An upcoming Precedential Opinion Panel (“POP”) at the Patent Trial and Appeal Board (“PTAB” or “the Board”) may offer improved clarity for petitioners and patent owners when a petitioner relies on non-patent literature in challenging a patent.
Hulu, LLC sought inter partes review (“IPR”) of U.S. Patent No. 5,806,062 (“the ’062 patent”) asserting claims 1–3, 7, 10, 11, 14, and 15 were unpatentable as obvious under 35 U.S.C. § 103. Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 3, at 4 (PTAB May 8, 2018). The ’062 patent is directed to creating data analysis applications using reusable software operators. Hulu’s obviousness challenge was based on a single prior art reference, Sed & Awk, a book published in November 1990 by O’Reilly & Associates, Inc.
The Board denied institution of the IPR after finding Hulu did not provide sufficient evidence that the book was publicly accessible to qualify as prior art. Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 12, at 13 (PTAB December 3, 2018). The Board accepted that the book had a copyright date of 1990 and that the copyright owner was O’Reilly & Associates, Inc., but stated “[a] copyright date does not indicate anything more than the author indicates this is the date the work was fixed in a tangible medium of expression, i.e., first published.” Id. at 11. The Board declined to speculate as to when or whether the book was sufficiently publicly accessible without further evidence, such as the routine practices of the publisher.
Hulu requested reconsideration by the Precedential Opinion Panel (“POP”) to address “whether a well-known publisher’s copyright notice is sufficient evidence of the date of a publication’s public availability for purposes of institution of inter partes review, where the patent owner does not submit any evidence to the contrary.” On April 3, 2019, the request was granted to address a broader version of Hulu’s request. The POP will address the following question: “What is required for a petitioner to establish that an asserted reference qualifies as “printed publication” at the institution stage?” Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 15, at 2 (PTAB April 3, 2019). The POP permitted further briefing by the parties and also authorized amicus curiae to submit briefs.
Status of the Current POP
Briefing for the POP is complete. The following sections summarize the parties’ proposed standards at the institution stage when a petitioner seeks to establish that an asserted reference qualifies as a printed publication.
Sound View Innovations (Patent Owner)
Sound View argues that the “reasonable likelihood that the petitioner would prevail” is a high threshold at the institution stage. Sound View focuses on the ideas that the IPR petition must present the petitioner’s case-in-chief and that there are limited opportunities to supplement the record after the petition.
Sound View bolstered its approach by comparing institution decisions to district court bench trial decisions on motions to dismiss that occur after the plaintiff’s case-in-chief. In such a motion to dismiss, the district court may dismiss the plaintiff’s claims, but it is not allowed to render judgment in favor of the plaintiff. Also, the burdens of production and persuasion rest with the plaintiff to establish its claim, even if the opponent has not yet presented any evidence.
Hulu (IPR Petitioner)
Unsurprisingly, Hulu proposes a lower threshold at the institution stage of an IPR petition. According to Hulu, the petitioner must present a prima facie case that the reference qualifies as a “printed publication,” such as conventional markers on the document that would generally be expected to be found on documents of the same kind. Presenting a prima facie standard would be consistent with the “reasonable likelihood” institution standard for IPRs. When the reference is a book, the standard may be met by providing evidence, such as a copyright notice, edition identifiers regarding changes to the book, indications that the book was published by a commercial publisher, and assignment of an International Standard Book Number. Hulu also argues that a prima facie standard would lessen the workload of the Board at the institution stage and create more consistent institution decisions.
In addition to the parties’ additional briefing, a number of non-parties submitted amicus curiae briefs: the American Intellectual Property Law Association (“AIPLA”); Canon; Google, Microsoft, Arista Networks, and Uber; Unified Patents; and Sandoz.
Canon, Inc. submitted an amicus curiae brief in support of Hulu. Canon is currently involved in multiple IPR proceedings as the petitioner where a printed publication dispute has been raised by the patent owner. Canon notes that some evidence regarding public accessibility is difficult, or impossible, to obtain prior to institution. For example, sources with “personal knowledge” of a reference’s publication details are often third-parties (librarians, company employees, etc.), which may refuse to provide such evidence voluntarily. Canon argues that the POP should not adopt a standard that prevents institution where the evidence may be in the possession of a third-party unwilling to cooperate with the petitioner, as doing so would essentially remove an enormous body of printed publication prior art from use in PTAB proceedings. Canon also argues that petitions should not be rejected based on evidentiary objections because such pre-institution attacks on publication evidence are attacks on the admissibility of the publication evidence. These attacks, Canon argues, are improper because the rules provide a specific post-institution process for presenting and resolving evidentiary objections. Canon also notes that a high pre-institution evidentiary threshold is inefficient because printed publication disputes do not occur in the overwhelming majority of cases, and an exacting standard would require extensive and wasteful development of evidence for every use of non-patent prior art, even those that appear in famous journals years before the priority date of the challenged patent. Canon also argues that providing a declaration from a witness, such as a law librarian who obtained a copy of a reference from third-party library, should be sufficient pre-institution, even if the declarant does not have personal knowledge of the library’s internal practices.
Unified Patents Inc. submitted an amicus curiae brief in support of neither party. Unified Patents argues that the “threshold showing” requirement for printed publications cannot exceed the reasonable likelihood standard for institution because neither the AIA nor the Office’s regulations require definitive proof that an asserted reference qualifies as a printed publication at the institution stage. This is because the reasonable likelihood standard is different than the preponderance of the evidence standard that applies after institution of trial. Unified Patents argues that the Board should not require definitive proof of public accessibility at the institution stage, but should only require that the petitioner provide evidence sufficient to make a threshold showing of public availability. Any disputed issues of fact should be resolved after proceedings are instituted, where the Board can decide the issue based on a fully developed evidentiary record. Accordingly, Unified Patents argues that the Board should allow both parties to submit additional evidence in support or opposition of the asserted reference so that the Board can determine the issue on a full record. Since the board is not bound by any determination made in the institution decision, it is free to change its mind in the final written decision based on a fully developed evidentiary record.
Google, Microsoft, Arista Networks, and Uber
Google LLC, Microsoft Corporation, Arista Networks, and Uber Techs. Inc. (collectively, “Google”) filed a joint amicus curiae brief in support of neither party. Google argues that a petitioner relying on a non-patent printed publication should be required to establish the same prima facie case of public accessibility required of examiners during prosecution and reexamination. That is, a petitioner should not be required to produce additional evidence of public accessibility beyond the purported publication date or copyright notice date shown on the face of the reference itself. Google notes that, because a preliminary response rarely includes evidence challenging public accessibility, the Patent office should not impose a higher evidentiary burden on the petition itself. Google also argues that patent owners should not be able to rely on mere attorney argument—as opposed to actual evidence—to defeat a prima facie case of public accessibility at the institution stage. Google proposes a procedure to apply when a patent owner’s preliminary response includes rebuttal evidence disputing the public availability of a reference. In these scenarios, the petitioner should be allowed to submit additional evidence in a reply, which should be automatically authorized by the Board. Furthermore, Google believes the Board should authorize the petitioner to apply for subpoena if the evidence of public accessibility is in the possession of third-party unwilling to voluntarily produce the evidence. If petitioner’s diligent efforts to obtain the evidence are unsuccessful prior to the 3-month institution deadline, then Google believes the Board should generally favor instituting trial in view of the genuine issue of material fact, which is viewed in the light most favorable to the petitioner solely for purposes of deciding institution.
Sandoz Inc. filed an amicus curiae brief in favor of neither party. In view of the inconsistent results reached by different panels, Sandoz proposes the following uniform standard (similar to the procedure proposed by Google) for determining what is necessary for a petitioner to establish that an asserted reference qualified as a printed publication at the institution stage:
Facial indicia that an asserted reference was publicly available before the critical date is sufficient evidence of public accessibility as prior art to meet the threshold for institution of inter partes review, where patent owner does not submit evidence to the contrary.
Sandoz Brief at 2. Under this standard, references such as published books and articles, publications of conference proceedings, nationally distributed drug labels, large company press releases, etc. would be assumed to be publicly accessible as of their facial date absent any evidence from the patent owner to the contrary. However, more obscure references, such as unpublished academic theses, would require reasonable additional circumstantial evidence of public accessibility in addition to the facial date of the reference, again absent contrary evidence from the patent owner.
American Intellectual Property Law Association
The American Intellectual Property Law Association (“AIPLA”) filed an amicus curiae brief in favor of neither party. AIPLA argues that the statutory threshold for institution and public accessibility should be consistent. That is, a non-patent reference should qualify as a printed publication for purposes of institution in IPR proceedings when the evidence filed with the petition establishes a reasonable likelihood that the reference was publicly accessible before the critical date. Similarly, for PGRs and CBMs, the evidence filed with the petition must show that the printed publication was more likely than not publicly accessible. AIPLA also argues that the Board’s consideration of evidentiary issues should be limited at the institution stage, and any factual dispute should be viewed in the light most favorable to the petitioner for purposes of determining whether to institute. AIPLA refrains from discussing any substantive issues of public accessibility in its brief.
Because many IPR petitions cite non-patent literature as prior art, this POP decision could have far-reaching effects on PTAB practice. If the number of entities filing amicus briefs in this case is any indication, there is significant interest in this topic among those in the field of intellectual property. We too eagerly await a decision by the POP and will provide updates as this issue develops.