The PTAB periodically designates certain of its decisions as precedential or informative to provide guidance concerning Patent Office practice and procedure.  A list of those decisions may be found here.  Recently, the PTAB designated four decisions as informative and one as precedential.  These recent designations relate to establishment of a prior art reference as a printed publication in both examination and post-grant contexts. 

Significantly, these new designations come on the heels of the designation of Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 (PTAB Dec. 20, 2019) as precedential in December of 2019.  In Hulu, the Precedential Opinion Panel that included the Director, Commission for Patents, and the Chief Administrative Patent Judge of the PTAB clarified that it is the Petitioner’s burden to establish a reasonable likelihood that a reference is a printed publication for institution of an inter partes review (IPR). The PTAB stated that the Petitioner during trial “will ultimately have the burden to prove that the reference is a printed publication by a preponderance of the evidence.”  The more recent designations provide more guidance in the IPR and examination contexts, as explained by the PTAB’s own release on these decisions.

Ex parte Grillo-López, Appeal No. 2018-006082 (PTAB Jan. 31, 2020) (precedential)

This decision to deny a request for rehearing explains that the burden for establishing that a reference is a printed publication is different in examination than in an inter partes review proceeding. The holding in Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 (PTAB Dec. 20, 2019) (precedential), does not apply to examination.

Argentum Pharmaceuticals LLC v. Research Corporation Technologies, Inc., IPR2016-00204, Paper 19 (PTAB May 23, 2016) (informative as to section II.B)

This decision determines that the Petitioner did not sufficiently show that a reference was publicly available because the record included only a district court joint statement of uncontested facts identifying the reference as a printed publication. The joint statement did not involve the Petitioner and expressly indicated that it was only for purposes of the district court litigation.

Seabery North America Inc. v. Lincoln Global, Inc., IPR2016-00840, Paper 11 (PTAB Oct. 6, 2016) (informative as to section II.A.i)

This decision determines that the Petitioner made a sufficient showing for purposes of institution that a reference was publicly available, where the record included testimony that the reference was deposited in a university library, indexed and available for retrieval by the public, and that reprints of the reference bear a copyright and publication date.

Sandoz Inc. v. AbbVie Biotechnology Ltd., IPR2018-00156, Paper 11 (PTAB June 5, 2018) (informative as to section III.C.1)

This decision determines that the Petitioner made a sufficient showing for purposes of institution that a drug package insert was publicly available, where the record included a screenshot of an archived FDA webpage from the Internet Archive and testimony from a medical doctor describing the use and accessibility of information on the FDA’s webpage.

In-Depth Geophysical, Inc. v. ConocoPhillips Company, IPR2019-00849, Paper 14 (PTAB Sept. 6, 2019) (informative as to section I.E) This decision determines that the Petitioner did not sufficiently show that a conference paper was publicly accessible because the paper’s copyright date and date stamp were insufficient to show that the paper was actually disseminated prior to the date of the conference, or otherwise available to interested persons of ordinary skill in the art.