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`APJs Dispute Requirements for a Reference to Qualify as a Printed Publication | PTABWatch
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`APJs Dispute Requirements for a Reference to
`Qualif as a Printed Pulication
`
`By Michael R. Weiner on October 15, 2015
`Posted in Inter Partes Review, Sections 102/103, Trial Procedures
`
`Final written decisions, IPR201400781, IPR201401086, IPR201400821,
`IPR200400580, IPR201400802, for IPRs of several patents owned by Zond,
`LLC, which include rare dissenting opinions, illustrate different views of APJs
`concerning the requirements for establishing that a reference is a printed
`publication under 35 U.S.C. § 102(b). These decisions provide helpful guidance on
`how to address references whose status as a printed publication may be in dispute.
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`Zond, LLC patents have been frequently targeted in IPR petitions, with 125 petitions filed, including
`challenges to patents directed to “sputtering” methods and apparatus used to deposit films on semiconductor
`substrates. The alleged prior art references relied on in many of these petitions include a Russianlanguage
`Ph.D. thesis allegedly published in 1994, several years before the critical date for the challenged patents. In
`five final written decisions, addressing 16 of the IPRs assigned to the same fiveAPJ panel, APJ Debra K.
`Stephens wrote a dissenting opinion, which disagreed with the panel’s conclusion that the petitioners had
`properly established that the Russian thesis was prior art under § 102(b), specifically questioning whether the
`petitioners had established the thesis was publicly accessible before the critical date.
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`The disputed Russian thesis was a doctoral thesis from the Moscow Engineering Physics Institute. To
`establish that the thesis was a printed publication, the petitioners proffered a copy of a catalog entry for the
`thesis from the Russian State Library, bearing a statement reading “Imprint Moscow 1994,” as well as a
`certified translation of the document. The majority concluded that the petitioners established that the
`document was published (i.e., was publicly accessible) prior to the critical date, although a specific publication
`date was not established. The majority further noted that the patent owner failed to object to the
`admissibility of the thesis, or challenge the authenticity of the thesis or catalog entry. Accordingly, the
`majority concluded that the thesis was prior art under § 102(b).
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`In the dissent’s view, the evidence was insufficient to establish that the thesis was prior art, because the
`evidence did not show that the thesis was disseminated or otherwise made available to interested persons as
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`http://www.ptabwatch.com/2015/10/apjsdisputerequirementsforareferencetoqualifyasaprintedpublication/
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`Exhibit 2007 Page 1
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`Enzo Exhibit 2007
`Hologic, Inc. v. Enzo Life Sciences, Inc.
`Case IPR2016-00820
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`APJs Dispute Requirements for a Reference to Qualify as a Printed Publication | PTABWatch
`10/10/2016
`of the critical date, as required by authority including In re Hall, 781 F.2d 897, 98999 (Fed. Cir. 1986).
`According to the dissent, the designated imprint date alone, without evidence of when the thesis was received
`by the library, when a publiclyaccessible catalog was made available, or concerning general practices of the
`library, did not establish that the thesis was prior art under § 102(b). Further, in the dissent’s view the patent
`owner had no obligation to object to the admissibility of the thesis, because the issue was the sufficiency or
`weight of the evidence, not its admissibility.
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`“
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`a patent owner disputing whether alleged prior art satisfies the requirements
`of § 102(b) should argue about the sufficiency of the evidence, object to its
`admissibility, and move to exclude the alleged prior art
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`These cases illustrate the specific types of evidence that may be required to establish that a disputed printed
`publication is prior art, and suggest that a patent owner disputing whether alleged prior art satisfies the
`requirements of § 102(b) should argue about the sufficiency of the evidence, object to its admissibility, and
`move to exclude the alleged prior art. Until the PTAB issues a precedential opinion concerning these issues,
`the approach of a particular panel of APJs may be difficult to predict.
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`
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`does not create an attorneyclient relationship with Marshall, Gerstein & Borun LLP or with any of its attorneys. Readers should not act upon any information
`on this site without seeking professional legal counsel.
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