Different Burdens of Proof for Printed Publications

Precedential Opinions

In September 2018, the U.S. Patent and Trademark Office (USPTO) created a Precedential Opinion Panel (POP) to establish binding authority before the Patent Trial and Appeal Board (PTAB).

Decisions in both appeals from examiner decisions and in trials, such as Inter Partes Review (IPR), are eligible to be made precedential.

A very small number of decisions had been designated as precedential prior to creation of the POP, both before and after the PTAB replaced the Board of Patent Appeals and Interferences (BPAI) on September 16, 2012.

To address that situation, the POP has not only designated recent decisions of the PTAB as precedential, but also some of the earliest decisions of the PTAB, as well as BPAI decisions.

In addition, the POP may designate a decision as informative, i.e., “setting forth [PTAB] norms that should be followed in most cases, absent justification”, but not binding on a PTAB panel of three Administrative Patent Judges. Decisions that have not been designated as precedential or informative are routine decisions that are binding only in the case in which it is made.

Prove a Negative

In April 2020, the POP designated the January 31, 2020 decision on request for rehearing in Ex Parte Grillo-Lopez (Appeal 2018-006082) as precedential. This decision established how to determine during examination of a patent application whether a document is “sufficiently accessible to the public interested in the art so as to render it a printed publication within the meaning of [35 U.S.C.] § 102(b).”

According to the USPTO, if an examiner is able to find a document during a prior art search, it is the applicant’s burden to show that the document was not sufficiently accessible to the public prior to the effective filing date of the U.S. application.

Contrary to PTAB Findings

The appellant in Ex Parte Grillo-Lopez asserted that the very same document that the Ex Parte Grillo-Lopez decision accepted as a printed publication without any evidence had been found NOT to be a printed publication in other PTAB proceedings.

The October 2, 2017 Decision Denying Institution of IPR in Celltrion, Inc. v. Biogen, Inc., IPR2017-01094 found that an FDA Transcript of a July 25, 1997 public hearing attended by Dr. Antonio Grillo-Lopez had not been established by the Petitioner as publicly available. The Petitioner did not explain how “‘persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence’ would have been able to locate it ”¦[, i.e.,] known that the FDA transcript existed and was available, upon request, in the DDM Public Reading Room” prior to the effective filing date of the patent.

Reasoning of Ex Parte Grillo-Lopez

The Ex Parte Grillo-Lopez decision relied on a long history of BPAI and court decisions requiring applicants “to come forward with rebuttal evidence or argument” while only requiring examiners to show “the nominal publication date”.

It is now precedent that the assumption that “a journal article which is circulated and or catalogued in a routine manner may be presumed to have been publicly accessible on the publication date contained in the article” (Celltrion v. Biogen, IPR2017-01095, Final Decision) has been expanded to documents for which do not “come from well-known journals or a well-known book” like those in Celltrion v. Biogen.