In Apple Inc. v. DoDots Licensing Sols. LLC, IPR2023-00939, Paper 12 (PTAB Jan. 3, 2024) (“Decision”), the PTAB clarified what is and what is not part of the prior art, and as such what can be considered by the PTAB in an IPR petition. More specifically, the PTAB denied Apple Inc.’s (“Petitioner’s”) request for inter partes review of U.S. Patent No. 8,510,407 B1 (“the ’407 Patent”), holding that certain appendices (primarily disclosing computer code), which were filed with the prior art patent application and referenced in the resulting patent, were not technically part of the patent as issued and could not be considered for the IPR analysis under 35 U.S.C. § 102(e).

This petition arose in response to a series of litigations, in which DoDots Licensing Solutions, LLC (“Patent Owner”) is currently asserting the ’407 Patent against Petitioner and other tech companies in several cases in U.S. Federal District Court in the Western District of Texas. See, e.g., DoDots Licensing Solutions LLC v. Apple Inc. et al., No. 6:22-cv-00533; DoDots Licensing Solutions LLC v. Samsung Electronics Co., Ltd. et al., No. 6:22-cv-00535 (W.D. Tex. May 24, 2022). The ’407 patent is directed to “a software component for accessing and displaying time-varying internet content.” Decision at 3. In response, Apple filed a petition for inter partes review, seeking to invalidate the ’407 Patent in view of four pieces of prior art.

One prior art reference was asserted by Petitioner against every claim of the ’407 Patent. According to Petitioner, the Slivka  reference (“Slivka”) includes not only (1) U.S. Patent No. 6,061,695 (“the ’695 Patent”), but also (2) appendices from the file history of the ’695 Patent, both of which are referenced in the petition’s unpatentability arguments.  The Patent Owner, however, argued that the appendices were neither part of the ’695 Patent nor incorporated therein—and thus the appendices (and the computer code filed with the patent application) were not technically publicly available as “prior art” until the ’695 Patent issued, because the application was still confidential until the ’695 Patent was granted—after the effective filing date of the ’407 Patent.

To be clear, while the appendices were filed with the original Slivka patent application in 1996 and bear the same date stamp, the ’695 Patent, as issued, does not include the appendices, nor does it bear an express statement that such appendices were incorporated by reference.  While the specification of the issued ’695 Patent does refer to the appendices, the specification merely states that the appendices are “attached,” but not that they are “incorporated.” Nonetheless, Petitioner argued that the Slivka appendices are appropriate prior art on three grounds: (1) the specification of the ’695 Patent incorporates the appendices through “clear and consistent references . . . throughout the specification”; (2) the appendices were included with the original application, and bear the same filing date; and (3) the applicant “expressly not[ed] the incorporation of appendices to the Examiner during prosecution” of the patent.

The PTAB was not convinced by these arguments, and agreed with the Patent Owner on almost every point at issue.  First, the Board noted that, while the Slivka appendices are described throughout the specification as “attached,” they are entirely missing from the ’695 Patent as published. Secondly, the fact that they were filed concurrently was of no consequence to the PTAB, because this fact “does not provide us any insight into whether the missing Slivka Appendices were or were not incorporated in the ’695 Patent.”  Third, the PTAB agreed with the Patent Owner that the appendices were not incorporated by reference, because “mere reference . . . is not an incorporation of anything therein” and there is no statement reflecting their incorporation in the specification.  Decision at 10, quoting In re de Seversky, 474 F.2d 671, 674 (CCPA 1973).  In so deciding, the PTAB also referred to the MPEP on pre-AIA prior art: “When a U.S. patent is used to reject claims under pre-AIA 35 U.S.C. 102(e), the disclosure relied on in the rejection must be present in the issued patent.”  MPEP 2136.02.  The PTAB also rejected Petitioner’s policy argument that appendices disclosed to the patent office should qualify as prior art even if not yet publicly available.

Ultimately, the PTAB relied on a decision not cited by either party in deciding whether the Slivka appendices were included as part of the specification of the ’695 Patent.  In Southwest Software, Inc. v. Harlequin Inc., 226 F.3d 1280, 1295 (Fed. Cir. 2000), the Federal Circuit evaluated whether a missing appendix was incorporated into the published patent. After the litigation commenced, the USPTO determined that omission of the appendix from the issued patent was a failure on the USPTO’s part, and issued a certificate of correction.  But the Federal Circuit then determined that, even though the error was on the USPTO part, because the case was filed prior to the issuance of a certificate of correction, the appendix was “missing” from the patent and thus ineffective as prior art in litigation that was initiated before the certificate of correction was issued.

Here, because the appendices were not properly incorporated into the ’695 Patent there was not sufficient basis to consider the Slivka appendices publicly available as prior art for an inter partes review of the ‘407 Patent.  This result occurred here because the Slivka patent was filed before the institution of the modern rule requiring publication of patent applications 18 months after their earliest filing date, the Slivka application, and attached appendices, would have remained confidential until it issued as a patent. See 35 U.S.C. § 122.  Had the modern rule on publication of applications been in effect at the time, the Slivka appendices may well have qualified as a separate prior art reference.  In this case, however, the earliest the Slivka references would have been made publicly available was upon issuance of the ’695 Patent, which was issued on May 9, 2000—more than one year after the effective filing date of the ‘407 Patent. Since each of Petitioner’s unpatentability grounds relies on the Slivka appendices, the PTAB found that Petitioner has not satisfied its burden of showing that the challenged patent claims were unpatentable in view of the prior art, and denied institution of the inter partes review.

Ultimately, Petitioner is not entirely without recourse—the PTAB did initiate review of the ’407 Patent in a different case, filed by Samsung Electronics Co. Samsung Electronics Co., Ltd. v. DoDots Licensing Solutions LLC,, IPR2023-00701, Paper 10 (PTAB Oct. 23, 2023). After Samsung’s petition was granted in November (but before Apple’s petition discussed herein was denied) Apple, Inc. filed a second petition for inter partes review of the ’407 patent that asserted much of the same prior art and arguments as was in Samsung’s petition, as well as a motion to join Samsung’s IPR.

Takeaway:

Do not assume that a document will be considered part of the prior art just because it is part of an issued patent’s prosecution file history or bears the same date stamp.  Also, keep in mind when prosecuting patent applications (especially those disclosing software code) that if you want appendices to be included as part of the issued patent, make sure they are properly incorporated by reference into the patent specification.