The Precedential Opinion Panel ("POP") of the Patent Trial and Appeal Board ("PTAB") clarified what a petitioner must include in a patent dispute before the U.S. Patent and Trademark Office to establish that a potentially invalidating document was publicly available before the patent filing.

The PTAB issued this clarification in a patent dispute between Hulu, LLC and Sound View Innovations, LLC. Initially, Hulu petitioned for inter partes review ("IPR"), arguing that the Sound View patent in question references a textbook that was publicly available before the patent was filed. As proof of publication, Hulu submitted: (i) a date stamp from the Cornell University Library on a different version of the textbook; and (ii) an affidavit from an Administrative Supervisor in the Cornell Original Cataloging Unit that the textbook was indexed and publicly available before the patent was filed. However, a PTAB panel denied institution of an IPR, stating that Hulu had not provided sufficient evidence to show that the textbook was publicly accessible and, therefore, did not qualify as prior art under either 35 U.S.C. § 102(a) or (b).

Following the panel decision, Hulu requested a rehearing and POP review to clarify the following question:

What is required for a petitioner to establish that an asserted reference qualifies as "printed publication" at the institution stage?

On December 20, 2019, the POP determined that Hulu's evidence did establish a "reasonable likelihood" that the textbook was publicly accessible and a "printed publication" before the patent filing.

The POP explained that the PTAB should consider "conventional markers of publication" (e.g., copyright dates and edition identifiers) as "part of a totality" of factors when determining whether a reference was publicly available. Importantly, the POP also held that there is no presumption in favor of finding that a reference is a printed publication because the burden to do so is on the petitioner.

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