At the Institution Stage, Petitioners Must Identify With Particularity Evidence of Public Accessibility, Including for Alleged Prior-Art Presentations and Websites

Guardian Alliance Technologies, Inc. v. Tyler Miller, IPR2020-00031, Paper 23. Before: Sally C. Medley, David C. McKone, and John R. Kenny.

The panel applied the legal standard in Hulu, LLC v. Sound View Innovations, LLC, to deny institution because Petitioner failed to “identify, with particularity, evidence sufficient to establish a reasonable likelihood that the reference was publicly accessible before the critical date of the challenged patent.” IPR2018-01039, Paper 29 (PTAB Dec. 20, 2019) (precedential).

The challenged patent related to software that facilitates the process of performing background investigations, for example on job applicants. Petitioner asserted two obviousness grounds based primarily on two different prior-art references: (1) a video by Background Solutions, LLC demonstrating a background investigation system; and (2) the Peace Officer Background Investigation Tracking System and Manual (“POBITS”).

For the Background Solutions video, Petitioner advanced two theories of public accessibility. First, Petitioner alleged that the video was displayed at trade seminars before the relevant priority date by the founder of Background Solutions. Second, Petitioner alleged that the founder distributed pamphlets at the trade seminars with the URL for Background Solutions’ website, where the video was also available. Petitioner relied on testimony from Background Solutions’ founder for both allegations and analogized to In re Klopfenstein, 380 F.3d 1345 (Fed. Cir. 2004), where the Federal Circuit found a poster presentation publicly accessible.

The panel, however, found that Petitioner’s evidence was insufficient. Even accepting the testimony from Background Solutions’ founder, he did not specify “how many such seminars he presented at, when or where those seminars were, who attended the seminars, or who watched the 2009 Video at the seminars.” Instead, “his testimony [wa]s vague and conclusory.” The panel distinguished Klopfenstein, where the Federal Circuit considered “the length of time the display was exhibited, [and] the expertise of the target audience,” because the declarant did “not testify as to when or where he presented the 2009 Video, the length of time it was exhibited, or the expertise of the seminar audiences.”

The panel also found that Petitioner failed to show sufficiently that the video was publicly accessible on Background Solutions’ website. The panel explained that websites have been found publicly accessible where the site (1) “was indexed, through search engines or otherwise”; (2) “was well known to the community interested in the subject matter of the reference”; or (3) “was publicly accessible through the use of a ‘research aid,’ such as a published article or patent.” Petitioner relied solely on the third basis for accessibility, arguing that brochures distributed at the trade seminars with the website’s URL were sufficient “research aids.” But because the panel found insufficient evidence about which seminars took place and who attended them, it found that “the evidence does not show who, if anyone, would have been given such a brochure or when they would have received it.”

Petitioner’s evidence that the video was actually available on the website was also deficient. Petitioner relied on an archived capture stored on the Internet Archive, which linked to a “Demo” of the alleged background-checking system. The link to the video on the archived webpage, however, was broken and did not load. The panel thus concluded that Petitioner failed to provide evidence that the video was available at the relevant time.

As for the POBITS manual, Petitioner relied on another Internet Archive capture to argue that the reference was accessible online before the priority date. Yet Petitioner did not offer any evidence that the website was indexed, well known to the interested community, or referenced in any publicly accessible research aid. At most, Petitioner provided evidence that the reference was on a public website and bore a copyright date before the priority date. While this was “part of the totality of the evidence” under Hulu, the copyright date “would tend, at most, to corroborate that POBITS was posted on a public website around that time,” which “is not sufficient to show a reasonable likelihood that POBITS was publicly accessible.”

Because Petitioner failed to identify, with particularity, sufficient evidence that its primary prior-art references were publicly accessible printed publications, Petitioner could not demonstrate a reasonable likelihood that it would prevail in showing that the challenged claims would have been obvious. Accordingly, the panel declined to institute the IPR petition.

View the blog here.

Sign up to receive emails with links to new posts by clicking here.