Existence != Access – Public Accessibility Must be Clear

By Alison Ibendahl and Joe Beauchamp –

In a recent decision, the Patent Trial and Appeals Board denied institution of inter partes review after holding that Petitioner Microsoft’s key obviousness reference did not qualify as a printed publication.  Microsoft Corp. v. ThroughPuter, Inc., IPR2022-01566, Paper 13 (May 31, 2023).  The Patent Owner, ThroughPuter, argued that there was no evidence the reference was publicly accessible prior to the patent priority date.  The PTAB agreed, and found that because there was insufficient evidence the reference was publicly accessible, it did not qualify as an invalidating printed publication.

ThroughPuter sued Microsoft in March 2022 for infringement of several patents, including U.S. Patent No. 11,036,556 (“the ’556 patent”).  The ’556 patent claims a multi-stage manycore processing system that is shared dynamically for completion of the tasks of multiple application programs and instances.  In November 2022, Microsoft filed a petition requesting inter partes review of claims 1 through 8 of the ’556 patent based on obviousness grounds.  Each of the obviousness grounds asserted by Microsoft relied in part on the Tuan reference, a doctoral dissertation that Microsoft alleges was publicly accessible in the Keio University library as early as October 2009.

The Parties disputed whether the Tuan reference was publicly accessible as of the critical date and therefore a printed publication.  To support its claim, Mircosoft produced the reference’s Machine Readable Catalog (“MARC”) record from the publishing university and offered expert testimony opining that the MARC record indicated public accessibility as of October 2009.  In response, ThroughPuter argued that Microsoft failed to show public accessibility because it did not offer evidence explaining how a skilled artisan, with reasonable diligence, would have found Tuan.

A reference qualifies as a printed publication if it is publicly accessible to a person interested in the art.  In re Lister, 583 F.3d 1307, 1311 (Fed. Cir. 2009).  A reference is publicly accessible if evidence shows a person interested in the art could have located the reference through reasonable diligence.  SRI Int’l, Inc. v. Internet Sec. Sys., Inc., 511 F.3d 1186, 1194 (Fed. Cir. 2008).

The Board held that the Tuan reference was not shown to be publicly accessible as of the patent priority date, and therefore did not qualify as a printed publication.  The Board explained that Tuan did not have the conventional markings of publication and that the MARC record alone was insufficient to show public accessibility.  See Dec. p. 11.  A MARC record shows existence, but without showing that a library catalog or some other index could have been used to locate the record at the time of the patent priority date, it does not show public accessibility.  Id. p. 13.  Microsoft had produced a December 2021 screen shot of the library catalog used to obtain the MARC record.  The Board found this evidence insufficient because there was no evidence that the screenshot reflected an archived version of the catalog or that the catalog even existed on or before the critical date.  Id.  Microsoft also argued an ordinary artisan would have located the MARC record through a title keyword search.  The Board similarly found this argument unpersuasive, explaining that there was no explanation as to how and why the search would have returned the Tuan MARC record.  Id. at 14-15.

This decision illustrates the burden of proof on parties using an institutional printed publication as an invalidating reference.  The Board explained, “[i]t is not our role to assume facts not in evidence.”  Parties should be prepared to produce evidence showing how a person interested in the art would have located the reference, that the location method was available on or before the patent priority date, and that the method would have resulted in locating the reference.  A mere record of existence of a reference on its own may be insufficient to establish that the reference qualifies as a printed publication..