Argentum Pharmaceuticals LLC v. Research Corporation Technologies, Inc.

Informative decision only: persuasive authority, not binding precedent. When a petitioner relies on a reference as a "printed publication" under 35 U.S.C. § 311(b) and § 102, the Board requires a "threshold showing" of public accessibility before instituting on any ground that depends on it. A joint statement of uncontested facts stipulated "for purposes of this litigation" in a different case, a university's refusal to release access information, and articles citing other theses do not make that showing. No prior precedent directly addressed this issue in a way the text identifies as superseded. The Board follows its own earlier institution decisions, Apple, Inc. v. DSS Tech. Mgmt., Inc., IPR2015-00369, and Hughes Network Systems, LLC v. California Institute of Technology, IPR2015-00059, which require a threshold showing of public availability. A petitioner must put evidence of actual dissemination or accessibility in the petition. Litigation stipulations by the patent owner and adverse inferences from third-party silence will not substitute. A patent owner can contest public accessibility in the preliminary response, and here that defeated two grounds at institution. The Board relied on Federal Circuit and CCPA authority: In re Hall, Kyocera Wireless Corp. v. Int'l Trade Comm'n, SRI Int'l v. Internet Sec. Sys., In re Lister, In re Klopfenstein, and In re Wyer. LEGAL TEST OR STANDARD: Whether a reference is prior art under § 102 is a legal question based on underlying factual determinations. "Public accessibility" is the touchstone for a "printed publication" (In re Hall). A reference is publicly accessible on a satisfactory showing that it was disseminated or otherwise made available so that interested persons ordinarily skilled in the art, exercising reasonable diligence, can locate it (Kyocera, quoting SRI). The inquiry is case-by-case (In re Klopfenstein). At institution the petitioner must make a "threshold showing" of public accessibility. TRIGGERING FACTS: The LeGall thesis was a university thesis. Petitioner relied on (1) a Joint Statement of Uncontested Facts from a district court case with other defendants, stating that the thesis was publicly accessible "for purposes of this litigation"; (2) the University of Houston's refusal to answer an information request, which Petitioner said created a rebuttable presumption; and (3) articles citing other University of Houston theses, written by the thesis authors or their advisors. Petitioner offered nothing on whether the LeGall thesis itself was accessible, how to obtain a copy, or whether it was reachable through generally available means. KEY QUOTE: "Without more here, contentions and evidence cited by Petitioner do not rise to the level of “threshold evidence” that justifies going forward with a trial on any ground that relies on the LeGall thesis as “printed publication” prior art." (Paper 19, p. 12) PRIOR PRECEDENT AFFECTED: No prior precedential or informative decision is directly affected. The Board followed Apple, Inc. v. DSS Tech. Mgmt., Inc., Case IPR2015-00369, Paper 14, slip op. at 5 (PTAB Aug. 12, 2015), and Hughes Network Systems, LLC v. California Institute of Technology, IPR2015-00059, Paper 34, slip op. at 4 (PTAB Dec. 30, 2015), on the threshold showing. PRACTICE TIP: Before filing, gather direct evidence that the reference was publicly accessible before the critical date. Examples are cataloguing, indexing, shelving or checkout records, and testimony on how a skilled artisan could have found a copy. Do not rest on a patent owner's litigation stipulation or on indirect inferences. A patent owner should attack any gap in that proof in the preliminary response.