In a victory for Patent Owner, Zerto was unable to get any of 13 challenged claims of an EMC Israel Development Center patent into a trial for inter partes review, in Zerto, Inc. v. EMC Israel Development Center, Ltd., (IPR2013-00458), involving U.S. Pat. No. 7,577,867.

The ‘867 patent generally relates to “data protection and disaster recovery and, in particular, to tracking and managing storage systems with dynamically changing data.” More specifically, the ‘867 patent discloses processing data across multiple nodes of a “storage area network.”

Of interest in the Board’s decision was its analysis of a ground for obviousness in view of two references.  Finding that Petitioner had failed to set forth sufficient evidence to meet its burden, the Board made clear that it would not “resort to speculation or unfounded assumptions.”  Order at 18, citing In re Warner, 379 F.2d 1011, 1017 (CCPA 1967).  ”We will not resort to such speculation or assumptions to cure the deficiencies in the factual basis in order to support Petitioner’s alleged grounds of unpatentability based in whole or in part on Warrick.”  Id. 

Also interesting was the Board’s consideration of whether a reference constituted prior art.  The “Kashya” reference had a title page bearing a date of August 4, 2004.  Order at 25.  Petitioner relied on this date as proof of the art’s relevance as 102(b) art.  But, the reference also has a copyright date of 2013.  The reference further states that “[a]ll information contained or disclosed by this document is considered confidential and proprietary by Kashya Inc.”  Lastly, the reference contained “tracked changes” that gave the appearance that it was merely a working document.  As a result of these facts, Patent Owner contended that Petitioner had not sufficiently established that the document qualified as a printed publication.

The Board held that, because Petitioner did not address the other evidence in Kashya, that indicates that it has not been disseminated publicly, the reference did not qualify as a prior art printed publication.  For example, the “confidential and proprietary” notice has been considered by the Federal Circuit – Northern Telecom, Inc. v. Datapoint Corp., 908 F.2d 931, 936-37 (Fed. Cir. 1990) (holding that documents containing the legend “Reproduction or further dissemination is not authorized…not for public release” were not printed publications).

Unsuccessful on all grounds, Zerto was unable to get 13 challenged claims of the ‘867 patent into a trial for inter partes review.