The Patent Trial and Appeal Board recently provided further guidance on what is needed to establish that a nonpatent reference is a prior art printed publication.
The US Patent and Trademark Office (USPTO) Patent Trial and Appeal Board (PTAB) has provided further guidance on what is required to meet the burden to establish that a reference constitutes a printed publication by designating one decision as precedential (Ex parte Grillo-López) and portions of other decisions as informative (Seabery North America Inc. v. Lincoln Global, Inc.; Argentum Pharmaceuticals LLC v. Research Corp. Technologies, Inc.; In-Depth Geophysical, Inc. v. ConocoPhillips Co.).
In Ex parte Grillo-López, the PTAB addressed what standard applies during examination for determining whether a reference qualifies as a prior art printed publication. The examiner in this case relied on a transcript of a Food and Drug Administration (FDA) committee meeting to reject pending claims. The PTAB had previously addressed this same FDA transcript in the context of inter partes review (IPR) proceedings and found that the petitioner had not shown it to be publicly accessible to the extent required to constitute a prior art printed publication. But, in Ex parte Grillo-López, the PTAB reached a seemingly contradictory conclusion: that the examiner had sufficiently shown that the FDA transcript qualified as publicly available prior art.
The PTAB explained these differing outcomes by clarifying that the burden for establishing the prior art status of a reference applicable to IPR proceedings does not apply during regular examination of a patent application before the USPTO. In IPR proceedings, a petitioner is required to present evidence and arguments to make a “threshold showing” of a reference’s public availability. But, as the PTAB held in Ex parte Grillo-López, “the examination context” is different as it “involves a burden-shifting framework under which the USPTO can shift the burden to the applicant to come forward with rebuttal evidence or argument to overcome a prima facie case.”
The PTAB thus confirmed that an examiner reviewing a pending application only needs to make a prima facie case that a reference qualifies as prior art in order to rely on it for a rejection. In Ex parte Grillo-López, the prima facie case was established by a public notice of hearing for the FDA committee’s meeting, the presence of an interested member of the public at that meeting, and federal law that requires such meetings to be transcribed and for the transcripts to be made publicly available after the meeting.
The PTAB also designated as informative part of an IPR decision addressing whether a doctoral thesis has been sufficiently shown to be prior art. In Seabery, the PTAB found that the petitioner had sufficiently demonstrated that the thesis—which had been written by a student at a German university and deposited in the university’s library—qualified as a prior art printed publication. The petitioner presented testimony of the student’s thesis advisor that he had supervised the thesis work and that, according to the university’s rules at the time, the dissertation had to be deposited in the university’s library. The testimony also confirmed that the thesis was indexed by the library and available for public retrieval.
Based on this evidence, the PTAB rejected the patent owner’s assertion that there was insufficient evidence of the thesis’s publication in the prior art time period. For petitioners, this decision underscores the significance of being able to rely on testimony from a witness with firsthand knowledge of an institution’s practice for indexing publications and making them available to the public.
The PTAB also designated as informative a part of another decision addressing whether a thesis was shown to be prior art in an IPR. In Argentum Pharmaceuticals, the petitioner relied on a joint statement of uncontested facts submitted in a district court case involving the patent owner to show that the thesis was publicly available prior art. The joint statement stated that “for purposes of this litigation, the LeGall thesis was publicly accessible more than one year before the earliest priority date for the ’551 patent and constitutes a ‘printed publication’ within the meaning of 35 U.S.C § 102(b).”
The PTAB was not persuaded that the apparent admission from the patent owner regarding the prior art status of this reference supported a “threshold showing” of public accessibility. The PTAB reasoned that “[d]uring the district court litigation, Patent Owner may have agreed to stipulate to certain facts to streamline matters at trial there, for example, or had other reasons to stipulate on the issue in a case involving different parties in a different forum, regardless of whether the thesis was, in fact, publicly accessible or not.”
This decision highlights that the PTAB may not be persuaded by an admission from the patent owner made in different proceedings, even if directly on point, and that a best practice for petitioners is to additionally present any and all evidence of an asserted reference’s public availability that can reasonably be gathered.
The PTAB also designated as informative a portion of an IPR decision addressing whether a conference paper was demonstrated to be prior art. In In-Depth Geophysical, the petitioner relied on a printout of a webpage found on ResearchGate, a social networking site for scientists and researchers, which listed the title and authors of the conference paper along with the statement “Conference Paper – September 2012 with 45 Reads.”
The PTAB rejected this webpage printout as insufficient to show that the paper qualified as prior art. As the PTAB reasoned, there is “nothing further . . . that explains what this date represents, for instance whether September 2012 was the date of submission, acceptance for publication, or publication, or when the full text became available.” The PTAB also found that the 2012 copyright date associated with the paper “does not provide a specific day, or even month, the paper was published or made publically available, and therefore does not persuasively corroborate the ‘September 2012’ publication date” alleged by the petitioner.
The PTAB’s decision here underscores that a petitioner challenging a patent must come forward with more than a mere date stamp on a reference in order to demonstrate when, if ever, that reference became publicly available.
These PTAB decisions provide important insight on the standards governing printed publications and the factual showing required to demonstrate that a reference was publicly available and qualifies as prior art.
If you have any questions or would like more information on the issues discussed in this LawFlash, please contact the authors, Dion M. Bregman (Silicon Valley) and Ahren C. Hsu-Hoffman (Silicon Valley), or any of the following lawyers from Morgan Lewis’s post-grant proceedings team:
Joshua M. Dalton
Andrew V. Devkar
Jason C. White
Louis W. Beardell, Jr.
Brent A. Hawkins
 Ex parte Grillo-López, Appeal No. 2018-006082 (Jan. 31, 2020) (entire opinion designated precedential); Argentum Pharms. LLC v. Research Corp. Techs., Inc., IPR2016-00204, Paper 19 (May 23, 2016) (Section II.B designated informative); Seabery N. Am. Inc. v. Lincoln Global, Inc., IPR2016-00840, Paper 11 (Oct. 6, 2016) (Section II.A.i designated informative); In-Depth Geophysical, Inc. v. ConocoPhillips Co., IPR2019-00849, Paper 14 (Sept. 6, 2019) (Section I.E designated informative).
 Ex parte Grillo-López, slip op. at 1-2.
 Id. at 2.
 Id. at 2-8.
 Id. at 2.
 Id. at 3.
 Seabery N. Am. Inc. v. Lincoln Global, Inc., slip op. at 7.
 Argentum Pharms. LLC v. Research Corp. Techs., Inc.,slip op. at 10.
 Id. at 11.
 In-Depth Geophysical, Inc. v. ConocoPhillips Co., slip op. at 6.
 Id. at 9.