By David Linden* and Matt Johnson

On November 30, the PTAB entered its final written decision in Unified Patents, LLC v. 2BCom, LLC on the patentability of the claims of U.S. Patent No. 7,127,210 (the ‘210 patent).  The claims in question were directed to a wireless communication apparatus, reciting a method by which a wireless communication apparatus, after establishing a connection with at least a first wireless communication device, is inhibited from establishing a connection with a second wireless communication device.  The petitioner, Unified Patents, LLC, challenged the claims as obvious in view of a number of articles, one of which was a Fall 2000 IEEE article, Bluetooth-based wireless connectivity in an automotive environment (the Nüsser reference).

The critical issue was whether the Nüsser reference was sufficiently available to the public more than one year before the filing date of the respective U.S. application—March 14, 2002—to constitute a “printed publication” under pre-AIA 102(b).  The petitioner cited a Machine-Readable Cataloging (MARC) record of the University of Colorado which contained a field with a date of June 23, 2000.  According to the petitioner, this was the date “on or shortly after” which the library first acquired and catalogued a digital version of the Nüsser reference.  The petitioner also relied upon characteristics of other fields within the MARC record to assert that Nüsser was indexed by subject matter.

According to Petitioner’s own testimony, libraries sometimes use a MARC record from a previous work for a subsequently acquired copy of that work, and the previous fields of the MARC record may not be changed.  The PTAB indicated that this significantly undermined Petitioner’s assertions about the availability of the Nüsser reference prior to the critical date.  Furthermore, the PTAB rejected Petitioner’s assertion that Nüsser was timely indexed by subject matter due to Petitioner’s admission that there was no indication as to when the subject matter classifications were added to MARC records.  The PTAB also reasoned that the cited subject matter classifications were too broad and would have resulted in too many search results to meaningfully index Nüsser.

Petitioner also argued that the Nüsser reference was available prior to the critical date based on the PTAB’s precedential Hulu, LLC v. Sound View decision.  In Hulu, the PTAB considered “indicia on the face of a reference.”  Thus, according to Petitioner, the date on the first page of Nüsser—September 2000—provided additional evidence of public accessibility.  Petitioner further contended that as in Hulu, it asserted several dates, each of which predates the critical date, and thus the precise date of public accessibility was irrelevant.  The PTAB distinguished the case from Hulu regarding both arguments.  The PTAB did consider the date on the first date of Nüsser, but the overall record did not “substantiate publication by the dates listed in Nüsser.”  And unlike the decision in Hulu, the PTAB noted that there were gaps and inconsistencies in Petitioner’s asserted dates.  In sum, the PTAB concluded that the ‘210 patent claims were not unpatentable and that the record as a whole did not conclusively establish a publication date to render the Nüsser reference prior art under pre-AIA 102(b).


Unified Patents, LLC v. 2BCom, LLC emphasizes the importance of ensuring the consistency of evidence across the entirety of a matter.  For example, when considering evidence for proving a date of public availability, one should make sure that the evidence presented is relevant to the version of the prior art reference being relied upon.  Attention to detail at the PTAB is of the utmost importance.

* David is an IP Legal Intern in Jones Day’s Cleveland Office

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Matt Johnson is one of the Firm's primary contacts on practice before the PTAB. Currently co-chairing the Firm's PTAB subpractice and involved in proceedings at the Board since the first day of their availability in September 2012, Matt regularly represents clients as both petitioners and patent owners at the Board. He further works as an advocate for clients in appeals from Board proceedings at the Federal Circuit.