Addressing the standard for establishing whether a prior art reference qualifies as a “printed publication,” the Patent Trial and Appeal Board (PTAB) denied institution of inter partes review (IPR), finding that the petitioner failed to make a threshold showing that its asserted references were prior art printed publications. Microsoft Corp. v. Corel Software, LLC, Case No. IPR2016-01300 (PTAB, Jan. 4, 2016) (Tartal, APJ). 

Microsoft filed an IPR petition with respect to a patent directed to providing a real-time preview of the impact of user commands on a document being edited. Microsoft argued that the claims were obvious over various combinations of references, including software manuals for QuarkXPress and IRIS. Microsoft argued that the copyright dates in the two manuals sufficiently established the manuals as “printed publications.” Corel, the patent owner, argued that Microsoft failed to establish that either manual was publicly available as of its respective copyright date. The PTAB agreed with Corel. 

With respect to the QuarkXPress manual, the PTAB concluded that the copyright notice in the manual, while possibly evidencing the date of the reference, “sheds virtually no light on whether the document was publicly accessible as of that date.” Moreover, the PTAB found that the copyright notice included a limitation on the use and distribution of the manual, which “suggests that if it was distributed at all, it was only in a restricted and limited fashion.” Microsoft attempted to offer a catalog listing of the manual as evidence of its public accessibility. The PTAB, noting that that the catalog itself had a copyright date after the critical date and seemed to refer to a different version of the QuarkXPress manual, was not persuaded. The PTAB thus concluded that Microsoft failed to establish a threshold showing of public accessibility of QuarkXPress as of the critical date. 

Regarding the IRIS manual, the PTAB noted that this manual listed multiple copyright dates, including dates before and after the critical date: “Petitioner has not shown that IRIS has a copyright date of 1996 in light of the conflicting copyright dates as of 2009–2015 also appearing in IRIS.” Microsoft once again attempted to offer a catalog listing of the reference as evidence of the asserted publication date; however, the PTAB agreed with the patent owner that the listing showed “nothing more than a 2016 copy of the same page of IRIS bearing a 1996 copyright date.” Again the PTAB concluded that Microsoft failed to support a threshold showing of public accessibility of IRIS, and denied institution of IPR.

Practice Note: Petitioners must present their best possible evidence and arguments for instituting IPR in the petition itself. Here, the PTAB denied Microsoft’s request to submit a reply brief with additional evidence, which prevented petitioner from addressing the weaknesses in its petition.