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IP Alert: PTAB Holds Establishing Prior Art as a "Printed Publication" in Examination Differs From IPR Proceedings

April 10, 2020

On April 7, the Patent Trial and Appeal Board (PTAB) designated precedential its denial of rehearing in Ex parte Grillo-Lopez, in which it found that the burden of proving that prior art is a “printed publication” during patent examination is different from the burden during inter partes review (IPR) proceedings. According to the PTAB, if the examiner presents prima facie evidence that a prior art reference was publicly accessible, the applicant bears the burden of refuting that evidence. In contrast, during IPR proceedings the petitioner—not the patentee—always bears the burden of establishing that prior art was publicly available.

In the case at issue, the examiner had rejected several claims based on a 1997 transcript from a U.S. Food and Drug Administration advisory committee meeting. The applicant appealed the rejection, arguing in part that the FDA transcript did not qualify as a printed publication because it was not sufficiently publicly available. In the decision on appeal, the PTAB disagreed, finding that a Federal Register notice of the committee meeting was sufficient to find that the transcript was publicly available to persons having ordinary skill in the art.

On request for rehearing, the applicant emphasized that the PTAB had previously refused to find the exact same FDA transcript to be a printed publication in prior unrelated IPR proceedings. The PTAB reconciled this apparent inconsistency by distinguishing between examination and IPR proceedings. In the IPR context, the PTAB recently ruled on this issue in its Hulu v. Sound View Precedential Opinion Panel (POP) decision. There, the PTAB held that to establish a prior art reference as a printed publication, an IPR petition “must identify, with particularity, evidence sufficient” to show that a document was publicly accessible before the challenged patent’s filing date.

In Grillo-Lopez, however, the PTAB reasoned that examination and IPRs have different legal frameworks and burdens. Specifically, examination involves a burden-shifting framework where the burden is placed on the patent applicant to provide “evidence or argument” to rebut an examiner’s prima facie case. The PTAB proceeded to find that the applicant had failed to sufficiently dispute the public accessibility of the FDA transcript and consequently denied the request for rehearing.

This decision produces an unusual result where the PTAB has simultaneously found the exact same FDA meeting transcript as both publicly accessible in the instant decision and not publicly accessible in earlier IPR proceedings. Although the decision notes that the petitioner in the prior IPR proceedings did not cite to the Federal Register notice relied on by the examiner here, the differing results highlight how the burden of proof can change outcomes in examination and IPRs.

This decision is most relevant in the prosecution context, emphasizing the need for applicants to actively refute the prior art status of references identified by the examiner. Unlike the IPR context, examiners merely have to make a prima facie showing. The examiner’s job is done so long as they come forward with evidence sufficient to raise a presumption that the reference was publicly available. This decision also distinguishes the burden required when proving public accessibility of a printed publication in the IPR context, reemphasizing that the burden is substantially higher for petitioners.

For more information on this decision, please contact Fitch Even attorneys David A. Gosse or Evan Kline-Wedeen, authors of this alert. 

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