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Library Indexing Insufficient To Establish Public Accessibility – Patent

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In, Inc. v. WSOU Investments,
d/b/a Brazos Licensing and Development, the Board
denied institution of inter partes review of a patent
directed to providing content to a limited display terminal (e.g.,
a PDA) because petitioner failed to show that a
2002 conference presentation was a printed publication
. In
particular, the petitioner engaged an expert in library science to
support the argument that the printed publication was available
based on such publication being received, cataloged, and indexed at
a German library using the MARC library catalog system and the
catalog record of a conference being available online. The patent
owner argued that the petitioner put forth insufficient evidence of
indexing at the German library to support the proposition that an
ordinarily skilled artisan exercising reasonable diligence would
have found the reference in question due, in large part, to only a
volume and page number for the publication being available.

The Board recounted the legal standards regarding printed
publications as follows: “[A]t the institution stage, the
petition must identify, with particularity, evidence sufficient to
establish a reasonable likelihood that the reference was publicly
accessible before the critical date of the challenged patent and
therefore that there is a reasonable likelihood that it qualifies
as a printed publication.” Hulu, LLC v. Sound View
Innovations, LLC
, IPR2018-01039, Paper 29 at 13 (PTAB Dec. 20,
2019) (precedential). The determination of whether a document is a
“printed publication” under 35 U.S.C. § 102
“involves a case-by-case inquiry into the facts and
circumstances surrounding the reference’s disclosure to members
of the public.” Medtronic, Inc. v. Barry, 891 F.3d
1368, 1380 (Fed. Cir. 2018) (citing In re Klopfenstein,
380 F.3d 1345, 1350 (Fed. Cir. 2004)). “A reference is
considered publicly accessible if it was disseminated or otherwise
made available to the extent that persons interested and ordinarily
skilled in the subject matter or art, exercising reasonable
diligence, can locate it.” Acceleration Bay, LLC v.
Activision Blizzard Inc.
, 908 F.3d 765, 772 (Fed. Cir. 2018)
(internal quotation omitted). Evidence of cataloging and indexing
can sometimes play a significant role in determining whether a
library reference qualifies as a printed publication. See In re
, 583 F.3d 1307, 1312 (Fed. Cir. 2009). In assessing
public accessibility, our reviewing court considers whether a
reference is “meaningfully indexed such that an interested
artisan exercising reasonable diligence would have found it.”
Acceleration Bay, 908 F.3d at 774 (citing In re
, 890 F.2d 1158, 1161 (Fed. Cir. 1989)). (pages

In rejecting the arguments of the petitioner, the Board stated
that “?even if we assumed that [hyperlinked websites in the
footnotes of Petitioner’s expert’s report] were available
on the Internet at that time, Petitioner does not put forth any
evidence or testimony showing that an ordinarily skilled artisan
exercising reasonable diligence would have found [the 2002
presentation] based on these disparate websites in conjunction with
the MARC record. This is particularly true given that Petitioner
and [its expert] fail to show how ‘volume and page number’
indexing would have been meaningful to an interested artisan such
that the artisan, when exercising reasonable diligence, would have
found [the 2002 presentation]. . . . But even if we were to
consider the MARC record by itself, Petitioner does not explain how
the MARC record provides meaningful indexing such that an
ordinarily skilled artisan would have located [the 2002
presentation].” (page 13)

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guide to the subject matter. Specialist advice should be sought
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