It has become a significant open question in inter partes review proceedings what a petitioner must do to establish a reference as a printed publication. In a decision designated Precedential on December 20, 2019 (Hulu, LLC v. Sound View Innovations, LLC, IPR2018-1039) the Patent Trial and Appeal Board (“the Board”) provided practitioners with guidance regarding “what is required for a petition to establish that an asserted reference qualifies as a ‘printed publication’ at the institution stage.” Paper 29 at 6. The decision held, inter alia, that at the institution stage the “reasonable likelihood” standard applies to printed publications, and that the inquiry, as during other stages of the proceedings, is based on the totality of the evidence. Id. at 14-17.

To explain, as to the reasonable likelihood standard, the Board stated that “at the institution stage, the petition must 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 prior art.” Id. at 13. The Board explained that this standard is more “than mere notice pleading,” but it is “lower than the ‘preponderance’ standard to prevail in a final written decision.” Id.

Moreover, the Board confirmed that there are circumstances under which petitioners may offer additional evidence to substantiate a printed publication. Id. at 14. Specifically, a petitioner may submit additional evidence in response to prior briefing, such as “in a reply to a patent owner preliminary response” or “in a reply to the patent owner response.” Id. Also, if good cause is shown for the later submission, and the submission is more than one month following institution, a petitioner may offer “supplemental information” that is relevant to a claim “for which trial was instituted.” Id.

Notably, the Board declined to find any presumption in favor of finding a reference to be a printed publication at the institution stage. Id. at 15. Instead, the Board noted that the burden remains on the petitioner to meet the “reasonable likelihood” standard for proving public accessibility. Id.

Also, with respect to the “role of indicia on the face of the reference,” such as “copyright date, edition identifiers, publication by a commercial publisher, and the assignment of an ISBN number,” the Board held that none are “per se” sufficient at the institution stage for a finding of public accessibility. Id. at 17. Instead, the Board held that any such markers are considered as part of the “totality of the circumstances.” Id. However, the Board noted that it has “often found a reasonable likelihood that a reference is a printed publication for institution of an inter partes review when the evidence relied on in a petition provides strong indicia that an asserted reference was publicly accessible.” Id. at 18. The Board gave several examples of sufficient evidence, including a drug’s package insert from the Wayback Machine, with supporting information, a thesis with evidence of indexing, and a user manual with supporting information. The Board contrasted these situations with two examples of insufficient evidence, including a dissertation and a conference paper, each with little support.

Finally, as to the facts presented in this case, the Board found that petitioner had met the standard for establishing a “reasonable likelihood” that the relevant reference (a textbook) is a printed publication. Id. at 19. The Board noted that the reference had a “copyright date of 1990, a printing date of November 1992, and an ISBN date of 8/94,” all found on its face. Id. Moreover, the reference was “a textbook from an established publisher, O’Reilly, and a well-known book series.” Id. The Board noted that an accompanying affidavit was not necessary at the institution stage for this reference.

Hulu thus provides practitioners additional guidance regarding proving documents are printed publications at the institution stage. Of note, this blog has previously provided information related to public accessibility in federal courts and in front of the Board here.