A critical and early determinant in any procedural review is an examination of the permissibility of individual pieces of evidence. In matters of intellectual property, and particularly in IPRs, the permissibility of evidence often rests on two factors: whether a printed publication was publicly available and the relevant dates of that availability. As more and more companies disseminate disclosures and company information on the internet as a matter-of-course, the determination of both factors is becoming increasingly challenging to parse.
Determination of said factors was at the heart of the case of Incyte Corp. v. Concert Pharmaceuticals, Inc., IPR2017-01256 (PTAB April 8, 2019). In this case, the petitioner argued (and the PTAB concurred in a final written decision) that all claims of the patent assigned to Concert Pharmaceuticals were unpatentable under 35 U.S.C. § 103(a) over several pieces of prior art, including an archived web page from Concert Pharmaceuticals (the “Concert Backgrounder”). The Concert Backgrounder had been posted to the Concert Pharmaceuticals company website for a short, undefined period of time. During that time, it was archived to WebCite®, a website that allows users to digitally preserve scientifically important material (i.e., the Concert Backgrounder) in order to prevent the creator of said material (i.e., Concert Pharmaceuticals) from removing it by merely deleting the original web address. This archiving alone may or may not have been sufficient to demonstrate both public availability and the date of that availability. However, the PTAB found that citation of the WebCite® link in a law review article published in 2009 and in an International Search Report for a PCT application, accessed on May 12, 2011, demonstrated that the Concert Backgrounder was publicly available far in advance of the relevant June 2012 priority filing date for the patent.
Notably, the Concert Backgrounder had described the potential benefits of deuterium modification of known small molecules, likely intended to excite potential investors, future partners and the general public about the scientific platform technology guiding the company. However, the Concert Backgrounder provided specific teaching to modify (deuterate) small molecules (such as described in another piece of prior art) for the purposes of improved safety, tolerability and efficacy. It further established a reasonable expectation of success in improving the qualities of the lead compound of that prior art by explicitly describing a test case molecule. Thus, without providing any obvious benefit to its company or employees, Concert Pharmaceuticals impacted its downstream intellectual property by temporarily over-sharing on its own website.
Informational web pages or discussion-based blog posts can be a great way for patent owners (or prospective patent owners) to interact with and educate their clients and peers on their business. However, patent owners should be highly cautious of the level of detail that they put out onto the internet, particularly if those details have not yet been disclosed in a patent application. In a best-case scenario, scientists and inventors should treat any public posting on the internet with the same level of attention and care as they treat scientific publications and abstract submissions. When in doubt, engage your internal and/or external IP lawyers to discuss best practices for any and all types of printed publications, including seemingly harmless online web pages or blog posts.