By: Peter L. Holmes, Esq.
U.S. patents (of competitors, for example) can be challenged in Federal Courts through litigation (often very costly), as well as at the U.S. Patent and Trademark Office (“USPTO”) by various post-issuance proceedings (which are typically far less expensive, burdensome and life consuming than litigation). Patent validity challenges frequently involve prior art (patent and/or non-patent) references and assertions that one or more such references anticipate or render obvious (and therefore unpatentable) claims in a patent.
Post-issuance proceedings conducted by the Patent Trial and Appeal Board (“PTAB”) at the USPTO include Post Grant Review (“PGR”) and Inter Partes Review (“IPR”). A request for PGR must be filed within 9 months of the date that the patent issues and the petitioner can request cancellation of claims on grounds relating to invalidity (i.e., novelty, obviousness, written description, enablement, indefiniteness), but is only available for patents filed in recent years. A request for IPR can be filed for any patent; however, IPR challenges to the validity of claims are limited to those asserting lack of novelty or obviousness and only on the basis of prior art patents or printed publications.
The date that a patent is available as a reference is generally the date that the patent becomes enforceable; in the case of a U.S. patent, enforceable rights come into being on the issue date. Patents usually become available as references as of the publication dates of their corresponding patent applications. Patents may also qualify as prior art based on their effective filing dates. A printed publication is not limited to printed media and includes electronic documents; a reference is considered to be a printed publication if it is publicly accessible such that persons interested and ordinarily skilled in the subject matter or art, exercising reasonable diligence, can locate it.
It is not always apparent solely from information or other indicia on the document whether a potential prior art reference (such as, for example, an electronic document posted online as a web page, or disclosures in catalogs, brochures or other documents) will qualify as a printed publication. Such disclosures can become patent killers if by additional evidence if it can be established when they were first made publicly available.
The Precedential Opinion Panel at the PTAB recently issued a precedential decision, Hulu, LLC v. Sound View Innovations, LLC, Case IPR2018-01039 (PTAB Dec. 20, 2019) discussing the legal standard for institution of an Inter Partes Review proceeding based on a printed publication and evidence establishing public accessibility. This decision is further discussed below.
Recent Precedential Decision Issued by the POP
The Patent Trial and Appeal Board (“PTAB” or “Board”) at the U.S. Patent and Trademark Office (“USPTO”) is created by statute, and includes statutory members and Administrative Patent Judges. The PTAB is charged with rendering decisions on: appeals from adverse examiner decisions, post-issuance challenges to patents, and interferences.
Post-issuance proceedings charged to the PTAB include, among others, Inter Partes Review (IPR). In respect to IPR, as provided under and subject to the provisions of 35 U.S.C. § 311 et. seq., “a person who is not the owner of a patent may file with the [U.S. Patent and Trademark] Office a petition to institute an Inter Partes Review of the patent” [§ 311(a)] “request[ing] to cancel as unpatentable 1 or more claims of a patent only on a ground that could be raised under section 102 [anticipation] or 103 [obviousness] and only on the basis of prior art consisting of patents or printed publications [§ 311(b)].”
In September 2018, the PTAB revised its Standard Operating Procedures (see PTAB Standard Operating Procedure 2 R10 (“SOP 2”)) creating a Precedential Opinion Panel (“POP”), which typically (and by default) comprises the Director [of the USPTO], the [USPTO] Commissioner for Patents and the Chief Judge of the PTAB. POP review of Board decisions “generally will be used to establish binding agency authority concerning major policy or procedural issues, or other issues of exceptional importance in the limited situations where it is appropriate to create such binding agency authority through adjudication before the Board. For example, and among other things, the Precedential Opinion Panel may be used to address constitutional questions; important issues regarding statutes, rules, and regulations; important issues regarding binding or precedential case law; or issues of broad applicability to the Board. The Precedential Opinion Panel also may be used to resolve conflicts between Board decisions, to promote certainty and consistency, or to rehear any case it determines warrants the Panel’s attention.” SOP 2, at 3–4.
POP review of a particular Board decision in a proceeding may be recommended (requested) by any party to that proceeding, as well as by the Commissioner for Patents, the Chief Judge, or any other member of the Board. SOP 2, at 5–6. Unless otherwise designated, POP decisions necessarily set forth binding agency authority. SOP 2, at 1.
The POP recently issued a precedential decision, Hulu, LLC v. Sound View Innovations, LLC, Case IPR2018-01039 (PTAB Dec. 20, 2019) (Paper 29) (hereafter, “POP decision”). In the Decision under POP Review – Paper 12 (Dec. 3, 2018) (hereafter “Decision under POP Review”), the PTAB declined to institute Inter Partes Review of U.S. Patent 5,806,062 as unpatentable over asserted printed publication Dougherty (a text book titled “Sed & Awk”). Decision under POP Review – Paper 12 (Dec. 3, 2018), at 7. In the Decision under POP Review, the PTAB wrote: “Petitioner has not presented sufficient evidence to show a reasonable likelihood that Dougherty is prior art with respect to the ’062 patent.” Id. at 10. “There is insufficient evidence, even at this stage, to show when the book was sufficiently made available to the public, i.e., when persons interested and ordinarily skilled in the subject matter, exercising reasonable diligence, could have located it.” Id. at 11.
Hulu, LLC (“Petitioner”) requested rehearing of the Board’s decision arguing that the decision denying institution conflicts with other Board decisions involving the public availability of an asserted “printed publication”, and requested Precedential Opinion Panel (“POP”) review. Petitioner’s Request for Rehearing – Paper 13 (Jan. 2, 2019), at 1-3.
Around three months later, POP Review (of Petitioner’s request for rehearing of the Board’s decision denying institution of Inter Partes Review) was ordered. See POP Grant Order – Paper 15 (Apr. 3, 2019). In the POP decision (that followed), the POP wrote:
… Because prior Board decisions conflicted on requirements for institution involving issues of public accessibility of an asserted “printed publication,” the POP ordered a review on rehearing to address the following issue:
What is required for a petitioner to establish that an asserted reference qualifies as “printed publication” at the institution stage?
POP decision, at 2.
As to the term “printed publication”, the POP wrote:
… Whether a reference qualifies as a “printed publication” is a legal conclusion based on underlying factual findings. Nobel Biocare Servs. AG v. Instradent USA, Inc., 903 F.3d 1365, 1375 (Fed. Cir. 2018) (citing Jazz Pharm., Inc. v. Amneal Pharm., LLC, 895 F.3d 1347, 1356 (Fed. Cir. 2018)). The underlying factual findings include whether the reference was publicly accessible. Id. (citing In re NTP, Inc., 654 F.3d 1279, 1296 (Fed. Cir. 2011)). “The ‘printed publication’ provision of § 102(b) ‘was designed to prevent withdrawal by an inventor . . . of that which was already in the possession of the public.’” Medtronic, Inc. v. Barry, 891 F.3d 1368, 1380 (Fed. Cir. 2018) (alteration in original) (quoting Bruckelmyer v. Ground Heaters, Inc., 445 F.3d 1374, 1378 (Fed. Cir. 2006) (quoting In re Wyer, 655 F.2d 221, 226 (CCPA 1981))).
The determination of whether a document is a “printed publication” under 35 U.S.C. § 102 “involves a case-by-case inquiry into the facts and circumstances surrounding the reference’s disclosure to members of the public.” Medtronic, 891 F.3d at 1380 (citing In re Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004)). In certain situations, particularly for manuscripts or dissertations stored in libraries, courts may inquire whether a reference was sufficiently indexed, catalogued, and shelved. See, e.g., In re Hall, 781 F.2d 897, 898–99 (Fed. Cir. 1986); In re Lister, 583 F.3d 1307, 1315 (Fed. Cir. 2009) (manuscript became publicly accessible once it was placed in a searchable database). In other situations, such as for information displayed at meetings and trade shows, courts have explained that indexing is not required if it was sufficiently disseminated. See Medtronic, 891 F.3d at 1381 (citing Suffolk Techs., LLC v. AOL Inc., 752 F.3d 1358, 1365 (Fed. Cir. 2014)). The Federal Circuit has summarized that “[w]hile cataloging and indexing have played a significant role in our cases involving library references, we have explained that neither cataloging nor indexing is a necessary condition for a reference to be publicly accessible.” Lister, 583 F.3d at 1312 (citing Klopfenstein, 380 F.3d at 1348).
What constitutes a “printed publication” must be determined in light of the technology employed. Samsung Elecs. Co. v. Infobridge Pte. Ltd., 929 F.3d 1363, 1369 (Fed. Cir. 2019) (citing Wyer, 655 F.2d at 226). Public accessibility requires more than technical accessibility. Id. (citing Acceleration Bay, LLC v. Activision Blizzard Inc., 908 F.3d 765, 773 (Fed. Cir. 2018)). “[A] work is not publicly accessible if the only people who know how to find it are the ones who created it.” Id. at 1372. On the other hand, “a petitioner need not establish that specific persons actually accessed or received a work to show that the work was publicly accessible.” Id. at 1374. “In fact, a limited distribution can make a work publicly accessible under certain circumstances.” Id. (quoting GoPro, Inc. v. Contour IP Holding LLC, 908 F.3d 690, 694 (Fed. Cir. 2018)).
“Because there are many ways in which a reference may be disseminated to the interested public, ‘public accessibility’ has been called the touchstone in determining whether a reference constitutes a ‘printed publication’ bar under 35 U.S.C. § 102(b).” Blue Calypso, LLC v. Groupon, Inc., 815 F.3d 1331, 1348 (Fed. Cir. 2016) (quoting In re Hall, 781 F.2d at 898–99). “A given 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 reasonable diligence, can locate it.” SRI Int’l, Inc. v. Internet Sec. Sys., Inc., 511 F.3d 1186, 1194 (Fed. Cir. 2008) (quoting Bruckelmyer, 445 F.3d at 1378).
POP decision, at 8-11.
Regarding the legal standard for institution of Inter Partes Review, the POP summarized as follows: “at the institution stage, the petition must identify, with particularity, evidence sufficient to establish a reasonable likelihood that the reference was publicly accessible before the critical date of the challenged patent and therefore that there is a reasonable likelihood that it qualifies as a printed publication.” POP decision, at 13.
“To prevail in a final written decision in an inter partes review, the petitioner bears the burden of establishing by a preponderance of the evidence that a particular document is a printed publication. Nobel Biocare Servs., 903 F.3d at 1375 (citing Medtronic, 891 F.3d at 1380); see also In re Wyer, 655 F.2d at 227 (a party asserting a reference as a prior art printed publication should provide sufficient proof of accessibility).” POP decision, at 11 (emphasis added).
The POP further wrote:
… there is no presumption in favor of institution or in favor of finding a reference to be a printed publication under § 42.108(c) or any other authority. As discussed herein, the burden is on the petitioner to identify with particularity evidence sufficient to establish a reasonable likelihood that the reference was publicly accessible before the critical date of the challenged patent, and therefore that there is a reasonable likelihood that it qualifies as a printed publication.
POP decision, at 16 (emphasis added).
With regard to the role of indicia on the face of a reference, the POP wrote:
We do not hold that any particular indicia per se is sufficient at the institution stage. Rather, the indicia on the face of a reference, such as printed dates and stamps, are considered as part of the totality of the evidence. See Nobel Biocare, 903 F.3d at 1377 (“Although the ABT Catalog’s date is not dispositive of the date of public accessibility, its date is relevant evidence that supports the Board’s finding of public accessibility at the March 2003 IDS Conference.”).
The Board has often found a reasonable likelihood that a reference is a printed publication for institution of an inter partes review when the evidence relied on in a petition provides strong indicia that an asserted reference was publicly accessible. For example, the Board determined that a package insert for a drug, supported with a screenshot of an FDA webpage from the Wayback Machine, a declaration from the office manager of the Internet Archive including the site’s archival records, and expert testimony asserting its public accessibility was sufficient evidence for instituting an inter partes review. Sandoz Inc. v. Abbvie Biotechnology Ltd., IPR2018-00156, Paper 11 at 8–13 (PTAB June 5, 2018). Similarly, the Board determined that a thesis, supported with a declaration from the author’s thesis advisor discussing the university’s thesis publication practices and with evidence of indexing on a national library system website, was sufficient evidence of public accessibility to institute an inter partes review. Seabery N. Am. Inc. v. Lincoln Global, Inc., IPR2016-00840, Paper 11 at 7–8 (PTAB Oct. 6, 2016). Additionally, the Board determined that a user manual, supported with a copyright notice, metadata information from the reference on the company’s website, the release date of the printed version, a declaration from the office manager of the Internet Archive, and a declaration from an expert stating that she located and obtained a copy of the reference before the patent’s filing date, was sufficient evidence of public accessibility to institute an inter partes review. Syncro Soft SRL v. Altova Gmbh, IPR2018-00660, Paper 6 at 8–10 (PTAB Sept. 5, 2018).
Conversely, the Board has found evidence insufficient on this issue for institution of an inter partes review when a petitioner’s evidence of indicia was weak. For example, the Board determined that a dissertation, supported with a Joint Statement of Uncontested Facts from a related district court litigation identifying the dissertation as prior art for the purposes of that litigation, and evidence that a student’s dissertation advisor cited similar dissertations was insufficient to show public accessibility for purposes of institution. Argentum Pharm. LLC v. Research Corp. Tech., Inc., IPR2016-00204, Paper 19 at 8–12 (PTAB May 23, 2016). Further, the Board previously concluded that a conference paper, bearing a copyright date of 2012 and including a date of September 2012 on its cover, was insufficient to show that the paper had been disseminated prior to the conference (November 2012). In-Depth Geophysical, Inc. v. Conocophillips Co., IPR2019-00849, Paper 14 at 4–13 (PTAB Sept. 6, 2019).
POP decision, at 17-19.
In In-Depth Geophysical, Inc. v. Conocophillips Co., IPR2019-00849, in its Institution Decision, Denying Institution of Inter Partes Review 35 U.S.C. sec 314(a), the PTAB wrote:
… The single sentence provided in the Petition provides no explanation or persuasive corroborating evidence explaining how, or why, the date shown on Researchgate exhibit qualifies Li as a printed publication as a result of its public accessibility to interested persons of ordinary skill in the art. Id. Petitioners conclusion that, “Li  was published by September 2012 according to Researchgate,” is not supported by the evidence presented. Id.
The Li reference appears on its face to be a conference or research paper that was intended, at some point, for dissemination. See Ex. 1005, 1. The legend “© 2012 SEG” and “SEG Las Vegas Annual 2012 Meeting,” at the bottom of each page of the paper, could arguably be evidence of public availability. In Li, however, the legend information does not provide a specific day, or even month, the paper was published or made publically available, and therefore does not persuasively corroborate the “September 2012” publication date claimed by Petitioners.
… Further, the Li reference does not bear, and Petitioners do not point to, any other indicia such as express publication dates, libraries, journal numbers, or International Standard Book Number (“ISBN”) codes, or Library of Congress Control Number (“LCCN”) that the Board previously has held are indicia of public availability. See REG Synthetic Fuels, LLC v. Neste Oil, OYJ, IPR2018-01374, Paper 11 at 6 (PTAB Feb. 19, 2019).
In-Depth Geophysical, Inc. v. Conocophillips Co., IPR2019-00849, Paper 14 at 9–10 (PTAB Sept. 6, 2019).
Returning to Hulu, LLC v. Sound View Innovations, LLC, Case IPR2018-01039 (PTAB Dec. 20, 2019), the POP applied the law to the facts present on this record and concluded as follows:
We determine that, at this point in the case and for purposes of institution, and based on the totality of the evidence to date, Petitioner has established a reasonable likelihood that Dougherty is a printed publication. The face of Dougherty bears a copyright date of 1990, a printing date of November 1992, and an ISBN date of 8/94. Ex. 1004, 4. In addition, the book is a textbook from an established publisher, O’Reilly, and a well-known book series. See Canon Br. 11–12 (quoting https://www.oreilly.com/about/history.html). As Canon asserts, the cover of Publisher’s Weekly stated (with respect to this series) that “The Internet Was Built With O’Reilly Books.” Id. Altogether, this is sufficient evidence to establish a reasonable likelihood that Dougherty is a printed publication that a publisher made available to the pertinent public prior to the October 1995 critical date.
For institution of an Inter Partes Review, a petitioner must establish a reasonable likelihood that a reference is a printed publication. If trial is instituted, the petitioner will ultimately have the burden to prove that the reference is a printed publication by a preponderance of the evidence. We conclude that, based on the totality of the evidence currently in the record, Petitioner has established a reasonable likelihood that the Dougherty reference is a printed publication that was publicly accessible before the critical date of the challenged patent.
… the matter is remanded to the original merits panel for further proceedings consistent with this opinion, including consideration of whether to institute a trial on the merits of the obviousness ground presented in the Petition.
POP decision, at 19-21.
In summary, those seeking to successfully institute IPR proceedings based on asserted printed publications must be mindful of the POP admonition that indicia on the face of a reference (e.g., a date on the face of a catalog) are not in and of themselves dispositive of the date of public accessibility, but rather are considered as part of the totality of the evidence.
Those seeking to successfully institute IPR proceedings based on asserted printed publications bearing ambiguous or minimal indicia would be well served to provide persuasive corroborating evidence explaining how, or why, a reference qualifies as a printed publication as a result of its public accessibility to interested persons of ordinary skill in the art (e.g., the reference is a textbook from an established publisher and a well-known book series), or point to other indicia such as express publication dates, libraries, journal numbers, or International Standard Book Number (“ISBN”) codes, or Library of Congress Control Number (“LCCN”) that the Board previously has held are indicia of public availability, and/or obtain declarations of experts and other persons who obtained a copy of the reference prior to the critical date — or, in the case of disclosures of electronic versions of documents on the Internet or on an online database, provide evidence of the date that the disclosure was publicly posted and accessible to persons concerned with the art to which the document relates (e.g., screenshots of a webpage viewed with the Wayback Machine and corroborative evidence such as a declaration from the office manager of the Internet Archive including the site’s archival records, and expert testimony regarding public accessibility of the webpage).
If you have any questions about this recent decision, or about Inter Partes Review or other post-issuance proceedings, please contact Peter L. Holmes. Peter is Counsel at Leech Tishman and a member of the firm’s Intellectual Property Practice Group. Peter is based in Leech Tishman’s LAX – El Segundo, CA office and can be reached at 424.738.4400 or via email at email@example.com.
The content of this article is not, shall not under any circumstance be considered, and is not intended to be nor should be relied on as, legal advice. The content on this article is informational only. If you require legal assistance, seek out the advice of an attorney.
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