Higher Burden of Demonstrating Public Accessibility of a Reference at Final Decision Stage

By Jennifer Chheda and Daniel Sloan –

In denying Petitioner Medivis, Inc.’s (“Medivis”) Request for Rehearing of the Patent Trial and Appeal Board’s (“PTAB”) Final Written Decision (“FWD”) in Medivis, Inc. v. Novarad Corp. inter partes review, the PTAB found that at the final decision stage a petitioner must establish public accessibility of a reference by a preponderance of the evidence.  Medivis, IPR2023-00042, Paper 37 at 5 (PTAB April 23, 2024) (“Rehearing Decision”).  In the FWD, the PTAB found that Medivis failed to establish the public accessibility of three references that Medivis had cited as a basis for alleging obviousness of certain claims in U.S. Patent No. 11,004,271 (the “’271 Patent”), which relates to a method for augmenting real-time views of a patient with three-dimensional data.  See id., Paper 35 (FWD).  In its decision denying rehearing, the PTAB found that Medivis had failed to demonstrate that the PTAB misapprehended or overlooked any arguments presented regarding public accessibility of the three references.

Medivis in its petition alleged that certain claims in the ’271 Patent are obvious over a Journal of Biomedical Informatics reference (“JBI reference”), a certain tutorial, and a certain software.  To demonstrate public accessibility of the JBI reference at the relevant date, Medivis asserted that the JBI reference was copyrighted, appeared online by a certain date, and had been cited by seven publications.  In the FWD, the PTAB found that: (1) a copyright is insufficient to demonstrate public accessibility at the relevant date; (2) a statement that the JBI reference was online by a certain date “does not prove public accessibility because any reference can state it was published without actually being published”; and (3) the citation of the JBI reference by seven publications, which Medivis did not supply as exhibits, does not prove the JBI reference was publicly accessible.  FWD at 27-28.  In addition, the PTAB stated that it did not consider a declaration submitted by Medivis to support the public accessibility of the JBI reference because of improper incorporation by reference of the contents of the declaration in Medivis’ reply brief.  In the FWD, the PTAB stated that merely citing the declaration without discussion was an improper attempt to incorporate by reference the content of the declaration.  Id. at 28-29.

To demonstrate public accessibility of the tutorial, Medivis asserted that it was like previous trainings given at 22 conferences to over 2700 people, copyrighted by a certain date, and available online by a certain date.  The PTAB in its FWD found that: (1) the bare assertion that the tutorial was like previous trainings given at conferences does not support its public accessibility; (2) the copyright is insufficient to support public accessibility; and (3) Medivis’ citation to a declaration in its reply to support public accessibility of the tutorial was an impermissible incorporation by reference.  To demonstrate public accessibility of the software, Medivis asserted a date by which the software was last edited and cited to a declaration to support the statement.  In the FWD, the PTAB found that the statement did not prove that the software “was publicly accessible as of that date because a document may be edited without being published.”  FWD at 29.  In addition, the PTAB in the FWD found that the declaration was impermissibly incorporated by reference and noted that the declarant’s testimony was deficient.

In its request for rehearing, Medivis argued that: (1) the FWD wrongly found that the Petition offered no proof of public accessibility; (2) the PTAB “overlooked or misapprehended most of the relevant evidence presented in the Reply”; (3) the PTAB overlooked a particular declaration; and (4) the PTAB overlooked undisputed facts in Medivis’ motion to exclude.  With respect to proof of accessibility of the three references in Medivis’ Petition, the PTAB in its decision denying rehearing found that Medivis did not provide any evidence of the public accessibility of the three references other than the references themselves, which the PTAB stated is “tantamount to submitting no proof of public accessibility.”  Rehearing Decision at 4.

Medivis also argued that the FWD is contrary to the Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 (PTAB Dec. 20, 2019) decision, which Medivis stated found that “a copyright date, a publication date, and an established publisher of a series of a similar type of references” are evidence supporting that a reference is a printed publication, and thus, the FWD wrongly found no proof of public accessibility.  Id., Paper 36 at 3-4.  The PTAB stated that “[t]o find public accessibility, we must determine that a ‘document has been 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.’”  Id.  Here, the PTAB found that Medivis failed to demonstrate by a preponderance of the evidence that the three references were “disseminated or otherwise made available to those of ordinary skill in the art.”  Id.  In addition, the PTAB in its decision denying rehearing found that references to testimony in its Petition that the software was a printed publication were not overlooked or misapprehended.  For example, the PTAB stated that Medivis’ argument that the software was publicly known is insufficient to demonstrate that it was disseminated or otherwise available.

In addition, the PTAB in its decision denying rehearing found that Medivis’ reliance on Hulu was misplaced because that decision considered whether a petitioner had met its burden for public accessibility at the institution stage, not whether the petitioner had proven public accessibility at the final decision stage.  The PTAB stated that the standard for demonstrating public accessibility of a reference at the institution stage is lower than the standard for demonstrating public accessibility of a reference at the final decision stage because the standard of proof at the institution stage requires “that there is a reasonable likelihood that the petitioner would prevail,” whereas a final decision requires the petitioner demonstrate unpatentability by a preponderance of the evidence.  Rehearing Decision at 4-5.

With respect to its reply evidence, Medivis argued in its rehearing request that the PTAB overlooked two declarations.  In its decision denying rehearing, the PTAB noted that the request for rehearing did not adequately explain how the lack of consideration of the two declarations in the FWD because of improper incorporation by reference overlooked or misapprehended anything.  The PTAB explained that arguments incorporated by reference expand the word count and “[i]t is fundamentally unfair to allow a party to use incorporation to exceed word count.”  Rehearing Decision at 11.  In addition, the PTAB found that Medivis assertion that the tutorial “is ‘like previous trainings at conferences does not assert that the tutorial itself was presented at any conferences before any skilled artisans,’ and thus, ‘this bare assertion does not support public accessibility.’”  Id. at 12 (emphasis in original).

With respect to Medivis’ contention that the PTAB overlooked a particular declaration, the PTAB in its decision denying rehearing stated that the declaration allegedly overlooked was submitted by Medivis with its reply and that Medivis had not addressed it there.  Thus, the PTAB found that the declaration was not overlooked or misapprehend.  Further, in its decision denying rehearing, the PTAB declined to consider whether it overlooked undisputed facts in Medivis’ motion to exclude because the argument was new.

Takeaway:

In an IPR, patent challengers have a higher burden of demonstrating the public accessibility of a reference at the final decision stage than the public accessibility of a reference at the institution stage.