Hulu, LLC v. Sound View Innovations, LLC

When a petitioner relies on a reference as a "printed publication" under 35 U.S.C. § 311(b), the petition must identify, with particularity, evidence sufficient to establish a reasonable likelihood that the reference was publicly accessible before the critical date of the challenged patent, and therefore a reasonable likelihood that it qualifies as a printed publication. Under § 314(a), that showing is required at institution, is higher than notice pleading but lower than the preponderance standard of § 316(e), and no presumption favors institution or finding a reference to be a printed publication. No indicia is per se sufficient; facial indicia are weighed as part of the totality of the evidence. No prior precedent directly addressed this issue; the POP took the case because prior Board decisions conflicted on the institution-stage requirements for public accessibility. For petitioners, the petition itself must carry the public-accessibility showing with particularity, because later opportunities to add evidence (reply, 37 C.F.R. § 42.123 supplemental information) are limited and do not allow changing theories. Patent owners may challenge accessibility in a preliminary response, and no presumption of institution or of printed-publication status helps the petitioner, though the Board found strong facial indicia sufficient here without deciding the preponderance question. The Board relied on Federal Circuit authority such as Nobel Biocare, Medtronic, Samsung v. Infobridge, and Blue Calypso, treating public accessibility as the touchstone and facial dates as relevant but not dispositive evidence, and on Trivascular for the qualitatively different institution and trial standards. LEGAL TEST OR STANDARD: Under 35 U.S.C. § 314(a), the petitioner must show a reasonable likelihood that it would prevail, which includes showing a reasonable likelihood that the reference qualifies as a printed publication. The petition must identify with particularity (35 U.S.C. § 312(a)) evidence sufficient to establish a reasonable likelihood that the reference was publicly accessible before the critical date. Public accessibility means the document was disseminated or made available so that interested persons ordinarily skilled in the art, exercising reasonable diligence, can locate it. The standard is higher than notice pleading and lower than the preponderance standard of § 316(e). Indicia on the face of the reference are weighed as part of the totality of the evidence. TRIGGERING FACTS: Petitioner asserted a book (Dougherty, SED & AWK) as the sole obviousness reference against a patent filed October 17, 1995, and Patent Owner contested public accessibility in its preliminary response. The book's face showed a 1990 copyright date, a November 1992 printing date, and an ISBN date of 8/94. It was published by an established publisher, O'Reilly, in a well-known book series. A librarian affidavit with a Cornell library stamp concerned a different, earlier printing; Petitioner disclaimed reliance on it, but the Board found it probative even if considered. Patent Owner filed no declaration, so 37 C.F.R. § 42.108(c) was not implicated. KEY QUOTE: "We agree with Patent Owner that there is no presumption in favor of institution or in favor of finding a reference to be a printed publication under § 42.108(c) or any other authority." (Paper 29, p. 16) PRIOR PRECEDENT AFFECTED: No prior precedential or informative decision is directly affected. The Board resolved conflicting prior panel decisions on institution-stage printed-publication showings. It cited as examples of sufficient evidence Sandoz Inc. v. Abbvie Biotechnology Ltd., IPR2018-00156, Paper 11 (PTAB June 5, 2018); Seabery N. Am. Inc. v. Lincoln Global, Inc., IPR2016-00840, Paper 11 (PTAB Oct. 6, 2016); and Syncro Soft SRL v. Altova Gmbh, IPR2018-00660, Paper 6 (PTAB Sept. 5, 2018). It cited as examples of insufficient evidence Argentum Pharm. LLC v. Research Corp. Tech., Inc., IPR2016-00204, Paper 19 (PTAB May 23, 2016), and In-Depth Geophysical, Inc. v. Conocophillips Co., IPR2019-00849, Paper 14 (PTAB Sept. 6, 2019). PRACTICE TIP: In the petition, do not rely on a bare date or copyright notice. Build the public-accessibility showing from the totality of the evidence, such as publisher, ISBN, printing history, and a librarian or archive declaration where indicia are weak, and tie it to the correct version of the reference. Do not count on supplementing later or on any presumption of institution.