In Hewlett-Packard Co. v. U.S. Philips Corp., et al., IPR2015-01505, Paper 16 (Jan. 19, 2016), HP’s Petition  asserted that the claims of the patent at issue, US 5,777,992 relating to MPEG audio, were invalid in view of three references, each allegedly a “printed publication”: (1) Chambers; (2) MPEG 89-051; and, (3) MASCAM 1988. In its (optional) response to the Petition the Patent Owner asserted that HP failed to establish that any of these references qualified as a “printed publication.” Indeed, HP did fail – lulled into a sense of security that turned out to be unwarranted – and as a result the PTAB declined to institute an inter partes review of any of the challenged claims.1 This presents another PTAB practice teachable moment.

HP’s sense of security stemmed from the fact that the Patent Owner had previously been confronted with the same references in a reexamination proceeding and, there, never challenged their “printed publication” prior art status. HP’s sense of security was unwarranted, as the PTAB explained in its decision:

Patent Owner’s choice to address Chambers on the merits [in the reexamination] rather than challenge its prior art status does not relieve Petitioner of its initial burden to put forth evidence in this inter partes proceeding that Chambers is available as prior art to the ’992 Patent.

(emphasis supplied). The PTAB went on to say, in addressing MASCAM:

MASCAM 1988 was submitted by Patent Owner in an Information Disclosure Statement during the reexamination of the ’992 Patent discussed above. [citation omitted] Patent Owner’s Information Disclosure Statement specifically states, however, that its submission is not an admission that each or all of the listed documents constitute prior art and that Patent Owner reserves the right to present relevant facts and law concerning the status of such documents, if applied by the Examiner. [citation omitted]. Patent Owner’s choice to submit MASCAM 1988 in an Information Disclosure Statement in an earlier reexamination does not relieve Petitioner of its initial burden to put forth evidence in this inter  partes proceeding that MASCAM 1988 is available as prior art.

The PTAB then proceeded with its analysis of the references as if the reexamination never existed, its first observation in that analysis being: “[t]he fact that a date is printed on the face of a reference, without more, is not enough to establish that the reference was publicly accessible on that date.” That, of course, would be applicable to anyreference alleged to be a printed publication.

The need for evidence of the prior art status of the references relied on by HP was particularly acute given some anomalies. For example, Chambers included a copyright notice that was nearly 20 years after the alleged publication date, and its “References” section cited to a paper that post-dated the alleged publication date of Chambers. And, the MPEG 89-051 reference as submitted included an attachment that post-dated the alleged publication date of MPEG 89-051. Not surprisingly, the PTAB asserted that HP needed, but failed, to explain away these anomalies.

The teachable moment here, of course, is that a Petitioner (or Patent Owner for that matter) should not assume that the prior art status of a publication will be a given if there is any possibility of a bona fide dispute, and would be wise to employ both the belt and the suspenders when available to prove up that status. The consequence of the failure to do so is illustrated above and can be dire. A petition must be filed within a year of the petitioner (or related party) being served with a complaint, 37 CFR § 42.101(b) (2012), and the PTAB then has a six-month window within which it must issue a decision on whether or not to institute. So there may be no time for a “do over” or, at best, only time for one more shot.