Proving Up

Printed Publication Status

in a Pandemic
 Speakers

Jung Hahm Raghav Bajaj Jason Skinder

Sr. Patent Counsel – Unified Patents Partner – Haynes and Boone Chief IP Counsel, Connected Enterprise –
Honeywell

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 Outline

Background
Establishing Printed Publication Status
Considerations at Institution
Hulu v. Soundview Precedential Opinion Panel Decision
Pandemic-Related Considerations
PTAB’s Notice of Proposed Rulemaking

General Strategies

Q&A
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 Statutory Provisions

35 U.S.C. § 311(b). Inter partes review

▪ (b) Scope.-A petitioner in an inter partes review may request to cancel as

unpatentable 1 or more claims of a patent only on a ground that could
be raised under section 102 or 103 and only on the basis of prior art
consisting of patents or printed publications.

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 Statutory Provisions

35 U.S.C. § 314. Institution of inter partes review

▪ (a) Threshold.-The Director may not authorize an inter partes review to

be instituted unless the Director determines that the information
presented in the petition filed under section 311 and any response filed
under section 313 shows that there is a reasonable likelihood that the
petitioner would prevail with respect to at least 1 of the claims
challenged in the petition.

See also § 324 (institution threshold for PGR)

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 Selected Background Precedent

In re Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004)

▪ The determination of whether a reference is a "printed publication"

under 35 U.S.C. § 102(b) involves a case-by-case inquiry into the facts
and circumstances surrounding the reference's disclosure to members of
the public.

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 Selected Background Precedent

In re Hall, 781 F.2d 897, 898-899 (Fed. Cir. 1986)

▪ Because there are many ways in which a reference may be disseminated

to the interested public, "public accessibility" has been called the
touchstone in determining whether a reference constitutes a "printed
publication" bar under 35 U.S.C. § 102(b).

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Hulu v. Soundview Innovations
(Precedential Opinion)
 Hulu v. Soundview Innovations (IPR2018-01039)

• Petitioner relied on a textbook

bearing a copyright notice.
• Also submitted a university librarian’s
affidavit to support the public availability
of the reference before the critical date.
• In its preliminary response, patent
owner argued that the petitioner
failed to make a threshold showing
of the public availability.
• Patent owner did not submit any
supporting evidence.

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 Hulu v. Soundview Innovations (IPR2018-01039)
• The original PTAB panel held that the petitioner had not
presented sufficient evidence to show a reasonable likelihood
that the textbook qualified as a prior art printed publication
and denied institution.
• “Specifically, the record indicates only that [the reference] is a book
having a copyright date of 1990 and that the copyright owner is
O’Reilly & Associates, Inc….” (emphasis added).
• Petitioner requested rehearing of the institution decision and
Precedential Opinion Panel review on the following issue:
• “Whether a well-known publisher’s copyright notice is sufficient
evidence of the date of a publication’s public availability for purposes
of institution of inter partes review, where the patent owner does not
submit any evidence to the contrary.”

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 Hulu v. Soundview Innovations – POP Review

• Issue: what is required for a petitioner to establish that an

asserted reference qualifies as a "printed publication" at the
institution stage.
• Holding: at the institution stage, the petition must identify,
with particularity, evidence sufficient to establish a
reasonable likelihood that the reference was publicly
accessible before the critical date of the challenged patent
and therefore that there is a reasonable likelihood that it
qualifies as a printed publication.

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 Hulu v. Soundview Innovations Takeaways

• Standard at institution
• Higher than mere notice pleading, but lower than “preponderance”
standard at final written decision
• Limited opportunity to submit evidence post-petition
• Reply to POPR
• Reply to POR
• Motion to file supplemental information (37 CFR 42.123)
• No presumption in favor of finding that a reference is a
“printed publication”
• Role of indicia on the face of a reference

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 Hulu v. Soundview Innovations Takeaways

• Petitioner’s limited opportunities to submit evidence

after Petition:
• Reply to patent owner preliminary response
• May not be authorized.
• May not permit evidence.
• Must be responsive to prior briefing.
• Reply to patent owner response
• Must be responsive to prior briefing.
• Motion to file supplemental information (37 CFR 42.123)
• Must request authorization within 1 month of institution and establish
good cause (42.123(a)) OR
• Must request authorization more than 1 month after institution and
establish that information reasonably could not have been obtained earlier
and consideration would be in the interests-of-justice

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 Hulu v. Soundview Innovations Takeaways

• Indicia on the face of a reference

• No per se rules as to any particular indicia
• Considered as part of the totality of the evidence
• Decision compares facts of previous cases to demonstrate
examples of what may or may not pass the institution threshold
• Pass example: asserted reference was a thesis; public accessibility was
supported by thesis advisor’s declaration and evidence of indexing
• Fail example: asserted reference was a conference paper; public
accessibility was supported by copyright year and month/year of paper on
its cover

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 Selected Cases Citing Hulu

• IPR2019-00334 (final written decision)

• Cited for the proposition that Petitioner can supplement record of public
accessibility in Reply if challenged in Patent Owner Response.
• IPR2019-00343 (final written decision)
• Cited for the proposition that copyright notice provides some evidence of
public accessibility, but is not itself sufficient.
• IPR2019-01199 (institution decision)
• Instituting where petitioner cited a thesis and included a library record, as well
as a second thesis citing it and the second thesis’s library record.
• IPR2019-01234 (institution decision)
• Instituting where testimony of technical expert witness was used to provide
evidentiary support of publication.
• PGR2019-00003 (final written decision)
• Instituting and finding that indicia pertaining to publication on the face of
references was sufficient to establish printed publication status

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 Selected Cases Citing Hulu

• PGR2018-00092 (final written decision)

• Noting the evidentiary support provided by Petitioner as compared to the lack
of evidence and bare attorney argument supporting Patent Owner’s position.
• PGR2018-00062 (rehearing decision after final written decision)
• Finding as a “compelling additional factor” fact that Patent Owner cited
disputed reference during prosecution with a publication date consistent with
the date printed on the face of the disputed reference.
• IPR2020-00031 (institution decision)
• Testimony in support of contention that video was a printed publication did not
identify “with particularity” sufficient facts to establish public accessibility.
• IPR2019-01659 (institution decision)
• Year notation in header with conventional journal reference “strongly
evidence[d]” publication as of that year or reasonably soon thereafter.
• IPR2019-01526 (institution decision)
• Declining to decide at institution stage whether Petitioner’s evidence in support
of printed publication was hearsay (but see IPR2019-01425).
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Pandemic-Related
Considerations
 Pandemic-Related Strategies

• Rely on digitally-available resources to the extent possible.

• Document difficulties in obtaining evidence (e.g., statements from
librarian expert, letters or screenshots indicating that a library is
closed).
– As of this webinar, the Library of Congress is closed to the public until further
notice.
– Other frequently-used libraries are similarly unavailable (e.g., Linda Hall Library)
• Explicitly preserve rights to supplement.
• Docket reminders to request authorization to file motions for
supplemental information.

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 Pandemic-Related Strategies

• Cite as much indicia and circumstantial evidence of public

accessibility as possible in Petition
– Citations in IDS
– Citations in other published articles
– Archived web pages
• Consider alternate (or additional) proof of public accessibility
– Testimony from technical expert witness of a journal’s prominence
– Copyright registration records of publication dates
• These will help at institution, and may prove instrumental at final
written decision

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 PTAB’s Notice of
Proposed Rulemaking
 PTAB Proposed Change to Rules on
Patent Owner Preliminary Proceeding Testimonial Evidence

• “[T]he Office proposes to amend the rules [42.108(c), 42.208(c)] to

eliminate the presumption in favor of the petitioner for a genuine issue of
material fact created by testimonial evidence submitted with a patent
owner’s preliminary response when deciding whether to institute an IPR,
PGR, or CBM review.”
85 Fed. Reg. 31728, 31729 (May 27, 2020).
• “[T]he Office requests input from the public on the proposed rule changes
… and on how the Office should implement the changes if adopted. For
example, as to the implementation, the Office may apply any rule changes,
if adopted, to all pending IPR, PGR, and CBM proceedings in which a
patent owner’s preliminary response is filed on or after the effective date.”
85 Fed. Reg. at 31730.

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 Evolution of Rules on Patent Owner Preliminary Proceeding
Testimonial Evidence

• OLD RULE: 42.107(c) No new testimonial evidence. The preliminary response shall not present
new testimony evidence beyond that already of record, except as authorized by the Board.
77 Fed. Reg. 48680, 48728 (Aug. 14, 2012).
• CURRENT RULE: 42.107(c) [Reserved]
42.108(c) … The Board’s decision will take into account a patent owner preliminary response
where such a response is filed, including any testimonial evidence, but a genuine issue of material
fact created by such testimonial evidence will be viewed in the light most favorable to the
petitioner solely for purposes of deciding whether to institute an inter partes review. A petitioner
may seek leave to file a reply to the preliminary response in accordance with 42.23 and 42.24(c).
Any such request must make a showing of good cause.
81 Fed. Reg. 18750, 18766 (Apr. 1, 2016) (underlining added).
• PROPOSED NEW RULE: 42.108(c) … The Board’s decision will take into account a patent owner
preliminary response where such a response is filed, including any testimonial evidence. A
petitioner may seek leave to file a reply to the preliminary response in accordance with 42.23 and
42.24(c). Any such request must make a showing of good cause.
85 Fed. Reg. 31728, 31732 (May 27, 2020).

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 PTAB Rationales for the Proposed Rule Change
• “For example, certain stakeholders have indicated that the presumption in
favor of the petitioner for genuine issues of material fact created by patent
owner testimonial evidence also creates a presumption in favor of the
petitioner for questions relating to whether a document is a printed
publication.”
• “Additionally, the Office has concerns that the presumption in favor of the
petitioner may be viewed as discouraging patent owners from filing
testimonial evidence with their preliminary responses, as some patent
owners believe that such testimony will not be given any weight at the time
of institution.”

85 Fed. Reg. at 31729-30.

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 PTAB Prior Statements Regarding Patent Owner Preliminary
Proceeding Testimonial Evidence

• “Because the time frame for the preliminary phase of an AIA proceeding does not
allow generally for cross-examination of a declarant before institution as of right, nor
for the petitioner to file a reply brief as of right, the Office is amending the rules to
provide [for the presumption in favor of the petitioner].” 81 Fed. Reg. at 18755.
• “The Office understands the concern that a petition should not be denied based on
testimony that supports a finding of fact in favor of the patent owner when the
petitioner has not had an opportunity to cross-examine the declarant.” 81 Fed. Reg.
at 18756.
• “If a trial is instituted, a patent owner may choose not to rely on testimony submitted
with the preliminary response … by affirmatively withdrawing the testimony in the
patent owner response. If a patent owner withdraws a declaration submitted with its
preliminary response, that declarant will usually not be subject to deposition on the
withdrawn declaration.” Nov. 2019 PTAB Consolidated Trial Practice Guide at 51.

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Public Comments on PTAB’s Proposed Rulemaking

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General Strategy
Considerations
 Know the Important Caselaw (IPR/CBM Appeals)

• Samsung Elecs. Co., Ltd. v. Infobridge Pte., Ltd., 929 F.3d 1363
(Fed. Cir. 2019) – standards-related documents
• Acceleration Bay, LLC v. Activision Blizzard Inc., 908 F.3d 765 (Fed.
Cir. 2018) – university technical report posted to Internet
• Nobel Biocare Servs. AG v. Instradent USA, Inc., 903 F.3d 1365
(Fed. Cir. 2018) – catalog distributed at tradeshow
• GoPro Inc. v. Contour IP Holding LLC, 898 F.3d 1170 (Fed. Cir.
2018) – catalog distributed at tradeshow
• Jazz Pharm., Inc. v. Amneal Pharm., LLC, 895 F.3d 1347 (Fed. Cir.
2018) – materials associated with FDA advisory committee meeting
• Blue Calypso, LLC v. Groupon, Inc., 815 F.3d 1331 (Fed. Cir. 2016)
– report available on the Internet
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 Know the Important Caselaw (Other Fed. Cir. Cases)

• In re Enhanced Security Research, LLC, 739 F.3d 1347 (Fed. Cir.

2014) – manual associated with a software product
• Voter Verified, Inc. v. Premier Election Solutions, 698 F. 3d
1374 (Fed. Cir. 2012) – article posted to Internet
• In re Lister, 583 F.3d 1307 (Fed. Cir. 2009) – manuscript in
Copyright Office records
• SRI Intern., Inc. v. Internet Sec. Systems, Inc., 511 F.3d 1186 (Fed.
Cir. 2008) – document uploaded to FTP server
• Kyocera Wireless Corp. v. Int’l Trade Comm’n, 545 F.3d 1340 (Fed.
Cir. 2008) – standards documents
• In re Hall, 781 F.2d 897 (Fed. Cir. 1986) – thesis in a library

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 Consider the Type of Reference

• The inquiry is case by case into the facts and circumstances

surrounding the reference’s disclosure to members of the public
• Some documents are easier to show public accessibility than
others.
– Books or well-known journals: indicia of publication may be enough
– Brochures or product manuals: need more than indicia, like a declaration from
somebody who received the document
– Theses or monographs: generally need indicia plus a librarian declaration
– Websites: Internet Archive affidavit, standing alone, may not be enough

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 Belt + Suspenders + Elastic

• Relying on one declaration or one piece of evidence is a strategy

fraught with risk.
• Build the record with circumstantial and alternate evidence to
support the ultimate conclusion even if a witness falters at
deposition or a document gets excluded.
• If publication is likely to be an issue at trial, be sure to have a
witness that’s willing to get deposed.
• Use every opportunity to develop the record, and have a plan to do
so (e.g., if you get instituted, start collecting your supplemental
information even before you request authorization to file a motion).
• Consider your word count: 5600 words goes fast!

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Questions?