PTAB Determines the “Publicly Available” Standard Varies Between Examiners and Third Party ChallengersApril 16, 2020

In a precedential decision issued December of 2019, the Patent Trial and Appeals Board (PTAB) in Hulu, LLC. V. Sound View Innovations, LLC (IPR 2018-01039) considered what is required for a petitioner in an inter partes review (IPR) to show that an asserted reference qualifies as a “printed publication.” Petitioner Hulu argued that patentee Sound View’s patent was obvious over a textbook available prior to the 1995 filing of the application for the patent at issue. As part of showing the textbook was publicly available, Hulu presented a copy of the textbook with a copyright date of 1990, a print date of 1992, and an ISBM dated to 1994. Hulu further supported its case of public accessibility by submitting an affidavit from the librarian at the Cornell University Library, which had date-stamped the textbook as indexed in 1992.

The PTAB denied institution of the IPR because Hulu had failed to demonstrate that the textbook was publicly accessible prior to the filing date of the patent, and Hulu was granted rehearing and Precedential Opinion Panel (POP) review. The POP noted that there must be a “reasonable likelihood that the petitioner would prevail with respect to at least one of the claims challenged” and part of that “reasonable likelihood” requires “evidence sufficient to establish a reasonable likelihood that the reference was publicly accessible before the critical date of the challenged patent” such that it “qualifies as a printed publication.”

On this subject, the POP stated, “We do not hold that any particular indicia per se is sufficient at the institution stage.” Rather, the indicia of publication are considered in view of the totality of the evidence. Petitioners must submit specific evidence to show that a document was publicly accessible. However, little guidance was provided as to what evidence is sufficient.

There are a number of persuasive rulings on this subject, but in January, the PTAB’s precedential decision in Ex parte Grillo-Lopez clarified further the standard of “publicly available.” In Ex parte Grillo-Lopez, Grillo-Lopez’s patent application was rejected in relevant part because the examiner found that a transcript of an FDA meeting was both publicly available and anticipatory of the claimed invention. The patentee argued that the transcript did not qualify as a printed publication because it was not publicly available based on the standards set forth in prior PTAB decisions such as Hulu.

The Board rejected Grillo-Lopez’s arguments, clarifying that the burden of proof for an ex parte examination differs from that of an IPR. Although an IPR petitioner must present specific evidence of when a document was publicly available, in an ex parte examination after the Examiner has made a prima facie case of obviousness, the burden is then on the applicant to rebut the presumption of obviousness.

This decision establishes a lower burden of proof for Examiners seeking to establish that documents are “publicly available” such that they qualify as prior art. The PTAB’s underlying rationale appears to be that third parties submitting art in an IPR have greater resources and more motivation than the Office to find and establish the accessibility of references. Although third parties certainly have a greater motivation to find prior art, the PTAB’s ruling inGrillo-Lopez effectively requires a patentee to prove a negative: where an Examiner contends a reference was publicly available, the patentee must show it was not.

As such, although parties with issued patents will benefit from the heightened Hulu standard, Grillo-Lopez will create challenges for patent applicants who must invest significant resources into the challenging task of proving a negative, particularly when an Examiner need only support a prima facie case.

Sarah M. Luth’s practice is focused on representing clients in patent prosecution and intellectual property litigation and compliance issues. For additional information please visit or contact Sarah directly via email at .

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