A Patent Trial and Appeal Board (PTAB) panel has denied institution of an inter partes review proceeding because the petitioner did not establish that key references were properly qualified as printed publications under 35 U.S.C. § 102(b). The panel’s decision centered on whether a copyright notice, alone or in combination with a catalog listing, provided sufficient evidence of public availability on a particular date. The petitioner asserted unpatentability on four grounds of obviousness, each ground relying on one of two reference manuals. To show that the manuals were prior art, the petitioner cited copyright notices and Internet library catalog listings for each.

The panel rejected the petitioner’s arguments. The panel found that, although a copyright notice “may be evidence of the date of a reference,” crucially, it “sheds virtually no light on whether the document was publicly accessible as of that date.” For the first manual, the copyright notice suggested that the distribution was “restricted and limited to persons who acquired the underlying . . . product.” Furthermore, the catalog listing did not supply evidence of when each manual was publicly available. The listing itself had no creation date, and the catalog was copyrighted after the priority date.

The panel found different problems with the evidence advanced for the second manual. The manual had multiple copyright dates straddling the priority date, and the petitioner had failed to show that the earliest date was the correct one. The catalog listing failed to resolve the competing copyright dates, and it also could not provide sufficient evidence of public availability.

Microsoft Corp. v. Corel Software, LLC, IPR2016-01300, Paper 13 (PTAB Jan. 4, 2017)