“First Available” Date Alone Is Insufficient Evidence of Disclosure

by | Dec 13, 2024 | Evidentiary Issues, Prior Art Issues, PTAB News, PTAB Trial Basics

By Adam Cook and Matt Johnson –

The Patent Trial and Appeal Board (“PTAB”) denied institution in an inter partes review (“IPR”), finding that an online store’s assertion regarding when a product was “first available” is by itself insufficient evidence of enabling disclosure that qualifies as a printed publication.  See Vectair Systems Inc. v. Fresh Products, Inc., No. IPR2024-00824, Paper 9 (P.T.A.B. Nov. 12, 2024).

On April 19, 2024, Vectair Systems Inc. (“Vectair”) filed a petition for IPR of U.S. Patent No. 10,145,098 (“’098 Patent”) owned by Fresh Products, Inc. (“Fresh Products”).  See id., Paper 2.  The ’098 Patent discloses improved urinal screens that are lighter in weight, reduce undesired splashing, and block large debris from entering urinals.  See id., Paper 9.

In the petition, Vectair argued that the independent claims of the ’098 patent lacked novelty in light of a set of Amazon listings that allegedly disclosed the invention.  See id.  The two cited Amazon listings depict Fresh Products’ Wave 3D Urinal Deodorizer Screens, the product seemingly disclosed in the ’098 Patent.  See id., Exhibit 1005, 1006.  The “Date[s] First Available” posted on the listings are May 10, 2013 and September 3, 2013, both over one year before the ’098 Patent’s priority date of October 28, 2015.  Id., Paper 9.

Fresh Products rebutted in the patent owner’s preliminary response, arguing that the “Date[s] First Available” recited in the Amazon listings were inaccurate.  Id.  The COO of Fresh Products stated in a declaration that the Wave 3D Urinal Screens were first publicly disclosed at a trade show in November of 2014 and that Fresh Products did not manufacture the Wave 3D Urinal Screens until March of 2015, both within the one-year safe harbor from the ’098 Patent’s priority date.  See id.  If true, this statement would render the “Date[s] First Available” incorrect.

In an IPR, the petitioner only may use “patents and printed publications” when arguing for a patent’s invalidity.  35 U.S.C. § 312.  Thus, if Fresh Products wanted to prove the ’098 Patent’s invalidity using the Amazon listings, then the listings had to qualify as printed publications.  See Vectair Systems, No. IPR2024-00824, Paper 9.  To be printed publications, Vectair had to prove that the Amazon listings were publicly accessible on the asserted disclosure date.  See id.

In its decision, the PTAB held that Vectair did not meet its burden of proof.  See id.  The PTAB stated that “[t]he date that a product was listed as first available on a website . . . is not sufficient evidence that the content of the listing, including the photographs depicted therein, were published at that time.”  Id. (citing Next Step Grp., Inc. v. Deckers Outdoor Corp., No. IPR2024-00525, 2024 WL 3678413, at *5 (P.T.A.B. Aug. 6, 2024)).  The reasoning being that product listings are not static; posters can periodically update the content of product listings.  See id.  Thus, a petitioner relying on a product listing’s “first available” date must accompany the listing with further proof that the listing has not changed since that date.  See id.  Otherwise, the petitioner will fail to meet their burden of proof at the institutional level.  See id.

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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.