ebook libraryAfter some exhaustive internet searching, you just found the perfect prior art reference for your case. It’s an article with a vintage prior to your critical date, and, more importantly, it appears to anticipate or render obvious every claim of the patent asserted against you. Time to file your IPR, right? Not so fast. With the ubiquity of information on the internet today, it’s difficult to imagine a time when information was less accessible. Because of this, we sometimes overlook the availability of a reference when determining whether it qualifies as a prior art “printed publication” under 35 U.S.C. § 102. Last month, we saw this issue take down an IPR at the institution stage, and, more recently, this issue turned out to be case dispositive in a Final Written decision. Here, in Activision Blizzard, Inc. v. Acceleration Bay, LLC (IPR 2015-01964), the Board concluded that the lone prior art reference asserted in the petition, a technical report reference, was not readily available as a printed publication under 35 U.S.C. § 102.

The ‘634 patent generally relates to a “broadcast technique in which a broadcast channel overlays a point-to-point communications network.” The Petitioner contended that claims 10, 15, and 18 were unpatentable as anticipated by Lin, a technical report submitted to the University of California, San Diego’s (UCSD) Computer Science and Engineering (CSE) department. The Petitioner further contended that claims 1-18 were unpatentable as obvious over Lin.

For purposes of institution, the Board accepted Petitioner’s unchallenged contention that Lin was available as § 102 prior art. During trial, however, the Patent Owner challenged that contention. Noting that “[a] reference will be considered publicly accessible if it was disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence can locate it,” the Board concluded that the Lin reference did not meet this standard.

After determining that the Lin reference was uploaded to the library website prior to the critical date, the Board next turned to whether a person interested and ordinarily skilled in the art exercising reasonable diligence would have found the Lin reference on the CSE Technical Reports Library website. Because nothing in the record suggested that the CSE Library’s website was indexed by a commercial internet search engine in 1999, mere technical availability of the reference was insufficient to carry the day. Therefore, two factors became relevant to the Board’s analysis: 1) whether a person of ordinary skill interested in network broadcasting techniques would have been independently aware of the CSE Technical Reports Library website, and 2) whether a person of ordinary skill, upon accessing the website, would have been able to find the Lin reference.

As to the first inquiry, the Board found that, while the Petitioner established that the UCSD CSE website was akin to a traditional library in which technical or scientific papers are shelved, the evidence did not rise to the level where the CSE website could be found to be a “prominent forum” for discussing the relevant technology. Thus, the decision ultimately turned on the second inquiry: whether a person of ordinary skill in the art exercising reasonable diligence would have found the Lin reference on the CSE website. For this inquiry, the Board examined the available evidence relating to indexing and searching of the CSE website. Noting that the CSE website was only indexed by author and year, and not by subject matter, the Board determined that a person of reasonable skill in the art would not have been able to locate the Lin reference by viewing the list of available reports by author or year, particularly in light of Petitioner’s failure to provide any evidence as to how many reports were in the library’s database in 1999. Likewise, the Board also found the CSE’s “advanced search” functionality lacking as well, as there was insufficient evidence in the record as to how the search works or how the keywords which are searched are generated. Furthermore, based on the evidence submitted, it was possible that the CSE search function did not work at all. Because the Petitioner failed to meet its burden to show that the Lin reference either was available or could have been located after a diligent search, the Board concluded that the reference was not a printed publication under 35 U.S.C. § 102 for the purposes of challenging the patentability of the ‘634 patent.

Petitioners looking to take down a patent need to ensure that whatever references they are using were both available and accessible at the relevant time, and, if they were, to place ample evidence in the IPR record to demonstrate the requisite availability and accessibility.