“The Precedential Opinion Panel posed a broad question, yet seems to have answered the narrower one Hulu posed, and seems to have offered a common-sense answer that many likely expected. But where the reference is not a book, the POP offered parties and practitioners no concrete guidance beyond identifying a few non-precedential Board decisions.”
Inter partes review (IPR) proceedings have been available since the fall of 2012. Through the end of October of 2019, the U.S. Patent and Trademark Office (USPTO) had received nearly 10,000 IPR petitions, a pace of about 1,400 per year. Those figures are astonishing considering the Office expected only about 1,400 petitions during the first three fiscal years. And during that seven year stretch, the Office reportedly granted about 65% of the petitions, and issued nearly 3,000 final written decisions. In turn, these decisions have recently dominated the Federal Circuit’s docket of appealed cases. During its 2019 fiscal year, for example, the court docketed nearly twice as many appeals of USPTO decisions than appeals of district court judgments. Compare that to seven years ago when the court docketed four times as many appeals of district court judgments than appeals of USPTO decisions.
Yet IPRs proceed with a limited scope. Specifically, an IPR petition must be based “only on a ground that could be raised under [35 U.S.C. §§] 102 [anticipation] or 103 [obviousness] and only on the basis of prior art consisting of patents or printed publications.” 35 U.S.C. § 311(b). The “printed publication” basis for IPRs seems as fundamental an issue as one can imagine. But until late December 2019, the Patent Trial and Appeal Board (PTAB) offered no precedential decision explaining “[w]hat is required for a petitioner to establish that an asserted reference qualifies as [a] ‘printed publication’ at the institution stage.” The Board presented that broad question in an April 2019 order announcing it would answer that question through its Precedential Opinion Panel (POP). Hulu, LLC v. Sound View Innovations, LLC, Case IPR2018-01039, Paper 15 (PTAB Apr. 1, 2019) (order).
In the nearly 3,000 final written decisions the Board has thus far issued, as well as in the thousands of decisions denying IPR petitions, the Board has relied (at least in some part) on its determination of whether the references asserted to attack patentability qualify as printed publication prior art. Some determinations were likely easy, while others were not. But it should not have taken so long for the USPTO to realize it ought to offer some precedential guidance. After all, its decisions denying IPR petitions on the basis that an asserted reference is not prior art are not even appealable.
The POP Promises Help in Hulu
The Board has issued non-precedential decisions that treated the printed publication issue differently even where many of the same types of facts were present. In the context of its own case, Hulu argued that past Board decisions took inconsistent positions on whether a copyright notice in a book was sufficient to establish a book’s status as a printed publication. Some amici that filed briefs in Hulu recounted inconsistencies not only in how the Board evaluates evidence of whether a reference qualifies as a printed publication but whether the Board even evaluates that evidence at the institution stage, much less dismisses the evidence as inadmissible hearsay. These types of inconsistencies lead, of course, to unpredictability, which undermines a primary purpose of these post-issuance administrative proceedings—to serve as “quick and cost effective alternatives to litigation” to adjudicate invalidity in patent disputes. H.R. Rep. No. 112-98, pt. 1, at 48 (2011); see also, S. Rep. No. 110–259, p. 20 (2008) (calling for an administrative post issuance review process as “a quick, inexpensive, and reliable alternative to district court litigation”).
In the April 2019 Hulu order, the POP granted Hulu’s request for rehearing of an earlier Board decision refusing to institute IPR because Hulu apparently did not establish a textbook bearing a 1990 copyright date that was publicly available before the 1995 date on which the application for the challenged patent was filed. There was “insufficient evidence,” said the original panel in its earlier decision denying institution, “to show when the book was sufficiently made available to the public, i.e., when persons interested and ordinarily skilled in the subject matter, exercising reasonable diligence, could have located it.” Hulu, LLC v. Sound View Innovations, LLC, Case IPR2018-01039, Paper 12 at 11 (PTAB Dec. 3, 2018) (decision POP vacated). Hulu argued, in its rehearing request, that the panel’s decision was contrary to many other Board decisions where a copyright notice qualified as prima facie evidence of public accessibility. The argument and dispute may not have been as simple as that summary, but the POP agreed to sort at least some of this out in the broad question it posed in its April 2019 order. (Hulu actually asked the POP to address a narrower question: “Whether a well-known publisher’s copyright notice is sufficient evidence of the date of a publication’s public availability for purposes of institution of inter partes review, where the patent owner does not submit any evidence to the contrary.”)
Totality of the Evidence
Following briefing and a hearing, the POP issued its decision in December 2019, explaining that “[t]here is no presumption in favor of institution or in favor of finding a reference to be a printed publication.” Hulu, LLC v. Sound View Innovations, LLC, Case IPR2018-01039, Paper 29 at 16 (PTAB Dec. 20, 2019) (precedential). According to the POP, “the petition must identify, with particularity, evidence sufficient to establish a reasonable likelihood that the reference was publicly accessible before the critical [sic, filing] date of the challenged patent and therefore that there is a reasonable likelihood that it qualifies as a printed publication.” The standard, at the institution stage, for determining whether a reference is a printed publication is, according to the POP, “a higher standard than mere notice pleading, but, … lower than the ‘preponderance’ standard to prevail in a final written decision.” The POP did not hold that any particular indicia are per se sufficient at the institution stage but stated instead that “the indicia on the face of a reference, such as printed dates and stamps, are considered as part of the totality of the evidence.” To prevail in the proceeding, said the POP, “the petitioner bears the burden of establishing by a preponderance of the evidence that a particular document is a printed publication.”
In Hulu, the patent’s filing date was in October 1995. The reference was a textbook from an established publisher bearing a 1990 copyright date, a 1992 printing date, and an August 1994 ISBN date. Apparently, none of these indicia alone may have been sufficient, but rather the totality of this evidence led the POP to determine that the petitioner, Hulu, established a reasonable likelihood that the textbook is a printed publication that a publisher made available to the relevant public before the patent’s filing date. Based on that determination, the POP remanded the case to the original panel to decide whether to institute review on the unpatentability ground supported by the reference.
Few, other than perhaps the patent owner and apparently the original Board panel in this case, considered as a close call that a textbook printed by a commercial publisher three years before the patent’s filing date could qualify as a printed publication as of the patent’s filing date. The POP posed a broad question yet seems to have answered the narrower one Hulu posed, and seems to have offered a common-sense answer that many likely expected. But where the reference is not a book, the POP offered parties and practitioners no concrete guidance beyond identifying a few non-precedential Board decisions that assessed whether drug package inserts, user manuals, theses, dissertations, and conference papers qualify as printed publication prior art. See id. at 18–19. It’s not clear whether future Board decisions will follow those non-precedential decisions. So, prospective petitioners would be well advised to submit supporting evidence and arguments to establish the reference’s qualification as a printed publication.
Welcome Guidance, But Could Have Been Better
In the seven years that preceded the POP’s Hulu decision, the Federal Circuit itself decided whether certain prior art qualifies as a printed publication suitable for IPR. See, e.g., Medtronic, Inc. v. Barry, 891 F.3d 1368 (Fed. Cir. 2018) (addressing whether a video demonstration and slides distributed at industry meetings and conferences are printed publications); see also, GoPro, Inc. v. Contour IP Holding LLC, 898 F.3d 1170 (Fed. Cir. 2018) (addressing whether a catalog distributed at a trade show is a printed publication); Nobel Biocare Servs. AG v. Instradent USA, Inc., 903 F.3d 1365 (Fed. Cir. 2018) (same).
But the court’s guidance in those decisions arose from routine appeals in contrast to the POP’s calculated April 2019 order to address the issue more broadly. The POP was presented a case having facts with which hardly anyone should struggle, even though past Board panels apparently have. Given the difficulties in reconciling the broader collection of the Board’s non-precedential decisions addressing printed publication status, everyone would have benefited far more if the POP answered the broad question it posed with concrete guidance applicable to the wider variety of references argued in IPR petitions as printed publications. With no end in sight to IPR proceedings, the POP’s guidance will always be welcome if only because it should reduce uncertainty.
Image Source: Deposit Photos
Image ID: 152241578