In challenging the patentability of an issued patent through inter partes review (“IPR”), petitioners are limited to relying on prior art patents and printed publications.1 Printed publications must qualify as prior art and must be admissible under the Federal Rules of Evidence. Patent owners may challenge both the qualification of a prior art printed publication at the institution stage and the admissibility of such evidence during the trial. In recent decisions, the Patent Trial and Appeal Board (“PTAB”) has continued to thoroughly consider qualification and admissibility of prior art printed publications. An unwary petitioner may face significant challenges to this type of prior art if it does not include sufficient support in its petition. This article explores strategies to consider in challenging or defending the qualification or admissibility of a printed publication in an IPR proceeding.

Challenges to Printed Publication Status Before Institution

Petitioners must establish each ground of unpatentability in an IPR petition with a “reasonable likelihood of success,” and the PTAB must decide whether to institute a trial based on “the information presented in the petition.”2 Whether a given reference qualifies as a prior art printed publication is determined on a case-by-case basis based on the “facts and circumstances surrounding the reference’s disclosure to members of the public.”3 The key inquiry is whether the reference was made “sufficiently accessible to the public interested in the art” before the critical date.4 A reference is considered publicly accessible if it was 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.5

The PTAB has been providing considerable review and analysis concerning whether a printed publication qualifies as prior art before deciding to institute trial. Mere reliance on a date printed on a publication and naked assertions by the petitioner that a printed publication qualifies as prior art are insufficient when taken alone.6 But the PTAB has denied institution even where the petitioner has provided a more comprehensive analysis of the public availability issue. For example, the PTAB recently denied institution of an IPR where the petitioner asserted that a thesis was available in a university library but did not provide sufficient evidence to show that the thesis was indexed, catalogued, shelved, or deposited in the library prior to the critical date.7 The petitioner submitted a journal article that referenced the thesis, contending that the article confirmed that a person of ordinary skill would have access to the thesis.8Further, an expert declaration is not enough to prove a prior art reference’s publication date where the expert declaration merely repeats assertions made by the petitioner.9 And the PTAB has been unsympathetic to requests to file additional papers on printed publication issues at the pre-institution stage when the petitioner could have provided the evidence in its initial petition.10 Thus, petitioners should be mindful to include evidence that any printed publication it relies on in its petition was publicly available as of the critical date. By the same token, if a petition is lacking in that regard, it leaves the patent owner an easy opening on which to challenge the petition in its Patent Owner Preliminary Response.

Challenges to Printed Publications Post-Institution

Motions to Exclude Evidence

Even if the PTAB institutes an IPR based on a printed publication, a patent owner may challenge the admissibility of the prior art and any supporting evidence under the PTAB trial rules and the Federal Rules of Evidence.11 For example, a patent owner may challenge the authenticity of printed publication evidence under F.R.E. 901, may challenge it as hearsay,12 or may challenge the admissibility of a foreign language document under the PTAB trial rules.13

After complying with the objection process set forth in the PTAB trial rules,14 a patent owner may challenge the admissibility of a printed publication by filing a motion to exclude evidence. Patent owners have been successful in challenging the authenticity of certain website materials, as the PTAB has required that “[t]o authenticate printouts from a website, the party proffering the evidence must produce some statement or affidavit from someone with knowledge of the website . . . for example a web master or someone else with personal knowledge would be sufficient.”15 In one recent case, the petitioner relied on printouts from the Internet Archive’s “Wayback Machine,” a website which allows a user to view archived versions of other websites.16 The petitioner provided a declarant who had personally retrieved the printouts from the Wayback Machine, arguing that declaration was sufficient to authenticate the printouts.17 The PTAB rejected this argument, holding that petitioner must authenticate the information from the website itself, not merely the printout, in order to show that a certain prior art reference was publicly available as of the critical date.18 The PTAB granted patent owner’s motion to exclude.19

In another recent case, the PTAB granted a motion to exclude documents that purported to corroborate the publication date of a prior art technical article.20The article listed a 1995 copyright date, but it lacked a publication date.21 The petitioner submitted evidence including webpages and an award the article’s author received to corroborate the publication date.22 It also submitted two affidavits, one from the article’s author and another from a librarian, both attesting that the article had been published in January of 1995.23 The PTAB excluded the webpages and the award on the basis of hearsay and held that the affidavits did not properly lay a foundation for that corroborating evidence.24However, the PTAB admitted the affidavits themselves and ultimately held that the technical article qualified as prior art on the basis of the librarian’s testimony.25

It is important to note that according to the PTAB rules, motions to exclude should be directed to admissibility challenges rather than sufficiency of the evidence.26 In one recent case, the PTAB dismissed several motions as improper on this basis.27 However, the PTAB did state: “There is a strong public policy for making all information filed in a non-jury, quasi-judicial administrative proceeding available to the public, especially in an inter partesreview which determines the patentability of claim in an issued patent. It is within the Board’s discretion to assign the appropriate weight to be accorded to evidence.”28 Thus, a patent owner should generally include any sufficiency of the evidence challenges in its Patent Owner Preliminary Response and only file Motions to Exclude when it has an evidentiary challenge to present.

Despite the rules and the guidance provided in some cases, however, the PTAB has sometimes been willing to address substantive challenges to prior art printed publications presented in motions to exclude. In one instance, the PTAB denied a patent owner’s motion to exclude a user guide where the patent owner argued the user guide was not publicly available.29 The PTAB found persuasive two witness declarations.30 The first witness declared he had seen the user guide and possessed a CD version of it as of the critical date; the second said the printed user guide and the CD version were substantially the same.31 Thus, the PTAB denied the patent owner’s motion to exclude — but not because of any admissibility issue. Rather, the PTAB held the user guide was publicly available.32 Still, the safest approach for the patent owner, however, is to preserve these types of challenges in the Patent Owner Preliminary Response.

Motions to Submit Supplemental Information

Circumstances may arise where the petitioner discovers new information relating to a printed publication on which it is relying in its petition. Once a trial has been instituted, a petitioner may request authorization to file a motion to submit supplemental information.33 However, if more than one month has passed from the date the trial was instituted, the motion must show why the supplemental information could not reasonably have been obtained earlier and that consideration of the supplemental information would be in the interest of justice.34 In one recent case, the petitioner requested authorization to file a motion to submit a declaration attesting to the accuracy of an English translation of a prior art reference. Although the motion was unopposed by the patent owner, the PTAB did not analyze whether the translation could have been obtained earlier as required by the rules.35 Instead, the PTAB held that petitioner met its burden because the supplemental information “does not change the grounds of unpatentability . . . nor does it change the evidence initially presented in the Petition. . .”36 On the other hand, in another case the PTAB recently denied a request to file supplemental information where the petitioner requested to file an expert declaration from the reference’s author, reasoning that the petitioner should have realized the need for such a declaration earlier.37

Practical Considerations

Given that limited prior art may be included in an IPR petition, petitioners must make sure to fully support and evidence any printed publications on which they rely. The best strategy is to include any corroborating evidence and necessary declarations in the petition for IPR rather than risking the need for a motion for supplemental evidence, which may be denied by the PTAB. If a petitioner is relying on any materials from the Internet, including a declaration or affidavit from a webmaster or person with knowledge of how records were kept on that site would be prudent. If the petitioner is relying on any printed material that was kept in a library, it would be prudent to obtain a declaration from a librarian with knowledge of how the materials were catalogued and indexed. Petitioners should be aware that declarations that merely repeat an assertion that a reference was available on a certain date will generally be insufficient. Thus, it is preferable for a declarant or affiant to have personal knowledge regarding the printed publication and its accessibility to the public.

From the patent owner perspective, there are several opportunities to challenge the sufficiency and admissibility to any printed publications included in a petition for IPR. Because of page limitations imposed by the PTAB rules, petitioners simply may not have the space to fully support the prior art printed publications on which they rely. Any openings left by the petitioner in this respect are a primary opportunity for the patent owner to challenge the sufficiency and / or admissibility of a printed publication and any associated evidence. Recent cases show that the PTAB has continued to undertake a comprehensive analysis of this issue when it is raised pre-institution, so a patent owner may be able to avoid one or more grounds of an IPR or prevent its institution entirely by challenging a printed publication in its Patent Owner Preliminary Response. Patent owners should be careful to maintain any qualification and sufficiency challenges in the Patent Owner Preliminary Response and use motions to exclude for any admissibility challenges.