WilmerHale Webinar: Non-Patent Publications in Post-Grant Proceedings: Lessons and Best Practices from Recent Case Law DevelopmentsSeptember 14, 2017Monica Grewal, Partner, WilmerHaleGreg Lantier, Partner, WilmerHale

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Speakers

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Greg Lantier Partner

Monica GrewalPartner

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Webinar Guidelines Participants are in listen-only mode Submit questions via the Q&A box on the bottom

right panel Questions will be answered as time permits Offering 1.0 CLE credit in California and New York* WebEx customer support: +1 888 447 1119, press 2

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*WilmerHale has been accredited by the New York State and California State Continuing Legal Education Boards as a provider of continuing legal education. This program is being planned with the intention to offer CLE credit in California and non-transitional CLE credit in New York. This program, therefore, is being planned with the intention to offer CLE credit for experienced New York attorneys only. Attendees of this program may be able to claim England & Wales CPD for this program. WilmerHale is not an accredited provider of Virginia CLE, but we will apply for Virginia CLE credit if requested. The type and amount of credit awarded will be determined solely by the Virginia CLE Board. Attendees requesting CLE credit must attend the entire program.

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Overview

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Types of non-patent publications

– Journal Articles

– Product Manuals / User Guides

– SSO Documents

– Theses

– Internet Documents

Recent Board decisions

Conclusions

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Journal Articles IPR2016-00373 (DI) (June 27, 2016). IPR2015-01979 (FWD) (Mar. 15, 2017).

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IPR2016-00373 (DI) (June 27, 2016)

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Hsu article from software journal (Ex. 1003)

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Hsu article– Journal volume published Oct. 1995

– Well-known publisher: John Wiley

– University library stamp

Patent Owner’s arguments (Paper 6 at 19-20):– Evidence of publication inadmissible hearsay

– Stamp illegible

– No evidence of indexing– No admissible evidence of other public accessibility

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IPR2016-00373 (DI) (June 27, 2016)

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Board’s holding (Paper 7 at 16-17):– Deferred admissibility for trial, but implied admissible

– Sufficient that Hsu “appear[ed] to be” what it was

Post-institution– Patent Owner objections & response—repeating arguments

– Expert deposition testimony

– Petitioner reply—subscription info; copyright date– Board questions at hearing—sustained interest– Terminated without FWD

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IPR2016-00373 (DI) (June 27, 2016)

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Takeaways for Petitioner and Patent Owner

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IPR2016-00373 (DI) (June 27, 2016)

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IPR2015-01979 (FWD) (Mar. 15, 2017)

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Symposium paper in periodical (Ex. 1004; Ex. 1036)

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Petitioner’s evidence (Paper 62 at 21-27):– 1999 copyright notice

– ISBN

– Permission for republication; ordering instructions

– Library copy with date stamps; librarian declaration

Patent Owner’s arguments (id. at 21, 28, 66):– Not properly indexed

– No evidence of actual distribution to interested public

– Moved to exclude declaration as lacking foundation, article as lacking authentication

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IPR2015-01979 (FWD) (Mar. 15, 2017)

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Board’s holding (id. at 22-29):– Symposium paper was publication

– Librarian credible; copy showed article was published

– Paper consistent with copy; showed prints were available

– Paper accessible to interested public at library– Librarian’s testimony had foundation; periodical authentic

Takeaways for Petitioner and Patent Owner

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IPR2015-01979 (FWD) (Mar. 15, 2017)

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Product Manuals IPR2017-00554 (DI) (June 14, 2017). IPR2016-00332 (FWD) (June 22, 2017).

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IPR2017-00554 (DI) (June 14, 2017)

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HVM500 manual for headrest video monitor (Ex. 1005)

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Petitioner’s evidence (Paper 9 at 7-8):– 2001 copyright notice

– “Rev. 1.0 12-01” notation; argued to mean Dec. 1, 2001

– Manual included with purchased monitor– Apr. 2002 Internet Archive capture of manual download site

Patent Owner’s arguments (id. at 8-9):– Interpretation of “Rev. 1.0 12-01” unsupported

– Copyright notice insufficient (cited Telebrands & ServiceNow)

– No evidence when monitor purchased– Manual for download not shown to be same as reference

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IPR2017-00554 (DI) (June 14, 2017)

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Board’s holding (id. at 9-12 (emphases added)):– “sufficient threshold showing” of public accessibility

– similar evidence in previous cases had also been “adequate for purposes of institution”

– Telebrands involved higher PGR standard; here, more detailed analysis and corroborating evidence

– PO’s “countervailing evidence” was present in ServiceNow

Takeaways for Petitioner and Patent Owner

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IPR2017-00554 (DI) (June 14, 2017)

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IPR2016-00332 (FWD) (June 22, 2017)

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User guides for “Aventail Connect” software (Ex. 1009)

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Petitioner’s evidence (Paper 29 at 38-39, 41):– 1996-99 copyright notice

– Tech support contact info

– Witness testimony: former Aventail employee; former IBM employee; trade magazine editor

– 1998 announcement of software release

Patent Owner’s arguments (id. at 39-40):– No evidence of distribution specific to Jan. 1999

– Supporting testimony uncorroborated

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IPR2016-00332 (FWD) (June 22, 2017)

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Board’s holding (id. at 40-50 (emphases added)):– evidence viewed “as a whole” showed public accessibility

– Testimony showed that guides shipped no later than Jan. 1999

– Testimony was mutually corroborating; supported by record– If corroboration required, per Willow Wood, need not be 100%

Takeaways for Petitioner and Patent Owner

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IPR2016-00332 (FWD) (June 22, 2017)

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Wireless Standards IPR2017-00661 (DI) (July 28, 2017). IPR2015-01988 (FWD) (Mar. 16, 2017).

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IPR2017-00661 (DI) (July 28, 2017)

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3GPP technical specification TR 33.821 (Ex. 1006)

WilmerHale

Petitioner’s evidence (Paper 8 at 2, 12-13):– 3GPP member testimony

– Distribution procedures for 3GPP standards documents

– Details of public FTP server

Patent Owner’s arguments (id. at 13):– Reference not specifically shown as publicly accessible

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IPR2017-00661 (DI) (July 28, 2017)

WilmerHale

Board’s holding (id. at 11-12, 14 & n.4):– Witness testimony sufficient to show public accessibility

– Showing also made for 2 unchallenged references

Takeaways for Petitioner and Patent Owner

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IPR2017-00661 (DI) (July 28, 2017)

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IPR2015-01988 (FWD) (Mar. 16, 2017)

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3GPP specs (Exs. 1003-4); Nokia proposal (Ex. 1009)

WilmerHale

Petitioner’s evidence (Paper 31 at 19-21 & n.2):– 3GPP member testimony and statements by PO’s expert

– Distribution procedures for 3GPP standards documents

– Details of public FTP server

– Email listserv for 3GPP members– Analogize to MIT (conference paper found accessible)

Patent Owner’s arguments (id. at 22-23, 25):– Server not searchable; no info about uploaded documents

– Analogize to SRI (document on FTP server not accessible)

– Distinguish MIT (not accessible to entire interested public)

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IPR2015-01988 (FWD) (Mar. 16, 2017)

WilmerHale

Board holding (id. at 16-18, 21-26 (emphases added)):– Indexing unneeded because actually distributed (citing cases)

– Distribution “to at least dozens of skilled artisans” sufficient

– MIT on point; need not distribute “to skilled artisans at large”

Takeaways for Petitioner and Patent Owner

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IPR2015-01988 (FWD) (Mar. 16, 2017)

WilmerHale

Master’s Thesis IPR2015-01033 (DI RHRG) (Dec. 28, 2016).

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IPR2015-01033 (DI RHRG) (Dec. 28, 2016)

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Thesis (Ex. 1003); thesis DB printout (Ex. 1013)

WilmerHale

Petitioner’s evidence/arguments (Paper 10 at 4, 6-8):– 1998 copyright date

– Printout showed publication by Canadian library in 1999

– Printout showed various book numbers, e.g., ISBN

– First word of title (“continuous”) argued to be key search term

Patent Owner’s evidence (id. at 5):– Microfiche indexing by author last name and first word of title

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IPR2015-01033 (DI RHRG) (Dec. 28, 2016)

WilmerHale

Board’s holding (id. at 4-8):– 1998 copyright date irrelevant to public accessibility

– “‘continuous’ is a common word”; would not be used for search– No subject matter indexing; at most accessible as of 2008

Takeaways for Petitioner and Patent Owner

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IPR2015-01033 (DI RHRG) (Dec. 28, 2016)

WilmerHale

Websites IPR2016-01187 (DI) (Dec. 16, 2016).

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IPR2016-01187 (DI) (Dec. 16, 2016)

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2 archived pages; 1 webforum page (Exs. 1017-19)

WilmerHale

Petitioner’s evidence (Paper 38 at 12-14):– Internet Archive header with logo, URL, and retrieval date

– Web forum page had no header, dates before/after priority date

Patent Owner’s arguments (id. at 12-15):– Not authenticated

– Not publicly accessible (citing DI in Cisco)

– Not prior art (dates on references inadmissible hearsay)

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IPR2016-01187 (DI) (Dec. 16, 2016)

WilmerHale

Board’s holding (id. at 12-15):– Webform page had “insufficient indicia of authenticity”

– Internet Archive pages authentic “in view of the[ir] content”

– Internet Archive headers “constitute[d] at least an initial indication of public accessibility”; distinguish Cisco

Takeaways for Petitioner and Patent Owner

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IPR2016-01187 (DI) (Dec. 16, 2016)

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Conclusions

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Questions?

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Monica Grewal, Partner+1 617 526 6223Monica.Grewal@wilmerhale.com

Greg Lantier, Partner+1 202 663 6327Gregory.Lantier@wilmerhale.com

*WilmerHale has been accredited by the New York State and California State Continuing Legal Education Boards as a provider of continuing legal education. This program is being planned with the intention to offer CLE credit in California and non-transitional CLE credit in New York. This program, therefore, is being planned with the intention to offer CLE credit for experienced New York attorneys only. Attendees of this program may be able to claim England & Wales CPD for this program. WilmerHale is not an accredited provider of Virginia CLE, but we will apply for Virginia CLE credit if requested. The type and amount of credit awarded will be determined solely by the Virginia CLE Board. Attendees requesting CLE credit must attend the entire program.