The Software IP Report

IPR Petitioner Must Establish References are Patents or Printed Publications

In Xactware Solutions, Inc. v. Pictometry Int’l Corp., No. IPR2016-00593, Paper 45 (PTAB Aug. 28, 2017), the Patent Trial and Appeal Board held Xactware did not establish that a document was a printed publication under 35 U.S.C. § 102(b). The PTAB thus granted Pictometry’s Motion to Exclude. And, because the document was Xactware’s primary reference for asserting unpatentability against the instituted claims, the PTAB determined that Xactware failed to prove the claims unpatentable. Id. at 2.

By way of background, in 2015, the owner of Pictometry sued Xactware for patent infringement. Shortly after, Xactware filed more than a dozen petitions seeking inter partes review of nine patents. Before this decision, the PTAB had ruled on each of the other petitions. In its earlier decisions, the PTAB either upheld the validity of the instituted claims, or declined to review the challenged claims with respect to eight of the nine patents.

In one of the other proceedings, the same issue arose. See Xactware Solutions, Inc. v. Pictometry Int’l Corp., No. IPR2016-00594, Paper 46 (PTAB Aug. 24, 2017). There, Pictometry likewise asserted Xactware hadn’t established that the same document – a Pictometry User Guide – was publicly accessible and, therefore, was not a printed publication within the meaning of pre-AIA § 102(b).

In support, Pictometry pointed out the User Guide included a user agreement that bound users to a License Agreement’s terms and conditions. Id. at 19. The User Guide also included express limitations on reproduction, storage, or transmittal “without the prior written permission of Pictometry.” Id. at 19.

Pictometry also asserted that it had made the User Guide available only to a closed group of licensees—a governmental entity called the Metropolitan Area Planning Commission (MAPC)—prior to the patent’s critical date. Id. at 20.     

In response, Xactware asserted there was no evidence that the confidentiality of the User Guide was in fact maintained, or the User Guide was inaccessible to those of ordinary skill in the art. Id. at 22. In addition, Xactware argued that dissemination to a public institution such as the MAPC was sufficient to make the User Guide publicly accessible, despite any license restrictions. Id.

The PTAB disagreed. First, the PTAB noted it was Xactware’s burden to demonstrate unpatentability. And, for a document alleged to be an invalidating printed publication, part of the burden included a subsidiary showing that the document was publicly accessible. In other words, since petitioners must demonstrate that instituted claims are unpatentable by a preponderance of the evidence, one aspect of such a showing is that the references relied upon are indeed patents or printed publications. Id. at 22.

Next, the PTAB rejected the argument that disseminating a document to a public entity makes it publicly accessible. Rather, to qualify as a printed publication under § 102(b), a document must not only be publicly accessible, the public must include persons concerned with the art to which the document relates. Id.     

The PTAB concluded Xactware failed to present sufficient evidence showing “unrestricted access to the User Guide to any specified number of interested skilled artisans ‘merely for the asking.’” Id. at 26. This, together with Pictometry’s License Agreement language indicating an intent to restrict use, copying, and further dissemination of the User Guide, led the PTAB to conclude that Xactware had not met its burden of proving the User Guide was a printed publication. Id. at 29. 

In this most recent decision, the PTAB echoed its findings in the previous case. Per the PTAB, “we found Pictometry’s limited dissemination to some government entities subject to licensing restrictions was not sufficient to show public dissemination or public accessibility.” Xactware Solutions, Inc. v. Pictometry Int’l Corp., No. IPR2016-00593, Paper 45 at 6. “We adopt the same finding here.” Id.

Lessons for Practice

For IPR Petitioners, present all available evidence to show that a document was publicly accessible prior to a challenged claim’s critical date. Otherwise, you risk a determination that the document is not a printed publication. And, public accessibility isn’t enough. The document must be accessible to skilled artisans. The best evidence for proving up a printed publication? A declaration from a skilled artisan that the artisan and other artisans were freely able to access, and did access, the document prior to the challenged claim’s critical date. Remember too to collect and present your evidence in the petition.

For IPR Patent Owners, whether a document is a “printed publication” is a legal question based on subsidiary facts. If a petition doesn’t present evidence of a document’s public accessibility at the institution stage, the PTAB will deny institution for that reason alone. Post-institution, unless incontrovertible, take discovery on petitioner’s evidence of alleged public accessibility.   

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