January 20, 2023Client Alert

Connect the Dots for the PTAB When Filing Reply Evidence

In a surprising self-reversal, the Patent Trial and Appeal Board ruled unpatentable claims that the same panel previously ruled patentable.  The change of heart occurred in Unified Patents, LLC v. 2BCOM, LLC (IPR2020-00996) and was in response to a request for rehearing of the Final Written Decision filed by the Petitioner, Unified Patents. 

For those of us involved in AIA Trials, the revised Final Written Decision is highly unusual for a variety of reasons.  First, it shows that Requests for Rehearing sometimes work, albeit rarely.  Second, the Board uncharacteristically reversed itself, without a formal appeal to and remand from the Federal Circuit.  And the redrafted Final Written Decision came after denial of the Petitioner’s request for Precedential Opinion Panel (POP) review of the original Final Written Decision.  But for IPR specialists, another interesting aspect of the new Final Written Decision was the way it addressed the substantive and procedural issues around “printed publications.”

In an IPR, the patentability of a patent claim may be challenged based on prior art consisting of patents or printed publications.  To qualify as a “printed publication,” the Petitioner must show that the reference was published.  It has often been said that “public accessibility” is the touchstone in determining whether a reference is “published.”  A reference is considered publicly accessible if it was (1) 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.”

In this case, the Petition included evidence regarding the availability of a digital version of a reference called Nüsser.  After the Patent Owner challenged the public accessibility of Nüsser, the Petitioner’s Reply included new evidence regarding the actual dissemination of a print version of Nüsser.  In its original Final Written Decision, the Board determined that, [b]ecause these [Reply] arguments relate to a print version of the conference proceedings, they amount to new arguments that Petitioner chose not to make in the Petition and are not responsive to Patent Owner’s arguments asserting flaws in Petitioner’s contentions and evidence, which related to whether the digital version of Nüsser . . . was available on the critical date.”  As such, the Board held that the Reply evidence and related arguments “raise new issues regarding actual dissemination of or the availability of a print version of [Nüsser],” and that the new evidence was improper because it represented a “new direction with a new approach” by Petitioner.  Importantly, the Board noted that “Petitioner does not show or assert that the print proceedings contain the same version of Nüsser as that presented as [the digital version].”

In the revised Final Written Decision, the Board acknowledged it did not understand the print version of Nüsser was the same as the digital version referenced in the Petition and, as such, it misapprehended the significance of the new evidence regarding the public accessibility of Nüsser.  Once the new evidence was considered, the Board ruled that Nüsser qualifies as a printed publication.

Perhaps this rare grant of a request for rehearing and revision to a Final Written Decision portends a change in which that Board is willing to admit when it is wrong, or perhaps that’s just wishful thinking.  On the other hand, blame for the original Decision should not rest entirely on the Board.  Had the Petitioner’s Reply merely asserted that the print version of Nüsser filed with the Reply was the same as the digital version of Nüsser filed with the Petition, preferably with a declaration in support, it is likely the Board would have gotten this right the first time.  The bottom line for Post Grant practitioners is to make sure you connect the dots for the Board, especially when filing new evidence in Reply.

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