PTAB POP Recalibrates Institution Analysis for Public Accessibility

Totality of Circumstances for Determining Public Accessibility

Over the years, the Patent Trial & Appeal Board had become panel dependent in assessing questions of public accessibility at institution.  Some panels seemed to require a showing of a likelihood of public accessibility to move forward, while others  required a more definitive showing.  Last spring, the Precedential Opinion Panel (POP) took up this growing rift in institution standards in Hulu, LLC v. Sound View Innovations, LLC, Case IPR2018-01039. Specifically,  the  POP addressed the requirements for establishing that a reference qualifies as a printed publication at the time of institution.

In its now precedential decision, the Board found that a more flexible approach was needed at institution.

The  POP explained that the Board will consider the totality of the circumstances, including indicia on the face of the reference, to determine whether petitioner has established a reasonable likelihood that the reference is a printed publication.  The Board was unwilling to hold that a particular indicia is per se sufficient to establish that a reference qualifies as a printed publication, emphasizing (here):

" [T]he burden is on the petitioner to 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.  .   .  .  ¶ We do not hold that any particular indicia per se is sufficient at the institution stage. Rather, the indicia on the face of a reference, such as printed dates and stamps, are considered as part of the totality of the evidence.

In justifying the “likelihood” showing the Board emphasized petition requirements, and noted that petitioner has some limited opportunities to present new evidence later, including: (1) in a reply to a patent owner preliminary response; (2) in a reply to the patent owner response; and (3) in a motion to file supplemental information.

Of course, a best practice is to include your evidence of public accessibility with the petition to increase your chances that, in aggregate, the evidence establishes a reasonable likelihood that the reference was publicly accessible.

Scott A. McKeown is an author of the Patents Post Grant