Takeaway:  Petitioner must provide at least a threshold showing that a non-patent reference was publicly available during the prior art time period for that reference to qualify as prior art for the purpose of determining institution.

In its Decision, the Board denied Petitioner’s Request for Rehearing. Petitioner requested rehearing on the following two grounds: “(a) Petitioner has not been afforded an opportunity to respond under the rules, and/or (b) the determination that the documents did not qualify as prior art printed publications was clear error, and therefore it was an abuse of discretion to deny institution of the inter partes review on that basis.”

Regarding ground (a), the Board was not persuaded by Petitioner’s arguments that Petitioner was not given an opportunity to respond to the arguments in Patent Owner’s Preliminary Response regarding admissibility of the prior art publications prior to institution and that the Board should have independently determined the documents at issue were viable prior art publications. Specifically, the Board noted that Petitioner had failed to make even a threshold showing regarding whether the documents were prior art printed publications, and Petitioner cannot shift a portion of its burden to demonstrate a reasonable likelihood of prevailing onto the Board.

With regard to one of the references, Petitioner argued in its Request for Rehearing that the document was listed under “Other Publications” in the ’028 patent itself. However, the Board noted that the ’028 patent did not include a complete citation and did not refer specifically to the version relied upon in the Petition. Petitioner had not provided any evidence to show that the two citations were in fact referring to the same document.

Petitioner further argued that a number of the documents qualify as prior art pursuant to Rule 901(i) of the Federal Rules of Evidence as ancient documents. However, the Board noted that the issue of whether the document qualifies as a prior art printed publication does not depend on its authenticity, but rather on whether the document was publicly accessible in the prior art time frame. Additionally, Petitioner argued that another document was a printed publication because it was cited in a different U.S. patent, but this argument was dismissed because it was not made in the Petition.

Finally, Petitioner argued that the Board could have considered one of the qualifying documents “individually” in its analysis of the challenges in the Petition. However, the Petition did not include a ground based solely on that document, and thus it could not be a basis for the Board misapprehending or overlooking evidence or an argument in its decision on institution.

Indoor Skydiving Germany GMBH v. iFLY Holdings LLC, IPR2015-01272
Paper 14: Denying Request for Rehearing of Denial of Institution
Dated: January 5, 2016
Patent: RE43,028 E
Before: Richard E. Rice, Jeremy M. Plenzler, and James A. Worth
Written by: Rice