To use a textbook or other reference to challenge the validity of a patent in a petition for inter partes review (“IPR”), the textbook must have been “publicly accessible” prior to the date of the challenged patent to qualify as a printed publication. Is a copyright notice sufficient evidence that a textbook was publicly accessible? The short answer is no in most, if not all, cases.  In Hulu, LLC v. Sound View Innovations, LLC, the PTAB denied Hulu’s IPR petition on the ground that Hulu had not provided sufficient evidence to show that a prior art textbook with copyright and ISBN dates was publicly available as of those dates.  As a result, Hulu requested rehearing of the PTAB decision denying institution of inter partes review of the validity of Sound View’s patent, U.S. Patent No. 5,806,062.  Hulu argued the decision was in conflict with other PTAB decisions “involving the public availability of an asserted ‘printed publication.’” “Because prior [PTAB] decisions conflicted on requirements for institution involving issues of public accessibility of an asserted ‘printed publication,’” the Precedential Opinion Panel (“POP”) ordered a rehearing to address the question:  “What is required for a petitioner to establish that an asserted reference qualifies as [a] ‘printed publication’ at the institution stage?”  In the POP’s precedential opinion, it reversed the PTAB panel and found that in this instance, “based on the totality of the evidence currently in the record,” there was sufficient evidence “to establish a reasonable likelihood that the [textbook] was publically accessible before the critical date of the challenged patent, and, thus Petitioner has established a reasonable likelihood that the reference qualifies as a printed publication” for the purposes of institution of an IPR.  However, the POP’s opinion makes it clear that under current precedent, relying on a copyright notice is not enough even for a well-known textbook.  The POP, however, declined to indicate what would be per se enough.  Thus, the opinion leaves many unanswered questions as to what is sufficient evidence that a printed publication is publicly accessible for purposes of the institution of an IPR.  It is also not clear how, in practice, the requirements for the institution now differ from the requirements to prevail in a final written decision by the PTAB even though the standards are different.In prior institution-stage decisions favoring Hulu’s position, the PTAB previously found that 1) “a copyright notice is prima facie evidence that a publication is a prior art”; 2) ”a copyright notice, alone or combined with other minimal corroborating evidence, is sufficient evidence of public accessibility to meet the ‘reasonable likelihood’ threshold for institution”; 3) “a copyright notice by a well-known publisher in the United States is sufficient evidence of public accessibility”; 4) “a copyright notice should be evidence viewed in the light most favorable to a petitioner when resolving disputes regarding public accessibility at the institution stage”; and 5) “where a patent owner merely points out possible inconsistencies in petitioner’s evidence—without submitting its own evidence of a different public availability date—the petition should be instituted, and any determination as to public availability occur during the trial.”  But other PTAB decisions have required significantly more evidence of public accessibility at the institution stage.

Hulu argued “the relevant standard for the institution is whether there is a reasonable likelihood that a reference is a printed publication” and that “’ conventional markers’ of publication satisfy this standard.”  Hulu further pointed out that the full evidentiary record would be developed during the trial phase to satisfy the preponderance of the evidence standard required to prevail in a final written decision.  The patent owner agreed with the “reasonable likelihood” standard but argued the standard is only met when the “petitioner presents its ‘case in chief’ in the petition, including all evidence that will be used in any instituted review…”  Specifically, the patent owner argued that conventional markers (e.g., copyright notices) are not sufficient to meet the standard for the institution.

In its opinion, the POP relies on the applicable statutory language to reach its decision.  Section 311 indicates that an IPR petition “must be based on ‘a ground that could be raised under section 102 [anticipation] or 103 [obviousness] and only on the basis of prior art consisting of patents or printed publications.” 35 U.S.C. § 311(b) (boldface omitted, emphasis added).  Further, Section 312(a) requires that “the petition must identify with particularity … the evidence supporting those grounds, including the prior art patents and printed publications and affidavits or declarations of supporting evidence and opinions.”

As a result, the POP found that “at the institution stage, the petition must identify, with particularity, evidence sufficient to establish a reasonable likelihood that the reference was publicly accessible before the critical date of the challenged patent and therefore that there is a reasonable likelihood that it qualifies a printed publication.”  The POP goes on to state that this is a higher standard than notice pleading but a lower standard than the “’ preponderance’ standard required to prevail in a final written decision.”

The POP declined to find that “any particular indicia per se is sufficient at the institution stage,” but instead stated that “indicia on the face of a reference, such as printed dates and stamps, are considered as part of the totality of the evidence.”

Applying the law to the facts in Hulu, the POP determined Hulu had established a reasonable likelihood that the textbook was a printed publication because of the copyright date, the printing date, the ISBN date, and a declaration and supporting material showing the textbook was from an established publisher and was part of a well-known book series.  The POP, however, declined to indicate whether anything less than this evidence would have been sufficient.  Further, the POP declined to opine as to whether this evidence would be sufficient to meet the preponderance of the evidence standard required to prevail in a final written decision.  Therefore, we are left with the question of whether a supporting declaration or equivalent “independent” evidence will be needed at the institution stage when using any textbook, journal paper, or conference paper as a printed publication.  Based on the current precedent, it appears the answer is that we should proceed with caution and always include support, such as that referenced in Hulu, in IPR petitions.

The POP pointed out that while a petitioner must submit the evidence of a reference’s public accessibility in the initial petition, a petitioner will have limited opportunities to submit new evidence, such as in reply to a patent owner’s preliminary response, in reply to a patent owner’s response, or in a motion to file supplemental information.  For example, a petitioner would be allowed to submit a declaration in reply to a patent owner’s challenge of a reference’s status as a printed publication.  But it does not seem worth the risk.  Include the evidence in the petition, if at all possible.