In Square, Inc., v. Unwired Planet, LLC, the PTAB denied the Petitioner’s request for rehearing of a decision not to institute a Covered Business Method Review on prior art grounds because the petition failed to show that a non-patent reference was a printed publication. CBM2014-00156, Paper 22 (February 26, 2015). Specifically, the Board held that the petition failed to show that the reference was publicly accessible.
The non-patent reference at issue included a copyright notice, an International Standard Book Number (ISBN) and date, and a library seal. In its preliminary response, the Patent Owner asserted, inter alia, that an ISBN may be obtained before a work is published. In refusing to institute on prior art grounds that relied upon the reference, the Board noted that the Petitioner did not discuss what the ISBN purportedly showed, and that the Petitioner, overall, did not make a sufficient showing that the reference was publicly accessible. In a request for rehearing of the Board’s decision, the Petitioner argued that the Board misapprehended or overlooked three main points.
First, the Petitioner asserted the Board misapprehended or overlooked the publication date and copyright notice on the cover of the reference. The copyright notice, the Petitioner urged, is prima facie evidence that the reference was publicly available as of the notice date. But the Board noted that Petitioner did not argue or even mention—in its petition—what the copyright notice date was.
The Board refused to assume that the ISBN date showed the reference was a printed publication, stating that “we do not assume facts that Petitioner must prove in its Petition, namely, that the . . . ISBN date that appears on the face of [the reference] is its publication date and that, as of that date, [the reference] was publicly accessible.” In the end, because the petition did not include argument regarding the publication date and public accessibility, the Board concluded it could not have overlooked or misapprehended such an argument.
Second, the Petitioner asserted the Board misapprehended or overlooked a library seal on the reference’s inside cover that suggested the reference’s public availability at or near the time of its publication. In response, the Board faulted the Petitioner for failing to argue the significance of the seal in its petition. Further, the Board noted that the seal was undated; thus, it was not sufficient evidence that the reference was publicly accessible before the priority date of the challenged patent.
Third, the Petitioner asserted that the copyright notice and library seal were sufficient to meet the “reasonable likelihood” standard for instituting review, and that additional facts establishing the public availability of the reference should be the subject of routine discovery following institution. The Board disagreed, noting that the correct standard for institution of CBM review is the “more likely than not” standard, not the “reasonable likelihood” standard used in IPR proceedings. The Board further noted that “[r]outine discovery is not an appropriate method for repairing deficiencies in the Petition.”
As this case illustrates, CBM and IPR petitions must prove that any non-patent references relied upon for prior art grounds are indeed printed publications. Merely providing relevant evidence in the petition may not be sufficient. In other words, the petitioner must argue, in the petition, how evidence in the record proves the reference’s publication date and that the reference was publicly accessible as of that date. This case also illustrates that neither a request for rehearing nor routine discovery can correct a failure to prove up the publication of a non-patent reference relied upon in the petition.