PTAB Reiterates Strict Evidentiary Standard for Printed Publications

by | Dec 19, 2024 | Evidentiary Issues, Prior Art Issues, PTAB News, PTAB Trial Basics

By Nicholas D’Andrea and Matt Johnson –

The PTAB denied institution of inter partes review (IPR) for a patent directed to geothermal technology.  Fervo Energy Co. v. Ormat Techs. Inc., IPR2014-00665, Paper 18 (PTAB Sept. 18, 2024).  The claimed invention related to “enhancing the flow of geothermal fluid” via horizontal wells which “generate a water density difference and a pressure difference.”  Petitioner challenged all claims under 35 U.S.C. § 103.  Because the record did not include publication dates for two references, the PTAB determined neither reference was available as prior art.  This decision reinforces the strict evidentiary standard required to establish a printed publication as prior art in IPR proceedings.

For a printed publication to qualify as prior art in an IPR, a reference must be publicly available.  The Federal Circuit recently described “publicly available” as “whether interested members of the relevant public could locate the reference by reasonable diligence.”  Weber Inc. v. Provisur Techs., Inc., 92 F.4th 1059, 1067 (Fed. Cir. 2024).  The PTAB has consistently applied this strict standard, as previous PTAB Litigation Blog posts have highlighted.  For example, a digital record in a library catalog may not be sufficient to establish an academic article was publicly available.  Conversely, a copyright date, printing date, and ISBN number may be sufficient to establish a book’s publication date.  The Federal Circuit recently affirmed the “public accessibility” standard in Weber Inc. v. Provisur Technologies, Inc., finding sufficient evidence that an operating manual was publicly accessible despite confidentiality restrictions.  Id.

In this case, the Patent Owner argued Petitioner had not met its burden because two references were lacking evidence to support their alleged publication dates.  For the first reference, an academic paper, the Patent Owner challenged Petitioner’s cited publication year.  Reviewing the paper, the PTAB noted “we search [the cited] page in vain for any indication of a 1995 publication date, or any other publication date.”  Paper 18 at 24.  The PTAB determined there was “simply no adequate evidence on this record that [the reference] was made available in the manner required so as to be regarded as publicly accessible.”  Id.  Without any evidence to support a publication date—far below the strict standard for public accessibility—Petitioner could not satisfy its burden to establish the reference as prior art.

For the second reference, also an academic paper, the Patent Owner similarly challenged the alleged publication year.  Unlike the first reference, however, this paper included a heading stating “Twenty-Fourth Workshop on Geothermal Reservoir Engineering Stanford University, Stanford, California, January 25–27, 1999.”  Id. at 25.  Applying the same standard, the PTAB determined “[t]here is no indication from that heading that [the reference] was published or that the ‘January 25–27, 1999’ notation constitutes a publication date.”  Id. at 25–26.  Without any evidence supporting the publication or public accessibility of the paper, the PTAB accordingly found Petitioner had not met its burden to establish the second reference as prior art.

Petitioner’s challenge failed because the record lacked evidence of a publication date and public accessibility.  Instead, based on the strict evidentiary standard for printed publications, the PTAB found no evidence that either reference was publicly available.  Even though one reference included a purported workshop date, the PTAB found this notation was insufficient to establish a publication date.  The PTAB accordingly denied institution.

Takeaway:  This case highlights the importance of a complete record in post-grant proceedings.  The PTAB’s denial of institution is one example of the strict evidentiary standard—often reiterated in PTAB decisions—that petitioners must meet to establish a printed publication as prior art.  Petitioners must ensure the record includes sufficient evidence to support not only a reference’s publication date but also its public accessibility (i.e., “whether interested members of the relevant public could locate the reference by reasonable diligence,” Weber, 92 F.4th at 1067).

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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.