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While the PTAB’s decision in Hulu provides some guidance for post-grant proceedings, there is still no bright-line rule as to what constitutes a “printed publication”. Eugene Perez of Birch Stewart Kolasch Birch examines current case rulings.
The US Patent and Trademark Office (USPTO) offers various ways to attack a patent by showing unpatentability in view of prior art, including inter partes review (IPR), ex parte re-examination, and post-grant review (PGR), with IPR being by far the most popular.
With respect to prior art attacks, there have been numerous decisions by the US Court of Appeals for the Federal Circuit and the Patent Trial and Appeal Board (PTAB) involving whether a reference is considered a “printed publication”.
There is no question that, eg, an issued US patent or 18-month publication is a “printed publication”. What is more elusive is how a manual available to company employees, or a product catalogue distributed at a trade show, can constitute a “printed publication”.
This article explores why there is no bright-line rule, but some factors can be more important than others.
Types of printed publications
Under pre-America Invents Act (AIA) 35 USC section 102(b), a person is not entitled to a patent if her invention was “described in a printed publication ... more than one year prior to the date of the patent application”.
Under the newer law of the AIA, section 102(a)(1) states that a person shall be entitled to a patent unless “the claimed invention was ... described in a printed publication ... before the effective filing date of the claimed invention”.
It is well established that a reference is proven to be a “printed publication” upon a satisfactory showing that such document (i) has been disseminated; or (ii) otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art, exercising reasonable diligence, can locate it.
That is, a reference is considered a “printed publication” by proving either (i) actual dissemination; or (ii) the reference was publicly accessible, which are two separate doctrines.
For either doctrine, this is a legal conclusion based on underlying factual determinations, and is a case-by-case enquiry (Medtronic v Barry [Federal Circuit, 2018]). Such a determination is fact-dependent involving multiple factors.
In December 2019, the PTAB issued a precedential decision laying down the factors for determining whether a reference is a “printed publication” in an IPR in Hulu v Sound View Innovations.
Prior to Hulu, the PTAB did not offer precedential guidance on what constitutes a “printed publication”. There were numerous IPR decisions that, even though patent attorneys understand that any “printed publication” determination is fact-driven, evaded consistency.
“The Federal Circuit affirmed this board’s findings, stating that a work is not publicly accessible if the only people who know how to find it are the ones who created it.” - Eugene Perez
With its order, the panel in Hulu stated:
- There is no presumption in favour of institution or in favour of finding a reference to be a printed publication under section 42.108(c) or any other authority;
- 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; and
- For purposes of institution, petitioner must prove based on the totality of the evidence that there is a reasonable likelihood that the reference is a printed publication.
The Hulu order then analysed the facts in the case to make certain determinations.
However, there appear to be no firm guidance in a general sense on how to make a “printed publication” determination. Instead, specific Federal Circuit and PTAB decisions must be reviewed, and applying those cases with facts being most analogous to your own situation.
Some cases hold the expectation of confidentiality and the intended audience as key factors.
In GoPro v Contour IP (2017), the Federal Circuit vacated and remanded the PTAB’s determination that a GoPro sales catalogue distributed at a trade show was not a printed publication.
The PTAB was in error by focusing on only one of several factors. Besides determining who was the targeted audience at the trade show (did it include a person of ordinary skill in that art [POSA]?), the Federal Circuit remanded for the PTAB to consider whether the catalogue had any restrictions on public disclosure of the information, expectation of confidentiality, or expectation of sharing the information.
In Medtronic v Barry (2018), the Federal Circuit remanded for the PTAB to consider whether a video demonstration and related slide presentation at three different industry meetings/conferences for spinal surgeons constituted a “printed publication”.
The board erred by not considering how one meeting was to a closed group of surgeons, but another meeting was not so limited, but open to at least 75 other surgeons. Further, the board did not address whether the disclosures would remain confidential.
“A POSA exercising reasonable diligence must be able to find the document via a reasonable electronic search of the database.”
Public accessibility doctrine
For the public accessibility doctrine, the Federal Circuit has differentiated technical accessibility from accessibility when the document was meaningfully indexed on a website.
In Acceleration Bay v Activision Blizzard (2018), the document at issue was available on a university’s database. However, a POSA exercising reasonable diligence must be able to find the document via a reasonable electronic search of the database. For instance, the POSA should be able to find the reference upon using, for example, a proper subject matter search.
A key fact was that technical accessibility (eg, finding the document only by the author’s name, or through its library’s unique identifier based on the timeline when uploaded) was not the same as being “meaningfully indexed”. It was not reasonable to skim hundreds of titles, where the titles are not related to each other, and by happenstance find the document.
A similar holding was made in Samsung Elecs v Infobridge (Federal Circuit 2019), which involved the document (WD4) being indexed by meeting location or author on a website, and had limited search capabilities. The PTAB went through the numerous steps involved to find the WD4 document on the website, and found no meaningful indexing.
The Federal Circuit affirmed this board’s findings, stating that a work is not publicly accessible if the only people who know how to find it are the ones who created it (that is, technically accessible).
Meaningfully indexed or catalogued is not the only factor, as a reference was deemed a “printed publication” in Voter Verified v Premier Election Solutions (Federal Circuit 2012). In Voter Verified, other factors were considered, such as whether a POSA was aware of the website where the reference was available.
Case law also holds that once accessibility is proved, there is no evidence needed to show that a POSA actually accessed the document. This is similar to a graduate student’s thesis being properly indexed, catalogued, and shelved at a university library to be a “printed publication”, even though no-one may have actually accessed the thesis itself. In contrast, dissemination does not require indexing.
There is a lower burden in finding a “printed publication” for USPTO examiners. The burden then shifts to the patent applicant to prove otherwise.
In Ex parte Grillo-Lopéz (2020), the PTAB held that the examiner has a lower burden to prove that a reference qualifies as a “printed publication” under pre-AIA section 102(b) than that required of an IPR or PGR petitioner.
The document at issue was a Food and Drug Administration transcript, which was deemed as not being a “printed publication” in previous IPRs.
However, the examiner in the precedential Grillo-Lopéz decision met the burden of proof by setting forth a “nominal publication date”. Since ex parte prosecution of a patent application involves burden-shifting, the burden shifted to the applicant to come forward with rebuttal evidence or arguments to overcome a prima facie case. The PTAB further held that the framework set forth in the Hulu decision for IPRs does not apply to examination.
“The ultimate determination of a ‘printed publication’ still involves perusing past PTAB and Federal Circuit decisions and finding similar factual situations.”
The Grillo-Lopéz standard was later applied in non-precedential Ex parte Ghalili in August 2020. In Ghalili, the PTAB affirmed the examiner’s determination that a reference identified through Google searching meets the accessibility standard for a “printed publication” when the reference was web-archived prior to the effective filing date of the application. The examiner did not prove actual dissemination nor public accessibility per se.
With respect to institution versus a final decision in an IPR, Samsung Elecs v Infobridge involved the PTAB instituting an IPR trial, deeming the WD4 document as available on a website was a “printed publication”. But because institution involved a different evidentiary standard than the final written decision, and more evidence becomes of record such as an expert declaration and depositions of experts, the PTAB found the same website WD4 document as not publicly accessible, and thus not a “printed publication”.
On appeal, the Federal Circuit did remand the board’s finding with respect to distribution by email to the expert group members, but not with respect to the document’s accessibility on the website.
No bright-line rule
Before proceeding with an IPR petition, a party seeking to use a document other than a US or foreign patent publication as prior art should determine whether it is possible to prove that the document qualifies as a “printed publication”.
Such a determination is not straightforward and multiple factors have to be considered. While the PTAB’s decision in Hulu provides some guidance for post-grant proceedings, there is still no bright-line rule.
The ultimate determination of a “printed publication” still involves perusing past PTAB and Federal Circuit decisions and finding similar factual situations.
Prominent factors for dissemination include the targeted audience and whether there was an expectation of confidentiality.
With respect to public accessibility, prominent factors include the level of indexing, such as where inserting key words of the subject matter for database searching would reveal the intended document, versus indexing based on an author’s name or when the document is uploaded. But in the end, no one factor is dispositive.
Eugene Perez, a partner with Birch, Stewart, Kolasch & Birch, focuses his practice in chemical/life sciences and biotech matters and post-grant review. He is the editor of postgrantproceedings.com. He can be contacted at: email@example.com
BSKB, PTAB, Hulu, publication, post-grant proceedings, IPR, unpatentability, Federal Circuit, technical accessibility, USPTO, database