Exhibit 2106 Page 1
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`Enzo Exhibit 2106
`Hologic, Inc. v. Enzo Life Sciences, Inc.
`Case IPR2016-00822
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`

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`10/7/2016
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`PTAB Approaches To Accessibility Of Printed Publication - Law36O
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`the public accessibility of the webpages.[12] The board disagreed, finding that “it [was]
`reasonably likely that web pages locatable by crawlers of the Wayback Machine would be locatable
`to interested persons using typical search engines available at least one year before the critical
`date.”[13]
`
`in ServiceNow Inc. v. Hewlett-Packard Co., the board considered the public accessibility of
`Finally,
`three manuals (referred to as the “Collaborate References”) obtained from a website.[14] The
`petitioner submitted an affidavit by Butler from the Internet Archive that included an archived
`webpage with download links for the manuals, and also pointed out that each of the manuals
`included a copyright date and an indication that the manual was available for download from the
`company's website.[15] On this basis, the petitioner argued that the manuals were publicly
`accessible.[16] The board disagreed and denied institution, finding that the petitioner had “fail[ed]
`to make the critical link between the alleged identification of the Colloborate References on the
`‘download page’ and the exhibits relied upon in support of its asserted grounds.”[17]
`
`With respect to the copyright notice and the indications of availability in the manuals themselves,
`the board held that these statements were inadmissible hearsay.[18] The board acknowledged
`other PTAB decisions in which the copyright notice was accepted as prima facie evidence of
`publication, but stated that it was “not bound by th[ose] determinations.”[19] One judge dissented
`from the decision denying institution, explaining that the “2001 dates on the cover pages of the
`Collaborate References,” “their 2001 copyright notices,” “and the Wayback Machine archive date
`are sufficient to make a ‘threshold showing’ of public availability, similar to showings that we
`have found sufficient to institute trial in the past.”[20]
`
`Professional Articles
`
`In Ericsson Inc. v. Intellectual Ventures I LLC, the petitioner challenged claims based on an article
`(referred to as “Stadler”) published by the Institute of Electrical and Electronics Engineers.[21]
`The board instituted the IPR, but without addressing the issue of public accessibility.[22] The
`patent owner subsequently objected to the authenticity of the article and moved to exclude the
`article, arguing that the date printed on the reference failed to prove public accessibi|ity.[23] The
`board rejected this argument, finding that an IEEE copyright line on the first page of Stadler
`sufficiently evidenced its publication date and public accessibi|ity.[24] The board explained that
`“IEEE is a well-known, reputable compiler and publisher of scientific and technical publications,
`and we take Official Notice that members in the scientific and technical communities who both
`
`publish and engage in research rely on the information published on the copyright line of IEEE
`pub|ications.”[25] The board acknowledged that “[a]||owing IPR petitioners to rely on the IEEE
`publication date in an IPR proceeding, which is an administrative proceeding designed and
`intended to afford expedited and efficient relief, serves the interests of justice.”[26] The copyright
`line was also found to be admissible under the residual hearsay exception,[27] and the patent
`owner's authenticity objection was rejected.[28] On appeal, the Federal Circuit affirmed the PTAB’s
`decision without opinion under Fed. Cir. R. 36.[29]
`
`Quite differently, in TRW Automotive U.S. LLC v. Magna Electronics Inc., the board issued a final
`written decision refusing to accept the copyright date of an IEEE article as proof of publication,
`despite an accompanying International Standard Book Number (“ISBN”).[30] On its face, the IEEE
`article at issue (referred to as “Go|dbeck”), did not include a statement that it had been published.
`[31] Goldbeck did, however, include a 1999 copyright date, an IEEE inscription, and an ISBN
`number.[32] After institution, the patent owner moved to exclude for lack of authentication,
`hearsay, and re|evance.[33] In the final written decision, the board found that the petitioner had
`failed to demonstrate that Goldbeck qualified as a printed pub|ication.[34] In reaching that
`conclusion, the board held that “although the copyright notice is probative that IEEE owns a
`copyright to the article, it is not probative that the article was ever published by IEEE or anyone
`e|se.”[35] The board also found that the petitioner failed to prove that the number on the copyright
`line “is an ISBN, what an ISBN is, what an ISBN signifies, how an ISBN is assigned, who assigns
`it, or when and under what circumstances an ISBN is stamped onto something.”[36] The board
`granted the patent owner's motion to exclude Goldbeck, and because all grounds of invalidity in
`the petition relied on Goldbeck, the board concluded that the challenged claims were not
`unpatentab|e.[37] One judge dissented, finding that “Go|dbeck [was] authentic, admissible, and
`relevant.”[38]
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`Theses a nd Dissertations
`
`In Alternative Legal Solutions Inc. v. Employment Law Compliance Inc., the petitioner challenged
`certain claims of a patent based, in part, on a dissertation written by a student at M1T.[39] To
`establish public accessibility, the petitioner relied solely on the date printed on the dissertation.
`[40] The board instituted IPR on grounds that relied on the dissertation as prior art, without any
`inquiry into evidence of public accessibility. [41] Following institution, the patent owner objected to
`the prior art status of the dissertation and sought third-party discovery regarding authenticity and
`public accessibility of the dissertation.[42] The board denied the patent owner's motion for
`discovery,[43] but did not issue a final written decision evaluating the dissertation’s public
`accessibility because the challenged claims were canceled pursuant to the patent owner's request
`for adverse judgment.[44]
`
`In the more recent Argentum Pharmaceuticals LLC v. Research Corp. Technologies Inc., the
`petitioner challenged the validity of a patent based on a master's thesis from the University of
`Houston dated December 1987.[45] The petitioner argued that the thesis qualified as a printed
`publication because (1) the patent owner had stipulated in a district court case that the thesis was
`publicly accessible, (2) the University of Houston denied the petitioner's request for information
`regarding public accessibility on the grounds that producing the information was contrary to the
`university's competitive interests, and (3) there was evidence of other authors citing other
`University of Houston theses, that, according to the petitioner, indicated the University of
`Houston's theses were accessible to the public in the relevant time frame.[46]
`
`The board declined to institute the grounds based on the thesis, holding that the petitioner had not
`made a threshold showing that the thesis was sufficiently publicly accessible to qualify as a
`printed publication under § 102(b).[47] In reaching this decision, the board was not persuaded by
`the district court stipulation, noting that the patent owner may have “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.”[48] The board also deemed the
`University of Houston's refusal to cooperate insufficient to give rise to a rebuttable presumption
`that the information existed and would establish a reasonable likelihood of public accessibi|ity.[49]
`Last, the examples of University of Houston theses being cited by others did not establish public
`accessibility because the later articles citing the theses were authored either by the same thesis
`author or a thesis adviser.[50] The board reasoned that these individuals would have had personal
`knowledge of the thesis, and therefore, the citations did not establish public access.[51]
`
`Product Guides and Operation Manuals
`
`In Int’| Business Machines Corp. v. Intellectual Ventures I LLC, the petitioner relied in part on an
`Oracle Developer Guide to challenge the patent in question.[52] In the preliminary response, the
`patent owner contended that the petitioner's citation to the Developer Guide itself did not establish
`that it was sufficiently disseminated.[53] The board disagreed with the patent owner and instituted
`the petition, noting that the document “inc|ude[d] a date of ‘September 2000’ on the first page and
`a copyright on the second page” and also “inc|ude[d] a part number and the Oracle
`trademark.”[54] The board found this evidence sufficient for institution.[55] The patent owner
`maintained its position that there was insufficient evidence that the Developer Guide was
`sufficiently disseminated, and filed a motion to exclude multiple exhibits the petitioner proffered
`as to this issue, including a declaration by the primary author of the Developer Guide.[56] The
`board ultimately rendered a final written decision without reaching the issue of whether the
`Developer Guide qualified as a printed pub|ication.[57]
`
`In LG Electronics Inc. v. Advanced Micro Devices Inc., the board considered the public accessibility
`of two publications: (1) a preliminary technical specification prepared by National Semiconductor
`Corporation (“NSC”) for a USB function controller; and (2) a user's manual for the USB function
`controller developed by Seiko Epson Corporation.[58] The NSC specification included a copyright
`date prior to the patent’s priority date and there was evidence that the specification had been
`listed on an information disclosure statement (IDS) submitted in an unrelated patent application
`before the patent’s priority date.[59]
`
`In its decision denying institution, the board noted that “[w]hen determining the threshold issue of
`whether a document is a printed publécagipfloggapéigposes of a decision on institution, a copyright
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`PTAB Approaches To Accessibility Of Printed Publication - Law360
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`notice has been accepted a[s] prima facie evidence of pub|ication.”[60] The board was “persuaded
`that the presence of a copyright notice, together with the listing of the reference in an IDS, may
`be taken as some evidence of public accessibility as of a particular date.”[61] For these reasons,
`the board concluded there was sufficient evidence to demonstrate a “reasonable likelihood’’ that
`
`the NSC specification was a printed pub|ication.[62] Conversely, for the Seiko manual, the board
`determined that the petitioner had not demonstrated a reasonable likelihood that it was a printed
`pub|ication.[63] Regarding the user manual, the petitioner relied “on the date printed on the face
`of [the manual] as evidence of its publication” before the patent’s priority date.[64] The board
`explained that “[t]he date itself only contains the notation ‘Revision: 2.0,’ which may suggest that
`the document was ‘revised’ on March 24, 1998, but is not evidence that it was published on that
`date.”[65] Additionally, the board found a conclusory expert declaration stating that the Seiko
`manual “was more than likely published on or about March 24, 1998,” to be insufficient to
`demonstrate public accessibi|ity.[66]
`
`Conclusion
`
`A petitioner relying on nonpatent prior art should not take the issue of public accessibility lightly in
`the petition. For proving public accessibility, identifying a copyright date alone or pointing to a
`date on a document without providing additional evidence as to the nature of the date can be
`fraught with risk. In addition, the petition should present evidence to authenticate the publication.
`When information concerning public accessibility and authentication is in the hands of third parties,
`as a first course of action, a petitioner can seek cooperation from the third party to obtain a
`declaration authenticating the publication and providing evidence of its public accessibility. If a
`third party located in the United States will not cooperate and a district court litigation is pending,
`a petitioner may also subpoena the third party to obtain a declaration and/or deposition testimony
`to be included in the petition. If neither third party cooperation nor a subpoena is an option, some
`tools available to a petitioner include (1) submitting a declaration from a librarian expert; or (2) if
`the publication was available on a website, submitting an Internet Archive affidavit. With respect
`to the latter, the Internet Archive publishes its requirements for obtaining an affidavit at
`https://archive.org/legal/.
`
`—By Anish Desai, Christopher Marando and Amanda Do Couto, Weil Gotshal & Manges LLP
`
`Anish Desai is a partner, Christopher Marando is an associate and Amanda Do Couto is a summer
`associate in Weil's Washington, D.C., office.
`
`The opinions expressed are those of the author(s) and do not necessarily reflect the views of the
`firm, its clients, or Portfolio Media Inc., or any of its or their respective affiliates. This article is
`for general information purposes and is not intended to be and should not be taken as legal
`advice.
`
`[1] 35 U.S.C. §§ 311, 314.
`
`[2] In re Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004).
`
`[3] In re Wyer, 655 F.2d 221, 226 (C.C.P.A. 1981) (quoting I.C.E. Corp. v. Armco Steel Corp., 250 F.
`Supp. 738, 743 (S.D.N.Y. 1966)).
`
`[4] See, e.g., Coalition for Affordable Drugs IV LLC v. Pharmacyclics, Inc., IPR2015-01076, Paper
`No. 33, Decision Denying Institution at 6 (PTAB Oct. 19, 2015).
`
`[5] Id. at 4.
`
`[6] Id. at 7.
`
`[7] Id. at 7-8.
`
`[8] Id. at 8.
`
`[9] Crestron Electronics, Inc. v. Intuitive Building Controls, Inc., IPR2015-01379, Paper No. 16,
`Institution Decision at 4-5 (PTAB DecE)1”5mt2Q3155)a.ge4
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`[10] Id. at 12.
`
`[11] Id.
`
`[12] Id. at 13-14.
`
`[13] Id. at 14.
`
`[14] ServiceNow, Inc. v. Hewlett-Packard Co., IPR2015-00707, Paper No. 12, Decision Denying
`Institution at 9-20 (PTAB Aug. 26, 2015).
`
`[15] Id., Paper No. 1, Petition at 21-24 (PTAB Feb. 5, 2015).
`
`[16] Id.
`
`[17] Id., Paper No. 12, Decision Denying Institution at 14.
`
`[18] Id. at 16.
`
`[19] Id. at 17.
`
`[20] Id., Dissent at 2-3 (Crumb|ey, J., dissenting).
`
`[21] Ericsson, Inc. V. Intellectual Ventures I LLC, IPR2014-00527, Paper No. 1, Petition at 7 (PTAB
`March 21, 2014).
`
`[22] Id., Paper No. 11, Institution Decision (PTAB Aug. 6, 2014).
`
`[23] Id., Paper No. 41, Final Written Decision at 10 (PTAB May 18, 2015).
`
`[24] Id. at 10-11.
`
`[25] Id. at 11.
`
`[26] Id. at 12.
`
`[27] Id. at 11.
`
`[28] Id. at 12-13.
`
`[29] Intellectual Ventures I LLC, v. Ericsson Inc., No. 2015-1947, 2016 WL 4363178, at *1 (Fed. Cir.
`Aug. 16, 2016).
`
`[30] TRW Automotive U.S. LLC, v. Magna Electronics Inc., IPR2014-01347, Paper No. 25, Final
`Written Decision at 5-12 (PTAB Jan. 6, 2016).
`
`[31] Id. at 9.
`
`[32] Id. at 9-10.
`
`[33] Id. at 4 n.6.
`
`[34] Id. at 8-11.
`
`[35] Id. at 8.
`
`[36] Id. at 10.
`
`[37] Id. at 12-13.
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`[38] Id., Dissent at 20 (Ca|ve, J., dissenting).
`
`[39] Alternative Legal Solutions, Inc. v. Employment Law Compliance, Inc., IPR2014-00562, Paper
`No. 1, Petition at 3 (PTAB April 1, 2014).
`
`[40] Id.
`
`[41] Id., Paper No. 9, Institution Decision at 21 (PTAB Oct. 7, 2014).
`
`[42] Id., Paper No. 18, Motion for Authorization to Compel Testimony at 1-4 (PTAB Dec. 18, 2014).
`
`[43] Id., Paper No. 22, Order Denying Motion (PTAB Dec. 23, 2014).
`
`[44] Id., Paper No. 25, Judgment (PTAB Feb. 2, 2015).
`
`[45] Argentum Pharmaceuticals LLC v. Research Corp. Technologies, Inc., IPR2016-00204, Paper
`No. 19, Institution Decision at 3 n.1 (PTAB May 23, 2016).
`
`[46] Id. at 10.
`
`[47] Id. at 12.
`
`[48] Id. at 11.
`
`[49] Id.
`
`[50] Id. at 11-12.
`
`[51] Id.
`
`[52] Int’| Business Machines Corp. v. Intellectual Ventures I LLC, IPR2014-01385, Paper No. 7,
`Institution Decision at 5 (PTAB Feb. 11, 2015).
`
`[53] Id. at 18.
`
`[54] Id. at 19.
`
`[55] Id.
`
`[56] Id. Paper No. 50, Motion to Exclude (PTAB Oct. 6, 2015).
`
`[57] Id., Paper No. 64, Final Written Decision at 26 (PTAB Jan. 15, 2016).
`
`[58] LG Electronics, Inc. v. Advanced Micro Devices, Inc., IPR2015-00329, Paper No. 13, Decision
`Denying Institution at 9-13 (PTAB July 10, 2015).
`
`[59] Id. at 10-11.
`
`[60] Id. at 12.
`
`[61] Id.
`
`[62] Id. at 12-13.
`
`[63] Id. at 13.
`
`[64] Id.
`
`[65] Id.
`
`[66] Id-
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`All Content © 2003-2016, Portfolio Media, Inc.
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`http://www. I aw360.com/arti cl es/845934/pri nt?secti on= i p
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