The Patent Trial and Appeal Board’s Precedential Opinion Panel (“POP”), in its recent decision in Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 (P.T.A.B. Dec. 20, 2019), set out to answer the question: “What is required for a petitioner to establish that an asserted reference qualifies as ‘printed publication’ at the institution stage?” In its decision, the POP clarified that a petitioner must establish a “reasonable likelihood” that a reference qualifies as a “printed publication” at the time of institution of an inter partes review (IPR).
The case stems from a dispute between Hulu and Sound View in which Hulu filed an IPR petition challenging claims of Sound View’s U.S. Patent No. 5,806,062 as obvious over a textbook (Dougherty). The parties clashed over whether the evidence submitted by Hulu was sufficient to establish the public accessibility of Dougherty as a printed publication prior to the filing date of the ‘062 patent. The PTAB denied institution of the IPR, siding with Sound View’s argument that Hulu had failed to demonstrate that the Dougherty textbook was publicly accessible prior to the filing date of the patent at issue.
The POP Decision
The POP reversed the PTAB, holding that Hulu had established a reasonable likelihood that Dougherty is a printed publication that was publicly accessible before the ‘062 patent filing date.
While the parties agreed that the statutory “reasonable likelihood” standard for institution, found in 35 U.S.C. § 314(a), applies to the issue of whether a reference is a printed publication, they disagreed “as to what the institution standard means in terms of presenting its evidence.” Hulu argued that the full evidentiary record could be developed during trial, whereas Sound View argued that evidence is limited to what is presented in the petition, with limited exceptions.
The POP clarified that a petitioner 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. Accordingly, as the POP explained, the reasonable likelihood standard is higher than a notice pleading standard, but lower than the preponderance of the evidence standard necessary to prevail in a final written decision. The POP also noted that after filing a petition, petitioner has limited opportunities to submit additional evidence including: 1) in a reply to a patent owner preliminary response, 2) in a reply to a patent owner response, and 3) in a motion to file supplemental information. The POP also found that there is no presumption in favor of finding a reference to be a printed publication under 37 C.F.R. § 42.108 or any other authority. Accordingly, the petitioner bears that burden.
Next, the POP considered the role of indicia on the face of a reference. Hulu argued that a reference meets the reasonable likelihood standard if it bears conventional markers of publication, such as copyright date, edition identifiers, publication by a commercial publisher, and the assignment of an ISBN number. It also asserted that other evidence, such as a supporting declaration, could be used if a reference lacks indicia sufficient to establish public availability.
The POP declined to hold that any particular accessibility indicia is per se sufficient at the institution stage. Rather, such indicia should be considered as part of the totality of the evidence. In the decision, the POP cites and describes a number of cases in which a petitioner’s evidence of indicia was either strong or weak, which provides a helpful reference in determining whether particular types of indicia establish a reasonable likelihood that a reference was publicly accessible.
After clarifying the standards, the POP applied the facts of this case to them, and found that Hulu established a reasonable likelihood that Dougherty is a printed publication that was publicly accessible before the critical date. The POP cited the textbook’s copyright date, printing date, and ISBN date (all of which were before the critical date), as well as the fact that the book was part of a series from an established published, as evidence that weighed in favor of Hulu’s arguments.
This decision brings some clarity to the important issue of public accessibility of printed publications before the PTAB. The POP’s ruling means that a petitioner need only satisfy the reasonable likelihood standard to have an inter partes review instituted, but will have limited opportunities to bolster the evidentiary record, especially after institution. In practice petitioners should present sufficient evidence of public accessibility in the petition, then if patent owner raises public accessibility in its preliminary response, consider requesting a reply to bolster the evidentiary record before institution.