
communication between the first party and the second party
through the on-line data service between the first party and the
second party, and in response to receiving an indication of
selection of the user-selectable element displayed within the
graphical user interface of the data terminal of the first party,
performing the steps of:
(1) requesting a voice communication between
the first party and the second party through the on-line data
service;
(2) transmitting a message from the on-line data
service to a voice system requesting the voice connection
between said first party and said second party;
(3) establishing a first telephone call for the first
party;
(4) establishing a second telephone call for the
second party; and
(5) connecting said first telephone call with said
second telephone call.

Ex. 20012, 1:26–2:8 (brackets and emphases omitted).
C. Related Proceedings
Both parties indicate that the ’836 patent was asserted in the following
civil actions, each of which was filed in the United States District Court for
the Western District of Texas: (1) Click to Call Technologies LP v. Oracle
Corporation, No. 1:12-cv-00468-SS, filed on May 29, 2012; (2) Click to
Call Technologies LP v. eHarmony, Inc., No. 1:12-cv-00469-SS, filed on

2 This citation is to Ex Parte Reexamination Certificate No. US 5,818,836
C1, which issued on December 30, 2008.
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May 30, 2012; and (3) Click to Call Technologies LP v. AT&T, Inc., No.
1:12-cv-00465-SS, filed on May 29, 2012. Pet. 1–2; Paper 7, 2–3.

D. Prior Art Relied Upon
Oracle relies upon the following prior art references:
Dezonno US 5,991,394 Nov. 23, 1999 Ex. 1002
(effectively filed Apr. 21, 1995)

DALE DOUGHERTY & RICHARD KOMAN, THE MOSAIC HANDBOOK
FOR MICROSOFT WINDOWS 17–39 (1994) (Ex. 1004) (“Mosaic
Handbook”).

E. Instituted Grounds of Unpatentability
We instituted this proceeding based on the asserted grounds of
unpatentability set forth in the table below.
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Challenged Claims Basis Reference(s)3
1, 2, 12, 13, 19, 22, 23, 26,
29, and 30 § 102(e) Dezonno
1, 2, 8, 12, 13, 15, 16, 19, 22,
23, 26, 29, and 30 § 103(a) Dezonno
22 and 29 § 103(a) Dezonno and Mosaic Handbook

II. ANALYSIS
A. Claim Construction
In an inter partes review, we construe a claim by applying the
broadest reasonable interpretation in light of the specification of the patent in
which it appears. 37 C.F.R. § 42.100(b); Office Patent Trial Practice Guide,
77 Fed. Reg. 48,756, 48,766 (Aug. 14, 2012).
1. Claim Terms or Phrases Construed by Oracle
In its Petition, Oracle provides claim constructions for a number of
claim terms or phrases recited in the ’836 patent. Pet. 8–11 (citing Ex. 1009;
Ex. 1010). CTC does not propose alternative claim constructions for these

3 For the grounds of unpatentability based solely on Dezonno, although
Oracle includes dependent claims 18 and 24 in the statement of the grounds
of unpatentability (Pet. 21), Oracle nonetheless does not include dependent
claims 18 and 24 in the corresponding analysis (see id. at 21–31).
Conversely, although Oracle omits dependent claims 22 and 29 in the
statement of the grounds of unpatentability (id. at 21), Oracle nonetheless
includes dependent claims 22 and 29 in the corresponding analysis (id. at 29,
31). We will treat the incorrect statement of the grounds of unpatentability
as a typographical error and presume Oracle intended to assert that claims 1,
2, 12, 13, 19, 22, 23, 26, 29, and 30 are anticipated under 35 U.S.C. § 102(e)
by Dezonno, whereas claims 1, 2, 8, 12, 13, 15, 16, 19, 22, 23, 26, 29, and
30 are unpatentable under 35 U.S.C. § 103(a) over Dezonno.

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claim terms or phrases in either its Preliminary Response or Patent Owner
Response. We adopted the claim constructions proposed by Oracle in our
Decision to Institute (Dec. 10–13) and we discern no reason to alter those
claim constructions for this Final Written Decision. For convenience, the
claims constructions proposed by Oracle are reproduced in the table below.
Claim(s) Claim Term or Phrase Claim Construction
1 and 12 “party” A person or group
participating in an action.
1 and 12 “anonymous” Identity is not revealed.
1 and 12 “voice system” A system that can connect
voice calls.
1 and 12 “data terminal” A computing device capable
of sending and/or receiving
data.
1 “on-line data service” A service provided by an on-
line data system, such as
electronic mail, chat,
newsgroups, or access to
information.
12 “on-line data system” A computing device or
distributed computing
system with storage and
communications capability
that provides services on-
line, such as electronic mail,
chat, newsgroups, or access
to information.
1 and 12 “information publicly
accessible”
Information that is widely
available and subject to
minimal constraints, such as
subscription, registration, or
ability to access the on-line
data service or system.
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Claim(s) Claim Term or Phrase Claim Construction
1 “establishing [or
establishment of] an
electronic communication
between the first party and
the second party”
Transferring information
electronically from one party
to another party.
1 and 12 “second information
representing a
communication from the
second party”
Information representing
information transferred from
the second party.
1 “requesting a voice
communication between the
first party and the second
party through the on-line
data service”
Requesting a voice
communication using the on-
line data service.
12 “connect command” A command that directs the
voice system to connect a
first telephone call with a
second telephone call.
1 and 12 “indication [or indicative] of
selection of the user-
selectable element”
Information indicating that
the user-selectable element
was selected.
12 “on-line data system that is
coupled to the data terminal
of each party”
A computing device or
distributed computing
system with storage and
communications capability
that provides services on-
line, such as electronic mail,
chat, newsgroup, or access to
information, and is coupled
to the data terminal of each
party.
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Claim(s) Claim Term or Phrase Claim Construction
1 “on-line data service
between the first and the
second party”
A service provided by an on-
line data system, such as
electronic mail, chat,
newsgroup, or access to
information.

2. “First Information” and “Second Information” (Claims 1 and 12)
In its Petition, Oracle contends that the claim terms “first information”
and “second information” recited in independent claims 1 and 12 are not
entitled to patentable weight because each claim term amounts to non-
functional descriptive material that has no functional relationship to any
substrate or other portions of the claims. Pet. 60. In its Preliminary
Response, CTC contends that the “first information” and “second
information” recited in independent claim 1 are entitled to patentable weight
because they have a direct functional relationship to the claimed
“establishing” step (a), as well as the claimed “performing” steps (b)(1)–(5).
Prelim. Resp. 21–23. Similarly, CTC contends that “first information” and
“second information” recited in independent claim 12 are entitled to
patentable weight because they have a direct functional relationship to “the
provision of the information publicly accessible,” which is structured
through the claimed visual association of a user-selectable element with the
first and second information. Id. at 23.
In the Decision to Institute, we determined that, because the claim
terms “first information” and the “second information” have a functional
relationship with other claimed features recited in independent claims 1 and
12, these claim terms limit the claimed invention functionally and, as a
result, are entitled to patentable weight. Dec. 13–14. During trial, neither
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Oracle nor CTC dispute our determination in that regard. We discern no
reason to alter our claim construction of these claim terms for this Final
Written Decision.
B. YP Interactive LLC Is Not Barred Under 35 U.S.C § 315(b) From
Pursuing an Inter Partes Review of the ’836 Patent
In the Decision to Institute, as well as a subsequent Decision on
CTC’s Request for Rehearing (Paper 40), we determined that one of the
original Petitioners—namely, Ingenio LLC, which has since changed its
name to YP Interactive LLC—is not barred from pursuing an inter partes
review under 35 U.S.C. § 315(b). Dec. 15–18; Paper 40, 3–5. In its Patent
Owner Response, CTC renews its argument that we erroneously interpreted
§ 315(b) because the legislative history associated with this statute dictates
that the plain meaning of “served with a complaint alleging infringement of
[a] patent” is conclusive and, therefore, our analysis of the issue in both the
Decision to Institute and the Decision on CTC’s Request for Rehearing erred
in looking beyond the statutory language. PO Resp. 53–56. In its Reply,
Oracle reiterates the position we took in both the Decision to Institute and
the Decision on CTC’s Request for Rehearing that there is no statutory bar
against YP Interactive LLC because a voluntarily dismissal of a complaint
without prejudice does not trigger a bar under § 315(b). Pet. Reply 15.
As stated in the Decision to Institute and the Decision on CTC’s
Request for Rehearing, both the Federal Rules of Civil Procedure and
Federal Circuit precedent treat a dismissal without prejudice as something
that, de jure, never existed. Dec. 16–17; Paper 40, 4. It is undisputed that
the patent infringement suit filed by Inforocket against Keen—now YP
Interactive LLC—on June 8, 2001, was dismissed without prejudice on
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March 21, 2003. Ex. 1019, 1; Ex. 1017, 4; Ex. 1018, 8. We have
determined that, because this patent infringement suit was dismissed without
prejudice, Federal Circuit precedent interprets such a dismissal as leaving
the parties in the same legal position as if the underlying complaint had
never been served. See Graves v. Principi, 294 F.3d 1350, 1356 (Fed. Cir.
2002); Bonneville Assoc., Ltd. P’ship v. Baram, 165 F.3d 1360, 1364 (Fed.
Cir. 1999). Accord 9 WRIGHT, MILLER, KANE, and MARCUS, FEDERAL
PRAC. & PROC. CIV. § 2367 (3d. ed.). As a consequence, YP Interactive
LLC is not barred from pursuing an inter partes review of the ’836 patent
under § 315(b).
C. Grounds of Unpatentability Based, in Whole or in Part, on Dezonno
In its Petition, Oracle presents the following grounds of
unpatentability: (1) claims 1, 2, 12, 13, 19, 22, 23, 26, 29, and 30 are
anticipated under 35 U.S.C. § 102(e) by Dezonno; (2) claims 1, 2, 8, 12, 13,
15, 16, 19, 22, 23, 26, 29, and 30 are unpatentable under 35 U.S.C. § 103(a)
over Dezonno; and (3) claims 22 and 29 are unpatentable under 35 U.S.C.
§ 103(a) over the combination of Dezonno and Mosaic Handbook. Pet. 15–
33. In support of these asserted grounds of unpatentability, Oracle relies
upon claim charts to explain how Dezonno, either standing alone or in
combination with Mosaic Handbook, discloses the claimed subject matter
recited in each of these claims. Id. Oracle also presents the Declaration of
Dr. Robert L. Stevenson (Ex. 1007 ¶¶ 11–17) to support its positions. Id.
In its Patent Owner Response, CTC does not challenge the
contentions and supporting evidence presented by Oracle in its Petition, but
instead attempts to antedate Dezonno. In particular, CTC contends that the
invention embodied in these claims (“the claimed invention”) was conceived
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prior to the earliest effective filing date of Dezonno—namely, April 21,
1995 (Ex. 1002, at [63]). PO Resp. 1–2. CTC further contends that the
claimed invention was constructively reduced to practice on August 9, 1995,
the filing date of the patent application that led to the ’836 patent, as well as
actually reduced to practice on August 15, 1995, the day before the ONE
BBSCON conference. Id. at 2–3. According to CTC, the ONE BBSCON
conference was a major industry conference where Mr. Stephen C. DuVal,
the named inventor of the ’836 patent (Ex. 1001, at [76]), planned to
announce his purported invention. PO Resp. 1. In addition, CTC asserts
that Mr. DuVal continually exercised reasonable diligence from April 20,
1995, through August 9, 1995 (“the critical period”). Id. at 5–8. As a
consequence, CTC argues that Dezonno does not qualify as prior art under
35 U.S.C. § 102(e). Id. at 8
We begin our analysis with the principles of law that generally apply
to antedating a reference, followed by a brief discussion of the parties
contentions regarding conception, and then we turn to the parties contentions
regarding whether there is sufficient evidence on this record to provide
independent corroboration of Mr. DuVal’s testimony that he continually
exercised reasonable diligence during the entire critical period.
1. Principles of Law
An inventor may antedate a reference if he was the first to conceive of
a patentable invention, and then connects the conception of his invention
with its reduction to practice by reasonable diligence on his part, such that
conception and diligence are substantially one continuous act. Mahurkar v.
C.R. Bard, Inc., 79 F.3d 1572, 1577 (Fed. Cir. 1996). An inventor’s
testimony, standing alone, is insufficient to prove conception and diligence,
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as some form of corroboration is required. Mahurkar, 79 F.3d at 1577;
Price v. Symsek, 988 F.2d 1187, 1194 (Fed. Cir. 1993). A rule of reason
applies to determine whether the inventor’s testimony has been
corroborated. Price, 988 F.2d at 1194.
During the period in which reasonable diligence must be shown, there
must be continuous exercise of reasonable diligence. In re McIntosh, 230
F.2d 615, 619 (CCPA 1956); see also Burns v. Curtis, 172 F.2d 588, 591
(CCPA 1949) (referring to “reasonably continuous activity”). A party
alleging diligence must account for the entire critical period. Griffith v.
Kanamuru, 816 F.2d 624, 626 (Fed. Cir. 1987); Gould v. Schawlow, 363
F.2d 908, 919 (CCPA 1966). Even a short period of unexplained inactivity
is sufficient to defeat a claim of diligence. Morway v. Bondi, 203 F.2d 742,
749 (CCPA 1953); Ireland v. Smith, 97 F.2d 95, 99–100 (CCPA 1938). In
In re Mulder, 716 F.2d 1542, 1542–46 (Fed. Cir. 1983), for example, the
Federal Circuit affirmed a determination of lack of reasonable diligence,
where the evidence of record was lacking for a two-day critical period.
Likewise, in Rieser v. Williams, 255 F.2d 419, 424 (CCPA 1958), there was
no showing of diligence where no activity was shown during the first
thirteen days of the critical period.
A party alleging diligence must provide corroboration with evidence
that is specific both as to facts and dates. Gould, 363 F.2d at 920; Kendall v.
Searles, 173 F.2d 986, 993 (CCPA 1949). The rule of reason does not
dispense with the need for corroboration of diligence that is specific as to
dates and facts. Gould, 363 F.2d at 920; Kendall, 173 F.2d at 993; see also
Coleman v. Dines, 754 F.2d 353, 360 (Fed. Cir. 1985) (“The rule of
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reason . . . does not dispense with the requirement for some evidence of
independent corroboration.”).
2. Conception
In its Patent Owner Response, CTC contends that the following
documents collectively demonstrate that Mr. DuVal conceived of the
claimed invention of the ’836 patent before the earliest effective filing date
of Dezonno—namely, April 21, 1995: (1) the October 1994 invention
disclosure document filed with the Office (Ex. 2017, Attachment A); (2) the
February 1995 PrivTel4 Business Plan produced by Mr. DuVal at the request
of Mr. Brian Forrest (Ex. 2017, Attachment C); (3) the March 1995
invention disclosure document filed with the Office (Ex. 2017, Attachment
B); and (4) the March 1995 letter Mr. DuVal sent to the law firm of Blakely,
Sokoloff, Taylor, and Zafman LLP instructing them to prepare and file a
patent application (Ex. 2017, Attachment O). PO Resp. 10–36. CTC further
contends that these documents independently corroborate Mr. DuVal’s
testimony that he conceived of the claimed invention of the ’836 patent prior
to April 21, 1995. Id.
In its Reply, Oracle contends that CTC has not established that Mr.
DuVal conceived of the claimed invention of the ’836 patent before April
21, 1995, because CTC does not demonstrate that distributing client
software over the Internet, as required by independent claims 1 and 12, was
either inherent or obvious in light of the March 1995 invention disclosure
document. Pet. Reply 14. Oracle further argues that independent claims 1

4 Mr. DuVal testifies that he formed PrivTel on December 12, 1994, to
demonstrate, produce, commercialize, and sell his claimed inventions.
Ex. 2017 ¶ 7(C).
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and 12 both require that the claimed user-selectable element, first
information, and second information must be displayed at the same time. Id.
at 15. Oracle asserts that, because the claimed user-selectable element is
part of the client software, it is displayed when the software begins to run,
i.e., before display of the claimed second information. Id.
Even if we were to agree with CTC that there is sufficient evidence to
corroborate Mr. DuVal’s testimony that he conceived of the claimed
invention of the ’836 patent prior to April 21, 1995, as we will discuss
below, CTC does not provide sufficient evidence to corroborate Mr.
DuVal’s testimony that there was a continuous exercise of reasonable
diligence during the entire critical period. Consequently, we need not reach
and, therefore, do not address conception.
3. Diligence
To demonstrate diligence during the entire critical period, CTC relies
upon the declarations of the following individuals: (1) Mr. DuVal
(Ex. 2017); (2) Mr. Forrest (Ex. 2019); (3) Mr. Ben Yorks (Ex. 2021), a
former partner at Blakely, Sokoloff, Taylor, and Zafman LLP who was hired
by Mr. DuVal to draft and file the patent application that led to the ’836
patent; (4) Mr. Bob Shinn (Ex. 2022), the former president and owner of
SofTel, Inc. (“SofTel”); (5) Mr. Simon Clement (Ex. 2023), the former
president of ProDesign, Inc. (“ProDesign”); and (6) Mr. Doug Martin
(Ex. 2025), the former Chief Technology Officer and co-owner of
Interactive Communication Services (“ICS”). PO Resp. 36–48. Of
particular importance is the testimony of Mr. Yorks regarding his
preparation in drafting and filing the patent application that led to the ’836
patent, as well as the testimony of Mr. Shinn, Mr. Clement, and Mr. Martin,
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each of whom represents one of the three software developers—namely,
SofTel, ProDesign, and ICS—hired by Mr. DuVal to implement the claimed
invention. Id. at 39–40. In its Reply, Oracle contends that CTC does not
provide sufficient evidence to corroborate Mr. DuVal’s testimony that he
was reasonably diligent during the entire critical period with respect to both
constructively reducing the claimed invention to practice and actually
reducing the claimed invention to practice. Pet. Reply. 5–13.
In our analysis below, we will explain how the aforementioned
supporting evidence, taken as a whole, does not support CTC’s contention
that there was a continuous exercise of reasonable diligence during the entire
critical period. In particular, we will address how this evidence does not
demonstrate that Mr. DuVal was diligent with respect to constructive
reduction to practice, and then turn to how this evidence does not
demonstrate that he was diligent with respect to actual reduction to practice.
a. CTC Does Not Demonstrate a Continuous Exercise of Reasonable
Diligence With Respect to Constructive Reduction to Practice

As we explained previously, Mr. DuVal constructively reduced the
claimed invention to practice when he filed the patent application that led to
the ’836 patent on August 9, 1995. The earliest effective filing date of
Dezonno is April 21, 1995. Ex. 1002, at [63]. To show diligence with
respect to constructive reduction to practice during the entire critical period,
CTC primarily relies upon the testimony of Mr. DuVal and Mr. Yorks.
Mr. DuVal testifies that, after Mr. Yorks prepared an initial draft of
the patent application that led to the ’836 patent just prior to April 21, 1995,
until at least May 2, 1995, he personally reviewed and revised the initial
draft between May 2, 1995, and May 9, 1995. Ex. 2017 ¶ 8(D)(1)–(2); see
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also Ex. 2024 ¶ 7 (William W. Schaal, a current partner at Blakely,
Sokoloff, Taylor, and Zafman LLP, testifies that, at the direction of Mr.
DuVal, he obtained an advisor letter and a draft patent application that was
sent from his law firm to Mr. DuVal on May 2, 1995.). Mr. DuVal then
testifies that “[f]rom at least May 9, 1995 until July 17, 1995, Mr. Yorks and
I continued to make progress on the preparation of my patent application.”
Ex. 2017 ¶ 8(D)(3). Mr. Yorks’s testimony regarding the preparation and
review of the initial draft of the patent application that led to the ’836 patent
is consistent with the timeline provided by Mr. DuVal. Compare Ex. 2021
¶ 6 (H)–(J), with Ex. 2017 ¶ 8(D)(1)–(3) .
The testimony offered by Mr. DuVal and Mr. Yorks concerning the
preparation and review of the draft patent application, however, is not
specific as to facts and dates for the entire critical period during which
diligence is required. See Gould, 363 F.2d at 920; Kendall, 173 F.2d at 993.
Mr. DuVal and Mr. Yorks do not provide sufficient evidence to corroborate
the work actually performed on the draft patent application that led to the
’836 patent between May 9, 1995, and July 17, 1995. Given the absence of
specific details concerning the work that was done on the draft patent
application, the testimony from Mr. DuVal and Mr. Yorks amounts to mere
pleadings and is insufficient to establish diligence with respect to
constructive reduction to practice during this time period. See In re Harry,
333 F.2d 920, 923 (CCPA 1964) (Statements that are unsupported by
evidence or a showing of facts essentially amount to mere pleadings.).
Moreover, during oral argument, counsel for CTC conceded that, if we were
to focus exclusively on the activities either Mr. DuVal or Mr. Yorks engaged
in to constructively reduce the claimed invention to practice, that, by itself,
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would be insufficient to establish diligence during the entire critical period.
Tr. 35:17–36:9.
Based on the record before us, the testimony from Mr. DuVal and Mr.
Yorks regarding constructive reduction to practice is not specific as to facts
and dates for at least the time period between May 9, 1995, and July 17,
1995, and, as result, does not establish that Mr. DuVal was diligent during
the entire critical period.
b. CTC Does Not Demonstrate a Continuous Exercise of Reasonable
Diligence With Respect to Actual Reduction to Practice

As we explained previously, CTC contends that Mr. DuVal actually
reduced the claimed invention to practice on August 15, 1995, the day
before the ONE BBSCON conference was scheduled to begin in Tampa,
Florida. The earliest effective filing date of Dezonno is April 21, 1995.
Ex. 1002, at [63]. To show diligence during the entire critical period leading
to this actual reduction to practice, CTC primarily relies upon the testimony
of Mr. DuVal, as well as the testimony of Mr. Shinn, Mr. Clement, and Mr.
Martin, regarding the work performed by the three software developers hired
by Mr. DuVal to implement the claimed invention.
Mr. DuVal testifies that “[f]rom at least prior to April 21, 1995 until at
least August 20, 1995, I was working full-time, approximately twelve hours
a day, seven days a week, to execute on my company’s business plan, and
particularly to meet my Diligence Goals.” Ex. 2017 ¶ 8(C). This testimony
from Mr. DuVal regarding the work he performed to implement the claimed
invention is not specific as to facts and dates for the entire critical period
during which diligence is required. See Gould, 363 F.2d at 920; Kendall,
173 F.2d at 993. Once again, Mr. DuVal’s statement amounts to a mere
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conclusion and lacks sufficient detail to establish diligence with respect to
actual reduction to practice during the entire critical period. See Harry, 333
F.2d at 923.
With respect to the three software developers hired by Mr. DuVal to
implement the claimed invention, Mr. DuVal testifies that “[a]t a minimum,
each . . . [of] ICS, SofTel and ProDesign, committed at least one full-time
engineer to PrivTel’s development efforts to complete a working prototype
of [the claimed invention] . . . in time for [the] ONE BBSCON [conference]
on August 16–20, 1995.” Ex. 2017 ¶ 8(F) (citing Ex. 2022 ¶¶ 11–18;
Ex. 2023 ¶ 18; Ex. 2025 ¶ 10). CTC, however, does not provide sufficient
evidence to corroborate the testimony of Mr. DuVal regarding the work
performed by the engineers employed by SofTel, ProDesign, and ICS to
implement the claimed invention.
For instance, CTC does not provide test results, billing records, or
other documentary evidence indicating that these engineers engaged in a
continuous exercise of reasonable diligence during the entire critical period
to implement the claimed invention. Absent such corroborating evidence,
we are left to speculate whether the work performed by these engineers took
several weeks or just a couple of days to complete. Even if we were to
assume that the work took several weeks to complete, we cannot assess
whether there are any diligence gaps during the critical period without
sufficient evidence establishing what activities took place on particular
dates. Conversely, if we were to assume that the work performed by theses
engineers only took a few days to complete, then there necessarily would be
one or more large gaps in diligence during the critical period that are
unaccounted for. Put simply, without sufficient evidence to substantiate
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details of the worked performed by the engineers employed by SofTel,
ProDesign, and ICS to implement the claimed invention, CTC has failed to
corroborate Mr. DuVal’s testimony that these engineers performed
reasonably continuous activities to reduce the claimed invention to practice.
In its Patent Owner Response, CTC focuses on certain activities
performed by each software developer to implement the claimed invention
and the respective payments made by PrivTel to each software developer for
their services. PO Resp. 41–47. The analysis that follows focuses on the
activities of each software developer and the corresponding payments
received from PrivTel, particularly during the time period between May 15,
1995, and June 15, 1995.
i. ICS
Mr. DuVal testifies that he worked with ICS to develop a software
development services agreement to build the claimed invention, which, in
turn, was executed on or around May 15, 1995. Ex. 2017 ¶ 8(J)(2).
Mr. DuVal further testifies that PrivTel made an initial payment of $2,000 to
ICS on May 15, 1995, after which ICS worked diligently to design the
claimed invention, including the system architecture, communication
protocols, and overall system design work. Ex. 2017 ¶ 8(J)(3). After ICS
completed its design of the claimed invention, Mr. DuVal testified that
PrivTel made another payment of $6,400 to ICS on July 1, 1995. Id.
Mr. Martin’s testimony regarding the design of the claimed invention by ICS
and corresponding payments for its services is consistent with the timeline
provided by Mr. DuVal. Compare Ex. 2025 ¶ 10–15, with Ex. 2017
¶ 8(J)(2)–(3).
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In its Reply, Oracle contends that neither Mr. DuVal nor Mr. Martin
identify the tasks or activities performed by ICS on a particular date between
May 15, 1995, and July 1, 1995, nor do they provide documentary evidence
that provides such information. Pet. Reply 9. Oracle further argues that
there is no evidence of record indicating that ICS actually created a design of
the claimed invention during this period, nor that ProDesign and SofTel
waited for, or even subsequently used, the design allegedly created by ICS.
Id. at 11.
The testimony that CTC relies upon to explain the activities
performed by ICS to implement the claimed invention is not specific as to
facts and dates for the entire critical period during which diligence is
required, particularly during the time period between May 15, 1995, and
July 1, 1995. First, Mr. DuVal does not indicate that he has personal
knowledge about the work performed by ICS during this time period.
Therefore, his testimony is entitled to little weight. Second, Mr. Martin does
not indicate whether it took ICS several weeks or just a few days to
complete the design of the claimed invention. Third, CTC does not provide
evidence that the design of the claimed invention allegedly created by ICS
during this time period actually exists. Nor does CTC indicate that this
alleged design was necessary for ProDesign and SofTel to complete the
work they were hired to perform to implement the claimed invention. See
e.g., Ex. 2023, Attachment A; Ex. 2022, Attachment C. Absent underlying
evidence to support the testimony from Mr. DuVal and Mr. Martin that ICS
worked diligently to implement the claimed invention between May 15,
1995, and July 1, 1995, we are not persuaded that ICS performed reasonably
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continuous activities to reduce the claimed invention to practice during this
time period.
ii. ProDesign
Mr. DuVal testifies that on June 15, 1995, PrivTel paid ProDesign
$5,000 to begin its first design phase of the claimed invention. Ex. 2017
¶ 8(N)(4). Mr. Clement, however, testifies that ProDesign did not enter into
a contract with PrivTel to develop software for the claimed invention until
June 26, 1995. Ex. 2023 ¶ 4. Mr. Clement further testifies that, “[e]ven
before the contract was signed, [he] began working diligently on the
software for [the claimed invention] because of the relatively short amount
of time before Mr. DuVal planned to demonstrated [the claimed invention]
at the upcoming ONE BBSCON conference in August.” Id. ¶ 11.
In its Reply, Oracle contends that Mr. Clements never corroborates
that ProDesign actually performed work on the claimed invention between
May 15, 1995, and June 15, 1995. Pet. Reply 8. Oracle also asserts that, in
light of Mr. DuVal’s testimony, ProDesign began its work to implement the
claimed invention no earlier than June 15, 1995, because that was the date
PrivTel made its initial payment of $5,000 to ProDesign. Id.
The testimony that CTC relies upon to explain the activities
performed by ProDesign to implement the claimed invention is not specific
as to facts and dates for the entire critical period during which diligence is
required, particularly during the time period between May 15, 1995, and
June 15, 1995. Although Mr. Clements testifies that he began working
diligently on the software for the claimed invention prior to entering into a
contract with PrivTel on June 26, 1995, he does not explain adequately the
activities he performed on particular dates. Even if we were to assume that
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Mr. Clements began working diligently to implement the software for the
claimed invention on June 15, 1995, the date PrivTel made its initial
payment of $5,000 to ProDesign, the time period between May 15, 1995,
and June 15, 1995, still remains unaccounted for. Without some evidence
that explains, in detail, the work performed by Mr. Clements on the software
of the claimed invention between May 15, 1995, and June 15, 1995, we are
not persuaded that ProDesign performed reasonably continuous activities to
reduce the claimed invention to practice during this time period.
iii. SofTel
CTC indicates that, because SofTel was hired to develop a control
system for the claimed invention that depends on some other subsystems,
presumably developed by ICS and ProDesign, SofTel did not begin its work
in earnest until July 1, 1995. PO Resp. 45 (citing Ex. 2017 ¶ 8(L)(1);
Ex. 2022 ¶¶ 7–16). This is consistent with Mr. DuVal’s testimony that
PrivTel paid SofTel $3,000 on July 1, 1995, to begin designing the control
system of the claimed invention. Ex. 2017 ¶ 8(L)(3).
In its Reply, Oracle contends that CTC admits in its Patent Owner
Response that SofTel did not begin working to implement the claimed
invention until July 1, 1995, and its admission in that regard is consistent
with the testimony proffered by Mr. DuVal. Pet. Reply 8 (citing Ex. 2017
¶ 8(L)(1)–(3)).
The testimony that CTC relies upon to explain the activities
performed by SofTel to implement the claimed invention is not specific as to
facts and dates for the entire critical period during which diligence is
required, particularly during the time period between May 15, 1995, and
July 1, 1995. Indeed, Mr. DuVal’s testimony that SofTel was awaiting the
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overall system architecture designed by ICS before it began its work in
earnest on July 1, 1995 (Ex. 2017 ¶ 8(L)(1); see Tr. 28:4–29:12) constitutes
persuasive evidence that SofTel did not perform reasonably continuous
activities to reduce the claimed invention to practice between May 15, 1995,
and July 1, 1995.
Based on the record before us, the testimony from Mr. DuVal
regarding actual reduction to practice, as well as the testimony of Mr. Shinn,
Mr. Clement, and Mr. Martin regarding the work performed by the three
software developers hired by Mr. DuVal to implement the claimed
invention, is not sufficiently specific as to facts and dates for at least the time
period between May 15, 1995, and June 15, 1995, to demonstrate that Mr.
DuVal was diligent during the entire critical period.
4. Summary
Applying the rule of reason, the evidence relied upon by CTC to
corroborate Mr. DuVal’s testimony does not demonstrate a continuous
exercise of reasonable diligence during the entire critical period with respect
to either constructive reduction to practice or actual reduction to practice,
particularly during the time period between May 15, 1995, and June 15,
1995. As a result, CTC has not antedated Dezonno, which, in turn, qualifies
as prior art to the ’836 patent under 35 U.S.C. § 102(e).
Upon reviewing the unchallenged contentions and supporting
evidence presented by Oracle in its Petition for the grounds of
unpatentability based, in whole or in part, on Dezonno (Pet. 15–33; Ex. 1007
¶¶ 11–17), we are persuaded that Oracle presents sufficient evidence to
support a finding that Dezonno, either standing alone or in combination with
Mosaic Handbook, discloses the claimed subject matter recited in claims 1,
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2, 8, 12, 13, 15, 16, 19, 22, 23, 26, 29, and 30. We also are persuaded that
Oracle provides an articulated reason with a rational underpinning to
combine the teachings of Dezonno and Mosaic Handbook. Pet. 32–33;
Ex. 1007 ¶ 17. Therefore, based on the record before us, we conclude that
Oracle has demonstrated by a preponderance of the evidence that:
(1) claims 1, 2, 12, 13, 19, 22, 23, 26, 29, and 30 are anticipated by
Dezonno; (2) claims 1, 2, 8, 12, 13, 15, 16, 19, 22, 23, 26, 29, and 30 are
obvious over Dezonno; and (3) claims 22 and 29 are obvious over the
combination of Dezonno and Mosaic Handbook.

III. CONCLUSION
Oracle has 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 based on the grounds of unpatentability set forth in the table
below.
Challenged Claims Basis Reference(s)
1, 2, 12, 13, 19, 22, 23, 26,
29, and 30 § 102(e) Dezonno
1, 2, 8, 12, 13, 15, 16, 19, 22,
23, 26, 29, and 30 § 103(a) Dezonno
22 and 29 § 103(a) Dezonno and Mosaic Handbook

IV. ORDER
In consideration of the foregoing, it is
ORDERED that Oracle has shown 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; and
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FURTHER ORDERED that, because this is a final written decision,
parties to this proceeding seeking judicial review of our decision must
comply with the notice and service requirements of 37 C.F.R. § 90.2.
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For PETITIONERS:
James M. Heintz
DLA Piper LLP (US)
Oracle-IPRP@dlapiper.com

Mitchell G. Stockwell
Kilpatrick Townsend & Stockton LLP
mstockwell@kilpatricktownsend.com

For PATENT OWNER:
Peter J. Ayers
LEE & HAYES, PLLC
peter@leehayes.com

Craig J. Yudell
Yudell Isidore Ng Russell PLLC
Yudell@yudellisidore.com