As one of the key phrases in both the pre- and post-AIA versions of § 102, what constitutes a prior art “printed publication” is a significant question in many patent validity challenges. The Federal Circuit has wrestled with the question since the court was created in 1982. However, despite its much shorter history, the PTAB likely has issued more decisions addressing this question than any other forum. Given the volume of guidance from the PTAB, petitioners who ignore what the PTAB thinks a printed publication is do so at their own peril.
The Federal Circuit’s decisions are, of course, binding on the PTAB, and the Federal Circuit has addressed some interesting and repeated questions about what constitutes a printed publication:
- Is a university thesis a printed publication? It can be, if properly indexed and accessible to the relevant public. Compare In re Hall, 781 F.2d 897 (Fed. Cir. 1986) (properly indexed) with In re Cronyn, 890 F.2d 1158 (Fed. Cir. 1989) (improperly indexed).
- Is a presentation given at a conference a printed publication? It can be, if “presented in such a way that copying of the information it contained would have been a relatively simple undertaking for those to whom it was exposed.” In re Klopfenstein, 380 F.3d 1345, 1352 (Fed. Cir. 2004); see also Inst. of Tech. v. AB Fortia, 774 F.2d 1104 (Fed. Cir. 1985) (same).
- Are company documents, only indexed at the company, printed publications? No, even if distributed outside of the company to others. Northern Telecom, Inc. v. Datapoint Corp., 908 F.2d 931 (Fed. Cir. 1990).
District court decisions are also informative on the question of what is a printed publication. For example, CA, Inc. v. Simple.com, Inc., 780 F. Supp. 2d 196 (E.D.N.Y. 2009) held that a copyright certificate was sufficient evidence to show that a document was a printed publication; Ultratec, Inc. v. Sorenson Commc'ns, Inc., 2014 WL 4829173 (W.D. Wis. Sept. 29, 2014) held that a paper presented at a conference and published in a book with other papers from the conference was a printed publication. These decisions were issued over a number of years and still have not answered all the questions that come up.
But just over the past few months, the PTAB has issued at least 20 decisions that address whether certain references are printed publications. The range of documents that the PTAB found to constitute printed publications is broad, including technical proposals (IPR2015-01986, Paper 34), journal articles (IPR2015-01979, Paper 62), a document distributed at conferences (IPR2015-01892, Paper 58), an article from a personal website (IPR2015-01835, Paper 56), a guide given to participants in the Tokyo Stock Exchange (CBM2015-00181, Paper 138), and online descriptions of a video game (IPR2015-01595, Paper 38).
The PTAB has also found certain types of documents were not printed publications:
- A technical report at a college of engineering was not a printed publication because it was contained in an improperly indexed online library where a person of skill in the art would have needed to skim hundreds of titles to find the report (IPR2015-01951, Paper 107).
- A webcast presentation was not a printed publication because the press release regarding the webcast did not describe the topic of the webcast and the petition did “not provide any evidence establishing that the target audience would have been an ordinary artisan in the relevant field” (IPR2015-01835, Paper 56).
- A catalog from a dealer show was not a printed publication because there was no evidence the dealer show was advertised to the public and no evidence that the catalog was actually disseminated at the show to persons of ordinary skill in the art (IPR2015-01078, Paper 59).
Not all of the relevant PTAB decisions are final written decisions either. Many times the PTAB will address if a reference is a printed publication at the institution stage (for example, IPR2016-01503, Paper 7).
As we’ve written about before, a well-prepared petition is key for success before the PTAB. The PTAB’s case law is extensive on this issue, showing it is commonly contested. Making sure that all evidence necessary to establish that a reference is a printed publication is just one of the many steps parties should take when preparing a petition for the PTAB.
Further, even if PTAB decisions are not designated informative, representative, or precedential, they are a source of guidance as to whether something actually is a printed publication. Petitioners and patent owners should consider that guidance.