Takeaway: A document purporting to be a thesis, without more, does not establish that the document is a printed publication.

In its Decision, the Board denied the Petition with respect to all challenged claims; no trial was instituted. As found by the Board, the Petition failed to demonstrate a reasonable likelihood of succeeding in showing that the challenged claims would have been obvious.

The ‘544 patent relates to “detecting malicious executable attachments at an email processing application of a computer system using data mining techniques.” Petitioner had challenged all of claims 1-43 of the ‘544 patent under 35 U.S.C. § 103 in view of various combinations of references. Each asserted combination of references cited Cardinale.

The Petition asserted that Cardinale was published in March of 1999. Patent Owner disputed that Petitioner had sufficiently shown that Cardinale was a printed publication under pre-AIA 35 U.S.C. §§ 102(a) and (b). The Board agreed with Patent Owner, finding that there was no discussion in the Petition supporting the allegation that Cardinale was published at that time.

In essence, the Board considered Cardinale to be a Master’s Thesis, and then went on to state that “[a] document purporting to be a thesis, without more, does not establish that the document is a printed publication.” This prompted the Board to note that “mere defense of a thesis and placement of the document in a library is insufficient to establish that the thesis is a publication.” Summing up its analysis, the Board concluded that Petitioner had not provided sufficient evidence showing the public accessibility of Cardinale prior to the filing date of the ’544 patent; that the Petition did not point to any evidence that the thesis was entered into an electronic database prior to the critical date; and that Petitioner had not shown that the thesis was otherwise “sufficiently accessible to the public interested in the art.”

Symantec Corp. v. The Trustees of Columbia University in the City of New York, IPR2015-00370

Paper 13: Decision Denying Institution of Inter Partes Review

Dated: June 17, 2015

Patent 7,487,544 B2

Before: Howard B. Blankenship, Bryan F. Moore, and Robert J. Weinschenk

Written by: Blankenship

Related Proceedings: The Trustees of Columbia University in the City of New York v. Symantec Corp., No. 3:13-cv-808 (E.D. Va.)