Printed Publications: Simply Existing Isn't Enough

• Published date: 11 August 2021
• Subject Matter: Intellectual Property, Media, Telecoms, IT, Entertainment, IT and Internet, Patent
• Law Firm: Jones Day
• Author: Mr Matthew Johnson and Nick J. Bagnolo

When filing an IPR, petitioners should be careful not to take for granted one of the most fundamental aspects of challenging validity in this forum: Whether or not the relied upon references qualify as prior art. Pursuant to 35 U.S.C. ' 311, IPRs challenging patentability under either ' 102 or 103 can only be based upon "prior art consisting of patents or printed publications." When petitioners rely on patents, establishing such references as prior art is straightforward. When petitioners rely on printed publications, however, the Board must determine, at the institution stage, whether there is a "reasonable likelihood" that the alleged prior art reference(s) put forward by petitioners actually qualify as prior art. Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential) ("[A]t 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.").

Applying Federal Circuit law to determine whether the reference qualifies as a printed publication, the Board looks to "the underlying facts to make a legal determination." Suffolk Techs., LLC v. AOL Inc., 752 F.3d 1358, 1364 (Fed. Cir. 2014). When conducting this factual inquiry, there is no requirement to show actual viewership by the public. Jazz Pharms., Inc. v. Amneal Pharm., LLC, 895 F.3d 1347, 1356 (Fed. Cir. 2018). Rather, the touchstone of this factual inquiry requires that a petitioner demonstrate the reference was "publicly accessible" such that one having ordinary skill in the art interested in the subject matter could locate the reference upon "exercising reasonable diligence." SRI Int'l, Inc. v. Internet Sec. Sys., Inc., 511 F.3d 1374, 1378 (Fed. Cir. 2006).

In a recent decision denying institution, the Board found that the petitioner failed to demonstrate a reasonable likelihood that the primary reference was publicly accessible. In Topcon Medical Sys., Inc. et al v. Car Zeiss Meditec, Inc., IPR2021-00452, Paper 14 (PTAB July 21, 2021), petitioner challenged the validity of U.S. Patent No. 9,968,251 ("the '251 patent"), which is directed to "displaying combined [ophthalmologic] structural and functional progression information to a user." Topcon Medical, Paper 14 at 3. Each of petitioner's validity...