In AIA Validity Challenges, Patents Are Better Prior Art Than Printed Publications

By Peter Schechter

Anyone other than the Patent Owner may request cancellation as unpatentable one or more claims of a U.S. patent in an Inter Partes Review proceeding.  The America Invents Act, in 35 U.S.C. Section 311(b), provides that an IPR Petitioner may challenge patentability “only on a ground that could be raised under section [35 U.S.C Section] 102 (anticipation) or 103 (obviousness) and only on the basis of prior art consisting of patents or printed publications.”  In a Decision issued in Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039 (PTAB Dec. 20, 2019), the Precedential Opinion Panel of the USPTO’s Patent Trial and Appeal Board has confirmed that an IPR Petitioner should preferentially base its patentability challenge on patents, rather than printed publications, whenever possible – even though the AIA makes no distinction between the two categories of prior art.

Since September 2012, anyone other than the Patent Owner may request cancellation as unpatentable one or more claims of a U.S. patent in an Inter Partes Review (“IPR”) proceeding.  The America Invents Act (“AIA”), in 35 U.S.C. Section 311(b), provides that an IPR Petitioner may challenge patentability “only on a ground that could be raised under section [35 U.S.C Section] 102 (anticipation) or 103 (obviousness) and only on the basis of prior art consisting of patents or printed publications.”  In a Precedential Opinion Review Decision issued in Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039 (Pat. Trial & App. Bd. Dec. 20, 2019), the Precedential Opinion Panel of the USPTO’s Patent Trial and Appeal Board (“PTAB”) has confirmed that an IPR Petitioner should preferentially base its patentability challenge on patents, rather than printed publications, whenever possible – even though the AIA itself makes no distinction between relative quality of the two categories of prior art.

Successfully obtaining cancellation of a patent claim in an IPR proceeding is a multi-step process.  The Petitioner must receive at least two favorable substantive decisions: first, the “institution” decision under 35 U.S.C. Section 314(a) and, second, the final written decision under 35 U.S.C. Section 318(a).  In order to obtain institution of “trial” (which is, technically speaking, the IPR itself), the Petitioner must demonstrate a “reasonable likelihood that [it] would prevail with respect to at least 1 of the claims challenged in the petition.”  In order to obtain cancellation of a patent claim for which an IPR trial has been instituted, the Petitioner has the burden of proving unpatentability by a “preponderance of the evidence.”  35 U.S.C. Section 316(e).

In its Petition for IPR, Hulu asserted that the challenged claims of Sound View’s patent were unpatentable under 35 U.S.C. Section 103 as being obvious over two versions of a book referred to by the parties as “Dougherty” and “Cornell Dougherty.”  Dougherty bears: a copyright notice date of 1990; a “Printing History” indicating First Edition printing in November 1990 and subsequent printings with minor corrections in March 1991, July 1992, and November 1992; and an International Standard Book Number (“ISBN”) date of “8/94”.  Publishers purchase ISBNs from an affiliate of the International ISBN Agency.  Public accessibility of Dougherty by any of the indicated dates would be sufficient to establish availability of the book as prior art with respect to Sound View’s patent (which has a filing date of October 17, 1995).

Cornell Dougherty bears: a 1991 copyright notice date; an ISBN date of “1/92”; a “Printing History” indicating First Edition printing in November 1990 and the first subsequent printings with minor corrections in March 1991; and a Cornell University Library stamp reading “ENGR. LIBR. SEP 16 1992.”  In addition, Hulu submitted an affidavit of the Administrative Supervisor in the Original Cataloging Unit at Cornell University Library stating that Cornell Dougherty was, in fact, indexed and publicly available on September 16, 1992, as the stamp on the book indicates.  Once again, public accessibility of Cornell Dougherty by any of the dates indicated therein would be sufficient to establish availability of the book as prior art with respect to Sound View’s patent.

Despite the logical and seemingly inescapable conclusion that both the Dougherty and Cornell Dougherty books qualify as prior art, the PTAB initially issued a decision denying institution of IPR trial based on “insufficient evidence” that Dougherty was publicly accessible sufficiently early to qualify as prior art with respect to Sound View’s patent.  While the illogic and lack of common sense reflected in the PTAB’s initial decision denying institution cannot be overstated, numerous similar PTAB decisions denying institution of IPR based upon a petitioner’s supposed failure to demonstrate sufficiently early public accessibility of a printed publication have been issued since the earliest days of AIA post-grant challenges.

To the great surprise of petitioners, the Board has, at one time or another, ignored copyright notice dates, Library of Congress notice dates, month/year publication dates of internationally known technical journals, screen shots of library or other repository indexes downloaded from The Internet Archive (also known as The Wayback Machine), and other evidence including sworn affidavits, and thereby denied institution of IPR based on printed publications.  Confusing and compounding the problem, and consequently frustrating patent owners, too, the PTAB has also accepted all of these same types of evidence – both at the institution stage AND at the final written decision stage – as sufficient to establish public accessibility of a printed publication before the critical prior art cutoff date for a given patent.  These contrary and irreconcilably conflicting decisions have frustrated lawyers specializing in PTAB post-grant practice, and have prevented them from providing reliable legal advice on this critically important question.

Most importantly, no evidence of public accessibility is required when the prior art relied on by a petitioner is a granted patent or published patent application.

Hulu requested rehearing of the Board’s nonsensical decision, and requested Precedential Opinion Panel (“POP”) review.  The POP is presently composed of Andrei Iancu, Under Secretary of Commerce for Intellectual Property and Director of the USPTO, Andrew Hirshfeld, Commissioner for Patents, and Scott R. Boalick, Chief Administrative Patent Judge.  The POP acknowledged that prior Board decisions conflicted on requirements for institution involving issues of public accessibility of an asserted printed publication, and ordered a review on rehearing to address the following specific issue: “What is required for a petitioner to establish that an asserted reference qualifies as “printed publication” at the institution stage?”

The POP first set forth a summary of the petitioner’s opportunities to submit evidence in support of a petition for IPR, including limitations on timing of such submissions, the various grounds that must exist to support such submissions depending on when the submissions are made, and the Board’s discretion in receiving or refusing to accept such submissions.  Next, the POP reviewed controlling case law of the Court of Appeals for the Federal Circuit (“CAFC”) on the issue of whether a reference qualifies as a printed publication under 35 U.S.C. Section 102 (and pre-AIA Section 102(b)) as referenced in Section 311 of the AIA.  Following its case law review, the POP quoted the CAFC and stated: “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.”  This is not earth-shaking stuff.

While neither the “preponderance of evidence” burden of proof at the final written decision stage nor the “reasonable likelihood that a reference is a printed publication” standard at the institution stage was disputed by the parties, Hulu and Sound View diverged as to what evidence was required at the institution stage.  Hulu argued that “conventional markers” of publication satisfy the “reasonable likelihood” test; Sound View argued that a petitioner must present its entire “case-in-chief” in the petition, including all evidence that will be used in any instituted IPR, with only limited exceptions.  Describing the threshold determination of public accessibility as “high” or “elevated,” Sound View argued that conventional markers of publication are insufficient to support institution.

The POP explained that the AIA requires a petitioner to identify “with particularity” the grounds for institution and the evidence supporting such grounds.  Nonetheless, this evidence must only demonstrate a reasonable likelihood that an asserted reference qualifies as “printed publication”-type prior art.  This standard is “far more than is required in typical notice pleading” in federal court litigation.  Concluding, the POP stated:

Thus, at the institution stage, the petition must 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.

This determination is made based on consideration of “the totality of the evidence” presented by the petitioner.  No particular indicia of publication are “per se” sufficient at the institution stage.

The POP then reiterated that “some limited opportunities exist for the petitioner to present new evidence later, including: (1) in a reply to a patent owner preliminary response; (2) in a reply to the patent owner response; and (3) in a motion to file supplemental information.”  It must be kept in mind that all three of these opportunities are subject to specific limitations, and all involve additional costs and legal expenses to the petitioner.

Finally, the POP explained that there is no presumption in favor of institution or in favor of finding a reference to be a printed publication under any statute, regulation, or other authority.  The asserted existence of such a presumption had been argued in several “amicus curiae” (“friend of the court”) briefs submitted by interested intellectual property law associations and companies.

In the case at bar, the POP concluded that, based on the totality of the evidence currently in the record, Hulu has submitted evidence sufficient to establish a reasonable likelihood that Dougherty was publicly accessible before the critical date of Sound View’s patent, and, thus Hulu has established a reasonable likelihood that Dougherty qualifies as prior art of the “printed publication” type.  In addition to Hulu’s submitted evidence, the POP noted that Dougherty is a textbook from an established publisher, a fact emphasized by amicus curiae Canon, Inc. but not by Hulu itself.  Reliance on Cornell Dougherty and the affidavit evidence associated with it was found to be unnecessary.

While Hulu is undoubtedly pleased with this decision, getting to this point of the proceeding – which would seem to be the only logical one possible in view of ordinary common sense – has undoubtedly cost Hulu scores of thousands of dollars in additional legal fees, for which no reimbursement is possible.  Moreover, the case was merely remanded back to the original PTAB panel to determine whether Hulu has demonstrated a reasonable likelihood that it will prevail with respect to at least one of the claims challenged in its Petition.  There is still no institution decision, and of course there is no guarantee that the Board will grant the Petition and institute IPR of the challenged claims of Sound View’s patent.

Since the earliest days of AIA post-grant validity challenges, we have advised clients to commit appropriate resources, both in terms of time and money, to finding high quality prior art in the form of patents and published patent applications, if at all possible under the circumstances.  The cost of additional patent searches, even substantial searches in foreign patent offices and in foreign languages, will nearly always be less than the added legal fees incurred in investigating, obtaining, and presenting proof of public accessibility of non-patent printed publication-type prior art references.  Moreover, a major source of significant uncertainty is removed from the IPR process if a petition can be presented which relies only on patents and published patent applications.  Sometimes the added costs and risks of reliance on printed publications are simply unavoidable; in such cases, at least the POP Decision in the Hulu case has clarified what needs to be demonstrated at the institution stage, i.e., in and with the petition for IPR.