What needs to be demonstrated to qualify a printed publication for Inter Partes Review? HULU v. SOUND VIEW

A patent is a set of exclusive rights granted to the inventor of an invention. To obtain a patent in the United States an inventor must file a patent application with the United States Patent and Trademark Office. The patent application is reviewed by a patent examiner at the United States Patent and Trademark Office to ensure that the invention described in the patent application meets all the criteria for patent protection. If the patent application meets all the criteria for patentability then the inventor will be granted a patent on the invention. A patent grants the inventor the exclusive right to make, use, sell and import the patented invention in the United States. If someone other than the owner of the patent attempts to exercise one of these exclusive rights that can be considered patent infringement.

After a patent is granted it is not immune from attack. Inter partes review is a trial proceeding conducted at the Patent Trial and Appeal Board to review the patentability of one or more claims in a patent only on a ground that could be raised under §§ 102 or 103, and only on the basis of prior art consisting of patents or printed publications. The inventor and the patent examiner do their best to consider all the relevant prior during the patent application process, but sometimes relevant prior art is overlooked. If a member of the public discovers a piece of prior art which anticipates a patent which has been granted they may request an inter partes review of the patent. An inter partes review can result in invalidation of some or all of the claims of a patent.

For a document to be considered prior art, it must be publicly accessible. Secret documents or documents that are not readily accessible to the public will not be considered prior art. The question then becomes what burden of proof does a petitioner need to meet to demonstrate that a document qualifies as prior art?

The Precedential Opinion Panel (POP) of the Patent Trial and Appeal Board (PTAB) addressed this question in HULU LLC v. SOUND VIEW INNOVATIONS LLC, IPR2018-01039, (PTAB 2019). This case stated when HULU peititoned the PTAB for inter partes review of SOUND VIEW’s U.S. Patent No. 5,806,062, granted in 1998, entitled “Data analysis system using virtual databases”. The petitioner asserted that the claims of the patent were obvious over a textbook titled Sed & Awk by Dale Dougherty, published in 1990.

The PTAB issued a decision denying institution of an inter partes review. The PTAB found that there was insufficient
evidence to show that Dougherty was publicly accessible and concluded that Petitioner failed to show sufficiently that Dougherty qualifies as prior art under 35 U.S.C. §§ 102(a) and (b). HULU appealed the decision to the Precedential Opinion Panel (POP) of PTAB.

The POP concluded that, based on the totality of the evidence, HULU submitted sufficient evidence to establish a reasonable likelihood that the Dougherty reference was publicly accessible before the critical date of the challenged patent, and, thus Petitioner has established a reasonable likelihood that the reference qualifies as a printed publication. The POP noted that a petitioner need not establish that specific persons actually accessed or received a work to show that the work was publicly accessible. A given reference is ‘publicly accessible’ upon a satisfactory showing that such 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. The face of Dougherty bears a copyright date of 1990, a printing date of November 1992, and an ISBN date of 8/94. In addition, the book is a textbook from an established publisher, O’Reilly, and a well known book series. The POP held that information was sufficient to demonstrate that the reference qualifies as a printed publication.

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