Takeaway: An uncorroborated archive date stamp unsupported by evidence linking archiving with public accessibility is insufficient to establish a threshold showing for printed publication status.

In its Decision, the Board held that Petitioner had not demonstrated that the Board had abused its discretion by not instituting inter partes review of claims 1-4 of the ‘290 patent in view of Barber. Consequently, Petitioner’s request for rehearing was denied.

Petitioner had challenged claims 1-4 of the ‘290 patent based on the following grounds: obviousness of claims 1-4 under 35 U.S.C. § 103(a) in view of Barber; and obviousness of claims 1-4 under 35 U.S.C. § 103(a) in view of Natarajan and Neve. The Board had instituted trial based on the ground relying on Natarajan and Neve, but did not do so for the ground based on Barber. The Board’s reasoning was that Petitioner had not made a sufficient preliminary showing that Barber was a “printed publication” under 35 U.S.C. § 102 that was publicly accessible prior to the critical date. Petitioner then requested rehearing of the Board’s decision not to institute covered business method patent review over Barber.

Petitioner’s first reason in support of its request for rehearing was that Patent Owner “did not raise an argument in its Preliminary Response concerning the public accessibility of Barber.” The Board, in response, noted that “[w]hether or not a preliminary response is filed, [the Board is] constrained . . . to decide whether to institute a trial based on ‘the information presented in the petition.’” The Board then went on to conclude that “the information presented in [the] Petition was insufficient to demonstrate that Barber is a printed publication within the meaning of 35 U.S.C. §§ 102 and 311(b) such that it would be available as prior art in an inter partes review proceeding.”

Petitioner’s second reason in support of its request for rehearing was that evidence of record was not sufficient to qualify Barber as a “printed publication” within the meaning of §§ 102 and 311(b). According to Petitioner, because Barber was date-stamped April 11, 1996 by the MIT Library, it can only logically be concluded that Barber was publicly accessible as of this date. The Board disagreed, finding that: (1) “the stamped date on the face of Barber is a hearsay statement to the extent [Petitioner] is relying on it for the truth of what it states, and [Petitioner] has not established that any hearsay exception or exclusion applies[;]” and (2) “even if [Petitioner] had established that the stamp was admissible, which it did not, the stamp would then be evidence only of when Barber was archived.”

Petitioner’s third reason in support of its request for rehearing was its assertion that the Board had “imposed an arbitrary requirement on [Petitioner] to preemptively provide additional evidence that Barber qualifies as prior art.” The Board disagreed, stating that it had not reached any conclusion at all as to when, if ever, Barber was made sufficiently accessible to the public, but rather, that it had simply determined that Petitioner had not met its burden of proving that there was a reasonable likelihood that this was the case.

Apple Inc. v. DSS Technology Management, Inc., IPR2015-00369
Paper 14: Decision on Petitioner’s Request for Rehearing
Dated: August 12, 2015
Patent 6,128,290
Before: Jameson Lee, Matthew R. Clements, and Charles J. Boudreau
Written by: Boudreau