Printed Publication? Prove it: IPR Petitioners Bear Burden of Establishing Status as Prior Art

By statute, prior art in IPRs is limited to patents and printed publications.  Proving a document was published, as well as the publication date, often requires evidence beyond the document’s face.  As recent Patent Trial and Appeal Board decisions illustrate, petitioners ignore the need for this evidence at their own peril.

For example, decisions denying institution in Coalition for Affordable Drugs (ADROCA)LLC v. Acorda Therapeutics, Inc., IPR2015-00720 and IPR2015-0817, (August 24, 2015) found the petitioner had not established that scientific posters were prior art publications under 35 U.S.C. § 102(b).  It was undisputed that the posters had been displayed at scientific meetings.  Nonetheless, looking to the Federal Circuit’s In re Klopfenstein decision, the Board noted the record lacked evidence establishing:

• the length of time the posters were exhibited,
• the expertise of the target audience,
• whether the posters could be copied, or
• the ease of copying the posters.

Without additional evidence, the Board could not conclude the posters had been published, meaning that the petitioner had not shown a reasonable likelihood of success, requiring denial of IPR institution.

In reaching this conclusion, the Board rejected the petitioner’s argument that an information disclosure statement (IDS) identifying dates the posters were presented established that the posters were publications.  First, under Federal Circuit law, filing an IDS is not an admission that the information cited is material to patentability.  Second, the IDS in question expressly stated that “[i]dentification of the listed references is not meant to be construed as an admission … that such references are available as ‘prior art’ against the subject application.”

The final written decision in Standard Innovation Corp. v LELO, Inc., IPR2014-00148, (Apr. 23, 2015) similarly found a petitioner’s evidence of publication wanting.  The Board found a copyright date—“© 2005-2006”—on a product specification insufficient to show publication before February 2005.  Further, even if copyrighted in 2005, the record did not show the document was available to those in the art, as § 102 requires of “printed publications.”  The Board dismissed corroborating evidence, in the form of websites and search engine results, as inadmissible for lack of authentication and as hearsay.

As these examples illustrate, failing to prove publication can doom non-patent literature as prior art before the Board.  Both petitioners and patent owners should be aware of the evidentiary snares surrounding “printed publications.”