The Patent Trial and Appeal Board (Board) recently provided important guidance for prior art “printed publications” asserted in invalidity challenges under the 2011 Leahy-Smith America Invents Act (AIA) concerning a doctoral thesis cataloged at the Russian State Library.

In a final written decision entered August 14, 2015, in GlobalFoundries U.S., Inc. et al. v. Zond, LLC, IPR2014-01086, Paper 36 (Aug. 14, 2015), the majority of an expanded panel of the Board found that the Mozgrin Thesis was sufficiently accessible to the interested public to qualify as a prior art “printed publication” for purposes of 35 U.S.C. § 102(b). The patent at issue, which Zond had asserted against the petitioners in a Delaware federal district court action, was directed to a pulsed magnetron sputtering device used to make semiconductor chips. The petitioners relied on the Mozgrin Thesis as prior art for teaching a specific voltage range for controlling the device, and that range fell squarely within a range claimed by Zond’s patent.

In a growing trend in Board decisions, Administrative Patent Judge Debra K. Stephens issued a dissent disagreeing with the majority’s finding that the Mozgrin Thesis qualified as prior art. Both opinions shed light on how parties to AIA proceedings should approach qualifying and challenging similarly obscure printed publications. 

Under binding precedent from the Court of Appeals for the Federal Circuit, the determination of whether a given reference qualifies as a prior art “printed publication” involves a case-by-case inquiry into the facts and circumstances surrounding the reference’s disclosure to the public. To qualify as a prior art printed publication, the reference must have been disseminated or otherwise made accessible to persons interested and ordinarily skilled in the subject matter to which the document relates—prior to the critical date.

In GlobalFoundries, the petitioners asserted that the Mozgrin Thesis was published in 1994 and therefore prior art under § 102(b) since the critical date of the patent was its filing date of September 30, 2002. To support the 1994 publication date, the petitioners proffered a copy of the Mozgrin Thesis in Russian; a certified English translation of the Mozgrin Thesis; a certified English translation of the catalog entry for the Mozgrin Thesis at the Russian State Library, which showed the title of the Mozgrin Thesis, a high-level description of its subject matter, and an “imprint date” of 1994 (though the catalog stated it had only been available since 1995); and a creative argument in the petitioners’ reply brief, credited by the Board, that the Russian State Library was an institution “by definition established to share the information that it houses with any interested person.”

In response, the patent owner did not come forth with any countervailing evidence of its own, instead contending that the petitioner provided no evidence that the phrase “Imprint Moscow 1994” appearing on the catalog entry proved that the Mozgrin Thesis was actually cataloged on that particular date.

The majority was persuaded by the petitioner’s contentions and supporting evidence, stating, “Although evidence establishing a specific date of cataloging and shelving before the critical date would have been desirable, it is not required in a public accessibility determination.” The majority also noted that the patent owner had the opportunity during the trial to object to the petitioners’ evidence for the Mozgrin Thesis as a printed publication under § 102, and an opportunity to file a motion to exclude that evidence—both of which the patent owner failed to do.

The dissent disagreed with the majority’s determination that the Mozgrin Thesis was a printed publication under § 102. It is noteworthy that the dissenting judge appears to just take issue with whether the petitioner had shown Mozgrin Thesis was publically accessible more than one year prior to the date of the application for patent. Specifically, the dissenting judge took issue with the use of the imprint date on the catalog to establish a specific date of actual cataloging by the Russian State Library.

The dissenting judge also disagreed that the patent owner was required to object to the evidence during the trial, stating that the patent owner’s argument was not that the Mozgrin Thesis was inadmissible under any federal rule of evidence. Instead, the judge emphasized that the patent owner’s argument was that the Mozgrin Thesis was not prior art under § 102(b) because the petitioners had not shown it was publicly accessible––a challenge to the sufficiency or weight to be given to the Mozgrin Thesis. The judge provided that such argument is not proper in a motion to exclude, which is a challenge to the admissibility of evidence, not a challenge to sufficiency.

Petitioners and patent owners should take guidance from both the majority panel and dissent reasoning and view of the evidence presented in GlobalFoundries. If you are the petitioner asserting a thesis is prior art:

• Make sure you provide evidence of actual availability of the thesis;
• Make sure you provide evidence that the site displaying or cataloging the thesis is an institution “by definition established to share the information that it houses with any interested person”; and
• Authenticate the thesis and the evidence to avoid any challenges to authenticity; and focus your evidence on the critical date.  Interestingly, the petitioner in GlobalFoundries promoted an accessibility date in 1994 or 1995, when evidence of accessibility as of seven years later would have done the trick.

If you are the patent owner:

• Challenge the admissibility of the  thesis or evidence put forth by the petitioner to support the assertion that the thesis was a printed publication under § 102 by objecting to the evidence and subsequently filing a motion to exclude, considering hearsay arguments that the patent owner in GlobalFoundries never raised;
• Pay attention to the actual date being asserted and challenge the date of actual availability of the thesis, if possible;
• Challenge the institution’s policy or procedure for cataloging the thesis, including through the affidavit of someone with knowledge of flaws in those procedures; and
• Challenge whether the thesis could have been obtained by any interested person.