Inter Partes review can only be based on prior art consisting of patents or printed publications. 35 USC 311(b). Patents are easy to spot because they are issued by a governmental authority of some sort, but whether something is a "printed publication" for purpose of the patent statute can be difficult to prove in some instances. In fact, the PTAB has often times placed a high burden on the petitioner to demonstrate that a reference is, in fact, a "printed publication" to support a ground of unpatentability. See, Celltrion, Inc and Pfizer, Inc. v. Biogen, Inc and Genentech, Inc., IPR2016-01614 (PTAB Feb. 21, 2018); and Adobe Sys. Inc v. William Grecia, IPR2018-00419 (PTAB June 21, 2018) (finding that petitioners had failed to prove that a pharmaceutical label was publicly accessible in order to qualify as a printed publication in the Celltrion case, and that petitioners had failed to demonstrate that a master's thesis was publicly accessible by relying on an Internet Archive declaration in the Adobe case).
We previously wrote about this issue in several prior blog postings on ptablitigationblog.com. See, for example, this post discussing a trade conference catalog, and this post on a sales catalog. As can be seen from our prior postings – and the many PTAB panel decisions on this issue over the past several years – there has been some variability and hence unpredictability in how PTAB panels are determining whether a reference is a printed publication or not for purposes of an inter partes review proceeding.
On April 3, 2019, the PTAB Precedential Opinion Panel issued an order in Hulu, LLC v. Soundview Innovations LLC (IPR2018-02039, paper 15) pursuant to SOP2 in order to address the following issue: What is required for a petitioner to establish that an asserted reference qualifies as a "printed publication" at the institution stage? In the underlying case, Hulu's petition had been denied because the PTAB panel found that there were several differences between a prior art reference that was relied upon in its petition and a librarian's declaration regarding the same prior art. These differences resulted in the PTAB panel finding that the petitioner, Hulu, had not proven that the reference was a printed publication.
The POP also authorized the parties – Hulu and Soundview – to submit additional briefing on the identified issue, and further allowed for amicus curiae to submit briefs by May 1, 2019.
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