You found a great prior art reference for your IPR petition. But if that reference isn’t a patent or patent application, you’ll need to think carefully about how to prove that the reference was actually published and available to the interested public. As the PTAB has reminded litigants time and time again, failing to connect all the dots from the author’s creation of the reference all the way to its availability to the interested public might doom the petition.
In a pair of recent decisions, the PTAB rejected the petitioners’ non-patent literature (NPL) references for lack of evidence that the references were printed publications. In one case, the failure to prove publication status was fatal to the entire IPR. Even a declaration from the reference’s author was insufficient. The PTAB showed in these two decisions just how exactingly it will scrutinize NPL references.
In the first case, Cisco Systems, Inc. v. Centripetal Networks, Inc., IPR2018-01505 (P.T.A.B. Mar. 6, 2019), all of the petitioner’s IPR invalidity grounds were built on one primary reference by Ingate, a network security and telecom company. The reference was a network security article dated 2008, available on Ingate’s website.
The petitioner located the article’s author, who declared that he wrote it in September 2008 and never revised it. He stated that he had “personal knowledge regarding the content and publishing of the Ingate reference” and that Ingate’s standard practice was to publish papers as soon as possible after they were written. He recalled that the reference was published to Ingate’s website in September 2008, was publicly available in September 2008 on that website, and was supplied to potential customers via the website.
The PTAB ruled that, though these statements may establish how and when the Ingate article was authored, they were insufficient to establish how or when the article was published. The PTAB pointed to the declaration’s silence as to the author’s role in, or firsthand knowledge of, the actual publishing process—such as loading the article onto the Ingate website and assigning it a URL and search indexing keywords. And Cisco was unable to provide an Internet Archive (Wayback Machine) record of the article from before the critical date. The PTAB declined to institute based on its rejection of the reference as a printed publication.
In the second case, Hamamatsu Photonics K.K. v. Semicaps Pte Ltd., IPR2017-02110 (P.T.A.B. Mar. 18, 2019), the petitioner based some of its invalidity grounds on an article about laser diagnostic systems. The IEEE published the article on its website and digital library in November 2006—after the challenged patent’s critical date. But the petitioner argued that the article was prior art because it was originally distributed to the public on a CD at an IEEE conference in July 2006—before the critical date.
The petitioner provided a declaration from IEEE’s senior director of publishing technologies stating that a CD was distributed during the July conference containing papers for all conference proceedings and that the laser diagnostics article was later available for public download from the IEEE website. IEEE’s declaration did not state that the copy of the article before the PTAB was the same as the paper distributed on the CD at the conference. The petitioner also provided the declaration of a conference attendee stating he received the CD containing all papers discussed at the conference, including the laser diagnostics article. The petitioner never produced the actual CD during discovery.
The PTAB ruled that neither declaration established that the precise exhibit before the PTAB was the same version as that contained on the CD. Although the PTAB instituted IPR, it ruled in its final written decision that all grounds based on the laser diagnostics article failed because the petitioner did not prove that it was a printed publication.
These two cases illustrates the length that petitioners should go to ensure that an NPL reference qualifies as a printed publication. It may not be enough to get the author’s declaration. It may be necessary to obtain the declaration of the person responsible for uploading the completed article to the company’s server or website, like the system administrator or director of online content. For a document distributed at a conference, it may be necessary to find the administrator in charge of copying the files onto CDs or USB thumb drives and distributing them. The declarant must show in detail that the very document in front of the PTAB—with no changes—was made publicly available as of the critical date. Think of it like proving a chain of custody for a DNA sample going to a crime lab. Leave no gaps from authorship to publication for the PTAB to focus on and reject the article.