In IPR2015-01191, American MegaTrends and four other petitioners challenged claims 1-9, 11, 12 and 15 of USPN 6,892,304 owned by Kinglite Holdings, Inc. on grounds of obviousness over three technical documents, supplemented by a fourth document for the challenge to claim 6. The parties also indicated that they were involved in 11 other IPR petitions and two district court proceedings.

The technology disclosed and claimed in the ‘304 patent involved methods of encrypting instructions to the Basic Input-Output System (BIOS) of a computer operating system using a private-public key pair.

A challenge to a priority claim was upheld because matter that was added in a continuation-in-part application filed June 18, 1999 was needed to support the granted claims, and that matter was, by definition, lacking in the priority document. A shift in priority date from the earliest claimed priority date of October 9, 1997 to the June 18, 1999 CIP filing date meant that the AMIBIOS document of May 1, 1998 was available as prior art.

Petitioners’ reliance on the Aegis document (i.e., Arbaugh, et al., Automated Recovery in a Secure Bootstrap Process, University of Pennsylvania Scholarly Commons, August 1997) in support of its obviousness attack was challenged on grounds that it did not qualify as a printed publication and, thus, was not prior art. The Aegis document, cited as disclosing the hierarchical use of private-public encryption key pairs in a computer operating system, was a document stored on an electronic repository in the University. Patent Owner asserted that there was no evidence that the document had been accessible to the public. To establish public accessibility, Petitioners argued that the Aegis document was cited on another website announcing a symposium, in citations of other published papers, and in an issued patent referring to the Aegis system.

The Board found that the website announcing the symposium provided insufficient evidence to establish public accessibility because there was no indication of what was presented or who was present at the symposium.

[T]here is no evidence of record to suggest anything more than the author of the citing paper had a copy of Aegis or at least knew of it. There is no evidence of public accessibility.

The Board found that the citations in published papers only established that the authors of such papers had a copy of Aegis, not that it was publicly accessible. According to the Board, “there is no evidence of record to suggest anything more than the author of the citing paper had a copy of Aegis or at least knew of it. There is no evidence of public accessibility.”

The Board also dismissed the reference in a granted patent. The reference failed to establish that the disclosure of the Aegis system included a disclosure of the subject matter disclosed in the Aegis document. Consequently, the Board held that Petitioner had not carried its burden of establishing Aegis as a printed publication under 35 U.S.C. § 102. With loss of Aegis, the obviousness challenge collapsed and the Board held that the challenged claims of the ‘304 patent were not unpatentable under 35 U.S.C. § 103(a) over the cited documents.

The number of concurrent disputes among the parties suggest that strategic considerations of resource allocation could prove dispositive. Under such circumstances, it is important to critically assess whether the petition establishes that an alleged prior-art document qualifies as a publication providing public access.