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PTAB Precedential Opinion Panel Evaluates Standard for Showing Public Accessibility of a Reference

The PTAB’s Precedential Opinion Panel (POP) issued its decision in Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 (P.T.A.B. Dec. 20, 2019) [hereinafter Hulu], which addresses the requirement for a petitioner to establish that an asserted reference qualifies as a printed publication for institution of an inter partes review. The PTAB POP determined that Hulu, as the petitioner, had produced sufficient evidence to establish a reasonable likelihood that the disputed reference, Dougherty, was publicly accessible before the critical date of the challenged patent. The POP cited the facts that Dougherty (1) “bears a copyright date of 1990”, (2) has “a printing date of November 1992”, (3) has an ISBN date of 8/94, and (4) is a textbook from an established publisher, O’Reilly, and is part of a well-known book series. Hulu, at 19.

The POP indicated that “[w]hether a reference qualifies as a ‘printed publication’ is a legal conclusion based on underlying factual findings.” Hulu, 8-9 (citing Nobel Biocare Servs. AG v. Instradent USA, Inc., 903 F.3d 1365, 1375 (Fed. Cir. 2018) (citing Jazz Pharm., Inc. v. Amneal Pharm., LLC, 895 F.3d 1347, 1356 (Fed. Cir. 2018)). In particular, the reference must be “publicly accessible,” which requires that “persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence, can locate it.” SRI Int’l, Inc. v. Internet Sec. Sys., Inc., 511 F.3d 1186, 1194 (Fed. Cir. 2008) (quoting Bruckelmyer v. Ground Heaters, Inc., 445 F.3d 1374, 1378 (Fed. Cir. 2006)). Extensive Federal Circuit opinions have discussed the public accessibility of manuscripts and dissertations stored in libraries, as well as information displayed at meetings and trade shows. See, e.g., Medtronic, Inc. v. Barry, 891 F.3d 1368, 1380 (Fed. Cir. 2018); In re Hall, 781 F.2d 897, 898–99 (Fed. Cir. 1986); In re Lister, 583 F.3d 1307, 1315 (Fed. Cir. 2009). u

The POP noted that Dougherty is a fourth printing version of a book; this version lists four printing dates between 1990 and 1992 and clarifies that the later three dates include “Minor Correction[s].” Halo, at 5. Additionally, Dougherty includes a 1990 copyright date. Id. Petitioner further presented an affidavit from a Cornell University librarian to support its argument that Dougherty qualifies as a printed publication; however, the POP held that the affidavit was not “necessary to [the] decision that Petitioner has presented sufficient evidence for purposes of institution.” Id., at 20.

The POP held that “the burden is on the petitioner to identify with particularity evidence sufficient to establish a reasonable likelihood that the reference was publicly accessible before the critical date of the challenged patent, and therefore that there is a reasonable likelihood that it qualifies as a printed publication.” Hulu, at 16. In this case, the POP did not require “any particular indicia” but evaluated a totality of the evidence, which included the printed dates and stamps on the Dougherty and Dougherty Cornell references. Id., at 17-18. The POP held that this evidence provided a reasonable likelihood of accessibility of the reference.

This holding cements the broad reach of what constitutes “available to the public” under 35 U.S.C. 102, staying in line with existing case law regarding accessibility of documents published at universities and libraries.