Takeaway: The Board may determine that a cited reference is not a prior art publication if a petitioner does not provide sufficient evidence in support of an allegation that the reference was publicly available.

In its Decision, the Board denied Petitioner’s request for inter partes review of claims 1-12 and 15 of U.S. Patent No. 8,690,476. The ’476 patent relates to storing hydrogen in a salt cavern with a permeation barrier. Petitioner asserted that the challenged claims are unpatentable based on numerous grounds, each of which relied on one or more of references referred to by Petitioner as SLIDES, TXRRC Records, and Parks.

The Board began its analysis by addressing whether Petitioner’s grounds are based on “prior art consisting of patents or printed publications” as required by 35 U.S.C. § 311(b). Citing In re Hall, 781 F.2d 897, 898–99 (Fed. Cir. 1986) and SRI Int’l, Inc., v. Internet Sec. Sys., Inc., 511 F.3d 1186, 1194 (Fed. Cir. 2008), the Board reiterated that “‘public accessibility’ has been called the touchstone in determining whether a reference constitutes a ‘printed publication’ bar under 35 U.S.C. § 102(b)” and that “[t]he general rule is that ‘[a] given reference is ‘publicly accessible’ upon a satisfactory showing that such document has been 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.’” The Board determines whether a reference is publicly accessible “on a case-by-case basis based on the ‘facts and circumstances surrounding the reference’s disclosure to members of the public.’”

First, the Board analyzed whether the SLIDES is prior art under 35 U.S.C. § 102(b). The SLIDES reference is a series of slides purportedly presented by one or more employees of Patent owner at a conference. Petitioner asserts that SLIDES is prior art under 102(b) “because it was (a) presented at a conference open to interested parties . . . and/or (b) distributed online at a slide sharing website.” The Board determined that Petitioner offered “insufficient credible evidence in support of either theory.” In particular, Petitioner did not offer any “corroborating evidence that the SLIDES exhibit itself was ever presented at the conference, or evidence establishing the nature of the presentation and dissemination of the information” and instead made “unsupported attorney arguments” that the conference “‘was open to interested parties’ and that the SLIDES reference was presented at this conference.” The Board also concluded that Petitioner offered “insufficient evidence that the slides were publicly available at the website as of the critical date.” Accordingly, the Board determined that Petitioner “failed to show sufficiently that [SLIDES] is prior art under 35 U.S.C. § 102.”

The Board then considered whether the TXRRC Records are prior art. The Texas Railroad Commission (TXRRC) Records are a “collection of documents spanning several exhibits purportedly filed by Patent Owner as part of the regulatory process involved in operating its hydrogen storage salt cavern.” Petitioner alleged that one of the documents is prior art under § 102(a) and that the rest of the TXRRC Records are prior art under § 102(b). Petitioner asserted “that the TXRRC Records are publicly available under a theory that they are available via a FOIA-like procedure provided by the State of Texas Administrative Code.” Specifically, Petitioner argued that “the Texas Railroad Commission’s records are available online via a key word search and that these records could have been accessed through the State of Texas’s FOIA-like procedure” and submitted supporting testimony that “a person of ordinary skill in the art ‘interested in reviewing . . . records for a particular [cavern] site’ would consider finding and locating such records “routine” and that at least one firm provides such services.” The Board was not persuaded that the TXRRC Records “were sufficiently publicly available.” First, the Board determined that the testimony did “not establish whether the particular documents in Exhibits 1012–1016 were or could have been obtained by a person of ordinary skill in the art at the time of invention during such a routine search,” i.e., “whether the particular documents in Exhibits 1012–1016 were the kind that would have been provided to the Texas Railroad Commission and found in a search.” The Board noted that it did “not find [the witness’s] testimony incredible, but rather simply find that it fails to explain sufficiently whether Exhibits 1012–1016 would have been publicly accessible before the critical date.” The Board also was not persuaded by Petitioner’s argument that the documents were accessible through the State of Texas’s FOIA-like procedure. After reviewing the text of the relevant statutes, the Board concluded that “confidential information provided for purposes of an application [before the Railroad Commission] is not subject to disclosure” and that at least two of the TXRRC Records were marked as confidential. The Board also determined that Petitioner offered “insufficient evidence as to when Exhibits 1012–1016 were filed with the Texas Railroad Commission, let alone when it believes the Exhibits became prior art under any given theory of public accessibility;” therefore, the Board concluded that “Petitioner has failed to show sufficiently that Exhibits 1012–1016 are prior art under 35 U.S.C. § 102.”

The Board then analyzed whether the Parks Presentation is prior art. Petitioner asserted that Parks is a presentation given by G.D. Parks at a conference in 2006 and that it “was distributed freely to all attendees via a DVD containing all course materials.” Petitioner also asserted that Parks was cited by Patent Owner in an Information Disclosure Statement in a related case and in a publication called the Sandia Report. The Board noted that Parks “contains no markings that Petitioner identifies that would indicate who presented these slides, when, or where.” Although “Petitioner offers evidence that George D. Parks was scheduled to present for 15 minutes on behalf of ConocoPhillips on the topic of “Hydrogen Cavern Operation” at a conference,” the Board concluded that “[t]here is no evidence. . . that would tend to demonstrate that the slides in Exhibit 1023 were shown at that conference, or the circumstances surrounding their showing.” In addition, the Petitioner did not offer any evidence in support of its allegation that there was “a DVD containing the slides” or that the cited exhibit was the same document by Mr. Parks that “was cited on the subject of a hydrogen cavern.” The Board therefore concluded that “Petitioner has failed to show sufficiently that Exhibit 1023 is prior art under 35 U.S.C. § 102.”

Because each of Petitioner’s alleged grounds relies on one or more of SLIDES, TXRRC Records, and Parks, which the Board determined had not been shown sufficiently to be prior art printed publications, the Board determined that “Petitioner has failed to show a reasonable likelihood that any claims of the ’476 patent were unpatentable in view of any of the asserted grounds.” Accordingly, the Board ordered denial of the Petition.

Air Liquide Large Industries U.S. LP v. Praxair Technology, Inc., IPR2015-01074

Paper 11: Decision – Denying Institution of Inter Partes Review

Dated: September 16, 2015

Patent: 8,690,476 B2

Before: William V. Saindon, Christopher L. Crumbley, and Jeffrey W. Abraham

Written by: Saindon

Related Proceedings: IPR2015-01071, -01072, -01073, -01075