Patentee loses argument about "printed publication" in reexam appeal

Takeaway: In an ex parte reexamination appeal, the Patentee argued, without success, that the reference was not a "printed publication" under § 102(b). (Ex parte i2 Technologies, Decision on Appeal, Decision on Rehearing.) The Patentee first argued that the reference was not a "textbook" as characterized by the reexam Requester, but was instead a user manual that was distributed by the professor author to some students. The Board found that the reference was "disseminated and publicly accessible" as required by § 102(b), since declaration evidence submitted by the Requester established that the reference was freely distributed to 600 students in a class and that additional copies were sold to anyone who asked.

The Patentee further argued that the sole evidence of dissemination and public availability – the declaration – was insufficient because the declaration was uncorroborated, citing to TypeRight Keyboard Corp. v. Microsoft Corp., 374 F.3d 1151, 1159 (Fed. Cir. 2004) The Board distinguished TypeRight. In TypeRight, the court had reason to doubt about the credibility of the witnesses, since the document was undated and there was a discrepancy in the witness' recollection of the reference's date. The Board found that here the patentee had not raised "any specific doubts as to the credibility of the evidence." Therefore, no corroboration was required.

Details:
Ex parte i2 Technologies
Appeal 201002337; Reexam. 90/008,645; U.S.5,930,156; Tech. Center 3900
Decision on Appeal October 26, 2010, Decision on Rehearing March 17, 2011

An Ex parte Request for Rexamination relied on the "Roberts 1983 Reference" as a § 102(b) reference. The Requester described the reference as "a textbook written by Prof. Stephen D. Roberts describing a simulation modeling language and environment called 'INSIGHT' that Prof. Roberts developed, implemented, used, and sold from the mid 1970s until about 1990." According to In re Klopfenstein, determining whether a reference qualifies at a "printed publication" under § 102(b) involves looking at two factors, public dissemination and indexing or cataloging.

The Requester asserted that the reference was "widely disseminated," and as evidence, submitted a declaration by Prof. Roberts stating that several hundred copies of the book were distributed to students. The Requester further asserted that the reference was "widely accessible to anyone who wanted a copy." As evidence, the same declaration stated that Roberts referred to the textbook in a number of journal articles and then sold the book to journal readers who contacted him about it.

During reexamination, the Patentee argued that In re Klopfenstein requires a "printed publication" to meet both the disseminated and publicly accessible elements, but the requester had failed to show either. As to public dissemination, the Patentee argued that:

[T]he Roberts document is not a traditional textbook. It was not published by a typical publishing house, not permanently bound, and not a hardback book. ... [The] Roberts document appears to be a three-hole punched, loose-leaf document merely placed in a three-ring binder. ... There is not one piece of evidence (e.g., sales receipts, invoices, bookstore information) that supports the contention that the Roberts document was publicly accessible as a textbook. 

With regard to indexing or cataloging, the Patentee argued that not only was no evidence presented, in fact the author took steps to avoid indexing or cataloging. Specifically, Roberts did not obtain an International Standard Book Number which would allow sellers to order the book.

In a Final Office Action, the Examiner maintained his position that Roberts 1983 was a proper § 102(b) reference. In response to the Patentee's dissemination argument, the Examiner asserted that "published by a typical publishing house, permanently bound and hardback are not required criteria for a printed publication." In response to the Patentee's cataloging argument, the Examiner asserted that the law does not require "that a publication be indexed or cataloged in a public repository" or "for a publication to use an ISBN number."

The Patentee appealed. The Appeal Brief included those arguments discussed above, as well an argument that applies to reexam but not to original prosecution. The Patentee argued that the requester's declaration alone was insufficient as a matter of law, since "corroboration is required of any witness whose testimony alone is asserted to invalidate a patent.” (TypeRight Keyboard Corp. v. Microsoft Corp., 374 F.3d 1151, 1159 (Fed. Cir. 2004)

The Examiner disagreed with this point in the Answer, citing In re Etter for the proposition that reexamination involves no presumption of validity. The Examiner reiterated that the Roberts 1983 Reference meet the criteria for § 102(b) laid out in In re Klopfenstein.

In its Decision on Appeal, the Board first laid out the controlling case law for § 102(b) as follows:

Our reviewing court has explained that a reference is "publicly accessible" upon a satisfactory showing that: (1) the “document has been disseminated”; or (2) “otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence, can locate it and recognize and comprehend therefrom the essentials of the claimed invention without need of further research or experimentation.” Bruckelmyer v. Ground Heaters, Inc., 445 F.3d 1374, 1378 (Fed. Cir. 2006) (quoting In re Wyer, 655 F.2d 221, 226 (CCPA 1981)). 

The Board applied Bruckelmeyer to find that the Roberts 1983 Reference was a "printed publication" under § 102(b). In response to the Patentee's arguments about the type of publication, the BPAI noted that the law does not hinge on the type of binding or the identity of the publisher, but instead on whether the reference was "disseminated and publicly accessible." In response to the Patentee's arguments about indexing, the Board noted that indexing or cataloging is not a requirement for "publicly accessible." "Since the reference was freely distributed to individuals interested and ordinarily skilled in the art without restriction, we agree with the Examiner’s finding that the Insight reference was publicly accessible and therefore a 'printed publication' within the meaning of 35 U.S.C. ¶ 102(b)."

The Patentee then filed a Request for Rehearing with the BPAI, arguing that "the Board overlooked 'certain matters of fact or law with regard to whether the Insight reference is qualified as a printed publication under 35 U.S.C. § 102.' ” Specifically, the Patentee argued that "corroboration is required of any witness whose testimony alone is asserted to invalidate a patent," citing to TypeRight Keyboard Corp. v. Microsoft Corp., 374 F.3d 1151, 1159 (Fed. Cir. 2004). In its Decision on Rehearing, the Board distinguished TypeRight. In TypeRight, the court had reason to doubt the credibility of the witnesses, since the document was undated and there was a discrepancy in the witness' recollection of the reference's date. The Board found that here the patentee had not raised "any specific doubts as to the credibility of the evidence," and therefore, no corroboration was required.

My two cents: I find that reexamination appeals often have interesting arguments. Appellants don't usually argue about whether or not a reference is actually prior art, probably because most Examiners use issued patents and patent publications and there isn't much room to argue there. But non-patent literature is much more common in reexaminations, where the requester has reason to spend a lot of money on a literature search. That leaves a lot more room to argue about the "printed publication" requirement. And since an in-force patent is at stake, it's not surprising that the patentee digs really deep with its arguments, bringing up facts like ISBN numbers and sales receipts.

If you think the requester bent the rules by submitting a declaration of facts showing dissemination, rather than actual evidence, think again. MPEP 2258 allows for declarations to "explain the contents or pertinent dates of prior art patents or printed publications in more detail."

This decision highlights a big difference between invalidating through reexam as compared to litigitation: reexam does not offer the opportunity to depose the declarant. I suppose the fact finder is supposed to take this into account when weighing the credibility of the declarant. The Board didn't comment on credibility here, so we don't know what they were thinking.

In refusing to require evidence to corroborate the declaration that described dissemination, the Board distinguished TypeRight by saying that in this reexam, the patentee had not raised "any specific doubts as to the credibility of the evidence". Was that a valid distinction?

In arguments before the Examiner, the patentee did point out that the events attested to by the declarant happened 20 years ago -- but the patentee didn't bring this up on appeal. Would that have been enough? Another way to attack a declarant is to show a relationship between the party and the declarant. But in reexam, there may be no way to discover who the declarant is or why he's submitting a declaration. So how is a patentee in reexam going to raise doubts as to the declarant's credibility? To me, the way the Board distinguished TypeRight doesn't make sense, given the differences between reexam and litigation.