A PTAB panel recently provided further guidance to the “printed publication” requirement for IPR.
The types of information that can serve as bases for a validity challenge in an IPR are limited to “patents and printed publications.” Not surprisingly, petitioners have sought to expand the kinds of materials that can serve as “printed publications.” Examples include website article printouts, website postings by a car enthusiast, instructional videos, and patent applications stored on microfilm. In any case, petitioners must show that the “publication – of whatever kind – has in fact been disseminated or has otherwise been reasonably available and accessible to persons concerned with the relevant art.”
Recently, in Coalition for Affordable Drugs v. Trustees of the University of Pennsylvania (IPR 2015-01836, final written decision March 6, 2017), a panel considered whether a slide show presented, both live and as a webcast, at a financial analyst’s session (Analyst Day) sponsored by PPD, Inc., constituted a printed publication. Petitioner asserted that a hyperlink to the slide show was distributed to interested parties. The PTAB panel, after stating the general standard for “public accessibility,” reviewed four specific factors of accessibility:
- Length of time the display was exhibited;
- The expertise of the target audience;
- Whether there was an expectation that the material displayed would be copied; and
- How easy it would have been to copy the material.
The PTAB concluded that the petition failed on several scores.
First, there was no evidence that persons of skill in the relevant art would have accessed the hyperlink – the conference was for analysts, not for skilled artisans interested in developing MTP inhibitors.
Second, the petition pointed to a way-back machine screenshot to show publication prior to the relevant filing date. Did the PTAB take a ride on the way-back machine? Not so fast, my friends. The way-back machine screenshot capture of the link was not adequate proof that the link in fact led to the slides. There was, in short, no evidence of whether the link worked at the relevant time.
The opinion also is interesting on other issues of interest to readers of this blog. For example, although proposed combinations of prior art other than the slide show may have disclosed all of the elements of the invention, a person of ordinary skill in the art would not have had a “reasonable expectation (or probability) of success” in combining the references. This emphasis on proof of a motivation to combine – here a motivation that the combination would be successful in accomplishing what is taught in the claimed invention – is further evidence that the PTAB and the Federal Circuit are now requiring more muscular evidentiary showings of why a person of ordinary skill in the art would be motivated to combine cited references.
Finally, the PTAB offers a rare nod to a patent owner’s offering of secondary considerations to overcome an obviousness challenge. This kind of evidence has rarely been effective at PTAB. But here, substantial sales revenues from the introduction of the patented product were deemed relevant to show that the claimed invention really earned commercial success. The patent owner demonstrated a nexus between the commercial sales and the claimed invention.
All in all, a meaty decision. Petitioners who want to take a ride on the way-back machine need to make sure that the contents of the cited references are available today and can be shown to have been available then.