United States: PTAB Finds Draft Technical Specifications Constitute Printed Publications

On March 16, 2017, the Patent Trial and Appeal Board (PTAB) issued its final written decision in the LG Electronics v. Core Wireless Licensing S.A.R.L. matter. Core Wireless, the "Patent Owner," challenged prior art introduced by LG Electronics, the "Petitioner," as not being printed publications because the Petitioner failed to demonstrate that the documents meet the "public accessibility" requirement. The documents in question were drafts of technical specifications and related proposals by the 3rd Generation Partnership Project ("3GPP"). The PTAB concluded that each piece of art constituted a printed publication.

In SRI Int'l, Inc. v. Internet Sec. Sys., Inc., the Federal Circuit held that a reference is publicly accessible "upon a satisfactory showing that such document has been disseminated or otherwise made available to the extent that persons interested in ordinary and skilled in the subject matter or art exercising reasonable diligence, can locate it." 511 F.3d 1186, 1194 (Fed. Cir. 2008). To resolve the issue before it, the PTAB had to balance two factors for a printed publication to be considered public: indexing and public dissemination. Relying on Mass. Inst. of Tech. v. AB Fortia¹ and In re Klopfenstein², the Petitioner argued that public dissemination of the prior art at issue was enough to meet the public accessibility requirement. The Petitioner's expert testified that drafts of 3GPP specifications to be discussed at meetings were handed out at the meetings to those in attendance. The draft specifications were also published on a file transfer protocol (FTP) service accessible to the general public without restriction, and 3GPP sent emails to participants when documents discussed during meetings were published. Based on the testimony from both parties' experts, the PTAB found that the Petitioner's prior art was distributed to at least a few dozen persons without any restriction.

The Patent Owner relied on SRI Int'l and focused on the indexing of draft specifications that were stored on 3GPP's database. The Patent Owner argued that a person of ordinary skill would have to know the temporary document number and information about the meeting in order to find a document on the FTP site. The Patent Owner also argued that the Petitioner did not provide any evidence that the FTP site was indexed in a comprehensible manner. The PTAB rejected the Patent Owner's argument. The PTAB found that "cataloging and indexing in a library or database is not required where there has been sufficient actual dissemination." Because the documents at issue were physically disseminated, they were considered printed publications even if they were not easily searchable on 3GPP's server.

LG Elecs., Inc. v. Core Wireless Licensing S.A.R.L., IPR2015-01986, Paper No. 34 (Mar. 16, 2017).

Footnotes

1. 774 F.2d 1104, 1108-09 (Fed. Cir. 1985).

2. 380 F.3d 1345, 1347 (Fed. Cir. 2004).

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