When a non-patent literature (NPL) reference is used to challenge a patent, a key issue to be resolved is whether the NPL reference is a “printed publication” under 35 U.S.C. § 102. Several prior posts have addressed this question, such as here and here.

The Federal Circuit recently, on November 6, weighed in yet again on what it means to be a “printed publication,” this time in Acceleration Bay v. Activision Blizzard (in a consolidated appeal from a dozen different IPRs concerning three different patents).

The PTAB had found that Lin – a technical report available at a web site hosted by UC San Diego’s Computer Science and Engineering department – was not publically available.  (See slip opinion at 11-15.)  Lin was uploaded to the web site prior to the critical date, a fact not challenged on appeal.  The web site indexed technical reports by author or year.  The web site also featured an advanced search form that appeared to allow a user to search keywords for author, title, and abstract fields.  However, a systems administrator for the web site testified that he did not know how the search worked, how key words were generated, and that it was not the department’s practice to verify advance search capabilities for title and abstract when a new article was uploaded.  (Id. at 13.)

Additionally, the patent owner had provided evidence that a recent search (well after the critical date) for keywords in the title and abstract of Lin failed to return any search results.  This evidence was also coupled with testimony from the system administrator that the web site is “pretty much the same” between the critical date and the present, and the site is “running the same software.”  (Id. at 13.)

In view of these facts, the Federal Circuit found that the PTAB’s opinion was supported by substantial evidence.  The Court (as well as the PTAB) noted that “public accessibility” requires more than technical accessibility.  (Id. at 12.)  The test for public accessibility (said the Court) is not “has the reference been indexed?”  Rather, the “ultimate question is whether the reference was ‘available to the extent that persons interested and ordinarily skilled in the subject matter or art, exercising reasonable diligence, can locate it.’”  (Id. at 14.)

The PTAB concluded that although Lin was indexed by author and year, it was not meaningfully indexed.  The Federal Circuit agreed.  The Court found that the case was not analogous to In re Lister, 583 F.3d 1307 (Fed. Cir. 2009), where a reference was found to be publicly available where databases the reference was included in supported keyword searching of the title.  In Lister, the Court said “[a] reasonably diligent researcher with access to a database that permits the searching of titles by keyword would be able to attempt several searches using a variety of keyword combinations,” which supported public availability.  (Id. at 13.)  Based on the evidence of record, the Court concluded that was not the case with Lin.

In affirming the PTAB’s decision, the Court appears to have given significant weight to the factual findings of the PTAB.  Specifically, the PTAB had found that based on the evidence presented, indexing was provided only by year and author name, which it concluded was not meaningful indexing for purposes of public accessibility as it pertains to NPL prior art.  The PTAB specifically found that the keyword searching of other fields—i.e., title and abstract—purportedly available from the web site was not functional.  The Court indicated that it “will not disturb the Board’s weighing of the evidence” that the record did not support a finding that a person of ordinary skill in the art in 1999 could have located Lin using the CSE Library website’s search function.  (Id. at 13.)

The takeaway from this case is that, when using NPL references, it is the petitioner’s burden to show that the reference qualifies as a printed publication.  That means, in particular, that the petitioner should be able to establish (preferably with declarations from one or more fact witnesses) that a given NPL reference was meaningfully indexed.  Another takeaway is that the petitioner should consider alternative explanations of how a person of ordinary skill would have been able to locate a reference.  If an academic journal article had cited to the Lin reference, then that article could have alternatively been offered as evidence that a skilled artisan had a roadmap to find the reference.  While the petitioner may have thought the keyword searching capability was sufficient when it filed the petition, the alternative roadmap theory could have helped when the patent owner challenged the keyword search capability.

The case is also a good reminder to verify important facts.  Specifically, this case is a reminder not to rely on a keyword search capability of a website without first testing it (being mindful of the relevant legal date for public accessibility).