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Filed on behalf of Unified Patents Inc.

By: Jonathan R. Bowser (Reg. No. 54,574)


Unified Patents Inc.
1875 Connecticut Ave., NW, Floor 10
Washington, D.C. 2009
Phone: 202-701-1015
Email: jbowser@unifiedpatents.com

UNITED STATES PATENT AND TRADEMARK OFFICE

_________________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD


_________________________

HULU, LLC,
Petitioner,

v.

SOUND VIEW INNOVATIONS, LLC,


Patent Owner.
_________________________

Case IPR2018-01039
Patent 5,608,062
_________________________

BRIEF OF AMICUS CURIAE UNIFIED PATENTS INC.


IN SUPPORT OF NEITHER PARTY
Brief of Amicus Curiae Unified Patents Inc.
IPR2018-01039
TABLE OF CONTENTS

I. INTEREST OF AMICUS CURIAE .................................................................... 1

II. ISSUE PRESENTED .......................................................................................... 1

III. ARGUMENT....................................................................................................... 2

A. The Only Statutory Institution Standard, the “Reasonable Likelihood” of


Prevailing Standard, Should Apply at the Institution Stage for
Qualification of an Asserted Reference as a Printed Publication ..................... 2

B. The “Threshold Showing” Requirement for Printed Publication


Qualification Cannot Exceed the Reasonable Likelihood Standard to
Institute Trial ..................................................................................................... 4

1. The Preponderance of The Evidence Standard for Proving Public


Accessibility of a Reference Applies After Institution of Trial .................. 6

2. The Board Should Not Require Definitive Proof of Printed Publication


Qualification at the Institution Phase .......................................................... 7

C. Petitioner Only Needs to Provide Evidence Sufficient to Make a Threshold


Showing for Printed Publication Qualification at the Institution Stage ............ 8

D. The Board Should Permit New Evidence on Printed Publication


Qualification After Petitioner Meets the Institution Threshold ...................... 13

IV. CONCLUSION ................................................................................................. 15

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TABLE OF AUTHORITIES

Page(s)

Statutes

35 U.S.C. § 102(b) (pre-AIA) .................................................................................. 4

35 U.S.C. § 314(a) ............................................................................................ passim

35 U.S.C. § 314(d)..................................................................................................... 5

35 U.S.C. § 316(a)(8) .............................................................................................. 14

35 U.S.C. § 316(e) ................................................................................................ 5, 6

35 U.S.C. § 324(a) ..................................................................................................... 5

Regulations

37 C.F.R. § 42.1(b) .................................................................................................. 12

37 C.F.R. § 42.1(d) .................................................................................................. 13

37 C.F.R. § 42.23(b) ................................................................................................ 14

37 C.F.R. § 42.108(c) ....................................................................................... passim

37 C.F.R. § 42.120 .................................................................................................. 14

37 C.F.R. § 42.123 .................................................................................................. 15

37 C.F.R. § 42.208(c) ................................................................................................ 5

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TABLE OF AUTHORITIES (Cont’d)

Page(s)

Legislative and Administrative Materials

157 Cong. Rec. S1375 (daily ed. Mar. 8, 2011) (statement of Sen. Kyl) ......... 3, 4-5

77 Fed. Reg. at 48,680 (Aug. 14, 2012) .................................................................. 12

Trial Practice Guide Update at 14-15 (Aug. 2018) ................................................. 14

Cases

Anacor Pharm., Inc. v. Iancu, 889 F.3d 1372, 1380 (Fed. Cir. 2018) .................... 14

Arista Networks, Inc. v. Cisco Sys. Inc., IPR2016-00244, Paper 10 at 19


(PTAB May 25, 2016) ...................................................................................... 8-9

CIM Maint. Inc. v. P&RO Sols. Grp., Inc., IPR2017-00516, Paper 8 at


19 (PTAB June 22, 2017)................................................................................... 10

Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2141 (2016) ............................. 5

Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1379-
80 (Fed. Cir. 2015) ........................................................................................ 8, 11

Ericsson, Inc. v. Intellectual Ventures I LLC, IPR2014-00527, Paper 41


at 11 (PTAB May 18, 2015) ............................................................................. 7-8

FLIR Sys., Inc. v. Leak Surveys, Inc., IPR2014-00411, Paper 9 at 19


(PTAB Sept. 5, 2014) ........................................................................................... 9

Genzyme Therapeutic Prods. Ltd. P’ship v. Biomarin Pharm. Inc., 825


F.3d 1360, 1366-67 (Fed. Cir. 2016) ............................................... 12, 13, 14-15

GoPro, Inc. v. Contour IP Holding LLC, 908 F.3d 690, 692, 693 (Fed.
Cir. 2018) ....................................................................................................... 3, 10

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TABLE OF AUTHORITIES (Cont’d)

Page(s)

Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 12


at 9-12 (PTAB Dec. 3, 2018) .............................................................................. 7

In re Hall, 781 F.2d 897, 898-99 (Fed. Cir. 1986) .................................................... 3

Instradent USA, Inc. v. Nobel Biocare Services AG, IPR2015-01786,


Paper 14 at 14 (PTAB Feb. 19, 2016) .................................................................. 4

Medtronic, Inc. v. Barry, 891 F.3d 1368, 1380 (Fed. Cir. 2018) .............................. 6

Mylan Pharm. Inc. v. Bristol-Myers Squibb Co., IPR2018-00892,


Paper 37 at 4-6 (PTAB Dec. 14, 2018) .............................................................. 15

Nautilus, Inc. v. Icon Health & Fitness Inc., IPR2017-01363, Paper 33


at 10-20 (PTAB Nov. 28, 2018) .................................................................. 13-14

Nobel Biocare Servs. AG v. Instradent USA, Inc., 903 F.3d 1365, 1375
(Fed. Cir. 2018) .................................................................................................... 6

Rayvio Corp. v. Nitride Semiconductors Co., IPR2018-01141, Paper 14


at 26-27 (PTAB Dec. 4, 2018) ...................................................................... 9-10

Shenzhen Zhiyi Tech. Co. Ltd. v. iRobot Corp., IPR2017-02137, Paper


9 at 20-21 (PTAB Apr. 2, 2018) (PTAB Apr. 2, 2018) ................................. 6, 10

Syncro Soft Srl v. Altova GmbH, IPR2018-00660, Paper 6 at 9-10


(PTAB Sept. 5, 2018) ......................................................................................... 10
Temporal Power, Ltd. v. Beacon Power, LLC, IPR2015-00146, Paper
12 at 4 (PTAB June 10, 2015) .............................................................................. 4

TriVascular, Inc. v. Samuels, 812 F.3d 1056, 1068 (Fed. Cir. 2016) ............. 5-6, 13

TRW Automotive US LLC v. Magna Elecs. Inc., IPR2015-00960, Paper


9 at 17-19 (PTAB Oct. 5, 2015) ...................................................................... 7, 9

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TABLE OF AUTHORITIES (Cont’d)

Page(s)

Other Materials

Message from Chief Judge James Donald Smith, Board of Patent


Appeals and Interferences: USPTO Discusses Key Aspects of New
Administrative Patent Trials, April 4, 2012 (available at
https://www.uspto.gov/patent/laws-and-regulations/america-
invents-act-aia/message-chief-judge-james-donald-smith-
board#heading-1) ................................................................................................. 3

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I. INTEREST OF AMICUS CURIAE


Under the Director’s Order dated April 3, 2019 in IPR2018-01039, Paper 15

(“Order”), Unified Patents Inc. (“Unified”) respectfully submits this amicus curiae

brief in support of neither party.

Unified was founded by intellectual property professionals over concerns with

the increasing risk of entities asserting poor-quality patents against strategic

technologies and industries. Unified protects technology sectors by deterring the

assertion of invalid patents. Unified also seeks to encourage the speedy adoption of

standards-based technologies by analyzing and providing data related to standard-

essential patents. Companies subscribe by technology sector to Unified’s

technology-specific deterrence.

As part of its mission, Unified solely and independently determines which

patents it believes to be unpatentable, and independently and solely directs, controls,

and funds its participation in inter partes review (IPR) proceedings. To date, Unified

has filed over 155 IPR petitions. Unified has an interest in the proper functioning of

the patent system and the efficiency of IPR proceedings.

II. ISSUE PRESENTED


What is required for a petitioner to establish that an asserted reference

qualifies as a “printed publication” at the institution stage?

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IPR2018-01039
III. ARGUMENT
At the institution stage, as with any other factual issue, an IPR petitioner

should have to present some evidence that establishes a reasonable likelihood that at

least one of the challenged claims is unpatentable, including evidence showing that

an asserted reference is a printed publication. That requires a petitioner simply

meeting its burden of production prior to institution. Any factual dispute or doubt

over whether an asserted reference is a printed publication should be resolved in an

instituted trial during which a full evidentiary record can be developed.

A. The Only Statutory Institution Standard, the “Reasonable


Likelihood” of Prevailing Standard, Should Apply at the Institution
Stage for Qualification of an Asserted Reference as a Printed
Publication
An IPR may not be instituted unless “the information presented in the

petition” shows “there is a reasonable likelihood that the petitioner would prevail

with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a);

see also 37 C.F.R. § 42.108(c). This “reasonable likelihood” standard applies to all

issues considered at the institution stage, including whether an asserted reference in

an IPR petition will ultimately qualify as a printed publication. The “reasonable

likelihood” standard has been generally interpreted to mean there is a “50/50 chance”

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that the petitioner will prevail in its challenge.1 The legislative history of the

America Invents Act (“AIA”) indicates that the statutory “reasonable likelihood”

standard was intended to “require[] the petitioner to present a prima facie case,” akin

to a District Court’s determination of “whether a party is entitled to a preliminary

injunction.” 157 Cong. Rec. S1375 (daily ed. Mar. 8, 2011) (statement of Sen. Kyl).

“Public accessibility” is the touchstone in determining whether a reference is

a “printed publication.” See In re Hall, 781 F.2d 897, 898-99 (Fed. Cir. 1986). As

explained by the Federal Circuit, “[a] reference will be considered publicly

accessible if it was disseminated or otherwise made available to the extent that

persons interested and ordinarily skilled in the subject matter or art exercising

reasonable diligence, can locate it.” GoPro, Inc. v. Contour IP Holding LLC, 908

F.3d 690, 693 (Fed. Cir. 2018) (citations and internal quotation marks omitted).

These are factual disputes appropriate for trial.

1
Message from Chief Judge James Donald Smith, Board of Patent Appeals and

Interferences: USPTO Discusses Key Aspects of New Administrative Patent Trials,

April 4, 2012 (available at https://www.uspto.gov/patent/laws-and-

regulations/america-invents-act-aia/message-chief-judge-james-donald-smith-

board#heading-1) (last visited May 1, 2019).

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Prior to institution, a petitioner is required by 35 U.S.C. § 314(a) to carry its

burden of production; it must present some evidence in its petition sufficient to

provide a threshold showing that there is a reasonable likelihood that an asserted

reference was publicly accessible prior to the challenged patent. See, e.g., Temporal

Power, Ltd. v. Beacon Power, LLC, IPR2015-00146, Paper 12 at 4 (PTAB June 10,

2015) (noting that Ҥ 314(a) imposes a burden on [the petitioner] to establish in its

Petition a reasonable likelihood of success, which includes, among other things,

making a threshold showing that [the asserted reference] is a printed publication

within the meaning of § 102(b)”); Instradent USA, Inc. v. Nobel Biocare Servs. AG,

IPR2015-01786, Paper 14 at 14 (PTAB Feb. 19, 2016) (noting that “the ‘reasonable

likelihood’ standard for institution of an [IPR]…require[s] a ‘threshold showing’ of

public accessibility of prior art references”).

B. The “Threshold Showing” Requirement for Printed Publication


Qualification Cannot Exceed the Reasonable Likelihood Standard
to Institute Trial
Neither the AIA nor the Office’s regulations (37 C.F.R. part 42) require

definitive proof that an asserted reference qualifies as a printed publication at the

institution stage. See 35 U.S.C. § 314(a); 37 C.F.R. § 42.108(c). Rather, consistent

with the plain meaning of § 314(a) and the AIA’s legislative history, a sufficient

threshold showing can be made by providing evidence of a prima facie case that a

prior art reference was publicly accessible. See 157 Cong. Rec. S1375 (daily ed.

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Mar. 8, 2011). Any requirement beyond this would heighten the standard for

institution, contradicting the statute and the Office’s own regulations. See 35 U.S.C.

§ 314(a); 47 C.F.R. § 42.108(c).2 Any such heightened requirement is improper.

While the Board’s institution decision based on its application of the

“reasonable likelihood” standard under 35 U.S.C. § 314(a) is final and non-

appealable under 35 U.S.C. § 314(d), the Supreme Court has warned that the statute

does not “enable the agency to act outside its statutory limits.” Cuozzo Speed Techs.,

LLC v. Lee, 136 S. Ct. 2131, 2141 (2016).

The Federal Circuit has clarified that the reasonable likelihood standard for

institution (see 35 U.S.C. § 314(a)) is lower than the standard required to prove

unpatentability at the conclusion of an instituted trial, by design (see 35 U.S.C.

§ 316(e)). As explained by the Federal Circuit, “there is a significant difference

between a petitioner’s burden to establish a ‘reasonable likelihood of success’ at

institution, and actually proving invalidity by a preponderance of the evidence at

2
This reasoning applies equally to post-grant reviews (“PGRs”) and covered

business method reviews (“CBMs”), except that the threshold showing required for

qualification of an asserted reference as a printed publication in PGRs and CBMs

should not exceed the “more likely than not” standard applicable at the institution

stage in PGRs and CBMs. See 35 U.S.C. § 324(a); 37 C.F.R. § 42.208(c).

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trial.” TriVascular, Inc. v. Samuels, 812 F.3d 1056, 1068 (Fed. Cir. 2016); see also

Shenzhen Zhiyi Tech. Co. v. iRobot Corp., IPR2017-02137, Paper 9 at 21 (PTAB

Apr. 2, 2018) (“We note our determination regarding the sufficiency of Petitioner’s

evidence is for purposes of this [Institution] Decision only and does not signify that

Petitioner’s evidence [on the public accessibility of a reference] would be adequate

under the preponderance standard applicable at the Final Written Decision stage with

a full record.” (citing 35 U.S.C. § 316(e) and TriVascular)).

1. The Preponderance of The Evidence Standard for Proving Public


Accessibility of a Reference Applies After Institution of Trial

In an instituted IPR, “the petitioner bears the burden of establishing by a

preponderance of the evidence that a particular document is a printed publication.”

Nobel Biocare Servs. AG v. Instradent USA, Inc., 903 F.3d 1365, 1375 (Fed. Cir.

2018) (citing Medtronic, Inc. v. Barry, 891 F.3d 1368, 1380 (Fed. Cir. 2018)).

However, a petitioner needs to meet this burden of persuasion during inter partes

review, not at the institution stage. See 35 U.S.C. § 316(e) (“In an inter partes review

instituted under this chapter, the petitioner shall have the burden of proving a

proposition of unpatentaibility by a preponderance of the evidence.”) (emphasis

added). After institution of trial, a petitioner may have to present additional evidence

to establish the printed publication status of an asserted reference, as they would

with any disputed factual issue. But at the institution stage, a petitioner should not

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be required to produce more than a threshold showing that an asserted reference

qualifies as a printed publication. See 35 U.S.C. § 314(a).

2. The Board Should Not Require Definitive Proof of Printed


Publication Qualification at the Institution Phase

Requiring definitive proof of public accessibility at the institution stage

creates an unintended obstacle for parties on the qualification of a printed publication

before institution. This is contrary to the “reasonable likelihood” standard of 35

U.S.C. § 314(a). It has led to perverse results—where the petitions relying on widely

disseminated textbooks or IEEE publications, for example—have been denied based

on an overly exacting pre-institution standard. See, e.g., Hulu, LLC v. Sound View

Innovations, LLC, IPR2018-01039, Paper 12 at 9-12 (PTAB Dec. 3, 2018) (finding

that an asserted textbook reference was not shown to be a printed publication despite

record evidence indicating the textbook’s copyright date and the textbook publisher

as the copyright owner); TRW Automotive US LLC v. Magna Elecs. Inc., IPR2015-

00960, Paper 9 at 17-19 (PTAB Oct. 5, 2015) (finding that an IEEE publication

having a copyright notice of “© 2004 IEEE” was not shown to be a printed

publication).3 Congress did not intend, and the Board should not require, definitive

proof that an asserted reference qualifies as a printed publication at institution.

3
Contrast TRW Automotive with Ericsson, Inc. v. Intellectual Ventures I LLC,

IPR2014-00527, Paper 41 at 11 (PTAB May 18, 2015) (“IEEE is a well-known,

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C. Petitioner Only Needs to Provide Evidence Sufficient to Make a
Threshold Showing for Printed Publication Qualification at the
Institution Stage
To meet the “reasonable likelihood” threshold for institution, a petitioner has

the initial burden of production of some evidence in its petition that an asserted

reference qualifies as a printed publication. See Dynamic Drinkware, LLC v. Nat’l

Graphics, Inc., 800 F.3d 1375, 1379 (Fed. Cir. 2015) (holding that a petitioner has

the initial burden of going forward with evidence that an asserted reference is prior

art against the challenged patent). Anything higher risks wildly divergent panel-

specific results. In some decisions, for example, a copyright notice by itself has been

held to be prima facie evidence of a printed publication sufficient to meet the

“reasonable likelihood” threshold for institution. See, e.g., Arista Networks, Inc. v.

Cisco Sys. Inc., IPR2016-00244, Paper 10 at 19 (PTAB May 25, 2016) (“We note .

. . that when determining the threshold issue of whether a reference is a printed

publication for purposes of a decision on institution, a copyright notice has been

accepted as prima facie evidence of publication. . . . Thus, on this record and for

reputable compiler and publisher of scientific and technical publications, and we

take Official Notice that members in the scientific and technical communities who

both publish and engage in research rely on the information published on the

copyright line of IEEE publications.”).

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purposes of this decision, we are persuaded that the presence of a copyright notice,

given the circumstances of this case, is sufficient evidence of public accessibility as

of the critical date to meet the ‘reasonable likelihood’ threshold for institution.”);

FLIR Sys., Inc. v. Leak Surveys, Inc., IPR2014-00411, Paper 9 at 19 (PTAB Sept. 5,

2014) (“On the record before us, we are persuaded that the Copyright notice prima

facie establishes a prior art date of 2002.”). In others, that same notice was deemed

insufficient. See, e.g., TRW Automotive US LLC v. Magna Elecs. Inc., IPR2015-

00960, Paper 9 at 17-19 (PTAB Oct. 5, 2015) (finding that a copyright notice of “©

2004 IEEE” was insufficient to show that an asserted reference qualified as a printed

publication because “[t]he purpose of a copyright notice is, simply, to put a reader

on notice that a claim has been made that the work is copyrighted”).

To make this threshold showing, and out of an abundance of caution due to

the uncertainty caused by conflicting panel determinations, petitioners have begun

routinely providing expensive corroborating declaration evidence to establish that

an asserted reference qualifies as a printed publication, depending on the nature of

the reference and how it became publicly accessible. For example, when an asserted

reference is a textbook, a copyright notice combined with corroborating evidence

that the asserted reference is a standard textbook has been held to be sufficient

evidence of public accessibility to meet the “reasonable likelihood” threshold for

institution. See, e.g., Rayvio Corp. v. Nitride Semiconductors Co., IPR2018-01141,

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Paper 14 at 26-27 (PTAB Dec. 4, 2018) (determining at institution that a reference

is a prior art printed publication based on the copyright notice, other information

from the copyright page, and declaration testimony it is a standard textbook).4 In

another example, when an asserted reference is a sales catalog, corroborating

evidence in declaration testimony from an employee who distributed the sales

catalogs at trade shows prior to the critical date was held to provide a threshold

showing that the sales catalog is a prior art printed publication. See GoPro, Inc. v.

Contour IP Holding LLC, 908 F.3d 690, 692 (Fed. Cir. 2018) (discussing that

institution decision by the Board).

4
See also CIM Maint. Inc. v. P&RO Sols. Grp., Inc., IPR2017-00516, Paper 8 at 19

(PTAB June 22, 2017) (determining that a copyright date in conjunction with an

ISBN bar code on a book published by a commercial publisher showed public

accessibility as of the reference’s copyright date); Shenzhen Zhiyi Tech. Co. Ltd. v.

iRobot Corp., IPR2017-02137, Paper 9 at 20-21 (PTAB Apr. 2, 2018) (determining

that an article published in the New York Times was sufficient to make a threshold

showing of public accessibility); Syncro Soft Srl v. Altova GmbH, IPR2018-00660,

Paper 6 at 9-10 (PTAB Sept. 5, 2018) (determining that the copyright date of

publication obtained by the declarant before the filing date of the challenged patent

is sufficient evidence of public accessibility at the institution stage).

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Much of this is unnecessary, though, and has resulted in much legal waste on

all sides due to procedural creep, where individual panels have denied institution

where others might have instituted, or patent owners have taken additional

depositions and had to sift through excessive evidence on an issue not in dispute.

If a petitioner satisfies its initial burden of production, the burden then shifts

to the patent owner to produce evidence or otherwise show that the asserted reference

is not a printed publication. See generally Dynamic Drinkware, 800 F.3d at 1379-

80 (“[T]he burden of production, or the burden of going forward with evidence, is a

shifting burden, the allocation of which depends on where in the process of trial the

issue arises.”) (citation and internal quotation marks omitted). If a patent owner

produces sufficient rebuttal evidence or argument5 to suggest that the asserted

reference is not a printed publication in a preliminary response to petition, the burden

of production shifts back to the petitioner. See generally Dynamic Drinkware, 800

F.3d at 1379-80.

Then, a genuine issue of material fact related to the printed publication

qualification of an asserted reference has been created prior to institution. Such

disputed issues of fact are appropriate for instituted proceedings, not institution

5
Attorney argument in a preliminary response should not be given greater weight

than documentary and/or testimonial evidence presented in a petition.

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decisions. Instituting trials to address those disputes where the merits of the grounds

are otherwise met would “secure the just, speedy, and inexpensive resolution.” 37

C.F.R. § 42.1(b). AIA trials provide a timely, cost-effective alternative to litigating

the validity of patents in district court. 77 Fed. Reg. at 48,680 (Aug. 14, 2012).

Denying institution over a material factual dispute frustrates the purpose and intent

of AIA trials, increases costs for parties who cannot appeal them, and then must

return to litigate the validity of patents in district court, if they can still afford to.

As long as a basic burden of production has been met by either side on the

printed publication qualification, the statutory “reasonable likelihood” institution

standard should apply to all issues at the institution stage, even in the presence of

factual disputes by the parties on the issue. Applying any other standard risks

contradicting the plain language of § 314(a).

The Board should permit the parties to develop the evidentiary record in an

instituted proceeding, rather than deny institution without the benefit of a full record

that could be developed during trial. See Genzyme Therapeutic Prods. Ltd. P’ship

v. Biomarin Pharm. Inc., 825 F.3d 1360, 1367 (Fed. Cir. 2016) (explaining that

“[t]he purpose of the trial in an inter partes review proceeding is to give the parties

an opportunity to build a record by introducing evidence—not simply to weigh

evidence of which the Board is already aware”).

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D. The Board Should Permit New Evidence on Printed Publication
Qualification After Petitioner Meets the Institution Threshold
If a petitioner meets its threshold burden at the institution stage of showing a

reasonable likelihood of unpatentability, the Board should permit the parties to

address the sufficiency of the evidence during an instituted trial, including permitting

the parties to submit additional evidence in support or opposition of the asserted

reference as a printed publication. Indeed, many panels have adopted that approach.

See Genzyme, 825 F.3d at 1366-67. The Board can then determine on a full

administrative record whether the petitioner has shown, by a preponderance of the

evidence presented during the proceeding, that an asserted reference qualifies as a

printed publication. See 35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d).

If the Board institutes trial based on a preliminary finding that an asserted

reference qualifies as a printed publication, the Board is not bound by that

determination—or any of their findings—after development of evidence during the

ensuing trial. See TriVascular, 812 F.3d at 1068 (“the Board is not bound by any

findings made in its Institution Decision. . . . . The Board is free to change its view

of the merits after further development of the record, and should do so if convinced

its initial inclinations were wrong.”). For example, in Nautilus, Inc. v. Icon Health

& Fitness Inc., the Board held that the petitioner did not demonstrate that an asserted

reference qualified as a printed publication, after preliminarily determining in the

institution decision that the petitioner had made a sufficient threshold showing of

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public accessibility of that reference. IPR2017-01363, Paper 33 at 10-20 (PTAB

Nov. 28, 2018). That is the just result based on a full evidentiary record.

If there is a factual dispute over the public accessibility of an asserted

reference, the parties should be able to present evidence and arguments during the

proceeding. The Federal Circuit has explained that “the introduction of new

evidence in the course of the trial is to be expected in inter partes review and, as

long as the opposing party is given notice of the evidence and an opportunity to

respond to it, the introduction of such evidence is perfectly permissible under the

[Administrative Procedure Act].” Genyzme, 825 F.3d at 1366 (emphases added);

see also Anacor Pharm., Inc. v. Iancu, 889 F.3d 1372, 1380 (Fed. Cir. 2018) (noting

there is “no blanket prohibition against the introduction of new evidence during an

inter partes review proceeding”). A patent owner can present evidence and

arguments in its patent owner response. See 35 U.S.C. § 316(a)(8); 37 C.F.R. §

42.120. A petitioner may address any issue discussed in an institution decision,

among other things, in a reply. See Trial Practice Guide Update at 14 (Aug. 2018);

37 C.F.R. § 42.23(b). And a patent owner may file a sur-reply to address any

evidence or arguments in the petitioner’s reply about the printed publication

qualification of an asserted reference. See Trial Practice Guide Update at 14-15

(Aug. 2018). After institution, the parties should be given the opportunity to develop

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the record, and each party has sufficient notice of any new evidence and an

opportunity to respond to it during the trial. See Genzyme, 825 F.3d at 1366.

The Office’s trial rules also provide opportunities for a petitioner to introduce

additional evidence. For instance, a petitioner may request a motion to submit

supplemental information under 37 C.F.R. § 42.123. The Board has permitted

petitioners to submit supplemental information to confirm the public availability of

an asserted reference. See, e.g., Mylan Pharm. Inc. v. Bristol-Myers Squibb Co.,

IPR2018-00892, Paper 37 at 4-6 (PTAB Dec. 14, 2018) (granting a petitioner’s

motion to submit supplemental information confirming that an asserted textbook

reference is a printed publication).

IV. CONCLUSION
Under the plain language of the statute, a petitioner at institution need only

present some evidence sufficient to show that there is a reasonable likelihood that

an asserted reference qualifies as a printed publication.

Respectfully submitted,
Dated: May 1, 2019 /Jonathan R. Bowser/
Jonathan R. Bowser (Reg. No. 54,574)
Jonathan Stroud (Reg. No. 72,518)
Jung S. Hahm (Reg. No. 48,333)
Robert Jain
UNIFIED PATENTS INC.
Email: jbowser@unifiedpatents.com

ATTORNEYS FOR AMICUS CURIAE


UNIFIED PATENTS INC.

15
Brief of Amicus Curiae Unified Patents Inc.
IPR2018-01039
CERTIFICATE OF SERVICE

Pursuant to 37 C.F.R. § 42.6(e), the undersigned hereby certifies that on

May 1, 2019, a complete and entire copy of the foregoing Brief of Amicus Curiae

Unified Patents Inc. in Support of Neither Party was provided via email to the

Parties by serving the email correspondence addresses of record as follows:

Petitioner:

David L. Cavanaugh (david.cavanaugh@wilmerhale.com)


Scott Bertulli (scott.bertulli@wilmerhale.com)
Evelyn C. Mak (evelyn.mak@wilmerhale.com)

Patent Owner:

SVI_IPRs@lowensteinweatherwax.com
Kenneth J. Weatherwax (weatherwax@lowensteinweatherwax.com)
Edward Hsieh (hsieh@lowensteinweatherwax.com)
Parham Hendifar (hendifar@lowensteinweatherwax.com)
Nathan Lowenstein (lowenstein@lowensteinweatherwax.com)

Dated: May 1, 2019 /Jonathan R. Bowser/


Jonathan R. Bowser (Reg. No. 54,574)
UNIFIED PATENTS INC.
1875 Connecticut Ave. NW, Floor 10
Washington, D.C. 20009
Telephone: 202-701-1015
Email: jbowser@unifiedpatents.com