While an IPR petitioner may challenge the validity of a patent based on any prior patents or printed publications under 35 U.S.C. §311(b), scouring the internet, libraries, or personal repositories looking for product advertisements or brochures to use as prior art, may prove to be a futile exercise if petitioner cannot prove the date, or even source, of the publication. 

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In a recent decision, the Board denied petitioner’s request for inter partes review because one of the references relied on in each of the asserted grounds failed to qualify as prior art.  In A.R.M., Inc. v. Cottingham Agencies, Ltd. (IPR2014-00671, Paper 10), A.R.M. challenged the validity of U.S. Patent No. 7,666,103 (“the ’103 patent”) owned by Cottingham Agencies, Ltd. which relates to an amusement park ride.  FIG. 1 of the ’103 patent is shown above.

Petitioner challenged claims 1-46 of the ’103 patent on four grounds.  The grounds were based largely on U.S. Patent No. 1,023,897 (“the ’897 patent”) to Walsh and a brochure of an amusement park ride referred to as “Barnstormer.” An image of the Barnstormer is shown above (yellow).

The ’103 patent was filed in the United States on December 27, 2004.  In the IPR petition, petitioner contended that the Barnstormer brochure was prior art to the ’103 patent.  As evidence, the petitioner submitted a declaration from the President of A.R.M. stating that the Barnstormer ride was built, installed, and operated in various amusement parks during the 1970s to 1990s.  The declaration includes attachments to a website indicating that the Barnstormer was in operation in 1978.  In addition, petitioner submitted a second brochure (shown above, red) that petitioner asserted was “created before the closure of Opryland Amusement Park in 1997.”

Despite the petitioner’s evidence and accompanying declaration, and despite the quality and nature of the brochures which seemingly dates them prior to 2004, the Board found that the Petitioner failed to provide evidence or arguments to support the conclusion that the Barnstormer brochure was a printed publication available as prior art to the ’103 patent.  The Board held that to qualify as a “printed publication,” the reference has to have been sufficiently accessible to persons ordinarily skilled in the subject matter when exercising reasonable diligence.  The Board noted that the face of the reference, the petition, and the declaration all failed to provide any date for the Barnstormer brochure.  The Board deemed it irrelevant that the Barnstorm ride was available to the public before the filing date of the ’103 patent because petitioner did not provide evidence to show that the Barnstormer brochure was a printed publication reasonably accessible to the public.

While it might seem clear that an advertisement or brochure was published prior to the effective filing date of the accused patent, petitioners may benefit from being over-inclusive and including the source, specific date, and distribution of the reference, if necessary, to help ensure that the Board considers the reference as being available to the public and qualifying as prior art.  Without such information, petitioner may just be spinning its wheels.