The PTAB recently designated a number of cases regarding procedures for determining whether a prior art reference is a “printed publication.”  One opinion regarding the difference in burdens of proving “printed publication” status between examination and IPRs was deemed precedential, while four other cases were identified as informative examples.  We will cover these designated decisions in further detail in the days to come.

Ex parte Grillo-López, Appeal No. 2018-006082 (Jan. 31, 2020) (precedential)

This decision to deny a request for rehearing explains that the burden for establishing that a reference is a printed publication is different in examination than in an inter partes review proceeding. The holding in Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 (PTAB Dec. 20, 2019) (precedential), does not apply to examination. 

Argentum Pharmaceuticals LLC v. Research Corporation Technologies, Inc., IPR2016-00204, Paper 19 (May 23, 2016) (informative as to section II.B)

This decision determines that the Petitioner did not sufficiently show that a reference was publicly available because the record included only a district court joint statement of uncontested facts identifying the reference as a printed publication. The joint statement did not involve the Petitioner and expressly indicated that it was only for purposes of the district court litigation. 

Seabery North America Inc. v. Lincoln Global, Inc., IPR2016-00840, Paper 11 (Oct. 6, 2016) (informative as to section II.A.i)

This decision determines that the Petitioner made a sufficient showing for purposes of institution that a reference was publicly available, where the record included testimony that the reference was deposited in a university library, indexed and available for retrieval by the public, and that reprints of the reference bear a copyright and publication date.

Sandoz Inc. v. AbbVie Biotechnology Ltd., IPR2018-00156, Paper 11 (June 5, 2018) (informative as to section III.C.1)

This decision determines that the Petitioner made a sufficient showing for purposes of institution that a drug package insert was publicly available, where the record included a screenshot of an archived FDA webpage from the Internet Archive and testimony from a medical doctor describing the use and accessibility of information on the FDA’s webpage.

In-Depth Geophysical, Inc. v. ConocoPhillips Company, IPR2019-00849, Paper 14 (Sept. 6, 2019) (informative as to section I.E)

This decision determines that the Petitioner did not sufficiently show that a conference paper was publicly accessible because the paper’s copyright date and date stamp were insufficient to show that the paper was actually disseminated prior to the date of the conference, or otherwise available to interested persons of ordinary skill in the art. 

The following two tabs change content below.
Matt Johnson is one of the Firm's primary contacts on practice before the PTAB. Matt consults on nearly every one of Jones Day's over 290 PTAB cases to date. He currently serves as co-chair of Jones Day's PTAB practice.