A petitioner in an IPR, CBM or PGR proceeding may rely on printed publications as prior art to challenge claims of a patent. The petitioner has the burden to establish that the asserted reference qualifies as a printed publication by demonstrating public accessibility of the asserted reference. The following cases address whether references asserted by the petitioner qualify as printed publications.
EMC Corp. v. Personal Web Technologies, LLC, IPR2013-00087, Paper 69 (PTAB May 15, 2014). The Board determined that a user manual of a software program qualified as a printed publication. The user manual had a copyright date and a date of posting more than one year prior to the critical date. Petitioner submitted evidence showing that an online forum, which was a publicly accessible site, advertised the software program and made the software, including the user manual, available for download in four different directories. In addition, petitioner submitted testimony by a technology archivist showing that an archived copy of the manual was identical to the manual relied upon by petitioner. The Board found unavailing patent owner’s argument that petitioner’s witnesses did not personally review or post the user manual prior to the critical date. It is unnecessary for witnesses to have reviewed a reference personally prior to the critical date in order to establish publication.
Groupon, Inc. v. Blue Calypso, LLC, CBM2013-00035, Paper 45 (PTAB Dec. 17, 2014). The Board determined that a technical report allegedly published by a university department did not qualify as a printed publication because petitioner did not provide sufficient evidence to show that technical report was publicly available. One of the authors testified that the technical report was available on the department’s website and was “publicly available for viewing and downloading.” Petitioner also submitted evidence showing that the technical report was identified on a list of publications of another one of the authors with a date of availability. However, petitioner did not provide evidence showing that technical report was downloaded or otherwise disseminated, or showing how interested persons could locate the report as of the critical date. The Board also noted that the technical report does not contain a date or indicia of dissemination. The Board determined that the technical report was not publicly available because only those with knowledge of the report would know that the report was available on the department’s website.
Square, Inc. v. Unwired Planet, LLC, CBM2014-00156, Paper 11 (PTAB Dec. 24, 2014). The Board determined that a relied upon reference did not qualify as a printed publication based on the information presented in the petition. The reference includes “ISBN 952-90-8115-4 1996-09-30” on its title page. Patent owner argued that the ISBN (International Standard Book Number) identification does not show publication on Sept. 30, 1996, because the ISBN may be obtained before the work is published. The Board agreed with patent owner, finding that petitioner did not provide evidence about what an ISBN number is, how it is generated, and what it purports to show, which would allow the Board to assign any weight to it. The Board also noted that the reference indicates that the author controls distribution, which weighs against finding that it is publicly available printed publication.
Actavis, Inc. v. Research Corp. Techs., Inc., Case IPR2014-01126, Paper 22 at 9 (PTAB Jan. 9, 2015). The Board determined that a thesis relied upon by petitioner did not qualify as a printed publication. To qualify as a printed publication under 35 U.S.C. §§ 102 and 311(b), a reference must have been sufficiently accessible to the public interested in the art before the critical date. A reference is considered publicly accessible if it was 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. The Board determined that petitioner did not present evidence showing that the thesis was indexed, cataloged, shelved, or even deposited in the university library. The Board determined that an article generally referring to the thesis was not evidence of public accessibility because the article did not identify the thesis with particularity and did not indicate that the university library granted access to the thesis.
Cisco Sys., Inc. v. Constellation Techs., L.L.C., IPR2014-01085, Paper 11 (PTAB Jan. 9, 2015). The Board denied institution on the basis that a paper relied upon by petitioner did not qualify as a printed publication based on the information presented in the petition. The paper is described on its face as an “Internet Draft…working document[] of the Internet Engineering Task Force (IETF).” The Board indicated that petitioner did not present sufficient evidence, by declaration testimony or other documentary evidence, that indicates that the paper, which was “valid” for only a limited time and was deemed inappropriate for citation, was accessible to the interested public. Indeed, the petition is silent on the manner in which paper was purportedly “published as an Internet-Draft in June 1999.”
Dell, Inc. v. Selene Commc’n Techs., LLC, IPR2014-01411, Paper 23 (PTAB Feb. 26, 2015). The Board held that an expert declaration is not enough to prove a prior art reference’s publication date where the expert declaration merely repeats assertions made by petitioner. Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight. 37 C.F.R. § 42.65(a).
Temporal Power, Ltd. v. Beacon Power, LLC, IPR2015-00147, Paper 8 (PTAB Apr. 27, 2015). The Board denied institution on the basis that a reference included in all grounds of challenge was not demonstrated to be a printed publication in the petition. The petition identified the reference as a paper for the Purdue University School of Electrical Engineering that was published in 1992. The cover page of the paper states that the paper “has been made available through Purdue e-Pubs, a service of the Purdue University Libraries.” However, the Purdue e-Pubs system was created and launched after the filing date of the patent. The Board was not persuaded by the declaration testimony provided by petitioner testimony to support its assertion that the paper qualifies as a printed publication. The declarant stated that “[i]t is [his] understanding that [the paper] is a prior art reference to the ‘804 patent.” The Board indicated that the declarant’s testimony is entitled to little, if any weight, because he did not disclose the underlying facts or data on which his opinion was based.
Riverbed Tech., Inc. v. Silver Peak Systems, Inc., IPR2014-00245, Paper 42 (PTAB June 9, 2015). A reference that is used to show motivation for a proposed modification in an obviousness challenge is not required to be part of the obviousness challenge. If the reference is not part of the obviousness challenge, the reference does not need to qualify as a printed publication.
Symantec Corp. v. The Trustees of Columbia Univ., IPR2015-00370, Paper 13 (PTAB June 17, 2015). The Board denied institution, finding that a reference relied upon in each ground of challenge was not demonstrated to be a printed publication in the petition. Petitioner relied on a thesis with the date “March 1999,” an indication that it was “Presented to the Faculty of the Graduate School of Engineering of the Air Force Institute of Technology…” and an indication of “Approved for public release; distribution unlimited.” A document purporting to be a thesis, without more, does not establish that the document is a printed publication. Petitioner did not provide sufficient evidence, by declaration or documentation, tending to show the public accessibility of the reference prior to the critical date of the patent. Although the thesis indicates that it was approved for public release, the petition does not provide evidence extrinsic to the thesis showing that the thesis may have been released or distributed to the public, or that the thesis was entered into a publicly accessible database to be sufficiently accessible to the public interested in the relevant art.
Apple, Inc. v. DSS Tech. Mgmt., Inc., IPR2015-00369, Paper 9 (PTAB June 25, 2015). The Board denied institution of one of the grounds of challenge on the basis that petitioner did not present sufficient evidence to demonstrate that an asserted thesis qualifies as a printed publication under 35 U.S.C. § 102. Petitioner has the burden to make a threshold showing that a reference is “printed publication” prior art under 35 U.S.C. §§ 102 and 311(b). The Board must decide whether to institute a trial based on “the information presented in the petition.” 35 U.S.C. § 314(a). The Board indicated that petitioner did not provide any evidence to establish public availability of the thesis (e.g., the thesis was indexed, cataloged, and shelved in the university library prior to the critical date). Therefore, petitioner did not make a sufficient preliminary showing that the thesis is a printed publication prior to the critical date of the challenged patent.
Dish Network L.L.C. v. Dragon Intellectual Property, LLC, IPR2015-00499, Paper 7 (PTAB July 17, 2015). The Board determined that a thesis relied upon by petitioner was not demonstrated to be a printed publication prior to the critical date of the challenged patent. Petitioner asserted an MIT Library archive stamp date as evidence of publication of the thesis. Petitioner also submitted a declaration from the thesis author’s advisor, who testified that he was familiar with the process of publishing, indexing and cataloging theses at the university library at the relevant time. The Board explained that the declarant’s testimony lacks personal knowledge as to when and how the thesis was made available to the public, and that his testimony is insufficient evidence of the library’s specific practices as to indexing and cataloging papers in the relevant time period. The Board also indicated that the declarant’s testimony is insufficient evidence as to whether the research tools available would have been sufficient to permit an interested researcher to locate and examine the thesis.
LG Elecs., Inc. v. Advanced Micro Devices, Inc., IPR2015-00329, Paper 13 (PTAB July 10, 2015). The fact that a date is printed on the face of a reference, without more, is not enough to establish that the reference was publicly accessible on that date. The presence of a copyright notice, together with the listing of the reference in an IDS, may be taken as some evidence of public accessibility as of a particular date.
Apple Inc. v. DSS Tech. Mgmt., Inc., IPR2015-00369, Paper 14 (PTAB Aug. 12, 2015). Petitioner has the burden to establish in its petition a reasonable likelihood of success, including, among other things, making a threshold showing that a relied upon reference is a “printed publication” within the meaning of 35 U.S.C. §§ 102 and 311(b) such that it would be available as prior art in an inter partes review proceeding. The fact that patent owner did not contest the public availability of the relied upon reference does not mean that the Board cannot determine whether that reference was publicly available as of the critical date. The Board indicated that the stamped date on the face of the reference is a hearsay statement to the extent petitioner is relying on it for the truth of what it states, and petitioner did not establish that any hearsay exception or exclusion applies. An uncorroborated archive date stamp unsupported by evidence linking archiving with public accessibility is insufficient to establish a threshold showing for printed publication status.
Google, Inc. v. ART+COM Innovationpool GMBH, IPR2015-00789, Paper 8 (PTAB Sept. 2, 2015). The Board denied institution, finding that petitioner did not demonstrate that the relied-upon reference qualified as a printed publication. The reference was purportedly contained on a CD-ROM that was distributed at a conference before the critical date of the patent. Noting that the party seeking to introduce a reference should produce sufficient proof of its dissemination or that it has otherwise been available and accessible, the Board found petitioner’s evidence insufficient. The Board determined that the document itself contained no indication of the date of distribution, and supporting declaration testimony only established that the conference took place on the indicated day, not that the document relied upon in the petition is the same document that was distributed. The Board also agreed with patent owner that including the document on an IDS during prosecution does not constitute an admission that the document is prior art before the critical date of the patent.
Lantz Medical, Inc. v. Bonutti Research, Inc., IPR2015-00995, Paper 11 (PTAB Oct. 21, 2015). Petitioner relied upon, as an anticipatory reference, an operating manual included with a product that was sold prior to the critical date of the patent. The Board determined that the operating manual was not a printed publication under § 102. The Board determined that petitioner did not provide sufficient evidence to support the contention that the operating manual is a printed publication, noting that petitioner merely stated that the associated product “was on sale at least as early as 1992 – the date of publication of the operating manual.” Although Petitioner contends that the product was on sale more than one year before the earliest effective filing date of the challenged patent, petitioner did not provide sufficient evidence to support a threshold showing that the operating manual is a printed publication before the critical date.
Air Liquide Large Industries U.S. LP v. Praxair Technology, Inc., IPR2015-01074, Paper 11 (PTAB Oct. 26, 2015). The Board denied institution, finding that several relied-upon references did not qualify as printed publications under § 102. Two of the references were presentations that were alleged to have been given at separate conferences. The Board determined that the presentations were not printed publications because petitioner did not provide corroborating evidence that the presentations were ever presented at the conferences, or evidence establishing the nature of the presentations and dissemination of the information. Another reference includes public regulatory filings. Petitioner provided declaration evidence indicating that such regulatory filings could be obtained from a state railroad commission by a FOIA-like procedure, and that those of ordinary skill in the art regularly obtained such regulatory filings. The Board determined that the regulatory filings did not qualify as a printed publication because petitioner did not provide evidence indicating that the relied-upon regulatory filings were actually obtained or could have been obtained, and that the relied-upon regulatory filings would not be subject to disclosure because they may contain confidential information.
Eastman Kodak Co. v. CTP Innovations, LLC, IPR2014-00788, Paper 35 (PTAB Nov. 25, 2015). Evidence presented by petitioner, after the filing of the petition, showing public availability of a reference does not need to be submitted as supplemental information. The evidence can be submitted as part of petitioner’s reply if the evidence directly addresses arguments made in the patent owner response. In its patent owner response, patent owner alleged that a declaration submitted with the petition did not establish that the relied-upon reference was distributed outside the company that produced the reference. With its reply, Petitioner submitted a supplemental declaration with additional records showing that the reference was sent to a third party, who distributed the reference to the public. The Board disagreed with patent owner that evidence submitted to support public availability of a reference cannot be supplemental evidence, and that it must be submitted as supplemental information in order to be admitted. The evidence was directly responsive to patent owner’s arguments.
Int’l Bus. Machs. Corp. v. Intellectual Ventures II, LLC, IPR2015-01322, Paper 12 (PTAB Dec. 8, 2015). The Board determined that a dissertation did not qualify as a printed publication under 35 U.S.C. § 102(b) because it was not generally accessible and petitioner did not address the level of diligence that would have been necessary to obtain a copy. However, the Board determined that the dissertation qualified as a printed publication under 35 U.S.C. § 102(a) based on the circumstances of the publication.
Indoor Skydiving Germany GmbH v. Ifly Holdings LLC, IPR2015-01272, Paper 14 (PTAB Jan. 5, 2016). The Board denied institution, finding that several references relied upon by petitioner were not demonstrated to be publicly accessible in the relevant time frame, or were not demonstrated to be prior art printed publications. In its request for rehearing, petitioner argued that the Board should have independently determined that the references were viable prior art publications, rather than rely on patent owner’s arguments. The Board rejected this argument because it attempts to shift, to the Board, petitioner’s statutory burden to demonstrate a reasonable likelihood of prevailing with respect to the challenged claims. The Board also rejected petitioner’s argument that the documents qualify as prior art under FRE 901(8) as ancient documents, finding that FRE 901(8) pertains to authenticity, not public accessibility, and that this was a new argument not presented in the petition.
Intex Recreation Corp. v. Bestway Inflatables & Material Corp., IPR2016-00180, Paper 9 (PTAB Mar. 25, 2016). The Board authorized petitioner to file a reply to patent owner’s preliminary response to address the sufficiency of a copyright notice on three asserted prior art references. The Board indicated that additional briefing was warranted due to the varying interpretation among different panels of the PTAB as to whether a copyright notice amounts to sufficient evidence of public accessibility for purposes of institution. The Board, however, declined authorization for petitioner to submit any supplemental evidence to cure any evidentiary issues regarding the public accessibility of the asserted references. The Board indicated that “[p]etitioner was fully aware of the need to prove that element of its case at the time it filed its Petition, and, thus, evidence of that nature should have been submitted with the Petition had Petitioner wanted it considered for purposes of institution.”
Actifio, Inc. v. Delphix Corp., IPR2015-00016, Paper 69 (PTAB Apr. 13, 2016). The Board indicated that petitioner can rely upon evidence not submitted with the petition to demonstrate that an asserted reference qualifies as a printed publication, contrary to patent owner’s argument. As indicated by the Federal Circuit, there is a difference between the threshold for instituting a trial (35 U.S.C. 314(a)) and proving unpatentability of a claim in trial (35 U.S.C. § 316(e)). Patent owner did not challenge the prior art status of the asserted publications in its preliminary response. After institution, petitioner provided declarations in response to evidentiary objections by patent owner. 37 C.F.R. § 42.64(b)(2) authorizes serving supplemental evidence, and petitioner properly relied on the supplemental evidence in its reply. Petitioner’s evidence established that the asserted publications are printed publications.
Hospitality Core Servs. LLC v. Nomadix, Inc., IPR2016-00052, Paper 8 (PTAB Apr. 27, 2016). The Board denied institution, in part, because petitioner did not make a threshold showing that an asserted reference qualified as a printed publication. The asserted reference was a white paper. Petitioner’s declarant testified that the white paper was published on his company’s website and was distributed to several major hotel chains the company was working with at that time. The Board, however, noted that the declarant did not explain why the white paper would have been printed on his company’s website when the pages of the white paper were marked with “confidential.” The Board also indicated that, although the declarant stated that the white paper was “distributed to a number of major hotel chains” and “many other existing and prospective customers”— with no clear indication of when — the declaration does not allege, let alone show, that distribution to those entities means that the document must have been sufficiently accessible to the public interested in the art. Therefore, petitioner has not made a satisfactory threshold showing that the white paper is a printed publication.
Alarm.com Inc. v. Vivint, Inc., IPR2016-00155, Paper 14 (PTAB Apr. 28, 2016). The Board denied institution on the basis that petitioner did not present a threshold showing than an asserted reference qualifies as a printed publication. Petitioner argued that the reference qualifies as a printed publication because it has a copyright date of 1997 and bears a Library of Congress Catalog Card Number (LCCCN). The Board determined that the copyright date, by itself, is insufficient to demonstrate that the reference was made publicly accessible. “The copyright date simply informs readers of the underlying claim to copyright ownership” in the reference. Without more evidence, the copyright date does not demonstrate that the reference was available prior to the critical date of the patent. Similarly, the Board determined that the LCCCN, even when considered together with the copyright date, is insufficient to demonstrate the reference was publicly accessible prior to the critical date of the patent. Petitioner did not provide sufficient evidence to demonstrate that the reference was reasonably accessible to the public interested in the art.
I-Blason LLC v. Aevoe Corp., IPR2016-00231, Paper 6 (PTAB May 18, 2016). The Board denied institution of an obviousness challenge because petitioner had not made a threshold showing that a copy of a webpage is a printed publication under § 102 and therefore qualifies as prior art to the challenged patent. The evidence provided to demonstrate that the content of the webpage was made publicly available in 2009 is a representation that the document is a “true and correct copy” of a printout of a circa-2015 download. The Board indicated that this evidence is insufficient to establish that the copy of the webpage presented with the petition is the same version that was made publicly available in 2009. Further, the date a product may have been available on a website, or dated product reviews, also are insufficient to establish the content of the website that may have been made available to the public in 2009.
Argentum Pharmaceuticals LLC v. Research Corp. Techs., Inc., IPR2016-00204, Paper 19 (PTAB May 23, 2016). The Board determined that petitioner did not demonstrate that an asserted reference qualified as prior art. Petitioner relied on a joint statement in the counterpart district court litigation involving patent owner and defendants other than petitioner. The joint statement provided that “for purposes of this litigation, [the reference] was publicly accessible more than one year before the earliest prior date for the [challenged] patent and constitutes a ‘printed publication’ within the meaning of 35 U.S.C. § 102(b).” Such a joint statement does not provide a sufficient “threshold showing” of public accessibility. Patent owner may have agreed to stipulate to certain facts during the district court litigation to streamline matters at trial, or had other reasons to stipulate on the issue in a case involving different parties in a different form, regardless of whether the asserted reference was, in fact, publicly accessible.
Xactware Sols. V. Eagle View Techs., Inc., IPR2016-00582, Paper 15 (PTAB Aug. 16, 2016). The Board denied institution on the basis that petitioner did not present a threshold showing that an asserted reference was publicly accessible prior to the critical date of the challenged patent. Neither the petition nor its declarant discussed the date of public availability of the reference. Although the reference contained some indicia related to the date of public accessibility, including a date and a library code, and a bar code on the back cover, there was no evidence as to the meaning of the indicia or when the bar code was applied to the document. The reference also includes a series of numbers that appears to be a library Dewey Decimal Number and a university stamp, but petitioner did not provide any explanation of this indicia nor provide an affidavit explaining when this indicia was added to the document. In addition, petitioner did not provide any corroborating evidence of the public accessibility of the reference.