In LG Electronics, Inc. v. Advanced Micro Devices, Inc., the PTAB held that a copyright notice in a cited reference was evidence of publication as of the copyright date. The PTAB also held that a date without a copyright notice in another cited reference was not evidence of publication as of that date. IPR2015-00329, Paper 13 (Jul. 10, 2015).
One of the references in question was a technical specification for a USB controller. The front page of the document had the following copyright notification: “© 1997 National Semiconductor Corporation.” The word “PRELIMINARY” was also printed on the front page, along with the date, “November 1997.”
In addition to the copyright date, the Petitioner sought to establish a publication date by pointing to the fact that the document was submitted in an IDS in an unrelated patent application before the filing date of the challenged patent.
Attempting to disqualify the reference as prior art, the Patent Owner contended that (1) the Petitioner did not prove that National Semiconductor actually disseminated the document and, (2) the “PRELIMINARY” marking was evidence that the document was not published. As to the IDS, the Patent Owner argued that the applicant that filed the IDS worked closely with National Semiconductor at the time and could have obtained an unpublished copy of the document.
The Board weighed all the evidence and held that it demonstrated a reasonable likelihood that the document was a prior art printed publication. The Board noted that other panels had considered a copyright notice to be prima facie evidence of publication. See, e.g., Ford Motor C. v. Cruise Control Techs. LLC, IPR2014-00291, Paper 44 at 7–8 (Jun. 29, 2015). While this panel did not go that far, it did hold that the copyright date, along with the IDS filing, “may be taken as some evidence of public accessibility as of a particular date.”
The other reference in question was a user’s manual for a USB controller. Its front page listed a date of “03/24/98,” along with the notation, “Revision: 2.0.” The Petitioner’s expert testified that the manual was “more than likely published” as of the date on the manual.
The Board did not consider this sufficient to demonstrate a reasonable likelihood of publication. The Board noted that the listing of the date and “Revision: 2.0” could suggest that the document was revised on that date, “but is not evidence that it was published on that date.” The Board discounted the expert testimony as “unsupported.”
As this decision shows, petitioners and patent owners should be aware of any potential deficiencies in the evidence of a reference’s publication date. Petitioners should be mindful that it is their burden to prove a publication date and should not rely solely on non-copyright dates or conclusory expert testimony to do so.