Seabery North America Inc. v. Lincoln Global, Inc.

Informative decision only: persuasive authority, not binding precedent. When a petitioner supports a reference's status as a printed publication with a declaration from the author's thesis advisor testifying to library deposit, public availability on a specific date, national library indexing, and a dated reprint, the Board may conclude at the institution stage that the petitioner "has made a sufficient showing that Aiteanu qualifies as a printed publication that is prior art." A patent owner's bare assertion of "no evidence" does not defeat that showing. No prior precedent directly addressed this issue in the text; the decision cites no earlier Board decision on printed-publication showings at institution. For the petitioner, it shows that a declaration from a knowledgeable witness describing deposit, public retrieval, indexing and a dated reprint can carry the prior-art status burden at institution without more. For the patent owner, a preliminary response that only says there is "no evidence" or challenges sufficiency in general will not defeat institution when such testimony is of record, so the response should engage the specific testimony. The Board relied on no Federal Circuit, CCPA or Supreme Court authority for this point; it relied on the record evidence and on 37 C.F.R. § 42.108(c) elsewhere in the decision. LEGAL TEST OR STANDARD: The Board applied the 35 U.S.C. § 314(a) institution standard (reasonable likelihood that petitioner would prevail on at least one challenged claim). For prior-art status, it asked whether, "at this stage," petitioner made "a sufficient showing that Aiteanu qualifies as a printed publication that is prior art," and whether the record was public accessibility as of March 2006. No numbered factors were stated. TRIGGERING FACTS: The petitioner relied on a declaration of Dr. Graeser, the thesis advisor of the author of a Ph.D. dissertation (Aiteanu). He testified that the dissertation had to be deposited in the University of Bremen library under the rules at the time. He confirmed it was deposited and available for public retrieval on March 3, 2006. He also testified that it was indexed in the national library system and that a reprint (Ex. 1018) bears a copyright and publication date. Excerpts were published elsewhere. The patent owner argued only that there was "no evidence" or insufficient evidence of the March 2006 date. KEY QUOTE: "We, therefore, cannot agree with Patent Owner that there is “no evidence” that Aiteanu is a prior art printed publication or that it was publicly accessible as of March 2006." (Paper 11, p. 7) PRIOR PRECEDENT AFFECTED: No prior precedential or informative decision is directly affected. PRACTICE TIP: Petitioners should support the printed-publication status and date of any non-patent reference with specific testimony on deposit, public accessibility, indexing and dated copies. Patent owners should rebut that testimony specifically, since a bare "no evidence" argument fails when such testimony is of record.