35 USC § 311(b) requires that petitioners in inter partes reviews (“IPRs”) rely solely on prior art “consisting of patents or printed publications.” In the case of non-patent prior art, petitioners have the burden of establishing that the references relied upon qualify as printed publications.1 “‘Public accessibility’ has been called the touchstone in determining whether a reference constitutes a ‘printed publication’ bar under 35 U.S.C. § 102.”2 In particular, the Federal Circuit has held that “[a] reference will be considered publicly accessible if it was ‘disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence, can locate it.’”3 Factors relevant to whether a reference has been sufficiently disseminated or otherwise made available include: (i) the length of time the display was exhibited; (ii) the expertise of the target audience; (iii) the existence (or lack thereof) of reasonable expectations that the materials displayed would not be copied; and (iv) the simplicity or ease with which the material displayed could have been copied.4 Despite the Federal Circuit’s guidance on this issue, whether a reference qualifies as a printed publication continues to be hotly-debated in many IPR proceedings.
Actual dissemination or availability to persons of ordinary skill in the art has been recognized by the Patent Trial and Appeal Board (“PTAB”) as a key factor in determining public accessibility. For example, the PTAB has concluded that “in cases in which copies of documents actually were disseminated to interested members of the public, indexing is less important, if at all,” and the public dissemination is “the most relevant to the facts of this proceeding.”5 In the recent LG Electronics IPR, the documents at issue were drafts of technical specifications and related proposals of the third Generation Partnership Project (“3GPP”).6 The petitioner’s expert testified that drafts were handed out at public meetings and published on a file transfer protocol (“FTP”) server accessible to the general public without restriction, and notification emails were sent to participants when documents had been uploaded to the FTP server.7 Based on the testimony from both parties’ experts, the PTAB concluded that the documents were “handed out without restriction to at least dozens of skilled artisans, with more being alerted, by email, to the posting of the documents on 3GPP’s server,” which constituted sufficient actual dissemination to quality the documents as printed publications, even if the documents were not indexed or easily searchable on the 3GPP’s server.8
The PTAB has also emphasized that evidence showing the expertise of the persons to which a reference is actually disseminated is an important factor in determining whether the reference qualifies as a printed publication. For example, the PTAB recently found a slide set, along with an accompanying webcast, presented at an investor day did not rise to the level of a “printed publication” because the petitioner failed to provide any evidence establishing the expertise of the target audience.9 In Coalition for Affordable for Drugs VIII, LLC, the PTAB held that the petitioner’s evidence, a press release advertising the investor day, did not contain any information relating to the topic of the presentation nor did it suggest that an ordinary artisan in the relevant field should attend the presentation.10 The PTAB found that “although the ordinary artisan may have been able to copy the presentation, and although there may have been an expectation that the materials could be copied, Petitioner does not provide any evidence establishing that the target audience would have been an ordinary artisan in the relevant field.”11 Moreover, the PTAB found that the petitioner’s proffered screenshots showing a hyperlink to the slide set from the Wayback Machine failed to establish the public accessibility of the slide set.12 The PTAB held that the petitioner failed to provide any evidence that the hyperlink, which was defunct at the time of the IPR trial, actually worked at some point such that an ordinary artisan would have had access to the slide set and the slide set was indeed obtained through the hyperlink, or any evidence as to the source of the slide set.13
While one factor in assessing whether a reference is sufficiently publicly accessible to qualify as a printed publication involves the existence of reasonable expectations that the materials displayed would not be copied, the PTAB has clarified that a standard copyright notice would not negate the public accessibility of a reference when there is sufficient evidence to establish actual dissemination.14 In Symantec, the patent owner argued that the document makes it clear that it was not publically accessible by stating “[n]o part of this publication may be reproduced, stored in a retrieval system, or transmitted in any form without the prior written permission of the publishers.”15 The PTAB ruled that the evidence sufficiently demonstrated that the document was disseminated to attendees upon check-in at the conference.16 The PTAB held that the inclusion of a standard copyright notice in the document, which may be considered to place a restriction on reproduction, storage, and transmission of the document, did not negate the public accessibility of the document.17 In addition, the petitioner’s expert testified that the document appeared in the conference proceedings and that the Machine Readable Cataloging (MARC) record for the conference proceedings was reliable.18 The patent owner argued that the expert had no first-hand knowledge as to the public availability of the document or the creation of the MARC record and did not attend the conference.19 The PTAB credited the expert’s testimony regarding the reliability of the MARC records, and as such, the PTAB held that neither the expert’s first-hand knowledge of the distribution of the document at the conference nor the physical presence of the expert at the creation of the MARC record was required to establish public accessibility.20
When evidence of actual dissemination is limited, or nonexistent, indexing of the reference at issue can be an important factor in determining public accessibility. The PTAB recently highlighted the importance of accurate indexing in finding that a college technical report contained in an improperly indexed online library did not qualify as a “printed publication.”21 While the PTAB acknowledged the “technical accessibility” of the technical report (i.e., it was uploaded to the college department online library prior to the critical priority date), it held that “public accessibility” requires more than mere “technical accessibility.”22 With respect to the online library, the PTAB found that the petitioner had failed to provide evidence showing that a reasonably diligent searcher would have been able to locate the report on the library’s website.23 For example, there was no evidence of indexing of the library’s website by a commercial search engine, and the indexing by the library only permitted users to view documents by author or by year but not by subject matter.24 The PTAB held that the evidence of indexing by author was insufficient because the authors of the report were not sufficiently well known in the relevant field; and the evidence of indexing by year could not establish public accessibility absent evidence regarding the number of reports in the library database for the year of the report, e.g., an artisan would have needed to skim hundreds of titles with most having unrelated subject matter.25 Even the author’s own webpage, allegedly listing the report and providing an active link to the report, was found insufficient to establish public accessibility.26 In denying that the reference in question as a printed publication, the PTAB argued that the petitioner provided no evidence that the report was viewed or downloaded from the website or persuasive evidence showing that an artisan would have found the webpage using an internet search engine.27
The PTAB has not only addressed the qualification of a prior art reference at the final decision stage, but also at the institution stage, e.g., in decisions denying institution. Practitioners should be mindful, however, that the PTAB has emphasized that the standards at the institution and final decision stages are distinct. At the institution stage, the PTAB looks for “only a threshold showing that an asserted reference is prior art,” while at the final decision stage, “a petitioner has the burden of providing unpatentability by a preponderance of the evidence.”28 The PTAB has justified this difference by contending that at the institution stage “the question is not whether a preponderance of the evidence supports the documents being prior art, but rather whether Petitioner has provided sufficient evidence, based on the current record, to show a reasonable likelihood of prevailing on its asserted ground.”29 Thus, a denial of institution can occur if the PTAB finds that the petitioner has not made a threshold showing of public accessibility, e.g., if the petitioner has not provided sufficient evidence showing how, to whom, or in what manner the references allegedly were disseminated or otherwise made available.30
Given that the PTAB has articulated that petitioners produce sufficient evidence to establish that a reference qualifies as a “printed publication,” petitioners should consider including detailed evidence in the IPR petition itself to establish that a reference of interest was indeed publicly accessible before the priority date of a challenged patent. Patent owners, on the other hand, should consider whether the public accessibility of non-patent literature relied upon by petitioners may be challengeable in a preliminary response as an avenue to derail an IPR before it is even instituted.