In A.R.M. Inc. v. Cottingham Agencies LTD., the Patent Trail and Appeal Board (PTAB) declined to institute an Inter Partes Review (IPR) because each of the asserted rejections relied on a reference that was not adequately proven to be a printed publication. IPR2014-00671, Paper 10 (October 3, 2014).The PTAB is not amused: IPR Petition denied for failure to prove up document as printed publication

U.S. Pat. 7,666,103 is directed to an “Amusement Ride” which allows riders to simulate flying through the air and provides a “thrilling sensation.”  In its IPR Petition, the Petitioner relied on a device (the Barnstormer ride) that was sold and in use in the general public.  The Petitioner futher produced a brochure noting that the product was used in public at the Opryland Amusement Park in 1997, which was more than one year prior to the filing of the ’103 patent.  The Patent Owner challenged the use of this borochure in its Preliminary Response.

The expert testimony accompanying the IPR Petition noted that the Barnstormer ride was installed and operated at various parks between the 1970s and the 1990s.  However, the expert testimony did not date the provided brochure, nor did the brochure contain any self-dating.

The PTAB noted that in order to determine whether a given reference is a printed publication under 35 U.S.C. §311,  a case-by-case inquiry regarding the circumstances of the reference’s disclosure to the public is made.  The key to the inquiry is whether the reference was “sufficiently accessible to the public interested in the art” before the critical date.

The PTAB then found that the Petitioner offered no evidence that the provided brochure was disseminated or otherwise made available to the public to the extent that interested persons could have located the document.  Because of this, the PTAB concluded that the Petitioner did not establish a reasonable likelihood of success of prevailing in the challenge of the ’103 patent.

This decision shows the importance of proving up any references that are not clearly publications on the face of the document.  It further shows the importance for the Patent Owner to carefully study the petition and to address any potential defects in a preliminary response.