Addressing the issue of evidence sufficient to establish when a document qualifies as printed publication and prior art, the Patent Trial and Appeal Board (PTAB or Board) issued two decisions reaching differing conclusions, each based on whether the evidence established public availability.ABS Global, Inc. v. Inguran, LLC, Case No. IPR2016-00927, Paper 33 (PTAB, Oct. 2, 2017) (Kalan, APJ); Seabery North America, Inc. v. Lincoln Global, Inc., Case No. IPR2016-00840, Paper 60 (PTAB Oct. 2, 2017) (Giannetti, APJ).

In ABS Global, ABS challenged the patentability of a patent directed to sorting animal sperm cells according to DNA characteristics based on the Leary prior art reference. For purposes of institution, the PTAB accepted ABS’s contention that Leary was a prior art printed publication. During trial, however, Inguran argued that ABS had failed to establish Leary’s publication date. Specifically, Inguran argued that while ABS pointed to (1) a date stamp placed on the reference by a library, (2) a copyright notice, (3) a printout from the publisher’s website stating the date published, and (4) the ISSN and ISBN, none of this information established whether Leary was publicly accessible on the relevant dates.

The PTAB agreed that the categories of evidence relied upon by ABS were insufficient to establish Leary as prior art under § 102. As to the library date stamp, the PTAB found that ABS provided no evidence about the library’s procedure for indexing, cataloging and shelving publications, and thus the date stamp by itself did not establish when Leary became publicly accessible. As to the copyright notice and the printout from the publisher’s website, the PTAB found that neither demonstrated that anyone received or could have ordered the publication on the dates listed. Finally, the PTAB disregarded the ISSN and ISBN dates because there was no evidence that they established public accessibility of Leary on a particular date. The PTAB thus concluded that because there was no evidence of the date on which Leary was publicly accessible, ABS failed to establish that Leary was prior art.

On the same day, the PTAB issued its decision in Seabery, finding that the prior art reference at issue was publicly accessible before the filing of the challenged patent. Lincoln Global owns a patent directed to tracking and analyzing welding activity. Seabery filed a petition for inter partesreview challenging the validity of the patent based on a German doctoral thesis by Dorin Aiteanu. To establish the publication date of the thesis, Seabery provided evidence in the form of (1) library catalogue dates, (2) a copyright notice, (3) an online catalogue screen shot and (4) the ISBN. Seabery also submitted an affidavit from Aiteanu’s thesis supervisor that university rules required the thesis to be deposited in the university’s library before Aiteanu could receive his PhD, and that the thesis was indeed deposited before Aiteanu received his PhD. The supervisor also provided evidence of the thesis’s check-out history in the library, and testified as to how dissertations are formally published, indexed in the national library system and assigned an ISBN. Relying on this additional evidence, the PTAB found that the thesis was accessible to the public before the filing of the challenged patent.

Practice Note: In order to establish the public accessibility of a prior art reference, petitioners should submit affidavits attesting to the public availability of the prior art reference. Such evidence may include, for example, testimony regarding policies and established practices for publishing, and the check-out history of the reference.