Addressing the requirements for proof of prior art in inter partes review (IPR), the Patent Trial and Appeal Board (PTAB or Board) found that the petitioner failed to establish that certain documents cited qualified as “printed publications” and denied institution of the requested IPR proceeding. LG Electronics, Inc. v. Advanced Micro Devices, Inc., Case No. IPR2015-00329 (PTAB, July 10, 2015) (Arpin, APJ).
The petitioner LG Electronics sought to institute an IPR of an Advanced Micro Devices patent based on two purported prior art references supported by a declaration. The petitioner argued that each of the applied references was a printed publication that could properly be used as a ground of unpatentability in an IPR.
The PTAB noted that the “party seeking to introduce the reference ‘should produce sufficient proof of its dissemination or that it has otherwise been available and accessible to persons concerned with the art to which the document relates and thus most likely to avail themselves of its contents.’” In this case, the petitioner relied on a preliminary technical specification, arguing that the dates on the face of the document and the citation of the document in an information disclosure statement (IDS) were sufficient to show public availability. The PTAB agreed that the technical specification was a printed publication, noting that although “an IDS alone is insufficient to demonstrate that a document is a printed publication . . . the presence of a copyright notice, together with the listing of the reference in an IDS, may be taken as some evidence of public accessibility as of a particular date.”
The petitioner also cited a user’s manual as a prior art reference, similarly arguing that the date on the document was sufficient to show that it was a printed publication as of that date. The PTAB disagreed, noting that the date on the document only contained a reference to a revision level, which suggested that the document may have been revised on that date but was not sufficient evidence that it was published on that date. The PTAB further stated that the “unsupported opinion” of the petitioner’s declarant that the document was more than likely published on the noted date was “insufficient to demonstrate a reasonable likelihood” that the document was in fact published on that date. The PTAB thus concluded petitioner failed to establish that the user’s manual was a printed publication for the purposes of the IPR decision.
Considering only technical specification as prior art, the PTAB denied the petitioner’s request to institute the IPR.
