In Chicago Mercantile Exchange Inc. v. 5th Market, Inc., the PTAB issued a Final Written Decision finding the challenged claims unpatentable as obvious over two references. CBM2014-00114, Paper 35 (Aug. 18, 2015). In doing so, the Board provided guidance on the proper vehicle for challenging whether a reference qualifies as prior art.
In its Patent Owner Response, the Patent Owner argued that one of the references, CFTC, did not qualify as a prior art printed publication within the meaning of § 102(b) because the Petitioner “fail[ed] to demonstrate that CFTC was disseminated to the relevant public before the earliest effective filing date,” and “given that CFTC [was] labeled as a ‘memorandum,’ actual public dissemination [could] not be presumed.”
The Board found that expert testimony, including that of a paralegal specialist at the CFTC Agency, amounted to credible evidence that CFTC was made sufficiently accessibly to the public interested in the art at or around the critical date. Importantly, the Board also noted that CFTC was applied as a prior art reference in three prior proceedings involving the same contested patent and its parent patent before the Office, and that the Patent Owner did not dispute the qualification of CFTC as prior art in those proceedings.
The Patent Owner also sought to exclude CFTC by filing a Motion to Exclude, arguing that: (1) CFTC lacked relevance under FRE 403 because it did not qualify as a prior art printed publication within the meaning of § 102(b), and (2) it was not authenticated properly under FRE 901. The Board denied the Motion, first stating “whether a reference qualifies as a printed publication within the meaning of § 102(b) is a legal conclusion based on underlying factual determinations” and thus “the issue of whether there is sufficient evidence in the record before us to demonstrate that CFTC is a printed publication within the meaning of § 102(b) should be presented in the patent owner response—not a motion to exclude.”
The Board further stated that “addressing the admissibility of evidence, e.g., authenticity or hearsay, underlying the factual determinations of whether CFTC is a prior art printed publication may be the subject of a motion to exclude,” and the Board proceeded to find that CFTC was a self-authenticating document under FRE 902(5) as an “official publication” issued by the CFTC Agency and also under FRE 901(b)(8) as an “ancient document.”
As this decision shows, a patent owner should bring all challenges it has against a reference’s qualification as prior art in its Patent Owner Response, and should not save such arguments for a motion to exclude. Furthermore, patent owners should be mindful that failing to challenge the qualification of a reference as prior art in one PTAB proceeding may be used against them if they attempt to challenge the qualification of that reference in a related PTAB proceeding.