Metro Detroit patent litigator Glenn Forbis is quoted in a new Law360 article that explores the complex question of what evidence is required to establish a printed publication before the Patent Trial and Appeal Board.

The newly created Precedential Opinion Panel (POP) will examine the issue as part of its decision to consider Hulu, LLC v. Sound View Innovations, LLC (IPR2018-01039). Hulu had requested a rehearing after it had been denied the chance to use a textbook to challenge Sound View’s patent on the grounds of obviousness.

Specifically, the POP will look at “What is required for a petitioner to establish that an asserted reference qualifies as ‘printed publication’ at the institution stage?” In Hulu’s case, they were unable to use a textbook because its copyright date was not enough to show that it was publicly available at the time the patent application was filed. In its broadest sense, the question before the POP could apply to a range of materials that do not necessarily include copyrights, such as user manuals and documents published online.

While PTAB panels have disagreed over the requirements for printed publications in the past, they have agreed that references must be publicly available to count as a printed publication. The inherent range in medium, quality, distribution and accessibility of printed materials, however, has made it difficult for the PTAB to follow any other bright line rules. For textbooks for example, “copyrighted” does not necessarily mean “printed,” and “printed” does not necessarily mean “publicly available,” especially for smaller printing houses or esoteric topics.

Instead, the PTAB has increasingly asked patent challengers to submit more and more evidence in the institution stage to demonstrate public availability. Some panels have also given different degrees of credibility to certain evidence — the publication date for a New York Times article could count more than a copyright on a marketing brochure, for example — which results in inconsistent rulings.

One way to streamline the process would be for the POP to clarify when certain evidence needs to be presented.

For Inter Partes Reviews, challenges depend on two things: earlier patents and printed publications. If a challenge depends on the latter, one of the first steps a patent owner will take is seeing if the publication can be ruled out as prior art. Given its potential leading role in an IPR, printed publications are therefore deserving of the POP’s attention. The POP’s ruling could also have big implications, says Forbis.

“At the end of the day, [the panel] is going to set the height of the hurdle that a petitioner has to go through to establish something is a printed publication,” he says.

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