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New Evidence Precedent Gives Lawyers a Patent Board Road Map

Jan. 14, 2020, 11:30 AM

Attorneys may face better odds when trying to convince Patent and Trademark Office administrative judges to review patents after a new agency precedent on how the judges must handle evidence.

Patent Trial and Appeal Board panels must weigh all the available evidence when determining whether non-patent literature could be used in a bid to invalidate a patent, the agency’s Precedential Opinion Panel said in Hulu, LLC v. Sound View Innovations, LLC. The board said Hulu “based on a totality of the evidence currently in the record” established a reasonable likelihood that a textbook was publicly available before the patent application was filed.

Historically, different panels of PTAB judges had different standards for allowing a challenger to use non-patent literature, or NPL, to try to invalidate a patent. That meant it was unclear what specific information, like a copyright date or affidavit, was enough for a particular panel to decide whether to review a patent.

After Hulu, practitioners say, they have a clearer picture of what to bring to the table to persuade the board to launch a review.

“This decision should reduce the number of cases where a good prior art argument loses pre-institution because of some hyper-technical public accessibility proof issue that could instead be further developed during trial,” Scott Kelly, a patent attorney at Banner Witcoff in Washington, D.C. said.

“I think you’ll see less surprise decisions where NPL that seemed perfectly good is thrown out,” Kelly added.

‘Eases the Burden’

The Dec. 20 precedential decision involved Hulu’s request for rehearing on a PTAB decision not to hold a validity trial on claims in a data patent. The precedent-setting panel, known as POP, said a copyright date, ISBN, a printing date, and the prominence of a surrounding book series and publisher together were sufficient evidence to prove that a textbook was publicly available before Sound View Innovations filed for the patent.

The panel, composed of patent office director Andrei Iancu and other agency leaders, found that “based on the totality of the evidence currently in the record” the textbook put forth by Hulu could hold up as prior art in a trial. POP sent the dispute back to the PTAB panel to reconsider.

The POP didn’t “hold that any particular indicia per se is sufficient at the institution stage. Rather, the indicia on the face of a reference, such as printed dates and stamps, are considered as part of the totality of the evidence,” they wrote in the decision.

That means challengers should amass all the evidence they can, rather than guess at what types of evidence will resonate the most, attorneys said.

“The takeaway is get your ducks in a row early,” Ravi Mohan, a Rutan & Tucker LLP intellectual property group partner, said.

POP’s decision “almost makes things easier for the petitioner” because it lowers the standard to institute, Doug Robinson, a Harness Dickey & Pierce PLC attorney who represents both challengers and patent owners in board disputes, said.

In Hulu, the POP noted that challengers need to “establish a reasonable likelihood that a reference” was publicly accessible in order to institute a review. If the PTAB greenlights the trial, then the challenger will “ultimately have the burden to prove that the reference” was available by “a preponderance of the evidence.”

Hulu “eases the burden a little bit at the institution stage or at least gives panels some comfort in saying, ‘Okay, well at institution stages things look good enough to institute, but we’re going to see what happens in the trial,’” Robinson said.

Barry Schindler, chair of Greenberg Traurig LLP’s patent prosecution group, said that the decision not only helps the petitioner, but “harms the patent owner.”

“Before I think everyone was generally arguing from the standard of preponderance of the evidence” when trying to get the NPL challenge instituted, Schindler said. “The patent owner was coming back and attacking with ‘at trial this wouldn’t be sufficient.’”

“I think if anything the PTAB will increase the grant rate” for trials relying on NPL, Schindler added.

Kelly said the POP decision’s impact is “a shift in the PTAB’s attitude.”

“They seem to be leaning more toward instituting,” Kelly said of the agency’s precedent-setting panel.

‘Potential Pitfall’

Some patent lawyers say the new precedent offers a common-sense approach to determining whether a printed reference was publicly available. But it’s still unclear how far the PTAB will go in allowing more evidence of such prior art once they decide to institute trial.

“There certainly will be cases where the petitioner tries to supplement the evidence later in the proceeding and cites to this case, and that’s where I think there’s some gray area still,” John Sganga, patent attorney at Knobbe Martens Olson & Bear LLP, said. “That’s a potential pitfall for petitioners.”

Practitioners are advising patent challengers to come to the table with a full picture to prove that prior art was publicly available.

Patent challengers should err on the side of caution and include additional evidence up front, for while Hulu does indicate room to add more later down the line, there’s “a very fruitful ground for dispute” as to whether something was properly submitted, Haynes and Boone LLP partner Eugene Goryunov, who leads the firm’s Chicago post-grant review trials practice, said.

“The word to the wise here is to err on the side of caution and include extra evidence, so you kind of cement your proof,” Goryunov said.

To contact the reporter on this story: Ian Lopez in Washington at ilopez@bloomberglaw.com

To contact the editors responsible for this story: Rebecca Baker at rbaker@bloomberglaw.com; Keith Perine at kperine@bloomberglaw.com

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