As we have reported in several recent posts, the PTAB often rigorously evaluates public accessibility when considering non-patent prior art.  Disputes over accessibility are often pivotal because insufficient evidence of accessibility can disqualify a reference as a “printed publication” under § 102.  The Federal Circuit recently expanded on the applicable standard for online publications in a case rooted in computer technology, but the decision provides relevant insights for life science practitioners as well.

In Acceleration Bay, LLC v. Activision Blizzard, Inc., Nos. 2017-2084 et al. (Fed. Cir. Nov. 6, 2018), the Federal Circuit affirmed IPR decisions upholding several challenged claims because the primary cited reference did not qualify as a printed publication.

The disputed reference (“Lin”) was posted before the relevant priority date to a university library’s public website.  That website made technical reports, including Lin, available for download.  The website assigned each report a unique identifier, offered some search functionality, and indexed reports by author and year.

The Board concluded that the site was not searchable or indexed “in a meaningful way so that a person of ordinary skill in the art would have located Lin.”  In particular, the university indexed reports by author and year only, and there was no evidence as to how many reports had been posted by the critical date.  Accordingly, a skilled artisan might have located Lin after skimming through potentially hundreds of titles, with most describing unrelated subject matter.  In addition, while the site allowed users to search by author, title, and abstract, evidence showed that the search functions were unreliable.  There was no evidence of how the search functions worked or whether they had been maintained, and the patent owner showed that a search targeting keywords in Lin’s title and abstract failed to produce results.  Lin therefore was not a prior art printed publication.

The Federal Circuit upheld the Board’s findings as supported by substantial evidence.  The court distinguished In re Lister, 583 F.3d 1307, 1315-16 (Fed. Cir. 2009), because in that case accessibility turned on evidence of working search functions. In addition, indexing was not necessarily sufficient to show accessibility, and Lin was not meaningfully indexed in a way that would have allowed a skilled artisan to find it using reasonable diligence.

Acceleration Bay reinforces the importance of sufficient evidence to establish public accessibility for non-patent prior art, particularly online publications, in an IPR. For example, additional evidence to substantiate the website’s searchability or demonstrate that Lin was one of only a handful of online reports might have tipped the scales in the petitioners’ favor. For patent owners, the decision also demonstrates the utility of developing affirmative evidence to rebut public availability.  In particular, the Federal Circuit cited the patent owner’s evidence of failed search attempts as a factor in upholding the Board’s conclusion.