The nature of any inter partes dispute apparently is to engage in even a seemingly mundane dispute. After all, that’s the dispute that may lead you to success, right? Perhaps then there is nothing surprising in an April 3, 2019, Patent Trial and Appeal Board order concerned about whether a book qualifies as prior art. That order, issued by the Board’s new “Precedential Opinion Panel,” grants an aggrieved petitioner’s request for rehearing of an earlier Board decision refusing to institute inter partes review because the petitioner apparently did not establish a book bearing a 1990 (or 1991) copyright date was publicly available before the 1995 date on which the application for the subject patent was filed. Hulu, LLC v. Sound View Innovations, LLC, Case IPR2018-01039 (Apr. 1, 2019) (order).
There was “insufficient evidence,” said the original panel in its earlier decision denying institution, “to show when the book was sufficiently made available to the public, i.e., when persons interested and ordinarily skilled in the subject matter, exercising reasonable diligence, could have located it.” The petitioner argued, in its rehearing request, that the earlier decision is contrary to many other Board decisions where a copyright notice qualified as prima facie evidence of public accessibility. The argument and dispute are not nearly that simple. The Patent Owner, for example, successfully (so far) complained over 20 pages why the book is not prior art. But agreeing now to sort at least some of this out, the Precedential Opinion Panel asks the parties and interested amici to brief by May 1 the following broad question: “What is required for a petitioner to establish that an asserted reference qualifies as [a] ‘printed publication’ at the institution stage?”
According to its own statistics, the Board has decided more than 8,000 inter partes review petitions since the Patent Office began entertaining these reviews. All of them necessarily rely on the Board’s determination of whether the references asserted to destroy patentability qualify as printed publication prior art. Some determinations are easy, while others are not. We have recounted some here. But it’s not unreasonable to wonder why it took 8,000 petitions for the Patent Office to realize it ought to offer some precedential guidance. After all, its decisions denying institution on the basis that an asserted reference is not prior art are not even appealable. With no end in sight to these proceedings, the impending guidance will be welcome, and better late than never.