1
`
`IROBOT 2011
`Shenzhen Silver Star v. iRobot
`IPR2018-00897
`
`

`

`Best Practices For Proving A
`Document Is A Printed Publication
`
`Presenters: Judges Lora Green & Brian McNamara
`December 7, 2017
`
`2
`
`

`

`Overview
`• Burdens
`
`• Underlying Legal Principles
`
`• Frequent Printed Publication Issues
`
`• Summary of Best Practices
`
`12/7/2017
`
`3
`
`3
`
`

`

`Burdens in Post Grant Proceeding
`
`•
`
`Petitioner bears the burden of demonstrating that the reference is a printed
`publication
`
`• At institution, Petitioner must demonstrate a reasonable likelihood (IPR) or that it is
`more likely than not (CBM, PGR) that the reference qualifies as a printed
`publication
`
`•
`
`The burden of production shifts to Patent Owner to present evidence
`demonstrating that the reference is not a printed publication. Cf., Dynamic
`Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1380 (Fed. Cir. 2015)
`
`12/7/2017
`
`4
`
`4
`
`

`

`Burdens in Post Grant Proceedings
`
`•
`
`•
`
`The burden of persuasion always remains with Petitioner. In re Magnum Oil Tools
`Int’l, Ltd, 829 F.3d 1364, 1375 (Fed. Cir. 2016) (“In an inter partesreview, the burden
`of persuasion is on the petitioner to prove ‘unpatentability by a preponderance of
`the evidence,’ 35 U.S.C. § 316(e), and that burden never shifts to the patentee.”).
`
`Thus, at final written decision, it is Petitioner’s burden to demonstrate that the
`reference is a printed publication by a preponderance of the evidence. 35 U.S.C.
`§ 316(e); Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (“In an
`[inter partesreview], the petitioner has the burden from the onset to show with
`particularity why the patent it challenges is unpatentable.”)
`
`12/7/2017
`
`5
`
`5
`
`

`

`Burdens in Ex Parte Proceedings
`
`•
`
`The burden of making a prima facie case that a reference is a printed publication is
`on the Examiner. MPEP § 2128(II)(B) (“Absent evidence of the date of publication
`that the disclosure was publicly posted, if the publication itself does not include a
`publication date (or retrieval date) it cannot be relied upon” as prior art); but see
`MPEP § 2128(II)(A) (“The Office policy requiring recordation of the field of search
`and search results … weighs in favor of finding that Internet and on-line database
`references are accessible to persons concerned with the art to which the document
`relates and thus most likely to avail themselves of its contents”).
`
`• Once the Examiner makes a prima facie case, the burden shifts to Applicant to
`demonstrate that a reference is not a printed publication. In re Nature Remedies,
`Ltd., 315 Fed. Appx. 300, 2009 WL 615841 (Fed. Cir. 2009). Cf.In re Epstein, 32 F.3d
`1559, 1570-71, 31 USPQ2d 1817, 1824-25 (Fed. Cir. 1994) (Plager, J., concurring)
`(discussing the concept of the prima facie case in connection with a public use or
`on sale bar).
`
`12/7/2017
`
`6
`
`6
`
`

`

`Burdens in Ex Parte Proceedings
`
`• On appeal to the PTAB, the Board determines if the rejection is supported by a
`preponderance of the evidence. SeeIn re Caveney, 761 F.2d 671, 674 (Fed. Cir. 1985)
`(“[P]reponderance of the evidence is the standard that must be met by the PTO in
`making rejections ….”), Ex parte SPX Corp., App. 2006-1875 (BPAI March 14, 2007)
`(same).
`
`12/7/2017
`
`7
`
`7
`
`

`

`Underlying Legal Principles
`
`•
`
`•
`
`•
`
`•
`
`•
`
`Touchstone is “public accessibility.” In re Hall, 781 F.2d 897-899 (Fed. Cir. 1986)
`
`Case by case inquiry into facts and circumstances surrounding reference’s disclosure to
`members of the public. In re Klopfenstein, 380 F. 3d 1345, 1350 (Fed. Cir. 2004) – Who is the
`public? What is “accessible?”
`
`Key Inquiry – whether reference was made “sufficiently accessible to the public interested in
`the art” before critical date. In re Lister, 583 F. 3d 1307, 1311 (Fed. Cir 2009)
`
`Reference is publically accessible upon satisfactory showing that document has been
`“disseminated or otherwise made available to the extent that persons interested and ordinarily
`skilled in the subject matter or art exercising reasonable diligence [] can locate it.” Kyocera
`Wireless Corp. v. ITC, 545 F. 3d 1340, 1350 (Fed. Cir. 2008)
`
`If accessibility proved, no requirement to show particular members of the public
`received the information. Constant v. Advanced Micro Devices, Inc., 848 F. 2d 1560,
`1568 (Fed. Cir. 1988)
`12/7/2017
`
`8
`
`8
`
`

`

`Underlying Legal Principles
`
`•
`
`•
`
`•
`
`•
`
`•
`
`If no facts in dispute, whether reference is printed publication is question of law.
`In re Cronyn, 890 F.2d 1158-1159 (Fed. Cir. 1989)
`
`Burden of proof on party seeking to introduce reference – sufficient proof of
`dissemination to persons concerned with art to which document relates and most likely
`to avail themselves of its content. In re Wyer, 655 F. 2d 221, 227 (CCPA 1981)
`
`POSITA can locate it and recognize therefrom the essentials of the claimed invention
`without the need for further research or experimentation. Bruckelmyerv. Ground
`Heaters, Inc., 445 F.3d 1374, 1378 (Fed. Cir. 2006)
`
`Form of publication not determinative – may be in print, by data retrieval system, etc. In
`re Wyer, 655 F.3d at 226
`
`Additional Guidance: § MPEP 2128
`
`12/7/2017
`
`9
`
`9
`
`

`

`Frequent Printed Publication Issues
`• Documents stored in public/private libraries
`• Conference proceedings
`• Oral presentations
`• Slide presentations
`• Advertisements
`• On-line versions of texts/documents
`• Websites
`• Wayback Machine
`• Data sheets/Application notes
`• Clinical trials
`• Patent file histories
`• Copyright notice
`• Video recordings/Web Video Clips
`
`12/7/2017
`
`10
`
`10
`
`

`

`Documents Stored In Public/Private Libraries
`
`•
`
`•
`
`•
`
`•
`
`•
`
`Doctoral thesis indexed and shelved in library, even if library access restricted, is printed publication.
`In re Hall, 781 F. 2d 897 (Fed. Cir. 1988)
`Proved by testimony about cataloguing and shelving practices at the time
`–
`Even if library access restricted, still printed publication if presumption is raised that portion of public
`concerned with art would know of invention.
`– No such presumption when only 3 members of graduate committee have access. In re Bayer, 568 F. 2d 1357 (CCPA
`1978)
`Doctoral theses shelved and indexed on index cards in shoe box kept in chemistry department and
`filed alphabetically by student name & title not catalogued in meaningful way – not printed
`publication. In re Cronyn, 890 F.2d 1159 (Fed. Cir 1989)
`Thesis could only be found if student’s name known
`–
`Researcher’s name bears no relation to subject of thesis
`–
`Petitioner showed document submitted to CERN Library, but not when it became publically accessible,
`or that POSITA would have been able to locate it - not printed publication. EMC Corp. v. Acqis,
`IPR2014-01469 (PTAB Mar 8, 2016) (Final Dec)
`
`Best Practice: prove by testimony that demonstrates dissemination, public accessibility
`– When document received, when & how catalogued (show how the relevant public could locate it)
`If possible provide testimony by person responsible for cataloguing & shelving at time of receipt
`–
`– Next best thing – testimony by person with knowledge of procedures in place at time of receipt, e.g. successor to
`person who catalogued document
`– Other options: written or formal cataloging/shelving procedures; person who can testify as to informal procedures
`regularly followed
`
`12/7/2017
`
`11
`
`11
`
`

`

`Conference Proceedings
`
`• Prove date of availability NOT date of conference
`– May be same if document made available at conference
`– Best practice: Prove with evidence, e.g., testimony by attendee
`– Next best thing: Evidence from those knowledgeable about the preparations and
`actual dissemination of the subject proceedings;
`– Next, next best thing: Evidence by those knowledgeable of how such proceedings
`are generally prepared and distributed (may be insufficient)
`
`• Alternative evidence
`– Conference Publication database; IEEE, etc.
`– Caution: some databases only provide year of publication (evidence of
`publication only on the last day of the year) – relying on the actual date of the
`conference as publication date of document may require additional testimonial
`evidence from attendee or someone with actual knowledge See Ericsson Inc. v.
`Intellectual Ventures I LLC, IPR2016-01169 (PTAB Dec. 14, 2016) (Dec. to Institute)
`
`12/7/2017
`
`12
`
`12
`
`

`

`Oral and Slide Presentations
`
`–
`
`–
`
`• Oral Presentation w/o slides or other documentation
`– NOT printed publication
`Reference displayed but not distributed or indexed
`Best practice: Prove printed pub status with evidence – Testimony of attendee or one with actual
`–
`knowledge; Photographs of presentation
`4 Factors
`Length of time display exhibited
`•
`Expertise of target audience
`•
`Existence (or lack thereof) of reasonable expectations that material would not be copied
`•
`Ease with which material could be copied
`•
`reference shown to members of public having ordinary skill who could take notes and photographs of the
`•
`reference, for lengthy amount of time and absence of restrictions on use of reference was sufficiently accessible
`to be a printed publication In re Klopfenstein at 1350.
`Testimony that 14 page slide presentation was submitted to IEEE 801.11 high throughput study
`group found not present sufficient facts and circumstances to demonstrate disclosure to public.
`Huawei Device USA, Inc. v. SPH America, LLC, IPR2015-00221 (PTAB May 28, 2015)
`Slide presentation distributed but not indexed
`Best practice: Prove with evidence/testimony of attendee or one with actual knowledge, e.g.
`–
`conference organizer, that document was available and disseminated at conference
`
`•
`
`•
`
`12/7/2017
`
`13
`
`13
`
`

`

`Data Sheets, Application Notes, Advertisements
`Date on face of document generally not sufficient to show public accessibility – must
`show dissemination
`– Advertisement in magazine & mailer not prior art in absence of evidence of receipt by any of the
`addressees before filing date. Carella v. Starlight Archery, 804 F. 3d 135 (Fed. Cir. 1986)
`Date on data sheet not sufficient proof of public availability. Toshiba Corp.v. Optical
`DevicesLLC, IPR2014-01447 (Final Dec. Mar 9, 2016)
`Press announcement of new product (obtained on Wayback Machine) is evidence of product
`–
`availability, not evidence datasheet was available
`Testimony that “it stands to reason” datasheet was also available “as chip companies typically
`disseminate a datasheet” not persuasive as not based on specific knowledge or underlying facts
`Declaration of corporate director of marketing that company’s practice has been to make
`publicly available datasheets and articles for devices it offers for sale supports conclusion
`that data sheet is printed publication as of the date on data sheet. Kinetic Tech. Inc. v.
`Skyworks Solutions, Inc., IPR2014-00690 (PTAB Oct. 19, 2015)(Final Dec.)
`
`–
`
`Best practice – obtain testimony from chip company personnel with actual knowledge or
`at least knowledge of normal practices concerning such documents
`– Declaration of CEO sufficient to support public availability of dated manual . See In re Enhanced
`Security Research, 739 F. 3d 1347, 1354-55 (Fed. Cir. 2014)
`
`•
`
`•
`
`•
`
`•
`
`12/7/2017
`
`14
`
`14
`
`

`

`•
`
`•
`
`Websites/WayBack Machine
`
`Current Webpages
`Typically provided as a printed exhibit
`–
`– Not generally self-authenticating – evidentiary issue
`– Authenticity: Testimony of person who printed it out as to when it was printed and what it looked
`like, e.g., Attachment 1 is printed version that accurately represents the screen I observed on (date
`certain) and which I printed out
`Similar to testimony to establish photograph is fair and accurate representation of what a witness
`–
`saw
`– Does not establish what the page looked like on an earlier date
`Archived Webpages: Authentication v. Hearsay with respect to Printed Publication
`– Use webpages that no longer exist as prior art
`– Authenticate with affidavit Wayback Machine employee with personal knowledge of contents who
`can verify copy is true and accurate copy of WBM records. Note: some courts have required
`testimony from original poster
`– Hearsay (AIA proceedings apply FRE; ex parte proceedings, e.g., ex parte reexams do not):
`(i) not hearsay if website describes product/concept sufficiently to an anticipate or render obvious, because it is
`•
`admissible without regard to its truth to show statements were made;
`(ii) is hearsay for purpose of showing disclosure was available to the public as of critical date – proponent must
`prove truth of matter asserted, i.e., that archive accurately represents the website on specific date – possible
`approaches: (1) testimony form original poster; (2) testimony from employee of Internet Archive having
`personal knowledge of archiving practices.
`
`•
`
`12/7/2017
`
`15
`
`15
`
`

`

`On-Line Versions of Documents/Texts
`Temporary availability – Electronic Frontier Foundations v. Personal Audio, LLC,
`IPR2014-00070 (Apr. 18, 2014)
`– Insufficient factual evidence that temporarily available document obtained
`through Wayback Machine and no longer existing at URL was publically
`accessible
`– Face of document says it was posted to a group, but Petitioner provides no
`evidence about the group, its members, or its size
`
`Publicly available as of date publicly posted
`– Establish earlier date by copy of original document
`
`•
`
`•
`
`• Other Circumstances – e.g., on-line version of textbook
`– Is it worth objecting? Was document generally available off-line?
`– Residual hearsay exception FRE 807 – equivalent circumstantial guarantees
`of trustworthiness
`
`•
`
`Best Practice: provide sufficient evidence of public dissemination; Choose battles
`wisely
`12/7/2017
`
`16
`
`16
`
`

`

`•
`
`•
`
`Patent File Histories, Copyright Notices
`Patent File Histories
`– Citation in IDS alone is NOT sufficient to demonstrate document is printed publication.
`Microsoft Corp. v. Bascotti Inc., Case IPR2014-01457, slip op. at 25–28 (PTAB Mar. 19, 2015)
`(Paper 9)
`– File history of patent reference is accessible to anyone who sought it - its contents is
`available as prior art. Duodecad IT Svcs. Luxenbourg S.A.R.L. v. WEG Acquisition LLC, IPR2015-
`01036 (PTAB Oct. 20, 2016) (Final Decision)
`Copyright Notices
`– Copyright Notice sheds virtually no light on public accessibility as of that date – additional
`evidence required. Microsoft Corp. v. Corel Software, LLC, IPR2016-01300 (PTAB Jan. 4,
`2017)(Denial of Institution)
`– Copyright Notice as hearsay v. probative evidence of publication discussed. Xactware
`Solutions, Inc. v. Pictometry Int’l. Corp., IPR2016-00593 (PTAB Aug. 31, 2016)(Dec. to Institute);
`Ford Motor Co. v. Versata Development Grp., Inc., IPR2016-01014 (PTAB Sept. 27, 2016)(Denial
`of Institution)
`
`12/7/2017
`
`17
`
`17
`
`

`

`Video Recordings, Web Video Clips
`• Narrated video recorded on CD satisfies “printed” requirement because CD
`includes indicia stored on it that defines content to be displayed
`– BUT was not a “publication” because evidence showed dissemination limited to
`surgeons who qualified through application and approval process were far more
`qualified than those of ordinary skill). Medtronic, Inc. v. Mark A. Barry, IPR2015-00780
`(PTAB Sep. 7, 2016)(Final Dec.)
`• Product video continuously available to public on Internet for about a year
`found to be a printed publication. AccoBrands Corp. v. Think Products,
`Inc., IPR2015-1167 (PTAB Oct. 11, 2016)(Final Decision)
`– Petitioner provided declaration of ACCO Brands employee concerning development and
`availability of website to promote its ClickSafe product
`– Frames of video disclosed the claimed features
`• Best Practice: To rely on a video, provide evidentiary support for its public
`accessibility
`
`12/7/2017
`
`18
`
`18
`
`

`

`AIA Procedural Issues
`
`•
`
`•
`
`Status as prior art printed publication is substantive, not evidentiary issue
`– Not subject matter for motion to exclude
`– Address in substantive papers, e.g. petition, preliminary response; See Kinetic Tech., Inc. v. Skyworks
`Solutions, Inc., IPR2014-00690 (PTAB Oct. 19, 2015)(Final Dec.)
`Best Practice for Petitioner – Address in AIA Petition
`Patent Owner may dispute status of document as printed publication in Preliminary Response
`–
`– No guarantee panel will allow Petitioner to respond if raised in Preliminary Response
`Best Practice for Patent Owner – Dispute in Preliminary Response
`– May defeat institution; can raise again after institution with more insight into panel’s view
`– Delaying allows Petitioner to refute in Petitioner Reply – could require Patent Owner to depose witness
`and rely on Observations on Cross Examination – less opportunity to argue
`– Motorola Mobility v. Intellectual Ventures, IPR2014-00501: evidence in Petitioner's Reply OK because
`Petitioner provided sufficient evidence to make initial determination, evidence was submitted in reply
`to Patent Owner’s arguments, Patent Owner had opportunity to cross-examine Petitioner’s witness
`• Motion to File Supplemental Information – w/in 30 days of institution
`Typical Evidentiary Objections to Documents
`•
`Lack of Authentication
`–
`– Hearsay
`Typical Evidentiary Objections to Petitioner’s Supporting Evidence
`– Hearsay, Testimony not based on actual knowledge
`– Relevance
`12/7/2017
`
`•
`
`•
`
`19
`
`19
`
`

`

`Best Practices Summary
`
`•
`•
`
`•
`•
`•
`•
`
`•
`
`•
`•
`
`Remember that printed publication status is a question of law based on underlying facts
`Recognize that each case is unique and has its own set of facts – plan your case
`accordingly
`Recognize that most printed publication issues concern public accessibility
`In AIA cases address such issues in Petition and Preliminary Response
`Consider issues that require proof, especially for on-line documents
`Support positions with declarations from persons with actual knowledge of events, if
`possible; rely on evidence of formal or regular procedures as backup
`Address ultimate question of printed publication status as a substantive issue, not an
`evidentiary matter – NOT subject matter for a motion to exclude
`Consider possible evidentiary issues in inter partes proceedings
`Successful motions to exclude certain evidence may result in there being insufficient
`factual evidence to establish printed publication status as a matter of law
`
`12/7/2017
`
`20
`
`20
`
`

`

`Example Bio/Pharma AIA proceedings
`Involving Printed Publication Issues
`
`–
`
`Protocols for Clinical Trials
`Boehringer Ingelheim Int’l GMBH v. Biogen, Inc., IPR2015-00418 (PTAB Jul. 13, 2015) (Dec. Inst.) (published protocols for
`–
`cancer treatments not sufficiently shown to be printed publications as they were not shown to be disseminated by a
`cooperative group that perform multicenter cancer clinical trials).
`Coalition for Affordable Drugs IV LLC V. Pharmacyclics, Inc., IPR2015-01076 (PTAB Oct. 19, 2015) (Dec. Inst.) (published clinical
`trial apparently retrieved from www.clinicaltrials.gov not shown to be a printed publication as Petitioner did not submit a
`threshold amount of evidence demonstrating it was available before the critical date).
`Drug Labels
`Frontier Therapeutics, LLC. V. medac Gesellschaft fur klinische Spezialpraparate mbh, IPR2016-00649 (PTAB Sep. 1, 2016) (Dec.
`–
`Inst.) (package insert for a pharmaceutical product not sufficiently shown to be printed publication; Board found conclusory
`statements of Petitioner’s expert without supporting evidence to be insufficient to establish public availability).
`– Mylan Pharm., Inc. v. Boehringer Ingelheim GMBH, IPR2016-01565 (PTAB Aug. 1, 2017) (Req. Reh’g Dec. Inst.) (finding that
`Petitioner did not provide evidence demonstrating that drug label was publicly available, noting that “a copyright date is
`associated with the creation of a document, but not necessarily its publication.”).
`Pfizer Inc. v. Biogen Inc., IPR2017-01166 (PTAB Nov. 13, 2017) (Dec. Inst.) (drug label not shown by Petitioner to be a printed
`publication as the record was ‘devoid of evidence” demonstrating the public availability of the label before the critical date).
`Teva Prarm. USA, Inc. v. Indivor UK Ltd., IPR2016-00280 (PTAB Jun. 10, 2016) (Dec. Inst.) (drug label not shown to be printed
`publication even though patent owner had appeared to stipulate to that in a co-pending litigation).
`Reports filed with the U.S. Securities and Exchange Commission (“SEC”)
`Celltrion, Inc. V. Biogen, Inc., IPR2017–01095 (PTAB Oct. 6, 2017) (Dec. Inst.) (Annual Report filed with SEC was not sufficiently
`–
`established to be a printed publication based on Petitioner’s reliance on the EDGAR Filing Manual and EDGAR Filing Details
`showing filing date and acceptance of the report).
`12/7/2017
`21
`
`–
`
`–
`
`•
`
`•
`
`•
`
`21
`
`

`

`Example Bio/Pharma AIA proceedings
`Involving Printed Publication Issues
`
`•
`
`•
`
`•
`
`Public Presentations
`Coalition for Affordable Drugs VIII, LLC v. The Trustees of the U. of Penn., IPR2015-01835 (PTAB Mar. 6, 2017) (Final Dec.)
`–
`(concluding that a slide presented at an Investor Day not shown to be a printed publication as press release announcing
`the Investor Day did not mention subject matter of slides, and no evidence the slide set was presented to those of ordinary
`skill in the art; in addition slides themselves were not shown to be printed publication as “Wayback Machine” screenshots
`only showed a hyperlink and not the content of the slides and hyperlink now defunct).
`Posters
`– Mylan Pharm., Inc. v. Boehringer Ingelheim GMBH, IPR2016-01565 (PTAB Aug. 1, 2017) (Req. Reh’g Dec. Inst.) (finding that
`Petitioner’s expert only offered a conclusory statement as to the date of publication, noting that it did not appear that
`declarant had personal knowledge as to when and how the reference was made available to the public).
`– Oxford Nanopore Tech. Ltd. v. U. of Wash., IPR2014-00513 (PTAB Feb. 26, 2016) (Final Dec.) (finding that a poster presented
`at a session wherein the attendees of the session were primarily connected to the presenters (e.g. mentors, friends, family
`members) was not presented to interested persons of ordinary skill in the art, and was, thus, not a printed publication).
`Coalition for Affordable Drugs LLV v. Acorda Ther., Inc., IPR2015-00817 (PTAB Aug. 24, 2015) (Dec. Inst.) (after analyzing
`consideration in Klopfenstein, concluding that Petitioner had not established a threshold showing that two poster
`presentations constituted prior art).
`Master’s Thesis
`Argentum Pharm. LLC v. Research Corp. Tech., Inc., IPR2016-00204 (PTAB May 23, 2016) (Dec. Inst.) (concluding that
`–
`Petitioner had not made a threshold showing that thesis was publicly available before the critical date. Stipulation in co-
`pending litigation not sufficient as Patent Owner may have had a reason to stipulate, such as streamlining trial. University’s
`refusal to provide information to Petitioner did not give rise to rebuttable presumption that establishes a reasonable
`likelihood thesis is prior art).
`12/7/2017
`
`–
`
`22
`
`22
`
`

`

`QUESTIONS?
`QUESTIONS?
`
`12/7/2017
`12/7/2017
`
`23
`
`23
`
`

`

`Boardside Chats
`
`Date
`Tuesday, February 1, 2018
`Tuesday, April 5, 2018
`Tuesday, June 7, 2018
`
`Tuesday, October 4, 2018
`
`Time
`
`Noon to
`1 pm Eastern
`Time
`
`Tuesday, December 6, 2018
`
`Topic
`Design Patent Appeals
`AIA Motion Practice
`Motions to Exclude and Strike in AIA Trials
`
`Motions to Seal, Protective Orders,
`and Confidential Information in AIA
`Trials
`Hearsay and Authentication
`
`24
`
`

`

`THANK YOU
`THANK YOU
`
`12/7/2017
`12/7/2017
`
`25
`
`25
`
`

`

`
`
`26
`
`26
`
`