Last week, we discussed a recent IPR decision in which the Board—at the institution stage—was unpersuaded by copyright notices and evidence from the “Wayback Machine” suggesting dates of publication. Today we look at another recent decision, in IPR2014-01086, in which the Board was notably more forgiving regarding the public availability issue—at the final decision stage.

The applied standard is the same: A reference is publicly accessible (and can qualify as a prior art “printed publication”) if it “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 document was a doctoral thesis from the Moscow Engineering Physics Institute. The petitioner provided a copy and translation of the catalog entry for the thesis from the Russian State Library. The entry included a notation that the record was part of the library’s “Catalog of Dissertations in Russian (since 1995)” and listed the “Imprint” for the thesis as “Moscow 1994.” The petitioner alleged that the thesis was cataloged in either 1994 or 1995, and that the Russian State Library was “by definition established to share the information that it houses with any interested person.” The petitioner, however, did not offer any testimony or evidence from the library itself establishing its procedures for updating catalogs or making items available.

The Board, citing the Federal Circuit’s 1986 In re Hall decision, noted that establishing the date that a document was cataloged and shelved was desirable, but unnecessary. The Board concluded that the catalog entry “clearly shows a publication date of 1994” (“well before the critical date of September 30, 2002”) and that because the thesis was “cataloged and indexed in a meaningful way”—with author, title, and subject—the thesis was sufficiently available to interested persons.

The Board also observed that the patent owner had not objected to the evidence, filed a motion to exclude, or rebutted the information found in the catalog entry. The Board criticized the patent owner for not explaining why a library “would take more than seven years to catalog and index a thesis” and rejected the suggestion that the petitioner needed to do more to establish that the thesis was available outside of Russia.

The dissent—though we saw another in last week’s post, dissents are a relatively rare occurrence in IPRs—disagreed with the majority’s reliance on the catalog entry. The dissent noted that the catalog entry was silent on the question of when the thesis had been incorporated into the Russian State Library’s catalog (it didn’t think the term “imprint” was clear) and questioned whether the library’s catalog of dissertations even existed at the time of the invention.

Citing In re Lister and In re Hall, the dissent questioned the lack of “competent evidence of the general library practice” and stated that any conclusion that the thesis was publicly accessible before the required date was no more than “pure speculation.” The dissent further disagreed with the majority’s admonishment that the patent owner had not moved to exclude the thesis, pointing out that the patent owner’s challenge related to the weight of the evidence, not whether it met the evidentiary standards for admission.

Despite the forgiving approach the Board took in this particular instance, it is sound strategy to meet a higher bar in establishing that a reference qualifies as a prior art “printed publication.” Petitioners should bolster their cases by providing evidence—documentation and affidavits—detailing library practice that helps connect the dots between publication, receipt, and availability to interested persons.Preferably, petitioners should include in the petition proof that documents were published early enough to be prior art.

Patent owners, meanwhile, should take care to preserve their rights and challenge admissibility of references where possible. Object to objectionable evidence early—e.g., at the preliminary response stage or right after institution.