Alert January 08, 2020

Issue Twenty-Two: PTAB Trial Tracker


The availability of post-grant proceedings at the Patent Trial and Appeal Board (PTAB) has changed the face of patent litigation. This monthly digest is designed to keep you up-to-date by highlighting interesting PTAB, district court, and Federal Circuit decisions relating to emerging post-grant issues.

What evidence is required to establish an asserted reference as a “printed publication” at the institution stage?

The PTAB’s Precedential Opinion Panel (“POP”) considered this question in Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, and concluded that “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.” Id., Paper 29 at 13. This is “a higher standard than mere notice pleading, but . . . lower than the ‘preponderance’ standard to prevail in a final written decision.” Id.


Hulu petitioned for inter partes review (“IPR”) of U.S. Patent No. 5,806,062, asserting obviousness over a single prior art reference, Dougherty. In its Petition, Petitioner relied on a copy of the Dougherty reference (“Dougherty”) which contained the fourth printing of the full reference and listed 1990 as the copyright date for the First Edition, with the fourth printing having a copyright date of November 1992. Petitioner also submitted “Cornell Dougherty,” which contained the first fifteen pages of the second printing of Dougherty, with a 1991 copyright date and a 1992 date stamp from Cornell University Library. Id. at 4–6. In addition, Petitioner submitted an affidavit from the Administrative Supervisor in the Original Cataloging Unit at Cornell University Library, which stated that Cornell Dougherty was indexed and publicly available on September 16, 1992. Id. at 4. The patent at issue in the case was filed on October 17, 1995. Id. at 6.

The Board denied institution, finding that Hulu had not shown that Dougherty was publicly accessible prior to the critical date of October 17, 1995. Id., Paper 12 at 11 (Dec. 3, 2018) (explaining that “[a] copyright date does not indicate anything more than the author indicates this is the date the work was fixed in a tangible medium of expression” and does not “inform[] us as to the extent of public accessibility of Dougherty”). Hulu petitioned for rehearing and requested POP review, arguing the Board had inconsistently applied the requirement for the threshold showing of public accessibility. See id., Paper 13 at 4 (providing examples of the disparate treatment of this issue in prior Board decisions).

The POP agreed to review the panel’s denial of institution and invited briefing from the parties and interested amici. In addition to the parties to the IPR, numerous parties filed amicus briefs, summarized in Issue 16.

The parties acknowledged that the relevant standard at institution is whether there is a “reasonable likelihood” that a reference is a printed publication, but disputed what evidence is necessary to meet this standard. Paper 29 at 11. Petitioner argued that conventional markers of publication (e.g., dates on copyright pages) should be sufficient to meet the standard for institution. Id. Patent Owner disagreed, arguing that a petitioner must present its “case in chief” in the petition and therefore must present all evidence to be used in an instituted review, including sufficient evidence to establish references as printed publications. Id. Patent Owner argued that as a result, the Board should apply a “high” or “elevated” threshold determination at institution. Id. at 11–12.

POP Analysis

In its decision, the POP avoided setting any bright-line rules regarding what evidence would, or would not, be sufficient to establish public accessibility at institution. Instead, the POP pointed out that this is a case-by-case inquiry, and explained how variations in indexing or technology employed, for example, could change the analysis. See, e.g., id. at 9–10. The POP, however, provided some clarity regarding the issues raised in the briefing.

The standard at institution.

There was no dispute that the standard for institution of an IPR—“reasonable likelihood” of prevailing—applies to the issue of whether a reference is a printed publication, but the parties disputed what evidence is necessary to meet that standard. The POP relied on the statutes, holding that the petition must identify with particularity the grounds for institution and the evidence supporting those grounds, including the evidence that establishes the printed publication status of any prior art reference relied upon. Id. at 13. The POP clarified that this standard is higher than mere notice pleading, but lower than the preponderance standard necessary to prevail in a final written decision. Id.

Additional evidence after filing petition.

Patent Owner argued that Petitioner must present its “case in chief” in the petition, including all evidence it will rely on to show a reference is a printed publication. Id. at 11–12. The POP disagreed and pointed out that a petitioner has opportunities, while limited, to submit additional evidence after filing its petition. Id. at 14 (noting that the petitioner has an opportunity to reply to patent owner’s response or file a motion to file supplemental information).

No presumption of “printed publication.”

Some amici argued that there is, or should be, a presumption in favor of finding that a reference is a “printed publication” for the purposes of institution. Id. at 16. The POP held that there is no such presumption and the burden of proof remains with the petitioner to point out with particularity evidence establishing a reasonable likelihood that the reference was publicly accessible before the critical date. Id.

No per se sufficient indicia.

Petitioner and several amici argued that where a reference bears conventional markers of publication, such as a copyright date, edition identifiers, publication by a commercial publisher, and the assignment of an ISBN number, such indicia should be sufficient to meet the reasonable likelihood standard for institution. Id. at 17. The POP refused to take a firm position on this question, stating, “the indicia on the face of a reference, such as printed dates and stamps, are considered as part of the totality of the evidence.” Id. at 17–18.

Analysis of Hulu’s Petition

When applying its analysis to Hulu’s petition, the panel concluded that there was sufficient evidence in this case to establish a reasonable likelihood that Dougherty is a printed publication because Dougherty, on its face, bears several indicia of public accessibility, including a copyright date, a printing date, and an ISBN date. Id. at 19–20. Moreover, the POP noted that Dougherty is a textbook from an established publisher and a well-known book series. Id. at 19. The POP remanded to the merits panel to determine whether Petitioner would prevail with respect to at least one claim in the challenged patent.

Notably, the POP explicitly stated that it was not opining on whether the evidence that Petitioner presented was sufficient to establish that Dougherty is a printed publication by a preponderance of the evidence, the standard for trial after institution. Id. at 21. The POP’s decision left the door open for Patent Owner to continue to challenge Petitioner’s evidence, and in turn, for Petitioner to submit supplemental evidence in reply. Id.

TAKEAWAY: While the POP’s decision provides some guidance regarding the standards for establishing a reference as a printed publication, the POP’s decision did not clarify what evidence will ultimately be sufficient to meet those standards. Petitioners and Patent Owners alike will continue to raise questions about what evidence is necessary to establish that a reference was publicly accessible as of a certain date at both the institution and trial stage of PTAB proceedings.