iTakeaway: Public accessibility is a key question in determining whether a document is a printed publication and is determined on a case-by-case basis.
In its Decision, the Board found that the Petition had not demonstrated a reasonable likelihood of prevailing with respect to the assertion that the challenged claims of the ’580 patent were anticipated by the Draft Standard or would have been obvious over the Draft Standard taken alone or in combination with Boer. Consequently, the Board denied the Petition as to each of challenged claims 1, 2, 4, 5, 10, 13, 19-22, 49, 52-54, 57-59, 61, 62, 66, 70, and 76-79, and did not institute the petitioner-for trial.
The ’580 patent relates to a data communications system wherein multiple modems practice different types of modulation in a network. The ’580 patent claimed priority via a chain of intervening applications back to a provisional application filed on December 5, 1997.
Each of the challenges in the Petition was based at least in part on a reference known as the Draft Standard, which the Board characterized as “an unapproved draft of a proposed IEEE [Institute of Electrical and Electronics Engineers] Standard.” The Board began by citing to In re Lister, 583 F.3d 1307, 1311 (Fed. Cir. 2009), for the proposition that “[t]o qualify as a printed publication, a document ‘must have been sufficiently accessible to the public interested in the art.’”
Petitioner had relied on the O’Hara Declaration as extrinsic evidence showing that the Draft Standard was a printed publication. Nonetheless, the Board found that neither the Petition nor the O’ Hara Declaration contained any evidence of the public availability of the Draft Standard as of July 1996 or earlier, as alleged. Thus, the Board concluded that because the Petition had not established that the Draft Standard was a prior art printed publication, the Petitioner had not shown a reasonable likelihood of prevailing on the asserted anticipation and obviousness grounds, all of which were based at least in part on the Draft Standard.
Samsung Electronics Co., Ltd., Samsung Electronics America, Inc., Samsung TelecommunicationsAmerica, LLC, and Samsung Austin Semiconductor, LLC v. Rembrandt Wireless Technologies, LP, IPR2014-00514
Paper 18: Decision Denying Institution of Inter Partes Review
Dated: September 9, 2014
Patent: 8,023,580 B2
Before: Jameson Lee, Howard B. Blankenship, and Justin Busch
Written by: Blankenship
Related Proceedings: IPR2014–00515; IPR2014–00518; IPR2014–00519; andRembrandt Wireless Tech., LP v. Samsung Elect. Co. LTD., No. 2:13-cv-00213 (E.D. Tex. 2013)
