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2 September 2015Patents

HP survives review in ServiceNow patent dispute

Technology company HP has avoided facing an inter partes review (IPR) of one of its web service management patents, despite one judge’s argument that the decision to deny a review was “premature”.

The Patent Trial and Appeal Board (PTAB) said that software company ServiceNow’s petition for a IPR of HP’s patent, US number 7,925,981, was unlikely to prevail.

ServiceNow claimed that the patent was invalid on the grounds that it was obvious.

Last year, HP sued ServiceNow at the US District Court for the Northern District of California for allegedly infringing eight patents, including the ‘981 patent.

In March this year, four of HP’s patents were judged to cover ineligible subject matter after ServiceNow challenged the patents.

The dispute surrounding the ‘981 patent, as well as three other patents, remains live.

The PTAB has instituted IPR proceedings for patents 7,392,300 and 7,027,411 and is debating whether to institute a CBM review for patent 7,945,860. An IPR petition for the ‘860 patent was rejected on August 26.

In support of ServiceNow’s argument to institute an IPR for the ‘981 patent, the company said that web documents published by software company BEA Systems in 2001, which outlined how the web management system covered by the patent worked, were proof of the patent’s obviousness.

The documents were cited by ServiceNow as “ printed publications”.

Under US law, a document is cited as a printed publication when it is “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”.

Once established as a printed publication, evidence is considered prior art, which ServiceNow said added to its claim of the patent’s obviousness.

HP applied for the patent at the US Patent and Trademark Office in 2003.

But ServiceNow said the printed publications were available for users to download before then and that the 2001 copyright date of the page was further evidence of the availability of the information before HP’s application.

Administrative Patent Judge James Arpin, who wrote the majority opinion on August 26, rejected the claim that the evidence constituted a printed publication.

He said that the reliance on the copyright notice alone as evidence for a printed publication was “inadmissible hearsay”.

“We are not persuaded that the presence of a copyright notice, without more, is sufficient evidence of public accessibility as of a particular date,” Arpin added.

But the lack of evidence should not have been enough to deny a CBM review, argued dissenting Judge Christopher Crumbley.

For Crumbley, the majority’s decision was “premature” because it is during trial proceedings where ServiceNow can introduce further evidence proving that the documents used as evidence of prior art constitutes a printed publication.

He said: “The legislative history of the America Invents Act indicates that reasonable likelihood standard was intended to ‘require the petitioner to present a prima facie case’ akin to a district court’s determination of ‘whether a party is entitled to a preliminary injunction’.

“While these showings are called into question by patent owner’s evidence, it is just that: an open question that we should permit the record, as developed during a full trial, to answer,” he added.

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