Takeaway: A declaration used as evidence of a document being a “printed publication” should be precise and be accompanied by corroborating evidence of public accessibility, and not bare statements by the declarant.

In its Final Written Decision, the Board denied the parties Renewed Joint Motion to Terminate Proceedings and found that Petitioner had not shown by a preponderance of the evidence that the instituted claims 4-6, 8-20, or 23-29 are unpatentable. The ’275 patent “discloses a single wire serial interface for managing functions such as power level and on and off switching for power integrated circuits and other devices.”

The Board construed claim terms in its Institution Decision, and Patent Owner did not object or provide any of its own constructions. Thus, the Board maintained its constructions. The Board then addressed alleged obviousness of claims 4-6, 8, 12-20, and 23-29 over a combination of LT1932, Legates, and Kato. LT1932 is a printed publication, and the Patent Owner raised the threshold issue of whether LT1932 is a prior art printed publication. Specifically, Patent Owner asserted that Petitioner failed to properly show that LT1932 was “sufficiently accessible to the public interested in the art before the critical date.” Patent Owner further argued that any further evidence presented by Petitioner purporting to show that the printed publication was sufficiently accessible would be untimely. Petitioner filed with its Reply a declaration by Todd E. Reimund purporting to show additional evidence that LT1932 is a printed publication.

The Board noted that the “printed publication” analysis is a case-by-case inquiry and that “printed publication” means reasonably accessible through generally available media that serve to disseminate information and does not need to be easily searchable after publication if it was sufficiently disseminated at the time of its publication. Petitioner originally argued that LT1932 is a “printed publication” based on a copyright notice and date printed on the document that allegedly indicated that it was published at least as early as 2001. Petitioner supported its position with a declaration of Mr. Reimund on behalf of company that printed the data sheet.   In the declaration, Mr. Reimund asserted that “[s]ince prior to 2001, it has been Linear’s standard practice to make publicly available datasheets for, and articles related to, devices that Linear was marketing, selling, and offering for sale.” The Board had determined for purposes of institution that the copyright notice sufficed as a threshold showing of public availability sufficient to institute trial.

The Reimund Declaration was timely served by Petitioner in response to Patent Owner’s Objections to Admissibility of Evidence and filed with Petitioner’s Reply. Patent Owner filed a Motion to Exclude the prior art document because of the alleged lack of evidence of public accessibility. The Board denied this motion because the motion was related to the sufficiency of the evidence instead of admissibility, which is the basis for whether to exclude evidence. The Board fully considered the Reimund Declaration as reply evidence in response to the issues raised in the Patent Owner’s Response. Although the Board was persuaded that Mr. Reimund had sufficient knowledge to know the procedures of whether the data sheet would be made available, the Board was not persuaded by Mr. Reimund’s “bare testimony . . . that the printing date “‘1201’ indicates that the datasheet was made public, and Linear customers and members of the public were able to access the datasheet no later than December 2001” that the “printing date” could be equated with the publication date, because Mr. Reimund did not clarify what “made publicly available shortly after the footer dates were applied” means. Accordingly, such evidence was determined by the Board to be insufficient to show that LT1932 was accessible to the public prior to the filing of the provisional application on March 28, 2002. Also, because LT1932 was used in each asserted ground of unpatentability, the Board was not persuaded that Petitioner had demonstrated by a preponderance of the evidence that any of the claims are unpatentable.

After the oral hearing, the parties filed a Renewed Joint Motion to Terminate Proceedings accompanied by a true copy of a settlement agreement and request to treat the agreement as business confidential. However, because the settlement was not concluded until after the oral hearing and the Board had already decided the merits of the proceeding, the Board used its discretion not to terminate the proceeding.

Kinetic Technologies, Inc. v. Skyworks Solutions, Inc., IPR2014-00690
Paper 43: Final Written Decision
Dated: October 19, 2015
Patents: 8,539,275 B2
Before: Glenn J. Perry, Scott A. Daniels, and Barry L. Grossman
Written by: Daniels
Related proceedings: Skyworks Solutions, Inc. v. Kinetic Technologies, Inc., Case No. 3:14-cv-00010 (N.D. Cal.); Reexamination Control No. 95/000,501 (U.S. Pat. No. 7,127,631)