PTAB Tracker

January 18, 2021

Hulu, LLC v. Sound View Innovations, LLC, Case IPR2018-01039, Paper 29

Board Decision Denying Institution

Hulu LLC sought inter partes review of U.S. Patent No. 5,806,062 (“the ’062 patent”), asserting that several claims of the ‘062 patent were obvious under 35 U.S.C. § 103.  Hulu argued its obviousness challenges based on a single reference: Sed & Awk, a book published by O’Reilly & Associates, Inc. in November 1990.  In proving public accessibility of the Dougherty publication, Hulu presented three exhibits:

Exhibit 1004: The Dougherty book with a 1990 copyright owned by the publisher.  This is the reference relied upon for the § 103 arguments in Hulu’s  petition.

Exhibit 1005: Pages from a different version of Dougherty with a copyright date of 1991, showing a date-stamp from Cornell University Library (“Cornell Dougherty”).

Exhibit 1006: An affidavit from an employee of Cornell University Library to support the “public availability” of the Cornell Dougherty.

Exhibits 1005 and 1006 were disregarded by the Board, as Exhibit 1004 was “the actual reference relied on by Petitioner in the proffered grounds” and “Petitioner [did] not provided any evidence that the version date-stamped by Cornell University Library [was] materially the same as the actual prior art reference itself.” (Paper 12, p. 9).  As a result, the only evidence considered by the Board for proving the date of public availability of the Dougherty reference was the 1990 copyright date.

In denying institution, the Board stated “that the test for public accessibility is ‘whether the reference was ‘available to the extent that persons interested and ordinarily skilled in the subject matter or art, exercising reasonable diligence, can locate it‘[.]”  (IPR2018-01039 (Paper 12, p. 11), citing Voter Verified, Inc. v. Premier Election Sols., Inc., 698 F.3d 1374, 1380 (Fed. Cir. 2012)).  The Board further stated that “[a] copyright date does not indicate anything more than the author indicates this is the date the work was fixed in a tangible medium of expression[.]”  (Paper 12, p. 11).  The Board concluded that without additional information regarding the routine practices of the publisher, it is unclear “based only on a copyright year and the identity of the owner of copyright, [when] the book was sufficiently publicly accessible[.]” (Id. at p. 12).

Original Board Conclusion: Evidence of the copyright date of a publication, alone, is insufficient to prove the date of public availability of a reference.

Hulu’s (IPR Petitioner) Arguments on Rehearing

In its request for rehearing, Hulu provided the following arguments:

  • The proper standard for proving public availability at the institution stage is provision of prima facie evidence showing a “reasonable likelihood” of public availability.  Hulu makes this argument based on prior panel decisions that “treated a copyright notice as prima facie evidence that a petitioner’s identified reference is prior art (and therefore implicitly publicly available) for purposes of institution.” (IPR2018-01039 (Petitioner’s Request for Rehearing, p. 4)).
  • Evidence of the copyright date of a publication is sufficient prima facie evidence to show a “reasonable likelihood” of public availability of the publication. Hulu relies on a panel decision that found  “that a copyright notice standing alone [was] sufficient evidence to meet that ‘reasonable likelihood’ threshold” for IPR proceedings at the institution stage.  (Id. at p. 6 (citing Arista Networks, Inc. v. Cisco Systems, Inc., IPR2016-00244, Paper 10).

Hulu notes in its request that “some panel decisions appear to have required more than the “reasonable likelihood” standard.” (Id. at p. 8).

Sound View Innovations’s (Patent Owner) Arguments on Rehearing

In its Response Brief on Rehearing, Sound View argued that the “reasonable likelihood” standard at the institution stage of IPR proceedings is a high, “serious” standard, similar to the preliminary injunction standard in district court trials. (See IPR2018-01039 (Patent Owner’s Response, p. 4-8).  To support its argument, Sound View emphasizes that the IPR petition must present the petitioner’s case-in-chief and that there are limited opportunities to supplement the record after the petition. (See id.)

Amicus Curiae Briefs

Several amicus curiae briefs were submitted in anticipation of the oral hearing.  A sampling of arguments presented in the amicus curiae briefs is listed below:

  • “Evidentiary requirements at institution should be reasonable and attainable to a diligent petitioner.” (See Amicus Curiae brief presented by Sandoz).
  • “Reasonable Likelihood” of Prevailing is the proper standard for qualification of an asserted reference as a printed publication at the institution stage. (See  Amicus Curiae brief presented by Unified Patents).
  • “At the institution stage, a petitioner relying on a printed publication should be required to establish the same ‘prima facie case of public accessibility’ required of Examiners in prosecution or reexamination[.]” (See Amicus Curiae brief presented by Google, Microsoft, Arista Networks, and Uber).
  • “The burden at institution should be a relatively low threshold showing[.]” (See Amicus Curiae brief presented by Canon in support of Petitioner).
  • “The statutory threshold for institution and the public accessibility requirement for establishing a printed publication should be consistent[.]”  Amicus Curiae brief presented by AIPLA.

Decision on Request for Rehearing

The Request for Rehearing was decided by the PTAB’s Precedential Pinion Panel (“POP”) rather than the originally assigned panel.  The POP granted Petitioner’s request for rehearing, finding that “based on the totality of the evidence currently in the record, Petitioner has submitted evidence sufficient to establish a reasonable likelihood that the Dougherty reference was publicly accessible before the critical date of the challenged patent, and, thus Petitioner has established a reasonable likelihood that the reference qualifies as a printed publication.”  While stating that there is no “any particular indicia [that] is per se sufficient at the institution stage,” the POP ultimately concluded that the fact that the Dougherty reference included a copytright date, a printing date, an ISBN date, and was published by an established publisher showed a reasonable likelihood of public availability.  The POP reminded the case back to the original panel for consideration on the merits.

Key Takeaways

  1. If you’re relying on a text book or other book published by a well-known publisher where the book includes sufficient indicia of publication, that is likely sufficient to show a reasonable likelihood of public availability.  Other evidence such as ISBN and Library of Congress records showing publication date would likely bolster such a position.
  2. Although not specifically mentioned in this case, the PTAB has generally found journal articles from well-known journals to be prima face evidence of public availability on their face.  Ericsson, Inc. v. Intellectual Ventures I LLC, IPR2014-00527, Paper 41 at 10–11 (PTAB May 18, 2015) (citing Fed. R. Evid. 803(17)).
  3. This precedential decision relates to the institution phase only.  The POP held that “[i]f trial is instituted, the petitioner will ultimately have the burden to prove that the reference is a printed publication by a preponderance of the evidence.”


Leanne Flatter | Associate | Austin, TX

Leanne Flatter is an associate in the Austin office of Fish & Richardson P.C. Her practice emphasizes U.S. and international patent prosecution in the fields of medical devices, software, wireless communications, oil field production... Read More