Petitioners may rely on printed publications to challenge the patentability of claims in an inter partes review (IPR) proceeding.  35 U.S.C. § 311(b).  In order for a non-patent document to constitute a printed publication, it must have been made available to the public.  See Kyocera Wireless Corp. v. Int’l Trade Comm’n, 545 F.3d 1340, 1350 (Fed. Cir. 2008). 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 reasonable diligence, can locate it.”  Bruckelmyer v. Ground Heaters, Inc., 445 F.3d 1374, 1378 (Fed. Cir. 2006).

In determining whether to institute trial, the Patent Trial and Appeal Board (PTAB) has required petitioners to make a “threshold showing” of public accessibility of printed publications.  See, e.g., Apple, Inc. v. DSS Tech. Mgmt., Inc., IPR2015-00369, Paper 14 (PTAB Aug. 12, 2015) (institution denied because “an uncorroborated archive date stamp unsupported by evidence linking archiving with public accessibility is insufficient to establish a threshold showing for printed publication status.”); Actavis, Inc. v. Research Corp. Techs., Inc., IPR2014-01126, Paper 21 (PTAB Jan. 9, 2015) (institution denied because the petitioner did not provide sufficient evidence to show a thesis was accessed by the public prior to the critical date); Google, Inc. v. ART+COM Innovationpool GMBH, IPR2015-00789, Paper 8 at 4 (PTAB Sept. 2, 2015) ( “[t]he party seeking to introduce the reference ‘should produce sufficient proof of its dissemination or that it has otherwise been available and accessible.’”) (quoting In re Wyer, 655 F.2d 211, 227 (C.C.P.A. 1981)).

Depending on the nature of the disclosure, the PTAB has taken different approaches to addressing the issue of whether printed publications qualify as prior art.  This article considers some of the ways petitioners have tried to establish public availability and what has been successful (and unsuccessful) before the PTAB.

Poster Presentations

In Coalition For Affordable Drugs (Adroca) LLC v. Acorda Therapeutics, Inc., IPR2015-00817, Paper 12 (PTAB Aug. 24, 2015), the PTAB addressed the issue of whether a temporarily displayed poster that was neither distributed nor indexed was made sufficiently publicly accessible to qualify as a printed publication.  Factors in determining public accessibility include: “[1] the length of time the display was exhibited, [2] the expertise of the target audience, [3] the existence (or lack thereof) of reasonable expectations that the material displayed would not be copied, and [4] the simplicity or ease with which the material displayed could have been copied.”  Id. at 4 (quoting In re Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004)).  The “duration of the display is important in determining the opportunity of the public in capturing, processing and retaining the information conveyed by the reference” and generally, “[t]he more transient the display, the less likely it is to be considered a ‘printed publication.’”  Id. at 4-5 (quoting Klopfenstein at 1350-1351).  Additionally, the “more complex a display, the more difficult it will be for members of the public to effectively capture its information.”  Id. at 5 (quoting Klopfenstein at 1351).

The PTAB determined that the petitioners presented insufficient evidence to adequately show “how long the posters were presented to anyone, or to whom exactly, or what conversations anyone might have had with authors about the posters,” and therefore determined that the petitioners did not demonstrate that the posters were made publicly accessible.  Adroca, Paper 12 at 5.

Product Catalogs

In Instradent USA, Inc. v. Nobel Biocare Services AG, IPR2015-01786, Paper 14 (PTAB Feb. 19, 2016), the petitioner relied on deposition testimony, advertisements, an International Trade Commission (ITC) ruling affirming public accessibility, and Information Disclosure Statements to show public accessibility of a product catalog.  Based on the evidence as a whole, the PTAB ruled that the Petitioner had made the requisite showing of public accessibility.  Id. at 16.  Interestingly, it was noted that in general, “product catalogs . . . are the type of documents normally intended for public dissemination,” and that the product catalog in question contained nothing to indicate it was merely a draft or that it was intended to be kept confidential.  Id.  Here, the nature of the documents, i.e., product catalogs, weighed heavily in the panel’s finding that public accessibility had been sufficiently demonstrated.

In the same decision, the PTAB contrasted product catalogs with product manuals.  In this instance, Petitioner provided a declaration as evidence.  The PTAB concluded that the declaration provided unsupported statements of when the alleged publication occurred or that it was disseminated to anyone.  Id. at 21.  Additionally, the Board declared that, unlike product catalogs, the manual in question did not itself contain any date or indicia that it was intended for outside distribution.  Id.  In this instance, the PTAB appears to have applied different standards for determining whether product catalogs and product manuals qualify as printed publications.

Archived Websites

In Neste Oil OYJ v. Reg Synthetic Fuels, LLC, IPR2013-00578, Paper 53 (PTAB Mar. 12, 2015), the petitioner relied on a declaration to establish website printouts obtained from the Internet Archive (i.e., the “Wayback Machine”) as printed publications.  The patent owner argued against inclusion of the printouts as evidence on the basis of authentication, arguing that the declarant did not have personal knowledge of the contents of the websites.  The petitioner countered by stating that the declarant relied on her personal knowledge of the retrieval of the Wayback Machine printouts.  Id. at 3-4.

Relying on Fed. R. Civ. Pro. § 901(a), the PTAB held that website printouts cannot be used as printed publications to establish the website’s contents unless “the proponent of the evidence . . . authenticate[s] the information from the website itself, not merely the printout.”  Id. at 4 (citing Victaulic Co. v. Tieman, 499 F.3d 227, 236 (3rd Cir. 2007), as amended (Nov. 20, 2007).  The website printout was not admissible because the petitioner did not provide testimony of any witness with personal knowledge of the contents of the website itself.  Neste, Paper 53 at 4.

In view of the PTAB decisions discussed above, petitioners should carefully consider the sufficiency of the evidence of public accessibility in connection with printed publications relied on in patentability challenges in AIA proceedings.