Failure to Prove “Prior” Art Results in Denial

by | Dec 12, 2023 | Prior Art Issues, PTAB News, PTAB Trial Basics

By Pranita Dhungana and Matt Johnson –

The PTAB recently denied IPR institution in Sophos v. Open Text because the petitioner failed to show a reasonable likelihood that the asserted reference was, in fact, prior art.  IPR2023-00732, Paper 23 (November 2, 2023).

Sophos (“Petitioner”) filed a petition requesting IPR review of Open Text’s (“Patent Owner”) U.S. Patent No. 8,719,932 (“the ‘932 patent”), which was related to systems and methods of detecting, controlling, and removing computer pestware.  Id. at 3.  Asserting unpatentability under 35 U.S.C. § 103, Petitioner contended that the ‘932 patent would have been obvious over Li, in combination with other references.  Id. at 7.  Patent Owner responded by challenging the public accessibility of Li before the ‘932 patent’s priority date of April 20, 2006.  Id. at 7.

Before addressing the substance of the prior art, the PTAB held that Petitioner failed to establish the public accessibility of Li because the Petitioner’s expert, Dr. Hall-Ellis, had cited to webpage links, and not exhibits, meaning that her declaration was unsupported by properly-submitted evidence.  Id. at 13; see 37 C.F.R. §§ 42.65(a), 42.63(a), 42.6(c).

The PTAB noted two important functions of exhibits: first, to preserve evidence as originally presented because webpages can be deleted or moved; and second, to provide public access to the record.  Id. at 13-14. One of the cited webpages did change.  Id.  Dr. Hall-Ellis had cited that Google Scholar indicated 31 citations to Li, but it, in fact, had later changed to 30 when a panel member checked.  Id.

Even though Petitioner’s failure to submit exhibits was dispositive, the PTAB addressed Petitioner’s prior-art-establishment arguments, which it ultimately found deficient.  Id. at 15.  The PTAB found that Petitioner had not shown a reasonable likelihood that Li “has been disseminated” or that Li was “otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence, can locate it.”  Id. at 15; SRI Int’l, Inc. v. Internet Sec. Sys., Inc., 511 F.3d 1186, 1194 (Fed. Cir. 2008).

First, Li was undated.  Dr. Hall-Ellis testified that Li was published at least by January 31, 2005 because it was published in a conference paper, and the conference was held on July 22-25, 2004.  But Li itself had no timeframe or any indication of a journal or website.  Id. at 10, 15, 16.

Additionally, Dr. Hall-Ellis did not claim personal knowledge of Li being presented at the conference.  Id. at 10.  She obtained Li from a digital repository, and testified that Li “is” available from other repositories as well – ResearchGate, Google Scholar, and CiteSeer.  Id. at 17.  However, the repositories’ listing of January 2004 as the publication date did not indicate Li’s availability then because ResearchGate was launched in 2008.  Id. at 17.  Moreover, Li itself cited to papers dated after January 2004.  Id. at 18.

Dr. Hall-Ellis also pointed out that Google Scholar had 31 citations to Li, but citation alone does not establish a publication date.  Id. at 18.  Dr. Hall-Ellis singled out two of these papers particularly as indicating public accessibility, but both were by Li co-authors, which is unpersuasive because “a work is not publicly accessible if the only people who know how to find it are the ones who created it.”  Id. at 18; Samsung Elecs. Co. v. Infobridge Pte. Ltd., 929 F.3d 1363, 1372 (Fed. Cir. 2019).

Finally, Petitioner did not address any factors like “whether the copies were freely distributed to interested members of the public” or whether there was a “legal obligation of confidentiality” when distributing any copies. Id. at 16; Medtronic, Inc. v. Barry, 891 F.3d 1368, 1381 (Fed. Cir. 2018).

Thus, the PTAB found Petitioner’s assertion that Li is prior art to be mere speculation, and denied IPR institution on § 103 grounds.  Id. at 19.

Takeaway: Petitioners should be thorough and careful when proving the prior art status of their references, where all cited evidence should be submitted as exhibits to ensure its proper consideration.  

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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.