Takeaway: In an inter partes review, a petitioner may only rely upon prior art that is a patent or printed publication. To establish that a document is a printed publication, a petitioner must provide proof of the document’s date and that it was publicly available.  Proof of the availability of an embodiment described in the document is not enough.

In its Decision, the Board held that Petitioner did not show a reasonable likelihood of success that any of the challenged claims (1-18, 21-36, 39, or 41-46) of the ’103 Patent is unpatentable, and denied institution of inter partes review.  The ’103 Patent describes an amusement ride involving riders being conveyed through the air in a manner simulating flight at an elevation sufficiently high to produce a thrilling sensation.

The Board began by stating that each of the grounds of unpatentability asserted by Petitioner relies upon Barnstormer. Petitioner asserted that Barnstormer is prior art to the ’103 Patent under 35 U.S.C. § 102(b), stating that Barnstormer was produced, sold, and used by the general public more than one year prior to the ’103 Patent filing date.  To support this, Petitioner attached a brochure created prior to 1997 showing the Barnstormer as operated and available to the public, as well as a declaration, which stated that the Barnstormer was “installed and operated for the public at various amusement parks from the late 1970’s into the 1990’s.”  The Board found that the declaration does not date the Barnstormer publication before the date of the ’103 Patent.  The Board found that neither the Petition nor the declaration identifies any date for Barnstormer and no date appears on the face of the document.  Further, Petitioner offered no explanation of the source of Barnstormer and provided no argument or evidence in support of the conclusion that Barnstormer was a printed publication available as prior art to the ’103 Patent.  Citing to 35 U.S.C. § 311(b), the Board noted that the scope of inter partes review is limited to prior art consisting of patents or printed publications, which must have been publicly available.  The Board held that while Petitioner provided evidence that “the Barnstormer ride” was available to the public before the filing date of the ’103 Patent, Petitioner had not provided sufficient evidence to support a showing that Barnstormer is a printed publication.  Therefore, none of the grounds of patentability are viable.

A.R.M., Inc. v. Cottingham Agencies Ltd., IPR2014-00671
Paper 10: Decision Denying Institution of Inter Partes Review
Dated: October 3, 2014
Patent: 7,666,103
Before: James T. Moore, James A. Tartal, and Carl M. DeFranco
Written by: Tartal
Related Proceeding: Cottingham Agencies, Ltd. v. A.R.M., Inc., No. 13-01603-JCH (D. Conn.)