In-Depth Geophysical, Inc. v. ConocoPhillips Company (§ I.E)

Informative decision only: persuasive authority, not binding precedent. When a petitioner relies on a reference as a prior art "printed publication" under 35 U.S.C. §§ 102 and 311(b) and offers only a vague website date and foreign-prosecution citations, while the patent owner supplies unrebutted testimony that the reference first became available within the one-year grace period, the Board may find the petitioner failed to show a reasonable likelihood that the reference was publicly accessible before the critical date. Because every ground relied on that reference, institution is denied under 35 U.S.C. § 314(a). No prior precedent directly addressed this issue in the text; the Board cites REG Synthetic Fuels, LLC v. Neste Oil, OYJ, IPR2018-01374, Paper 11 at 6 (PTAB Feb. 19, 2019) for indicia of public availability and Ford Motor Co. v. Cruise Control Techs. LLC, Case IPR2014-00291, slip op. at 9–10 (PTAB June 29, 2015) (Paper 44) for evidence supporting a finding of printed publication, and applies them at institution. For petitioners, the decision shows that the printed-publication showing must be made in the petition itself, with explanation and corroborating evidence, and that a single conclusory sentence resting on a website date, a foreign office action and the patent owner's own foreign filing will not carry the burden. Petitioners also cannot count on a later chance to cure, since the Board noted that petitioners used their authorized reply to address a different issue and not public availability. For patent owners, a preliminary response with a knowledgeable declarant explaining the venue's publication practice can defeat institution outright. The Board relied on Federal Circuit authority including In re Klopfenstein, In re Cronyn, Suffolk Techs., LLC v. AOL Inc., SRI Int'l, Inc. v. Internet Sec. Sys., Inc., and In re Lister, and on CCPA authority In re Wyer, for the public accessibility standard. LEGAL TEST OR STANDARD: Under 35 U.S.C. § 311(b), review may be requested only on the basis of prior art consisting of patents or printed publications. Whether a reference is a printed publication is a case-by-case inquiry into the facts and circumstances of its disclosure to the public. The key question is whether it was "sufficiently accessible to the public interested in the art" before the critical date, meaning it was disseminated or otherwise made available so that interested persons ordinarily skilled in the art, exercising reasonable diligence, can locate it. Petitioners bear the burden to show a reasonable likelihood that the reference is a printed publication. TRIGGERING FACTS: The ’193 patent has a November 1, 2013 effective filing date, so the critical date under the AIA one-year grace period was November 1, 2012. Petitioners relied on a ResearchGate page showing only "September 2012", a copyright legend of "© 2012 SEG" with the SEG Las Vegas 2012 Annual Meeting, a EUROPEAN counterpart office action and the applicant's own EPO specification citing "1 September 2012". The copy of Li bore a 2/25/13 download date and a redistribution restriction. Patent Owner's declarant testified that SEG papers were kept confidential until the November 4–9, 2012 meeting. Petitioners offered no authentication, no explanation of the date, and no rebuttal of that testimony. KEY QUOTE: "Petitioners’ pointing to a vague date listed on a website page is insufficient to meet Petitioners’ burden to show that Li was publicly accessible by a particular date." (Paper 14, p. 10) PRIOR PRECEDENT AFFECTED: No prior precedential or informative decision is directly affected. The Board followed REG Synthetic Fuels, LLC v. Neste Oil, OYJ, IPR2018-01374, Paper 11 at 6 (PTAB Feb. 19, 2019) on indicia of public availability and cited Ford Motor Co. v. Cruise Control Techs. LLC, Case IPR2014-00291, slip op. at 9–10 (PTAB June 29, 2015) (Paper 44) as an example of sufficient public accessibility evidence. PRACTICE TIP: In the petition, do not rest a printed-publication assertion on a bare date; submit authenticated evidence, such as witness testimony or indicia like libraries, ISBN or LCCN, explaining how and when the reference was actually disseminated before the critical date. If you are patent owner, use the preliminary response to put in declarant testimony on the venue's publication practice.