On Winter's eve, the Board's Precedential Opinion Panel (POP) finally answered a question it posed in an April order: "What is required for a petitioner to establish that an asserted reference qualifies as [a] 'printed publication' at the institution stage?" As we earlier noted, the April order granted an aggrieved petitioner's request for rehearing of a Board decision refusing to institute inter partes review because the petitioner apparently did not establish a book bearing a 1990 copyright date was publicly available before the 1995 date on which the application for the subject patent was filed. The case is Hulu, LLC v. Sound View Innovations, LLC, Case IPR2018-01039, Paper 29 (PTAB Dec. 20, 2019) (precedential).
The POP explained that "[t]here is no presumption in favor of institution or in favor of finding a reference to be a printed publication." Slip Op. at 16. According to the POP, "the petition must identify, with particularity, evidence sufficient to establish a reasonable likelihood that the reference was publicly accessible before the critical [sic, filing] date of the challenged patent and therefore that there is a reasonable likelihood that it qualifies as a printed publication." Id. at 13. The standard, at the institution stage, for determining whether a reference is a printed publication is, according to the POP, "a higher standard than mere notice pleading, but, ... lower than the 'preponderance' standard to prevail in a final written decision." Id. at 13. The POP did not hold that any particular indicia per se is sufficient at the institution stage, but stated instead that "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. To prevail in the proceeding, said the POP, "the petitioner bears the burden of establishing by a preponderance of the evidence that a particular document is a printed publication." Id. at 11.
In this case, the patent's filing date was in October of 1995. Id. at 6. The reference was a textbook from an established publisher bearing a 1990 copyright date, a 1992 printing date, and an August 1994 ISBN date. Id. at 19. Apparently none of these indicia alone was sufficient, but rather the totality of this evidence led the panel to determine the petitioner established a reasonable likelihood that the reference is a printed publication that a publisher made available to the relevant public before the patent's filing date. Based on that determination, the POP remanded the case to the original panel to decide whether to institute review on the unpatentability ground supported by the reference.
Few, other than perhaps the patent owner and apparently the original Board panel in this case, considered as a close call that a book printed by a commercial publisher three years before the patent's filing date could qualify as a printed publication as of the patent's filing date. The POP lobbed itself a softball of a question and seems to have offered a common-sense answer that many expected. But where the reference is not a book, the POP offered parties and practitioners no meaningful guidance beyond identifying a few non-precedential Board decisions that assessed whether drug package inserts, user manuals, theses, dissertations, and conference papers qualify as printed publication prior art. See id. at 18–19. For those, the petitioner remains well advised to submit supporting evidence to establish the reference's qualification as a printed publication.
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