IPR challenges must rely on prior art “patents or printed publications” as the basis for invalidating US patents. But what if a useful prior art reference is not a typical printed publication such as a scientific literature reference or industry journal report? We explored the subject of what constitutes a prior art printed publication in a recent post; now we’ll take a closer look at this issue as it relates to digital content. Two related IPR decisions, Coalition for Affordable Drugs VIII, LLC v. The Trustees of the University of Pennsylvania (IPR2015-01835, Paper 56 and IPR2015-01836, Paper 58), demonstrate that it can sometimes be challenging to prove that a reference qualifies as a printed publication … leaving the petitioner wishing they could hop in the DeLorean to go back and change the prior art.
In both cases, the petitioner relied on a slide set that had been presented, both live and as a webcast, as part of a drug development company’s investor/analyst conference. To prove that the presentation qualified as a printed publication, the petitioner submitted a press release citing a hyperlink to the presentation and an affidavit from a manager at the Internet Archive to show that a link to the slide set was available. Upon IPR institution, the patent owner challenged the qualification of the presentation as a printed publication in view of the specific factors set forth in In re Klopfenstein, 380 F.3d 1345 (Fed Cir. 2004).
In the final written decisions, the Board decided that the presentation itself did not constitute a printed publication under the Klopfenstein test. In particular, there was no evidence to establish that the target audience of the presentation would have been an ordinary artisan in the relevant field of the patents at issue—in this case, cardiovascular disease or cholesterol-reducing agents. Instead, the presentation appeared to target equity analysts, institutional investors, or those who were interested in business strategies.
Further, the Board decided that the petitioner failed to show that the slide set was posted online before the critical date of the patents at issue. A Wayback Machine screenshot (supported by the affidavit of the Internet Archive manager) was submitted to show that a link to the slide set was available prior to the critical date. However, the affidavit did not show what could be found at the link. Thus, there was no evidence to show that the slide set was indeed obtained through the provided link at that time, or to establish the source of the submitted slide set. Additionally, the link was defunct at the time of the IPR trial.
Petitioners should show that prior art materials satisfy the Klopfenstein test. If petitioners rely on any internet material, they preferably should establish that the content would have been available prior to the critical date of the patent at issue, likely through a declaration from a first-hand witness.
Patent owners may consider challenging, whenever appropriate, whether asserted prior art qualifies as a printed publication. It may be possible to prevent IPR institution by challenging the qualification of an asserted printed publication in a patent owner’s preliminary response.