Santeri Viinamäki [CC BY-SA 4.0], via Wikimedia Commons

Recent PTAB decisions have shown that a number of hurdles need to be cleared to successfully rely on printed publications as prior art in IPR, CBM, or PGR challenges. These challenges include proving that the reference was publicly accessible, that the copy relied on is authentic, and the publication date.

This post focuses on public accessibility. To show this, the proponent must evidence that the publication was sufficiently disseminated, or otherwise made available such that a person of ordinary skill in the art (POSITA), exercising reasonable diligence, could locate it. This standard is somewhat ambiguous, but recent decisions have shown that the PTAB has been applying it quite strictly. For example, the fact that a printed publication is shown to be posted and retrievable over the internet does not mean that the reference is per se accessible by a POSITA, as held in Blue Calypso v. Groupon (Fed. Cir. 2016). There, despite testimony that the printed publication (a graduate student’s report) was posted online, the PTAB held, and the Federal Circuit affirmed, that there was no proof that the reference was actually viewed or downloaded by an interested artisan, and therefore refrained from considering its information.

Similarly, the fact that a reference is shown to actually have been distributed is also insufficient. Rather, a petitioner must prove that the dissemination would likely have reached a POSITA, as the PTAB determined in GoPro v. Contour (IPR2015-01078). In GoPro, the printed publication was a product catalog that was disseminated to potential customers at a trade show. Despite the fact that the petitioner showed that thousands of people attended the event, the PTAB determined that the trade show was directed to “sales and marketing” personnel, as opposed to POSITA camera engineers with a bachelor’s degree in computer science or electrical engineering.

Takeaway: Before basing your IPR, CBM, or PGR on a prior art printed publication, make sure you can prove that a POSITA would have had access to it and would have been able to locate it.