The U.S. Patent Office’s Patent Trial and Appeals Board (PTAB) has recently changed the way it interprets a crucial requirement for initial petitions for Inter Partes and Covered Business Method Reviews.  These procedures were established by the America Invents Act (AIA) of 2011, and the PTAB started accepting petitions in 2012 from interested parties asking the PTAB to institute a review of an existing patent.  Petitioners must establish in their petition that they have a reasonable likelihood of prevailing in the review by showing that at least one claim in the challenged patent is unpatentable.  The recent change in the PTAB’s interpretation relates to the type and level of proof required in the initial petition regarding publication and public accessibility in instances where the petitioner is relying on non-patent references, such as articles and conference presentations. 

PTAB has issued a string of decisions, the most recent of which came on June 3^rdin response to a petition by Microsoft, that require proof in a declaration that non-patent references are published and publicly accessible.  For many early petitions, PTAB accepted the publication date on the cover of a reference as at least prima facie evidence of publication, but that is no longer true.  Recent decisions indicating this include:

• CBM 2014-00156 by Square:  Square relied on a conference paper that had a cover page reciting publication in 1996, a 1996 copyright date, and a Library of Congress ISBN number.  The reference also had a stamp from the Finnish Library from which Square retrieved the publication that indicated (in Finnish) that the reference had been catalogued, but the stamp was not dated.  Square authenticated the reference, but did not provide a declaration that established its cataloguing or other public accessibility.  PTAB thus rejected the petition.  In a petition for rehearing, Square suggested that its evidence in the petition at least made out a prima facie case of publication and public accessibility, that PTAB misapprehended it, and that the petition should be granted so that Square could develop a full record through routine discovery.  PTAB denied this as well, saying “[r]outine discovery is not an appropriate method for repairing deficiencies in the Petition.” See CBM 2014-00156 (Paper No. 22), at p. 10.
• IPR 2014-01186 by Halliburton:  Halliburton relied on the release notes and help files contained on a CD of commercial software called “Petrel 2005.”  It showed that Petrel 2005 was on sale before the critical date and argued, without providing a declaration, that this was enough to make it accessible to the public.  PTAB denied the petition and denied rehearing, however, because this did not amount to evidence of actual dissemination and because the high cost ($10,000) weighed against the finding of accessibility.  PTAB also held that the copyright notice was not sufficient evidence of publication and public accessibility.  See IPR 2014-01186 (Paper No. 18), at p. 6-8.
• IPR 2014-00889 by Samsung:  Samsung relied on a draft IEEE standard and supported it with a declaration of an editor of the relevant standards committee.  He testified that the standard was available to members of the standards body working group, and that, despite the password protected nature of the working group’s servers, any interested member of the public could join the group or register for access to the files.  PTAB held this showing in the petition was insufficient to institute the IPR.  The draft standard was not yet catalogued or sufficiently available to the public, and the working group meeting at which it was discussed was not sufficiently advertised or announced to the public.  See IPR 2014-00889 (Paper No. 8), at p. 7-10.
• IPR 2014-01459 by Microsoft:  Microsoft relied on the 2006 version of the HDMI specification that had a 2006 publication date on its cover page.  Microsoft also submitted several pieces of circumstantial evidence that suggested the specification was publicly accessible as of that date:  (a) an unrelated patent application in which the specification was submitted in an IDS (showing that at least one person of skill had actually received the standard before its submission to the PTO), and (b) PC Magazine articles that referred to the specification as “the latest version available in [commercial products] at press time.”  See IPR2014-01459 (Paper No. 1), at p. 12-13.  PTAB denied the petition and rehearing because receipt by a single person or company did not show public accessibility sufficient to institute the IPR.  Also, evidence the specification was submitted in an IDS was not evidence that the PTO had ever made the reference available to the public or that someone hunting for the HDMI spec could have found it in the IDS.  Finally, Microsoft raised the same issue as Square:  namely, that PTAB was misinterpreting the “reasonable likelihood of prevailing on the merits” standard with respect to evidence of publication and public accessibility required at the time of the petition. Microsoft argued correctly that “courts have relied on far less probative evidence.”   But, PTAB rejected this argument.  See IPR 2014-01459 (Paper No. 24), at p. 7-12.   When Microsoft asked after the institution of the IPR (which was limited to other references) to submit a declaration that established public accessibility to the 2006 HDMI specification, PTAB denied the request.  See IPR 2014-01459 (Paper No. 25).   

To the extent practitioners and clients formerly relied on publication dates on the cover page of non-patent references to prove a prima facie case of publication under 35 U.S.C. §102, this recent string of decisions indicates that reliance is misplaced.  To show a reasonable likelihood of prevailing regarding the issues of publication and public accessibility, petitioners should now provide proof, usually in the form of one or more declarations from persons who can testify about the publication and public accessibility to the reference before the critical date, with the initial petition.  Practitioners and clients should not rely on inferences on these important points and should explain how and specifically where the evidence establishes publication and public accessibility. 

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