Trade Show Publication Dooms Patent in IPR Appeal Despite Contrary Decision in ITC AppealDecember 17, 2018
Inter partes review not only provides a faster and cheaper way to challenge patent validity, but also expands the Patent Office’s ability to develop law on esoteric issues relating to prior art. The Federal Circuit’s decision Nobel Biocare Services AG v. Instradent USA, Inc. is another in a line of cases arising out of IPR proceedings dealing with the availability of conference and trade show materials as prior art. See, for example, PTABWatch posts here and here. Interestingly, the court affirmed the PTAB’s decision finding certain claims of the challenged patent anticipated by a trade show publication, whereas the court came to the opposite conclusion in a related ITC appeal based on the same publication.
The Petitioner challenged certain claims of a patent directed to dental implants as being anticipated by a product catalogue purportedly made available to the public at a trade show. The Federal Circuit’s decision focused on the availability of the product catalog as a printed publication as of the March 2003 date printed on the catalog cover, which predates the patent’s asserted effective filing date.
The court’s analysis began by reiterating that, in an IPR, the petitioner bears the burden of establishing by a preponderance of the evidence that a document is a printed publication. The underlying factual findings include whether a reference was publicly accessible, i.e., if it was “disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence can locate it.” Here, the court determined that Petitioner submitted sufficient evidence to support the PTAB’s decision that the product catalog was publicly available as of March 2003. The court highlighted the following evidence in its analysis:
- the March 2003 date printed on the cover of the catalog,
- Patent Owner’s testimony that the trade show “normally” occurred in March 2003,
- testimony from the distributor which included reasons why the distributor sought out the catalog and why the distributor recalled the circumstances of obtaining the catalog.
Patent Owner argued that the proffered evidence was insufficiently corroborated. The court disagreed, determining that testimony from the distributor’s co-owners, the date printed on the face of the catalog, and the date of the conference collectively constituted sufficient corroboration.
Petitioner had previously sought to invalidate the patent claims in an ITC proceeding using the same product catalog.
The possibility of drawing two inconsistent conclusions from the evidence does not prevent an administrative agency’s finding from being supported by substantial evidence
A different Federal Circuit panel affirmed the ITC’s finding in favor of the Patent Owner, determining that the same petitioner (there, an ITC respondent) had not established that the product catalog was prior art. Notably, the standard of proof required in ITC proceedings is the higher clear and convincing evidence standard, compared to the preponderance of the evidence standard adopted in IPR proceedings. Additionally, Petitioner’s IPR challenge was supported by additional evidence which was not presented in the ITC proceeding – the testimony from the dental supply distributor co-owners. The different factual record and different burden of proof laid the foundation for Petitioner’s success in the appeal.