In Hulu, Inc. v. Sound View Innovations, LLC, (PTAB IPR 2018-01039 December 20, 2019) the Patent Trial and Appeal Board had the opportunity to set the standard for what prior art qualifies as a ‘printed publication’ at the institution of an IPR proceeding.
35 U.S.C. § 311 allows a party to institute, via a petition, an inter partes review of a patent on the ground that could be raised under Section 102 or 103, and only on the basis of prior art consisting of patents or printed publications. Associated Section 312 indicates that the petition must identify with particularity (1) the claims challenged, (2) the grounds on which that challenge is based, and (3) the evidence supporting those grounds, including the prior art patents and printed publications. . . Section 314(a) indicates that the Director may not authorize an IPR proceeding to be implemented unless the Director determines that the information presented in the petition (and any response) shows that there is a reasonable likelihood that the petition would prevail with respect to at least one of the claims challenged.
The PTAB noted to prevail in a final written decision in an IPR, the petitioner bears the burden of establishing by a preponderance of the evidence that a particular document is a printed publication. The PTAB determined 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 as a printed publication.” Pursuant to this standard, there is no presumption in favor of institution or in favor of finding a reference to be a printed publication and no particular indicia of publication (such as printed dates and stamps) are sufficient to establish that a publication qualifies as a printed publication at the institution stage – but such indicia are considered as part of the totality of the evidence.
