Takeaway: A paper or thesis that is deposited in a university library, where it remains uncatalogued and unshelved before the critical date, is not accessible to qualify as a prior art printed publication.

In its Decision on Institution, the Board denied Petitioner’s Petition for Inter Partes Review. The Petition had sought the review of claims 1-26 of the ’804 patent.

The ’804 patent is directed to “regulating the alternating current (‘AC’) frequency of electrical power supplied to a power generation and distribution system or grid” involving at least one flywheel energy storage system (“FESS”) coupled to the grid that is “capable of regulating the AC frequency of the electrical power being distributed to the grid by outputting electrical energy at a desired AC frequency.” Claim 1 was the only independent claim among the challenged claims.

The asserted grounds of unpatentability were all based on obviousness under 35 U.S.C. § 103(a). The references applied to the various groups of claims were, respectively: Lyons, Hockney, and ESC as applied to claims 1-4, 6, and 21-26; Lyons, Hockney, ESC, and Vugdelija as applied to claims 5, 7, 8, 19, and 20; Lyons, Hockney, ESC, and Gertmar as applied to claims 9 and 10; and Lyons, Hockney, ESC, Gertmar, and APA as applied to claims 11-18.

Petitioner had submitted a declaration by its declarant, Dr. Robert Hebner, in order to show that Lyons was a prior art printed publication under 35 U.S.C. § 102(b). Patent Owner, in its Preliminary Response, challenged this characterization of Lyons. Among other things, Patent Owner noted that the cover page of Lyons indicated that this document had been made available through a publication service of Purdue University that had been created several years after the filing date of the ’804 patent. Patent Owner also pointed to other evidentiary shortcomings that it believed were associated with Petitioner’s reliance on Lyons.

The Board sided with Patent Owner on this threshold issue. According to the Board, “[t]he only evidence relied upon by [Petitioner] to support its assertion that Lyons qualifies as a prior art printed publication is the testimony offered by Dr. Hebner.” But, as found by the Board, “Dr. Hebner’s testimony . . . is entitled to little, if any, weight because he does not disclose the underlying facts or data on which his opinion is based.” Thus, the Board concluded that it agreed with Patent Owner in that “at best, the version of Lyons filed in this proceeding was made available through the Purdue e-Pubs system no earlier than 2006.”

Temporal Power, Ltd. v. Beacon Power, LLC, IPR2015-00147
Paper 8: Decision Denying Institution of Inter Partes Review
Dated: April 27, 2015
Patent 8,008,804 B2
Before: Michael R. Zecher, Michael J. Fitzpatrick, and J. John Lee
Written by: Zecher
Related Proceeding: IPR2015-00146 (requesting inter partes review of same claims but based on different grounds)