Printed Publications and Search Functionality – The Federal Circuit Weighs In

Posted by Susmita Gadre on May 3, 2021

Susmita Gadre

On appeal of a PTAB decision finding all claims in a patent directed to compressing video files unpatentable, the Federal Circuit clarified two issues. This post considers the first clarified issue – what is required for a reference to be considered a printed publication for the purposes of an IPR?

In M&K Holdings v. Samsung Electronics (No. 2020-1160), the patent owner argued that several cited references did not qualify as printed publications, and thus could not be used as the basis for finding unpatentability in an IPR. Although the references were available on an industry group’s website, the patent owner argued the references were not publicly accessible, and thus could not be considered printed publications, because the references were not easily found on the website. Instead of having a single intuitive search page, a user needed to click through various links to get to the references.

Read More

Topics: Patent Owners, Printed Publications, "Federal Circuit", Search Functionality

Hulu v. Sound View: The PTAB Sets New Precedent on How to Prove a Reference Is a Printed Publication

Posted by Stuart Duncan Smith on May 19, 2020

Stuart Duncan Smith

Invalidity grounds in IPR that are not based on patents must be based on printed publications. But the nature of the evidence required at the time of institution to show that a non-patent reference is a printed publication has long been uncertain. The PTAB’s Precedential Opinion Panel (POP) in Hulu v. Sound View Innovations, IPR2018-01039 (Dec. 20, 2019), provided some clarity and left other issues for future PTAB panels to resolve.

Read More

Topics: Printed Publications, PTAB, POP

To Prove a Printed Publication, Petitioners Should Connect All the Dots

Posted by Michael Greene on Apr 11, 2019

Michael Greene

You found a great prior art reference for your IPR petition. But if that reference isn’t a patent or patent application, you’ll need to think carefully about how to prove that the reference was actually published and available to the interested public. As the PTAB has reminded litigants time and time again, failing to connect all the dots from the author’s creation of the reference all the way to its availability to the interested public might doom the petition.

Read More

Topics: Printed Publications

A Printed Publication May Be More Than Just a Label

Posted by Post-Grant Group on Jul 17, 2018

As we have written previously, the PTAB is very active in defining what is and is not a printed publication, and what the PTAB decides can make or break the IPR. A recent decision illustrates yet again the pitfalls that petitioners can face when attempting to prove that a reference is a printed publication. In IPR2016-01614, the petitioner cited a drug label as a printed publication, and though it had a copyright date, the PTAB wanted to see more than just what was on the face of the label.

Read More

Topics: Printed Publications

For PTAB Declarations, Better to Fly Solo

Posted by John Strand on Jan 22, 2018

John Strand

Many things in life are better done with someone else: board games, dinner parties, road trips, riding tandem bicycles. However, according to the PTAB, there’s one particular area where it’s best to fly solo: two people should not provide one declaration in an IPR. In CSL Behring GMBH v. Shire Viropharma Inc. (IPR2017-01512), the PTAB denied institution in large part because the petitioner submitted a joint declaration to support that one of its references was a printed publication.

Read More

Topics: Printed Publications

PTAB Continues to Draw a Hard Line on Printed Publications

Posted by Marie McKiernan on Dec 6, 2017

Marie McKiernan

As we discussed in May, PTAB decisions are a primary source for guidance regarding what constitutes a “printed publication” under § 102, because the PTAB faces the issue so frequently.  Since that post, the PTAB has continued to define the scope of what is or is not a printed publication. In most instances, where the issue was contested, the PTAB found the petitioner failed to prove a document was a printed publication.                                                                                                 

Read More

Topics: Printed Publications

Going (Way)back to the Future of Printed Publications

Posted by Janet Tse on Jun 2, 2017

Janet Tse

IPR challenges must rely on prior art “patents or printed publications” as the basis for invalidating US patents. But what if a useful prior art reference is not a typical printed publication such as a scientific literature reference or industry journal report? We explored the subject of what constitutes a prior art printed publication in a recent post; now we’ll take a closer look at this issue as it relates to digital content. Two related IPR decisions, Coalition for Affordable Drugs VIII, LLC v. The Trustees of the University of Pennsylvania (IPR2015-01835, Paper 56 and IPR2015-01836, Paper 58), demonstrate that it can sometimes be challenging to prove that a reference qualifies as a printed publication … leaving the petitioner wishing they could hop in the DeLorean to go back and change the prior art.

Read More

Topics: Kyle Bass, BioPharma, Printed Publications

Who Knows Whether Something Is a "Printed Publication?" The PTAB Knows!

Posted by Austin Steelman on May 12, 2017

Austin Steelman

As one of the key phrases in both the pre- and post-AIA versions of § 102, what constitutes a prior art “printed publication” is a significant question in many patent validity challenges. The Federal Circuit has wrestled with the question since the court was created in 1982. However, despite its much shorter history, the PTAB likely has issued more decisions addressing this question than any other forum. Given the volume of guidance from the PTAB, petitioners who ignore what the PTAB thinks a printed publication is do so at their own peril.

Read More

Topics: Printed Publications

Is It a Printed Publication? It Depends…

Posted by Turhan Sarwar on Sep 11, 2015

Turhan Sarwar

Last week, we discussed a recent IPR decision in which the Board—at the institution stage—was unpersuaded by copyright notices and evidence from the “Wayback Machinesuggesting dates of publication. Today we look at another recent decision, in IPR2014-01086, in which the Board was notably more forgiving regarding the public availability issue—at the final decision stage.

Read More

Topics: Petitioners, Patent Owners, Printed Publications

Wolf Greenfield's Post-Grant Blog

Here, the Post-Grant Proceedings Group
at Wolf Greenfield keeps you up to date
on the latest decisions and best practices, and what they mean for you. Learn more about the group and its members.

New Call-to-action
New Call-to-action
New Call-to-action

Subscribe to Email Updates

Recent Posts

Follow Us

This blog is intended to promote thought and debate on developing areas of the law. The opinions, commentary and characterizations of cases provided on this blog are not legal advice and do not represent the opinions of Wolf Greenfield or its clients.