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Using Theses as Prior Art at the PTAB

Based on recent Patent Trial and Appeal Board (“PTAB” or “the Board”) decisions, the best practice to establish an academic thesis as a printed publication in an IPR proceeding is to demonstrate that it has been indexed by subject matter and then corroborate the index date by independent evidence, or demonstrate that another publication can serve as a “roadmap” to the thesis.

The PTAB has followed Federal Circuit law for this inquiry, primarily citing the seminal case of In re Hall, 781 F.2d 897 (Fed. Cir. 1986). In Hall, the Federal Circuit held that a single copy of a doctoral thesis that was catalogued and shelved in a single library in Germany was sufficiently accessible to the interested public so as to qualify as a printed publication for the purposes of 102(b). The court was satisfied that the thesis was catalogued and indexed in such a way to “constitute[] sufficient accessibility to those interested in the art exercising reasonable diligence” because it was shelved in the general stacks and indexed by subject matter. Id. at 900.

Hall discussed and distinguished previous cases in which theses were held not to have been sufficiently accessible to constitute a printed publication.[1] To be publically accessible, a thesis must be actually accessible (e.g. on an open server or in a general library section)[2] and must also be categorized by subject matter so that an interested member of the public could locate the resource without advance knowledge of its existence.[3] The PTAB has followed this framework. The Board, in Fujitsu Semiconductor Ltd. v. Zond, LLC, No. IPR2014-00781, Paper No. 53 (P.T.A.B. Aug. 14, 2015), held that a copy of a Russian doctoral thesis was sufficiently accessible to qualify as a printed publication. Because the patent owner did not object to the evidence at trial, the Board relied on a catalog entry purporting to show that the thesis had been catalogued by author, title, and subject matter as of a date seven years prior to the critical date.  The Board found it immaterial that the thesis was located in a different country and that an exact date of publication could not be established because the “[t]hesis was made available to interested persons by virtue of its title and “Subject” characterization” prior to the critical date. Id. at 44. The Board has been explicit in recent decisions that actual evidence of indexing or cataloging is necessary to corroborate a publication date despite what the thesis may state on its face. See Decision, Petitioner’s Request for Rehearing, Apple, Inc. v. DSS Tech. Mgmt., Inc., No. IPR2015-00369, Paper No. 14 at 6 (P.T.A.B. Aug. 12, 2015) (stamped date on thesis from MIT library was hearsay and would not have shown when or if the thesis was actually available to the public); Decision Den. Institution of Inter Partes Review, Symantec Corp. v. The Trustees of Columbia Univ., No. IPR2015-00370, Paper No. 13 at 8-9 (P.T.A.B. June 17, 2015) (despite approval for public release and a list of keywords in an abstract facilitating an electronic-database search, petitioner still failed to demonstrate when or if the thesis was actually indexed or catalogued).

Accordingly, the Board held that a thesis purportedly shelved in the University of Houston library was not sufficiently accessible because the petitioner provided insufficient evidence of indexing, cataloguing, shelving, or actual access of the thesis. Decision Den. Institution of Inter Partes Review, Actavis, Inc. v. Research Corp. Techs., Inc., No. IPR2014-01126, Paper. No. 22 at 11 (P.T.A.B. Jan. 9, 2015). The Board, in Actavis, stressed that a person of ordinary skill in the art would not be informed of what the subject matter was based on the title of the thesis alone. Therefore, absent evidence of actual access or meaningfully indexing, the thesis was not accessible even if printed before the critical date. Id.

The petitioner in Actavis argued that a citation to the thesis in question in a separate publication was a sufficient “roadmap” to the thesis so as to make it publically accessible. Ultimately, the Board rejected this theory because the citation was not informative enough. Id. at 12-13 (noting that the citation only referred to the “Masters dissertation of this author” and did not cite to the thesis “in such a way as to give any reader the tools he would need to access the thesis”)(internal quotations omitted). Several cases at the Federal Circuit have held that publically accessible publications, such as patents and peer-reviewed publications, can serve as “research aids” that can aid an interested person in locating the invalidating thesis even if the thesis is not indexed sufficiently. See, e.g., Blue Calypso, LLC v. Groupon, Inc., 815 F.3d 1331, 1350 (Fed. Cir. 2016) (“a published article with an express citation to [a] potentially invalidating reference would…provide the necessary guidance [to satisfy public accessibility]”) (citing Cornell Univ. v. Hewlett-Packard Co., No. 01-cv-1974, 2008 U.S. Dist. LEXIS 39343, at *20-21 (N.D.N.Y. May 14, 2008); see also Bruckelmyer v. Ground Heaters, Inc., 445 F.3d 1374, 1379 (Fed. Cir. 2006) (holding similarly within the contexts of patents citing the reference). Thus, the argument in Actavis regarding the “roadmap” theory failed only because the citation was too vague.

Based on the foregoing, a petitioner seeking to institute an IPR based on an academic thesis would be well-advised to determine when the thesis was indexed, catalogued, and generally made available to the public. If the thesis is indexed at least by subject matter it should be sufficiently accessible. However, independent evidence may be needed to corroborate these dates. For example, a librarian at the institution may swear out an affidavit regarding data about shelving date and typical library practices. Another useful source for affidavits is third party aggregators of theses, such as, e.g., ProQuest (formerly University Microfilms International, or UMI). If it cannot be shown that the thesis was indexed in a meaningful way, then a published article or patent expressly citing to the thesis may be another way to establish a publication date.

[1] See Application of Bayer, 568 F.2d 1357 (C.C.P.A. 1978) (finding no public accessibility because only a limited number of people could have accessed the thesis); In re Cronyn, 890 F.2d 1158 (Fed. Cir. 1989) (holding that an undergraduate thesis filed only by student name and title was not indexed in a meaningful and therefore not publically accessible).

[2] Cf. Application of Bayer, 568 F.2d 1357 (C.C.P.A. 1978).

[3] Cf. In re Cronyn, 890 F.2d 1158 (Fed. Cir. 1989).