The Precedential Opinion Panel (POP) of the Patent Trials and Appeals Board (PTAB) recently answered the question, “What is required for a petitioner to establish that an asserted reference qualifies as a ‘printed publication’ at the institution stage?” According to the POP, “[f]or institution of an inter partes review, a petitioner must establish a reasonable likelihood that a reference is a printed publication.” Hulu, LLC. v. Sound View Innovations, LLC (IPR2018-01039), Paper 29 dated December 20, 2019, at 2.
In Hulu, LLC. v. Sound View Innovations, LLC, petitioner Hulu alleged that claims of patent owner Sound View’s U.S. Patent No. 5,806,062 (the ’062 patent) are invalid as obvious over Dougherty, a textbook that, according to Hulu, was publicly available prior to the 1995 filing of the application that resulted in the ’062 patent. Hulu’s obviousness argument relied upon a copy of Dougherty bearing a copyright date of 1990, a printing date of November 1992 and an ISBN date of August 1994 (Dougherty 1994), which Hulu submitted as an exhibit in its petition. Hulu supported the public accessibility of Dougherty, however, by submitting the table of contents of a copy of Dougherty bearing a copyright date of 1991, a printing date of March 1991 and an ISBN date of January 1992 (Dougherty 1992). The Dougherty 1992 exhibit was date-stamped by the Cornell University Library and was accompanied by an affidavit from the librarian at the Cornell University Library, which stated that Dougherty was indexed and available to the public on September 16, 1992.
In its preliminary response, Sound View highlighted the discrepancy between the two versions of Dougherty and argued that the date stamp and affidavit pertaining to Dougherty 1992 were insufficient to establish the public accessibility of Dougherty 1994. Moreover, argued Sound View, Hulu made no showing that the teachings of the two Dougherty versions were materially similar. Thus, according to Sound View, Hulu’s petition “fail[ed] to sufficiently establish the Dougherty reference’s availability as prior art to the challenged claims.” Paper 10 at 23.
The PTAB issued a decision denying institution of inter partes review (IPR) because Hulu had failed to demonstrate that Dougherty 1994 was publicly accessible prior to the filing date of the ’062 patent and therefore prior art. Hulu requested and was granted rehearing and POP review.
The question presented for POP review was, “What is required for a petitioner to establish that an asserted reference qualifies as a ‘printed publication’ at the institution stage?” On review, both the petitioner and the patent owner agreed that the showing required by the petitioner mirrors the statutory “reasonable likelihood” requirement for institution – that is, the petitioner must show that there is a reasonable likelihood that a reference is a printed publication. The parties disagreed, however, about the showing required to meet that standard. According to petitioner Hulu, “conventional markers” of publication (e.g., a copyright date printed on the reference, edition numbers, publication by a commercial publisher, the presence of an ISBN number) are sufficient to show a reasonable likelihood. Patent owner Sound Design, in contrast, argued that the petitioner must present its case-in-chief in the petition, which includes all evidence that would be used in an instituted review. Thus, according to Sound Design, mere conventional markers of publication are insufficient to show a reasonable likelihood.
The POP began its analysis of the applicable standard with the statutory requirements. Because 35 U.S.C. § 314(a) requires finding “a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition” to institute an IPR, the same standard applies to the question of whether a reference is a printed publication. Moreover, the statute requires that “the petition identify with particularity the grounds for institution and evidence supporting such grounds.” Thus, reasoned the POP, “at the institution stage, the petition must identify, with particularity, evidence sufficient to establish a reasonable likelihood that the reference was publicly accessible before the critical date of the challenged patent and therefore that there is a reasonable likelihood that it qualifies as a printed publication.” Paper 29 at 13.,
The POP noted that the reasonable likelihood standard requires more than mere notice pleading, but it is lower than the “preponderance of the evidence” standard necessary to prevail in a PTAB final decision. Although POP stated that the reasonable likelihood and preponderance of the evidence standards are “qualitatively different,” it did not articulate the precise dimensions of that difference. Id. at 13-14 (citing Trivascular, Inc. v. Samuels, 812 F.3d 1056, 1068 (Fed. Cir. 2016)).
With respect to the question of whether conventional indicia of publication are sufficient to establish printed publication status at the institution stage, the POP stated, “We do not hold that any particular indicia per se is sufficient at the institution stage.” Rather, the POP indicated that indicia of publication are considered in view of the totality of the evidence. The POP then pointed to some past examples in which the board found indicia or publication to be strong and others in which the indicia were weak. In the case at hand, the POP reversed the board and held that Hulu had established a reasonable likelihood that Dougherty 1994 is a printed publication, based on the indicia of publication on the face of the reference and on the fact that the reference is a well-known textbook from an established publisher.
Thus, although POP held that a reasonable likelihood evidentiary standard applies to determining whether a reference is a printed publication for purposes of instituting an IPR, it did not provide much new guidance as to the quantity or quality of evidence sufficient to meet that standard. As a result, IPR petitioners should remain cautious in relying on references that may raise printed publication questions and err on the side of presenting strong evidence of publication in the petition. Patent owners, on the other hand, should scrutinize the printed publication status of references cited in a petition and, when deemed appropriate, should argue in a preliminary response that the petitioner has failed to meet its burden to show that a particular reference qualifies as a printed publication.
 The POP noted that the opportunities for an IPR petitioner to submit evidence supporting the prior art status of a printed publication are limited but extend beyond the petition. These opportunities include replies to the patent owner’s preliminary response or response (provided that the patent owner has raised the issue) and in a motion to file supplemental information (provided that the submission is either within one month of institution or a showing of good cause for not submitting the evidence earlier can be made).
 The POP also addressed the assertion made by several amici that 37 C.F.R. § 42.108 creates a presumption in favor of finding that a reference is a printed publication at the institution stage. 37 C.F.R. § 42.108 provides, in relevant part, that where a patent owner’s preliminary response includes testimonial evidence that creates a factual dispute, the board will view that factual dispute in favor of the petitioner for the purpose of deciding whether to institute. According to the POP, however, 37 C.F.R. § 42.108 does not create a general presumption regarding the status of a reference as a printed publication.