Draft IEEE Standard Not a Printed Publication in IPR

18456950_sWhether the art presented in an inter partes review petition is a printed publication has arisen more frequently as Petitioners push the envelope to take advantage of the benefits of IPR proceedings. To that end, the PTAB was given the opportunity to decide the issue of whether a draft IEEE standard could be considered a printed publication in Samsung Elec. Co. v. Rembrandt Wireless Techs., IPR2014-00514. Finding that the placement of the draft standard on a “Working Group” server was akin to placing the file on a server to facilitate peer review, which the Federal Circuit has held is not publication, the Board denied the Petition.

To qualify as a printed publication, a document “must have been sufficiently accessible to the public interested in the art.” In re Lister, 583 F.3d 1307, 1311 (Fed. Cir. 2009). Order at 6-7. In this case, Petitioner presented the draft standard, along with the declaration of an editor of the standard. That editor testified that the standard was available on a Working Group server and that announcements were sent when drafts became available. Further, there were no restrictions on who could attend the Working Group meetings, or could provide an email address to be included in the Working Group. Id. at 5.

Patent Owner argued that posting the draft standard to the Working Group server did not make it a printed publication. Further, the Petition did not set forth any evidence regarding the availability of the document to individuals other than members of the group. Id. at 7. There was also no evidence that the group’s meetings were advertised or even announced to the public. Id. at 7.

The Board found that the storage of the prior art was similar to the placement of a file on a server to facilitate peer review in preparation for later publication, which the Federal Circuit has found does not constitute public accessibility. Id. at 8. SRI Int’l, Inc. v. Internet Sec. Sys., Inc., 511 F.3d 1186, 1194 (Fed. Cir. 2008). Thus, the prior art was determined to not be a printed publication. Because the challenged grounds each relied on this disqualified art, the Petition was denied. Id. at 9, 10.

Copyright Notice on Prior Art Establishes Priority Date in IPR

12111095_sThe PTAB weighed in on whether a copyright notice can be sufficient to demonstrate the priority date of a printed publication in FLIR Systems, Inc. v. Leak Surveys, Inc., IPR2014-00411, -434, -608, and -609.  In Flir, Petitioner relied in the petition upon a brochure that contained a copyright notice of 2002. Patent Owner argued that the printed publication was an “undated reference.” Order at 18. Given that the document contained the Copyright notice, however, the Board was persuaded that Petitioner had established a priority date of 2002, and allowed the document as prior art. Id. at 19.

Interestingly, the Board also considered another printed publication, a user guide, that failed to contain a publication date or copyright notice. The Board cited, however, to the testimony of a witness who stated that the user guide was distributed with a related product before the priority date of the subject patent. Further, the witness testified that the product and user guide was publicly available prior to the priority date of the patent-at-issue. Is this not an end-around the printed publication requirement by using a prior use to corroborate the publication? That is what a different PTAB panel found HERE when it decided that an undated document was not prior art because it contained no publication date and that panel decided that any testimony from a witness about a prior use of the underlying product disqualified the art as a prior use, not a printed publication.

PTAB Rejects End-Around the IPR Printed Publication Requirement

17502113_sPost Grant Review provides a breath of fresh air to Patent Office patentability challenge procedures by allowing prior sales and prior uses as eligible prior art. But, of course, PGR is only available for post-AIA patents and only within 9 months of their issue date. For inter partes review, only patents or printed publications can be used in patentability challenges. That has not stopped some petitioners from trying to shoehorn prior uses into the proceedings by disguising them as printed publications…without success.

For example, in A.R.M., Inc. v. Cottingham Agencies, Ltd., IPR2014-00671, involving US Pat. No. 7,666,103, in each of the challenge grounds, Petitioner relied on a prior art reference that related to the operation of an amusement park ride.  The petition and expert testimony both failed to identify the precise date of the reference and, instead, only indicated that the amusement park ride of the reference was built and operated well before the effective filing date of the ‘103 patent.  Decision at 6. The Board took issue with the Petitioner’s reliance on this testimony of “prior use” of the invention to establish a date of the printed publication.

Under 35 U.S.C. § 311(b), inter partes review is limited to challenges based only on patents or printed publications.  Prior use challenges are not available in inter partes review.  Id. at 7. In this proceeding, the Board found that Petitioner did not adequately show that the amusement park ride “reference” was in fact a printed publication, as no prior art date was asserted and the “reference” was referred to as a prior use in both the petition and expert testimony.  With all asserted grounds relying upon the disqualified reference, the Board denied the Petition across all grounds. Id. at 8.

Detailed Means-Plus-Function Analysis Underlies Board’s Decision to Institute Six Related IPR Trials

Six PersonalWeb Technologies patents were thrown into inter partes review trials by EMC Corporation in cases styled as EMC Corp. v. PersonalWeb Tech., LLC (IPR2013-00082 through IPR2013-00087), involving U.S. Pat. Nos. 5,978,791; 6,415,280; 7,945,544; 7,945,539; 7,949,662; and 8,001,096.

The six patents each relate to a data processing system that identifies data items, such as data files or records, by using an identifier which depends on all of the data in the data item and only on the data in the data item. This implies that the identity of a data item is said to be independent of its name, origin, location, or address – a feature that is useful in identifying and subsequently eliminating duplicate copies of data items. The system involves having a “True File registry,” into which all data items are assimilated, with duplicates being eliminated.

After describing the cited art in the first case of the series, the Board began in all six cases with the customary claim construction analysis. Of note in the Board’s ruling was its construction of “data” and “data item.”  Relying on CAE Screenplates Inc. v. Heinrich Fiedler GmbH & Co. KG, 224 F.3d 1308, 1317 (Fed. Cir. 2000), the Board noted that, “[i]n the absence of evidence to the contrary, we must presume that the use of different terms in the claims connotes different meanings.”  See, e.g., 82 Order at 15.

Also of note was the Board’s treatment of the means-plus-function claim language from the subject claims. In particular, the Board found that “[t]he corresponding structure of a means-plus-function limitation…must be more than simply a general-purpose computer or microprocessor to avoid pure functional claiming.”  The Board then conducted a detailed analysis of the specification to determine what structure corresponded to the claimed function.

Finally, in a situation common to the related cases, the Board embarked on a lengthy discussion as to whether some of the prior art references cited by Patent Challenger were “printed publications” under 35 U.S.C. §102(b). For example, Patent Owner argued that one of the references was not a printed publication because there was no evidence to indicate that it could have been located prior to the critical date.  See, e.g., 84 Order at 18.  The Board did not agree, noting that whether a given reference is a printed publication involves a case-by-case inquiry into the facts and circumstances surrounding the reference’s disclosure to members of the public.  Id. at 19.  In this case, because the title page of the reference clearly showed that the reference was posted on a publicly accessible site well known to those interested in the art prior to the critical date, the reference is to be considered a printed publication.  The Board distinguished this type of factual scenario – where the reference indicated when it was created and publicly disseminated – versus the scenario presented in Synopsis, Inc. v. Mentor Graphics Corp., wherein a brochure, without any such indication of public availability, was at issue.

In the end, the Board granted all six of Patent Challenger’s petitions for inter partes review as to all challenged claims based on extensive obviousness and anticipation grounds.