Shockingly, some at the Patent Trial and Appeal Board (“PTAB”) think textbook publishers who include dated copyright notices don’t actually publish the textbooks that year!  Further, would you have imagined an argument that textbooks aren’t printed publications?  Given the amount we paid for textbooks in college and the number stored in my garage that seems like a strange argument, right?  Well, the PTAB essentially made just that argument in Hulu, LLC v. Sound View Innovations, LLC.  As a result, Hulu requested rehearing of the PTAB decision denying institution of inter partes review of the validity of Sound View’s patent, U.S. Patent No. 5,806,062.  Hulu argued the decision was in conflict with other PTAB decisions “involving the public availability of an asserted ‘printed publication.’”  In response to the request, the Precedential Opinion Panel (“POP”) ordered a rehearing to address the question:  “What is required for a petitioner to establish that an asserted reference qualifies as [a] ‘printed publication’ at the institution stage?”

Specifically, the PTAB denied Hulu’s petition for IPR, arguing the submission of a textbook with the “copyright year of 1990” was insufficient to show the textbook was “publicly available” at that time.  In its request for rehearing, Hulu pointed out that the PTAB’s decision conflicts with several prior decisions.  For example, in other institution-stage decisions, the PTAB previously found that 1) “a copyright notice is prima facie evidence that a publication is prior art”; 2) ”a copyright notice, alone or combined with other minimal corroborating evidence, is sufficient evidence of public accessibility to meet the ‘reasonable likelihood’ threshold for institution”; 3) “a copyright notice by a well-known publisher in the United States is sufficient evidence of public accessibility”; 4) “a copyright notice should be evidence viewed in the light most favorable to a petitioner when resolving disputes regarding public accessibility at the institution stage”; and 5) “where a patent owner merely points out possible inconsistencies in petitioner’s evidence—without submitting its own evidence of a different public availability date—the petition should be instituted, and any determination as to public availability occur during the trial.”

In its review of the denial of Hulu’s IPR petition, the POP will reconsider not only whether a textbook’s copyright date is sufficient for it to qualify as a printed publication but also the broader question of what is sufficient for any type of reference to qualify as a printed publication.  Given that only patents and printed publications can be used as prior art in IPR proceedings, this is an important and frequently recurring issue.

The POP was designed to address the need for rehearings when issues such as the one being raised in Hulu occur.  Specifically, after learning from several years of AIA trial proceedings, including IPRs, the PTAB created the POP, which serves two main purposes:  1) to rehear certain matters and 2) to assist the Director of the United States Patent and Trademark Office (“USPTO”) in determining whether a PTAB decision should be designated as a “precedential” or “informative” decision rather than a “routine” decision.

POP review in a pending PTAB trial or appeal can only be obtained by recommendation.  Generally, a recommendation for POP review will be submitted by a party to a proceeding.  A “Screening Committee” considers all recommendations and then forwards its recommendation to the Director.  Whether to institute POP review is within the sole discretion of the Director, and that decision cannot be appealed.

The default members of the POP include the Director, the Commissioner for Patents, and the Chief Judge.  The Director, however, selects POP members and has the discretion to replace default members with the Deputy Director, the Deputy Chief Judge, or an Operational Vice Chief Judge.

When a case is sent to the POP for review, the POP will issue a decision resolving the question raised in that case.  Each POP decision may be designated as “precedential,” “informative,” or “routine.”  A “precedential” decision is binding on future PTAB panels.  An “informative” decision is not binding but provides the PTAB’s recommended approach for the issues raised. “Routine” decisions are only binding in the specific case.

The POP provides an additional review mechanism within the USPTO with the goal of addressing certain issues before they reach the Court of Appeals for the Federal Circuit or the U.S. Supreme Court.  In addition, the POP’s decisions provide a mechanism for issuing guidance to petitioners and patent owners and for providing predictability of results across different PTAB panels faced with similar issues.  It will be interesting to see just how much guidance and clarification the POP provides as to the printed publication issue raised in the Hulu case.  Perhaps, we will soon know whether a textbook is a printed publication!