Petitioner’s Proof of Printed Publication Falls Short

by | Mar 12, 2025 | Evidentiary Issues, Prior Art Issues, Trial Institution

By Mike Lavine –

On February 6, 2025, the PTAB denied IPR institution because the Petitioner failed to establish that its key prior art reference qualified as a printed publication under Section 102(b). The PTAB’s decision hinged on whether the “Dammann” reference, which Petitioner relied on for each invalidity ground, was publicly accessible before the critical date of challenged US Patent No. 7,623,439 B2 (the ‘439 patent).

The Petitioner has the burden of proving a reference is a printed publication, and “public accessibility” is the touchstone for determining whether a reference qualifies as a printed publication. “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 can locate it with reasonable diligence.”  Id. at 21. The Petitioner argued that Dammann was publicly accessible before the ‘439 patent’s critical date because it was presented at the European Wireless 2002 conference sponsored by notable companies. Petitioner supported its argument with screenshots from The Wayback Machine, which purportedly showed the conference schedule and the inclusion of Dammann in the conference proceedings. Id. at 21-25. Patent Owner Intellectual Ventures I LLC countered that Petitioner’s evidence was insufficient to demonstrate public accessibility before the critical date because (1) Petitioner provided no evidence that Dammann was provided or made accessible to conference participants, (2) the sole Petitioner exhibit that mentioned Dammann was sourced from a Wayback Machine archive dated after the critical date, and (3) Petitioner’s exhibits were pulled from a website archive having no discernable relationship with the European Wireless 2002 conference and therefore a POSITA would not have known to search that website for Dammann.  Id. at 26-27.

The PTAB agreed with Patent Owner, finding that Petitioner failed to demonstrate that Dammann was publicly accessible before the critical date, and also noting Petitioner’s lack of testimonial evidence in support of its arguments. The PTAB also referenced its precedential decision in Hulu, LLC v. Sound View Innovations, LLC, which requires that at 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. Id. at 27; Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 (PTAB Dec. 20, 2019) (precedential) (“Hulu”). Because Petitioner failed to meet this threshold burden for Dammann, it did not qualify as a printed publication under Section 102(b) and therefore could not be considered prior art in the proceedings. This disqualification was the basis for the PTAB’s rejection of Petitioner’s invalidity grounds and consequent denial of IPR institution.

Takeaway:  When relying on a printed publication as a prior art reference, Petitioners should provide detailed and specific evidence, including documents and testimony, showing that the publication was disseminated, publicly accessible, and known to persons of ordinary skill in the art before the critical date of the challenged patent.

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Matthew Johnson

Partner at Jones Day
Matt Johnson is one of the Firm's primary contacts on practice before the PTAB. Currently co-chairing the Firm's PTAB subpractice and involved in proceedings at the Board since the first day of their availability in September 2012, Matt regularly represents clients as both petitioners and patent owners at the Board. He further works as an advocate for clients in appeals from Board proceedings at the Federal Circuit.