PTAB Precedential Opinion Panel Clarifies the Standard for Establishing a Reference as a Printed Publication at Institution

In a recent precedential decision, Hulu, LLC v. Sound View Innovations, LLC[1], the Patent Trial and Appeal Board’s Precedential Opinion Panel (POP) clarified the standard for establishing a reference as a “printed publication” at the time of institution of an inter partes review. The POP held that at the institution, a petitioner must establish a reasonable likelihood that a reference is a printed publication.[2]

The POP, applying the statutory “reasonable likelihood” standard for institution under 35 U.S.C. § 314(a), held that at the institution stage, the petition must identify, with particularity, evidence sufficient to establish a reasonable likelihood that a reference was publicly accessible before the critical date to qualify as a printed publication.[3] The POP emphasized that this standard is higher than a typical notice pleading standard but lower than the preponderance of the evidence standard required to prevail in a final written decision.[4] Although the POP stated that the reasonable likelihood and preponderance of the evidence standards are “qualitatively different,” it did not articulate the precise scope of that difference.[5] Thus, if an IPR is instituted, the petitioner must ultimately prove that the reference is a printed publication by a preponderance of the evidence to prevail in a final written decision.[6] The POP also rejected any presumption in favor of institution or in favor of finding a reference to be a printed publication under 37 C.F.R. § 42.108(c) or any other authority at the institution stage.[7]

Adopting a flexible approach, the POP stated that the accessibility indicia (e.g., conventional markers of publication, such as a copyright date, edition identifies, publication by a commercial publisher, publication date, and the assignment of an ISBN number) are considered as part of the totality of the evidence.[8] While refusing to hold any particular accessibility indicia per se sufficient at the institution stage, the POP pointed out some past cases where it found that the petition provided strong indicia establishing reasonable likelihood that a reference was publicly accessible[9], and where the petition failed to do so.[10]

In the case at hand, the POP reversed the Board, finding that the petitioner, Hulu, had established a reasonable likelihood that the reference-at-issue, Dougherty, is a printed publication that was publicly accessible before the critical date. The copy of Dougherty submitted as evidence with the petition had a copyright date, a printing date, and an ISBN date—all of which were before the critical date. In addition, Dougherty was a textbook from an established publisher and a well-known book series. The Board found that this was sufficient evidence to establish a reasonable likelihood that Dougherty is a printed publication that a publisher made available to the pertinent public prior to the critical date.[11]

While Hulu had submitted a different version of Dougherty (with an earlier copyright date, printing date, and ISBN date) with a librarian’s affidavit to establish public accessibility prior to the critical date, the Board found that the affidavit was not necessary to meet the burden at this stage. Moreover, even if the affidavit was considered, it did not change the Board’s decision as it accompanied an earlier version of Dougherty.[12]

Take Away

Although the POP adopted the reasonable likelihood evidentiary standard at institution, petitioners should still err on the side of presenting strong evidence in the petition to be able to meet the preponderance of the evidence standard, which will be required to prevail in a final written decision.

[1] IPR2018-01039, Paper 29 (December 20, 2019).

[2] Id. at 21.

[3] Id. at 13.

[4] Id.

[5] Id. at 13–14 (citing Trivascular, Inc. v. Samuels, 812 F.3d 1056, 1068 (Fed. Cir. 2016)).

[6] Id. at 21.

[7] Id. at 16.

[8] Id. at 17–18.

[9] Id. at 18–19 (citing Syncro Soft SRL v. Altova Gmbh, IPR2018-00660, Paper 6 at 8–10 (PTAB Sept. 5, 2018); Sandoz Inc. v. Abbvie Biotechnology Ltd., IPR2018-00156, Paper 11 at 8–13 (PTAB June 5, 2018); Seabery N. Am. Inc. v. Lincoln Global, Inc., IPR2016-00840, Paper 11 at 7–8 (PTAB Oct. 6, 2016)).

[10] Id. at 19 (citing In-Depth Geophysical, Inc. v. Conocophillips Co., IPR2019-00849, Paper 14 at 4–13 (PTAB Sept. 6, 2019); Argentum Pharm. LLC v. Research Corp. Tech., Inc., IPR2016-00204, Paper 19 at 8–12 (PTAB May 23, 2016)).

[11] Id. at 19–20.

[12] Id. at 20.