Takeaway: If a petitioner is going to rely on a piece of prior art in an inter partes review, the petitioner must provide evidence that the prior art is a printed publication that was publicly available prior to the priority date of the patent at issue.

In its Decisions (IPR2015-00788 and IPR2015-00789), the Board denied institution of a trial concerning the challenged claims of the ’550 Patent. The ’550 Patent relates to methods and devices for the pictorial representation of space-related data, such as geographical data of the earth.

Both decisions turned on whether the primary prior art is a printed publication pursuant to 35 U.S.C. § 102. The Board looks to underlying facts to make a determination of whether a document is a printed publication, but “public accessibility” has been the touchstone of determining whether a document is a printed publication. A document is “publicly accessible” if there is a showing that it has been disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the art exercising reasonable diligence can locate it.

In IPR2015-00788, the Board was determining whether Leclerc is a “printed publication.” Petitioner made the blanket statement that Leclerc was published prior to December 17, 1995. The face of Leclerc notes the date “April 22, 1994” and that it is “Approved for Public Release; Distribution Unlimited.” The next page includes the word “DRAFT” in the header along with the date “January 26, 1995.” The Board agreed with Patent Owner that Petitioner did not provide sufficient evidence to show the public accessibility of Leclerc prior to the December 17, 1995 critical date. The bare dates on the publication, without more, do not provide information regarding the date that it was publicly accessible. The Board noted the “DRAFT” notation as well as the inconsistent dates as evidence that Petitioner had not proven a public accessibility date. Further, Petitioner had not provided evidence that the document was accessible to the public. The Board also noted Petitioner’s expert’s testimony regarding the date and found that it did not show Leclerc was publicly available before the critical date.

In IPR2015-00789, the Board was determining whether T_Vision is a “printed publication.” Petitioner stated that the T_Vision Project took place between August 6-11, 1995, and that Patent Owner admitted during prosecution that T-Vision was prior art published as early as August 6-11, 1995. Patent Owner noted that the only date on T_Vision is February 21, 2013, and that T_Vision appears to be a draft that has no evidence of publication. Patent Owner further stated that the IDS cannot establish that T_Vision is a printed publication. The Board agreed with Patent Owner, and did not give any weight to Petitioner’s expert’s testimony.

Google Inc. v. ART+COM Innovationpool GmbH, IPR2015-00788; IPR2015-00789
Dated: September 2, 2015
Paper 7/8: Decision Denying Institution of Inter Partes Review
Patent RE44,550 E
Before: Justin Busch, Scott A. Daniels, and Kevin W. Cherry
Written by: Cherry
Related Proceedings: ART+COM Innovationpool GmbH v. Google Inc., No. 14-0271 (D. Del.)