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Proving That a Printed Publication Qualifies As Prior Art Can Make Or INTELLECTUAL PROPERTY LITIGATION Challenging Patent Validity Proving that a Printed Publication By Stephen E. Kabakoff Qualifies as Prior Art Can Make or Non-patent literature Break Your Client’s can be a great source of prior-art printed Inter Partes Review publications to assert in an inter partes review. Your client has been sued for patent infringement and contacts you about how to respond. You consider potential defenses and counterclaims, knowing that proving the invalidity of the asserted patent is a complete defense to the infringement allegation. Litigating pat- in the patent was previously known in the ent validity, however, can be a lengthy and “prior art,” or it would have been an obvi- costly process, even if the litigation pro- ous variation of what was known. Broadly gresses only through summary judgment. speaking, the prior art consists of any pub- Patent validity is typically litigated through lic disclosure, of any type, anywhere in trial with all other issues in the case. In the world, over all time preceding the pri- some cases, validity may be the only pend- ority date of the patent (usually its earli- ing issue; but by and large, resolving pat- est effective filing date), with some limited ent validity can require the full scope of exceptions. To scour all possible prior art discovery, motion practice, and trial of an completely is impossible. In a district court infringement claim. case, a defendant may spend considerable There are several ways to prove that a time and money investigating whether the patent is invalid. The most common is to invention was previously disclosed in one demonstrate that the invention claimed or more documents, patents, products, sys- ■ Stephen E. Kabakoff of Miller & Martin PLLC helps clients with complex issues relating to intellectual property, including stra- tegic portfolio development, preparation and prosecution, licensing, and litigation. His practice primarily focuses on electri- cal, computer, mechanical, and materials science technologies. In addition to his practice before the U.S. Patent and Trademark Office (USPTO), Mr. Kabakoff has litigated in federal district courts and before the International Trade Commission (ITC) and the Patent Trial and Appeal Board (PTAB) of the USPTO. 26 ■ For The Defense ■ August 2020 © 2020 DRI. All rights reserved. tems, public uses, or commercial sales pre- lications.” 35 U.S.C. §311(b). Identifying ence in an invalidity defense in related dis- dating the plaintiff’s asserted patent. a U.S. or foreign “patent” is straightfor- trict court litigation. 35 U.S.C. §315(e)(2). Recognizing the burdens of conven- ward, but determining what qualifies as a Accordingly, proving that a reference is tional patent litigation, Congress created, “printed publication” for purposes of prior a printed publication that qualifies as prior in the Leahy-Smith America Invents Act art is surprisingly nuanced. The concept art can make or break your client’s pat- (AIA), Pub. L. No. 112-29, 125 Stat. 284 of a printed publication as prior art has ent-validity challenge in an IPR. The dis- (2011), a proceeding in the U.S. Patent been considered in the caselaw well before cussion below considers different types of and Trademark Office (USPTO) focused our current patent laws were enacted, and printed publications that may be asserted solely on the issue of patent validity. These it is still an issue today. See, e.g., Jock- in an IPR and the type of proof that may proceedings are designed to provide an mus v. Leviton, 28 F.2d 812 (2d Cir. 1928) alternative forum for resolving validity (Hand, J.) (analyzing whether a French challenges more quickly and efficiently trade catalogue qualified as a prior-art than in district court. They involve a printed publication). Similar to a district In addition to expediency, streamlined trial, with limited discovery, court, the USPTO follows its own preceden- before a panel of administrative patent tial IPR decisions in issuing new, final writ- these post-grant judges. As in a district court, both the pat- ten decisions and relies on its informative ent challenger (the petitioner) and the pat- (non-precedential) decisions for general proceedings provide other ent owner participate as the parties to the guidance. As recently as April 7, 2020, for trial. Unlike district court, however, the example, the USPTO designated four of its benefits, such as a lower administrative patent judges are statutorily final written decisions as “informative” on required to issue a decision within twelve the issue of proving when a reference con- evidentiary burden to months after the proceeding is instituted. stitutes a printed publication that qualifies 35 U.S.C. §316(a)(11). In addition to expedi- as prior art. Only a few months earlier, it invalidate a patent than in ency, these post-grant proceedings provide had designated another of its decisions as other benefits, such as a lower evidentiary “precedential” on this same issue. district court, administrative burden to invalidate a patent than in dis- Whether a non-patent reference with trict court, administrative patent judges disclosure for invalidating a patent is con- patent judges who specialize who specialize in validity determinations, sidered a prior-art printed publication can and an opportunity to stay a parallel dis- be critical to succeeding in an IPR. This in validity determinations, trict court case pending resolution of the inquiry can be broken down further: Is validity issue in the USPTO. the reference a printed publication, and and an opportunity to stay The AIA provides several different types did it predate the priority date of the pat- of post-grant proceedings for challenging ent at issue? If either of these criteria is not a parallel district court case patent validity. The most common type is met, e.g., either because the reference is the inter partes review proceeding (IPR). not a printed publication or because it was pending resolution of the Any person who is not the patent owner not in the prior art, the USPTO may dis- can petition the USPTO to institute an IPR qualify it as prior art evidence that may be validity issue in the USPTO. at least nine months after the patent has asserted in an IPR. The USPTO has discre- issued. 35 U.S.C. §311. But if your client tion to deny institution of an IPR proceed- has been sued for patent infringement, the ing if it determines the IPR petition fails be required to demonstrate that they qual- client must file an IPR petition within one to show a reasonable likelihood of pre- ify as prior art. year of being served with the complaint. 35 vailing with respect to at least one chal- U.S.C. §315(b). A similar post-grant review lenged patent claim. 35 U.S.C. §314(a). The The Legal Meaning of proceeding is available, with some varia- USPTO may use this discretion, for exam- Printed Publication tions, for newer patents issued within the ple, when an IPR petitioner has not estab- Determining whether a document is a last nine months and for patents that qual- lished an asserted non-patent reference is printed publication for purposes of prior ify as covered business methods. 35 U.S.C. a prior-art printed publication. As a result, art would seem to call for a simple test: Was §321; AIA §18. According to statistics pub- the USPTO may deny a petitioner’s request it printed, and was it published? The reality, lished by the USPTO as of the date of this for an IPR based on that reference. Worse however, is that there is a wide spectrum of article, more than 90 percent of all peti- yet, the USPTO may institute the IPR only non-patent literature, including not only tions requesting post-grant proceedings to decide that the petitioner loses at the conventional books and articles but also have been for IPRs. The USPTO updates its end for failing to assert a proper prior-art references that are available only electron- published statistics monthly. Statistics, U.S. printed publication. The latter situation ically, disseminated without a formal pub- Trial & Appeal Bd. can be especially problematic because the lisher, publicly displayed, or accessible to Prior art that may be used in an IPR is IPR petitioner (i.e., your client) would be only select people. limited to only “patents and printed pub- estopped from asserting that same refer- For The Defense ■ August 2020 ■ 27 INTELLECTUAL PROPERTY LITIGATION Rather than focusing on “printed” and Further still, because it is the IPR petition- lic library and that textbook was ideal for “published” as separate requirements, the er’s burden to prove that an asserted refer- invalidating claims of a competitor’s pat- crucial inquiry for finding that a reference ence is a “printed publication,” the patent ent in an IPR. It is unlikely that anyone is a printed publication is whether it has owner need only establish the petitioner’s would dispute that the textbook is a printed been made publicly accessible. In re Klop- failure of proof in showing the reference’s publication as of the date when your cli- fenstein, 380 F.3d 1345, 1348 (Fed. Cir. public accessibility. Hulu, LLC v. Sound ent located it in the library. To qualify as a 2004). See also Blue Calypso, LLC v. Grou- View Innovations, LLC, IPR2018-01039, prior-art printed publication for purposes pon, Inc., 815 F.3d 1331, 1348 (Fed. Cir. Paper 29, at 21 (P.T.A.B. Dec. 20, 2019) of the IPR, however, the textbook would 2016) (finding that determining whether a (precedential). need to have been publicly accessible in the Since proving the public accessibility of a library before the priority date of the chal- reference is fact dependent and determined lenged patent.
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