Invalidity grounds in IPR that are not based on patents must be based on printed publications. But the nature of the evidence required at the time of institution to show that a non-patent reference is a printed publication has long been uncertain. The PTAB’s Precedential Opinion Panel (POP) in Hulu v. Sound View Innovations, IPR2018-01039 (Dec. 20, 2019), provided some clarity and left other issues for future PTAB panels to resolve.
In that case, the original PTAB panel denied institution because it found the petitioner’s evidence was insufficient to show that a reference was a printed publication. The POP agreed to review the decision, stating it would address the question, “[w]hat is required for a petitioner to establish that an asserted reference qualifies as ‘printed publication’ at the institution stage?”
The POP answered that question by holding that the petition “must identify, with particularity, evidence sufficient to establish a reasonable likelihood that the reference was publicly accessible.” The POP added clarity by identifying three prior PTAB panel decisions addressing the following situtions and finding the evidence discussed in those cases to be sufficient:
- “[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”;
- “[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”; and
- “[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.”
And the POP identified two prior PTAB panel decisions addressing the following situtions and finding the evidence discussed in those cases to be insufficient:
- “[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”; and
- “[A] conference paper, bearing a copyright date of 2012 and including a date of September 2012 on its cover.”
Subsequent to Hulu, the Board designated most of these decisions as Informative on this topic.
Applying these principles to the facts of this case, the POP concluded that the petitioner had sufficient evidence to establish at the institution stage that the reference was a printed publication. The reference bore “conventional markers of publication” (e.g., copyright date, publication date, and ISBN). And the reference was “from an established publisher . . . and a well-known book series.”
- Under the POP’s decision, petitioners must make sure that they provide sufficient evidence to meet the POP’s standard for establishing that non-patent references are printed publications. Although this decision was a win for the petitioner, it also provides patent owners a clearer standard to apply when arguing that the petitioner’s evidence is insufficient.
- Rather than provide a precise formula for all cases, the POP instructed that each case will turn on its unique facts. Here the “conventional markers of publication,” the “established publisher,” and the “well-known book series” were sufficient. But the POP did not address all combinations of evidence that may or may not be sufficient in other cases.