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The Application of “Authentication by Comparison” at the PTAB

Directly addressing the application and operation of the Federal Rules of Evidence in proceedings before the Patent Trial & Appeal Board (Board), the US Court of Appeals for the Federal Circuit affirmed-in-part and reversed-in-part two inter partes review (IPR) decisions, criticizing the Board’s refusal to consider a particular reference relied upon by the patent challenger on the basis of failure to authenticate. Valve Corp. v. Ironburg Inventions Ltd., U.S. Federal Circuit Court of Appeals Nos. 20-1315, -1316, -1379 (Fed. Cir. Aug. 17, 2021) (Dyk, J.)

The Board found that an IPR petitioner, Valve Corporation, failed to show that several challenged patents were unpatentable based on a non-authenticated copy of a critical prior art reference (the Burns article). The Burns article was a printed copy of a 2010 online review of an Xbox 360 controller. Simon Burgess, a co-inventor of the patents at issue, had facilitated the publication of the Burns article by providing a test controller to Dave Burns (who worked for an online gaming magazine) for promotional purposes. Valve appealed the Board’s decision.

Valve argued that the Burns article copy submitted in connection with the IPR (the Exhibit) was merely a printout of the same online article cited and enclosed in the prosecution histories of the challenged patents, as well as another of Ironburg’s patents directed toward similar subject matter. The Board concluded that Valve failed to show that the Exhibit was the same version of the Burns article that appeared in the prosecution history and that it was not obligated to compare the documents in the absence of testimony from Valve that the two were identical. Valve appealed.

In reviewing the Board’s decision, the Federal Circuit first referred to the principles of authentication by comparison under Fed. R. Evid. 901(b)(3), which permits authentication of a document by a comparison with an authenticated specimen “by an expert witness or the trier of fact.” While the Court did note a discrepancy in the dates shown in the Exhibit and in the Burns article in one of the prosecution histories, the Court found that the difference in dates did not bear on the subject matter being disclosed, which was “virtually identical” between the two, as well as identical to the version of the same article in the other two relevant file histories. The Court held that the Board was obligated to perform this comparison and erred by failing to do so.

After determining that the Exhibit was “substantively the same” as the versions of the Burns article from the relevant prosecution file histories, the Court addressed the question of whether the Exhibit was a printed publication under 35 U.S.C. § 102(a)(1). The Board found “overwhelming evidence” that the Burns article was accessible prior to the critical date of the patents at issue, based in significant part on the fact that Mr. Burgess had provided a controller to Mr. Burns with the purpose of a “dialogue with the intended audience,” an indicia of public accessibility. The Board also noted its agreement with [...]

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PTAB Sets Double Standard for Qualifying Reference as “Printed Publication”

The Patent Trial and Appeal Board (PTAB) designated an appeal decision as precedential, holding that an examiner may apply a lower standard for establishing public availability of a prior art reference as compared to a petitioner in an inter partes review (IPR). Ex parte Grillo-López, Appeal No. 2018-006082 (USPTO Jan. 31, 2020) (Chang, APJ) (denying request for rehearing) (designated as precedential on April 7, 2020). The PTAB determined that the examiner had sufficiently established a prima facie case that a US Food and Drug Administration (FDA) transcript qualified as a printed publication, even though the PTAB had previously found that a petitioner in an IPR proceeding had failed to qualify the same FDA transcript as a printed publication. The PTAB held that during prosecution, the examiner must establish only a prima facie case, and the burden then shifts to the applicant to come forward with rebuttal evidence to overcome the prima facie case. This differs from an IPR proceeding, where the petitioner must come forward with sufficient arguments to show, at the institution stage, a reasonable likelihood of prevailing on the unpatentability of the challenged claims.

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IPR Institution Requires Reasonable Likelihood that Reference Is Printed Publication

In a precedential opinion, the Patent Trial and Appeal Board (PTAB) held that, for institution of an inter partes review (IPR) based on a printed publication, the petitioner must establish a reasonable likelihood that the reference is a printed publication. Hulu, LLC v. Sound View Innovations, LLC, Case No. IPR2018-01039 (PTAB Dec. 20, 2019) (Boalick, CAPJ).

Hulu petitioned for IPR, challenging a Sound View patent and asserting obviousness over a prior art reference textbook by Dougherty. Sound View filed a preliminary response challenging Hulu’s showing that Dougherty was publicly available before the filing date of the challenged patent. The PTAB denied institution, finding insufficient evidence that Dougherty was publicly accessible.

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