As we discussed in May, PTAB decisions are a primary source for guidance regarding what constitutes a "printed publication" under § 102, because the PTAB faces the issue so frequently. Since that post, the PTAB has continued to define the scope of what is or is not a printed publication. In most instances, where the issue was contested, the PTAB found the petitioner failed to prove a document was a printed publication.
Document Was a Printed Publication
- A user manual regarding how to trade on the Tokyo Stock Exchange was a publicly available printed publication because it was made available to 200 securities companies, including persons of ordinary skill in the art at such companies, including computer scientists, engineers and traders (CBM2016-00054, Paper 61). This decision is also significant in that the PTAB found that a printed publication does not need to actually be received by anyone to be a publication—"The proponent of a document need not show that particular members of the interested public actually received the information."
Document Was Not a Printed Publication
- A copy of a journal article publicly available in a university library was insufficient to corroborate the petitioner's claim that the originally submitted document was a prior art publication, because there was no evidence that the original document was a "true copy" of the journal the petitioner identified in its supplemental submission ( IPR2016-00850, Paper 41). The lesson here is that the PTAB will take seriously even "minor" differences between what may appear to be the same publication; it is the petitioner's burden to account for any of those differences or submit the actual printed publication in the first instance.
- A patient consent form that was freely disseminated to prospective patients and indexed on an oncology group's website was not a printed publication, primarily because the petitioner did not submit sufficient evidence to show "ordinary skilled artisans" would have found the document in a reasonably diligent search for information relevant to the invention ( IPR2017-01093, Paper 12). The PTAB made this determination at the institution stage, reinforcing that petitioners should endeavor, if possible, to provide all evidence they can access with the petition as they may not be able to supplement it.
- A patentee could not rely on the FDA approval date of a drug label as a printed publication because there was no evidence of the specific date on which the label was publicly accessible, and no evidence that those skilled in the art would have reason to look to the label when exercising reasonable diligence ( IPR2017-01093, Paper 12; IPR2017-01166, Paper 9).
- A document published on a website was not a prior art printed publication, even when corroborated by a declaration, printout from the internet archive, and comments posted on the website, because, among other things, the testimony did not reflect that the website was publicly accessible or that the information "published" on the site was accessible, catalogued, indexed or searchable to skilled practitioners ( IPR2017-01248, Paper 7; IPR2017-01251, Paper 7).
- A master's thesis submitted to an engineering department that typically published theses to the university library was not a prior art printed publication, because there was no evidence of precisely when the thesis was submitted to the department and no evidence of how long it generally took for a thesis to be added to the searchable index of the university library ( IPR2017-01075, Paper 8).
- A date-stamped FDA transcript was not a printed publication because it was not sufficiently available to the public. Specifically, the petitioner failed to put forth evidence that the transcript was available "in a manner and to an extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence would have been able to locate it" in the FDA's reading room ( IPR2017-01230, Paper 10).
Takeaways
These PTAB decisions serve as an invaluable source of guidance for an issue often commonly contested before the PTAB, and their lesson continues to be that more evidence should be provided. In many instances, although the petitioner provides some evidence pointing toward the public accessibility of the alleged prior art, the evidence falls short of demonstrating that the document is a "printed publication." When it comes to proving that a reference is a printed publication before the PTAB, less is not more.
Parties should take heed of the PTAB's approach. Before filing their petitions, petitioners must think of all potential avenues of dissemination to connect all the dots between the prior art, its publication, and how that translates into public accessibility. Patent owners should not shy away from attacking petitioners' evidence.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
