In Hughes Network Sys., LLC v. Cal. Inst. of Tech., the PTAB addressed a Patent Owner’s challenge to the availability of two papers from the same conference (albeit different years) as printed publications for use against the challenged claims. IPR2015-00060, Paper 18 (Apr. 27, 2015). A declaration of the co-author was deemed insufficient to establish the first conference paper as prior art. In contrast, the declaration of a librarian supported by a library acquisition record and a patent citation was deemed sufficient to establish the second conference paper as prior art. Detailed explanations of the papers were not provided in the body of the petition.
The Board agreed with the Patent Owner that the Petitioner failed to establish the availability of the first reference as a printed publication against the challenged claims. In reaching this conclusion, the Board noted that although the first reference included a first page referring to the conference at which it was allegedly presented, it did not bear indicia normally associated with those conference papers.
The Board also noted that the wording of a declaration from one of the reference’s co-authors did not make it clear whether the paper was actually presented at the conference, and that there was “no confirmation by receipt at a recognized library after the conference.”
Conversely, the Board disagreed with the Patent Owner on the second reference and found it was available for use as prior art. According to the Board, the second reference stood in a different position than the first reference in numerous ways. For example, unlike the first reference, the cover page of the second reference included a photograph of where the conference was held, a date range of the conference, and sponsorship information (the “indicia normally found on an Allerton Conference paper” that the Board indicated was missing from the first reference).
Also persuasive to the Board was a declaration from a librarian describing an acquisition record reflecting the date the reference was made available to members of the public, and the fact that the second reference was cited in another U.S. Patent (and related IDS) owned by the Patent Owner.
A few lessons to take away from the Board’s decision are:
- A detailed explanation of the prior art in the body of the petition could be helpful;
- A declaration of the author about the date of publication may not alone be sufficient to establish the availability of a conference paper as a prior art printed publication;
- To the extent available, consider including the cover page and any other indicia normally associated with papers that are published in relation to a particular conference;
- A citation to a reference in patents, patent applications, and information disclosure statements, particularly in relation to patents and applications owned by Patent Owner, can be helpful in establishing a reference as a printed publication; and
- When obtaining a reference from a library, consider acquiring a declaration from a librarian, as well as the library’s acquisition and/or publication records, to support when the conference paper was obtained by the library and made available to the public.