The familiar standard for anticipation under 35 U.S.C. § 102 states, in part, that a “person shall be entitled to a patent unless” the claimed invention was “described in a printed publication . . . or otherwise available to the public before the effective filing date of the claimed invention.” The question of when a document was published or otherwise available can become the focal point of invalidity disputes. In addition, the issue of public accessibility—the key criteria for publication—is also often hotly contested. See In re Hall, 781 F.2d 897, 898–99 (Fed. Cir. 1986).
The PTAB gave further guidance on these questions, and in particular about what is required to demonstrate the date of public accessibility, in its recent decision in GlobalFoundries v. Zond. IPR2014-008211, Paper 47 (Sept. 25, 2015). The case involved a dissertation (“the Mozgrin Thesis”) at the Russian State Library relating to a specific voltage range for a device used to generate high-density plasma. The expanded PTAB panel decision reminds us of several important considerations for those seeking to either proffer or exclude prior art.
As a starting point, the Board looked to Federal Circuit precedent requiring a “case-by-case inquiry into the facts and circumstances surrounding the reference’s disclosure to members of the public.” Next, the Board examined the evidence from Petitioner in support of its assertion that the Mozgrin Thesis was publicly accessible prior to the critical date, November 4, 2002. Petitioner offered a copy of the catalog entry for the Mozgrin Thesis at the Russian State Library, and a certified English-language translation thereof. See Figure 1 (PTAB annotations to Petitioners’ Exhibit, Catalog Entry, Paper 47):
Petitioner alleged that the “Mozgrin Thesis was cataloged by the Russian State Library either by the imprint date of 1994, or at least by 1995, as shown on the catalog entry.” The Patent Owner countered that Petitioner provided “no evidence that the phrase ‘Imprint Moscow 1994’ appearing on the catalog entry means that the Mozgrin Thesis was cataloged on that particular date.”
Nonetheless, the majority of the PTAB panel concluded that the evidence in the catalog entry was sufficient to show that the Mozgrin Thesis was publicly accessible before November 4, 2002, whether it was actually published in 1994, 1995, or at some other time in between. That is, according to the majority of the panel, “[a]lthough evidence establishing a specific date of cataloging and shelving before the critical date would have been desirable, it is not required in a public accessibility determination.”
The dissent disagreed with the majority on this point, finding that “nothing in the catalog entry speaks to the date on which the Mozgrin Thesis was incorporated into the Russian State Library’s catalog of dissertations, or even that the Russian State Library catalog of dissertations existed at the time of invention.” The dissent would have required that Petitioner provide further evidence to show when the Mozgrin Thesis became publicly accessible, such as evidence of the general practice of the Russian State Library with regard to catalog updates, or their general practices between receipt of a thesis and subsequent incorporation into a publicly accessible catalog.
Given the divided panel, while this case may give some comfort to petitioners seeking to introduce prior art based on library catalog entries, there are a few points to keep in mind. In this case, it is not clear to what extent the gap of time between 1995 to 2002 played in the decision. It is plausible that the majority was swayed by this passage of time as a factor in concluding that the Mozgrin Thesis was likely made publicly accessible “at some other time in between.” In cases where such a gap is much smaller, more evidence such as that requested by the dissent would likely be helpful.
Further, for patent owners, this case shows that a robust analysis of the deficiencies in a petitioner’s evidence, beyond merely stating, for example, that a catalog entry does not show proof of public accessibility on a certain date, may prove helpful.