On December 20, 2019, the Precedential Opinion Panel (POP) of the Patent Trial and Appeal Board (PTAB) issued its decision in IPR2018-01039, addressing “What is required for a petitioner to establish that an asserted reference qualifies as a ‘printed publication’ at the institution stage [of a post-grant proceeding before the PTAB]?Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 at *2 (P.T.A.B. December 20, 2019).

In Hulu, the Petitioner filed a petition for inter partes review (IPR) asserting that challenged claims would have been obvious over a textbook titled Sed & Awk by Dale Dougherty (Dougherty). A three-judge panel of the PTAB issued a decision on December 3, 2018, denying institution of an IPR. That panel found that the petition did not provide sufficient evidence that Dougherty was publicly accessible, and that Petitioner therefore had not done enough to meet its burden to qualify Dougherty as prior art under 35 U.S.C. §§ 102(a) and (b) for purposes of institution. Id. It therefore declined to reach the merits of Petitioner’s obviousness arguments.

The POP agreed to consider the broader question raised in the Hulu IPR—namely, at the institution stage, what must a petitioner include in its petition in order to provide sufficient evidence that an asserted reference is printed publication prior art? The POP concluded that, for institution of an IPR1, a petitioner must establish a reasonable likelihood based on “a totality of the evidence” that a reference is a printed publication. Id. at 13–14, 17–18. The POP distinguished this burden from a petitioner’s ultimate burden to prove that a reference is a printed publication by a preponderance of the evidence during trial and for purposes of the PTAB’s Final Written Decision. Id.2 The POP did not find that any particular evidence or indicia on a reference is per se sufficient at the institution stage, but rather found that the indicia on the face of a reference, such as printed dates and stamps, should be considered by the PTAB on a case-by-case basis such that each panel will determine under the circumstances whether a petitioner has met its burden to show that a particular reference was publicly available. Id. at 17–19. The POP explained that after filing a petition, a petitioner will have opportunities to submit additional evidence, if necessary, in response to patent owner arguments, including (1) in a pre-institution reply to a patent owner preliminary response, (2) in a reply to the patent owner response after institution and/or (3) in a motion to file supplemental information. Id. at 14–15.

In so finding, the POP agreed with the parties that the standard at institution should focus on whether a petitioner demonstrated a “reasonable likelihood” that a reference is a printed publication and agreed with challenger Hulu’s position that a full evidentiary record could be developed during trial. Id. at 11. It rejected the patent owner’s argument that there should be a “high” or “elevated” threshold determination at institution, that “conventional markers” of publication would be insufficient on their own to make a prima facie case of public accessibility, or that a petitioner should not have an opportunity to present additional evidence after filing its petition. Id. at 11–12.

For the specific reference at issue, the POP found that for purposes of institution, Hulu had established a reasonable likelihood that Dougherty is a printed publication “based on the totality of the evidence to date.” Id. at 19. In particular, the POP identified that “[t]he face of Dougherty bears a copyright date of 1990, a printing date of November 1992, and an ISBN date of 8/94 … [i]n addition, the book is a textbook from an established publisher, O’Reilly, and a well-known book series.” Id. The POP found that, taken together, this evidence was sufficient to establish a reasonable likelihood that Dougherty is a printed publication that a publisher made available to the pertinent public prior to the October 1995 critical date for the challenged patent. Id. at 20. The POP ordered the matter remanded to the original merits panel for further proceedings consistent with its opinion, including consideration of whether to institute a trial on the merits of the obviousness ground presented in the original petition. Id. at 21.

Following Hulu, if potential IPR petitioners intend to rely on printed publication prior art, they should consider whether the reference contains sufficient information on its face to establish a reasonable likelihood that it is a printed publication, or whether additional supporting evidence—such as an authenticating declaration—may be necessary at the institution stage. In considering what to present in the petition, petitioners should be mindful that the PTAB will impose an ultimate burden on the petitioner to prove that the reference is a printed publication by a preponderance of the evidence and consider whether and when to present additional evidence to meet that standard—either by seeking leave to file a pre-institution reply to a patent owner preliminary response or by responding after institution in a reply or motion to file supplemental information. In view of the clarified burdens identified by the PTAB, patent owners should consider whether and when to identify a position that a reference does not qualify as a printed publication, and whether and when—in view of its opportunities to respond later in the proceeding—to challenge the sufficiency of a petitioner’s initial offer of proof. Petitioners and patent owners alike should monitor how the PTAB considers questions of public accessibility post-Hulu, including specific factors considered by the PTAB to indicate public accessibility and whether and to what extent the PTAB permits petitioners to offer evidence of public accessibility that was not included in the original petition.