In Hulu, LLC v. Sound View Innovations, LLC, Case IPR2018-01039, Paper 29 (P.T.A.B. Dec. 20, 2019) (precedential), the USPTO’s Precedential Opinion Panel (POP) addressed the following question:

What is required for a petitioner to establish that an asserted reference qualifies as a “printed publication” at the institution stage?

The POP explained that for institution of an inter partes review (IPR), a petitioner must establish a reasonable likelihood that a reference is a printed publication and that the proper test is to weigh the totality of evidence. Here, the POP found that the petitioner had made such a showing based merely on the indicia of publication on the reference itself (e.g., copyright date and printing date) along with the reference’s publication by a reputable publisher. The POP thus applied a very low bar.

Background

Before POP review, the PTAB denied institution of Hulu’s petition because there was insufficient evidence to establish that a prior-art reference (Dougherty) qualified as a printed publication. Dougherty’s copyright page indicates four printing dates under the heading “printing history,” an ISBN date, and a copyright date, all of which were before the patent-at-issue’s critical date. The parties disputed Dougherty’s public availability. Hulu sought POP review, which was granted.

Determining Whether a Prior-Art Reference Qualifies as a Printed Publication

The POP provided a road map for qualifying prior-art references as printed publications for an IPR at institution. As an initial matter, the POP found that there is no presumption that a reference qualifies as a printed publication, thus rejecting the petitioner’s argument. The POP held that a petition must identify, with particularity, evidence sufficient to establish a reasonable likelihood that a prior-art reference qualifies as a printed publication. This standard is “far more” than notice pleading under the federal rules of civil procedure, but it is “lower than the ‘preponderance’ standard to prevail in a final written decision.” The POP also clarified that this burden is slightly shifted for post-grant reviews, where the standard is “more likely than not” that the party will prevail, as opposed to the “reasonable likelihood” standard of IPRs.

The POP also summarized the law surrounding printed publications. The POP noted that the question of “whether a reference qualifies as a ‘printed publication’ is a legal conclusion based on underlying factual findings” and that “[t]he underlying factual findings include whether the reference was publicly available.” The POP then made several observations regarding public accessibility:

• “In certain situations, particularly for manuscripts or dissertations stored in libraries, the inquiry may consider whether a reference was sufficiently indexed, catalogued, and shelved.”
• “In other situations, such as for information displayed at meetings and trade shows, indexing is not required if it was sufficiently disseminated.”
• “What constitutes a printed publication must be determined in light of the technology employed.”
• Public accessibility is more than “technical accessibility,” meaning that a work is “not publically accessible if the only people who know how to find it are the ones who created it.”
• However, “a petitioner need not establish that specific persons actually accessed or received a work to show that the work was publicly accessible. In fact, a limited distribution can make a work publicly accessible under certain circumstances.”

The POP concluded its discussion of the law surrounding printed publications by stating:

A given reference is “publicly accessible” upon a satisfactory showing that such document has been disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence, can locate it.

Ultimately, the POP decided that the totality of the evidence will be used to determine if a reference qualifies as a printed publication. Here, the petitioner argued that “conventional markers” of publication (e.g., copyright date, edition identifiers, assignment of ISBN number) should satisfactorily evidence that a reference was publicly available. The POP did not adopt this standard and explained that no particular indicia were per se sufficient at the institution stage. Instead, the petition should provide “strong indicia” of public accessibility.

The POP recognized several instances where strong indicia had been shown in other cases. For example, strong indicia have included a package insert for a drug along with a screenshot from an FDA webpage from the Wayback Machine, submitted with declaration testimony. Strong indicia have also included a thesis, supported by a declaration from the author’s advisor discussing a university’s publication and indexing practice. As another example, copyright and release date information supplied with metadata evidence and factual testimony along with an expert declaration were sufficient.

The POP also identified some examples of weak indicia, such as a dissertation supported by a Joint Statement of Uncontested Facts from a related district court litigation and a conference paper having a 2012 copyright date and “September 2012” on its cover.

The POP’s Assessment of the Prior-Art Reference

The POP overturned the PTAB’s decision and determined that Dougherty was sufficiently shown to be a printed publication for the institution stage. Dougherty bears a copyright date, printing date, and ISBN date, all before the critical date. Further, Dougherty was a textbook published by “an established publisher” in a “well-known book series.” This was deemed sufficient to establish a reasonable likelihood the reference was a publication prior to the patent’s critical date.