Panel Grants Rehearing and Reverses Itself On Patentability

By Ryan Mueller and Lisa Furby –

On January 10, 2023, a PTAB panel granted a Petitioner’s Request for Rehearing of Final Written Decision and, contemporaneously, issued a revised Final Written Decision in Unified Patents, LLC, v. 2BCom, LLC, IPR2020-00996, finding U.S. Patent No. 7,127,210 (“the ’210 patent”) unpatentable.  The ’210 patent is directed toward a wireless communication apparatus.

During the IPR, Unified Patents’ invalidity argument turned on whether a particular reference, the Nüsser reference, was publicly accessible before the critical date.  Unified Patents initially included a digital copy of the reference called Nüsser.  After 2BCom challenged the public accessibility of the Nüsser reference, the Petitioner later added an identical copy from the printed version from conference proceedings where the paper was published.  The PTAB found inconsistencies and shortcomings in Petitioner’s evidence that the paper was digitally available or otherwise publicly accessible before the critical date.  The PTAB considered the printed version of the conference separately and found it was improper evidence because the PTAB thought Petitioner was using it as a new approach to showing public accessibility of Nüsser after institution.  Once the PTAB decided Nüsser did not qualify as prior art, it determined Petitioner could not show the ’210 patent is unpatentable.

Unified Patents filed this Request for Rehearing, arguing the PTAB failed to consider the evidence as a whole and instead considered the paper separately from the printed version of the conference.  Further, Unified Patents argued the printed version of the conference was properly included in response to Patent Owner’s arguments and evidence.  Thus, according to Unified Patents, the PTAB mistakenly narrowed its analysis of the date of the printed version of the conference as relating only to the dissemination of the conference and overlooked its applicability to the general public availability of the Nüsser reference as a whole.  Unified Patents argued that, using a holistic approach, the printed version of the conference provides support in addition to the paper that Nüsser was publicly available before the critical date.

The PTAB found these arguments persuasive.  The PTAB first noted that it correctly found issues with the evidence establishing when the digital paper was publicly accessible.  However, the PTAB found it mistakenly dismissed and overlooked other evidence as being directed only to the dissemination of the printed version of the conference rather than relating to the public accessibility of the Nüsser reference as a whole.  The PTAB further failed to consider the reference as a whole when it separately analyzed the paper and the printed version of the conference.  Therefore, after re-evaluating the evidence in its totality, including both the digital paper and the printed version of the conference, the PTAB determined Nüsser qualifies as prior art.  In addition to granting Petitioner’s Request for Rehearing, the PTAB contemporaneously issued a revised Final Written Decision.

Takeaway: The PTAB may consider the public accessibility of a reference holistically with any additional evidence if the additional evidence is properly submitted and does not attempt to establish a new direction or approach for public accessibility.