PTAB Clarifies Public Accessibility Evidentiary Standard at Institution
1. On December 20, 2019, in Hulu, LLC v. Sound View Innovs., the PTAB Precedential Opinion Panel (“POP”) clarified the evidentiary standard for showing public accessibility of a “printed publication” at the institution stage of an Inter Partes Review proceeding.
2. The POP granted petitioner’s request for rehearing and remanded the case to the original merits panel, which had found insufficient evidence of a text book’s public accessibility to qualify it as a “printed publication” and had denied institution.
3. The POP held that, at institution, a petitioner must submit sufficient evidence “to establish a reasonable likelihood that the  reference was publicly accessible before the critical date of the challenged patent,” to qualify the reference as a printed publication. Hulu at 3. The POP explained that this is lower than the preponderance of the evidence standard required to prevail in a final written decision. Id. at 13.
4. The POP found petitioner’s identification of conventional indicia of publication, including copyright and printing dates, a library date stamp, ISBN number and date, and publication by an established commercial publisher, sufficient to qualify the text book as a prior art printed publication for purposes of institution. Id. at 19-20. The POP stated that a librarian’s affidavit submitted by petitioner was “not required” at the institution stage. Id. at 20.
1. The key takeaway from Hulu is that for traditional references (e.g. textbooks, journal articles, technical standards) bearing conventional indicia of commercial publication – copyright dates, printing dates, a library date stamp, ISBN number and date, and/or permanent editorial, production, advertising, and administrative staff – the PTAB will not require a librarian declaration to be filed with the petition.
2. In Hulu, the POP went out of its way to underscore that librarian declarations are not required at the institution stage if other indicia of publication are present. The panel noted other acceptable examples such as a webpage screenshot with Internet Archive declaration, a thesis with the advisor’s declaration discussing university thesis publication practices, or a user manual with copyright notice, print release date, and declarations from the Internet Archive and an expert.
3. The Hulu decision is a welcome clarification that resolves a diversity of views among PTAB judges as to the level of public accessibility proof required at institution. The decision further underscores the procedural mechanisms available for a petitioner to submit additional evidence if a patent owner (or the PTAB) questions printed publication status, including a reply to a preliminary response, post-institution motion for supplemental information, and submission of reply evidence. Id. at 14.