If You Can’t Find It Publicly, It’s Probably Not Publicly Available

The title of this post slightly overstates the opinion, but that sentiment was the clear undercurrent in a recent order from the PTAB.  Alkermes Pharma Ireland Ltd. v. Otsuka Pharma. Co., Ltd. (IPR2017-00287, April 5, 2017).  In the order, the PTAB denied pre-institution discovery to the petitioner to establish the date of public accessibility of certain references.

US Patent No. 9,125,939 has a priority date of May 23, 2003.  Thus, anything published prior May 23, 2002, is prior art under pre-AIA 35 U.S.C. § 102(b).

Petitioner alleged that two meeting abstracts authored by the Patent Owner, Keck and Citrome, were publicly available by May 18, 2002, the first date of the conference where the abstracts were due to be presented.  In order to support this date, petitioner relied on the cover page of the meeting abstract book and a declaration from one of their experts that such abstracts were usually distributed at the conference.  Petitioner also relied a on a press release, BMS/Otsuka, from the patent owner, where the date listed on an online resource for news releases was May 22, 2002.

The Patent Owner challenged the evidence of the publication date in its preliminary response.  The details of the challenge are not particularly important, except to note that it isn’t a slam dunk even with the dates on the pages. Petitioner’s evidence may not be sufficient based on cases like Norian Corp. v. Stryker Corp.

In order to shore up the evidence of publication, Petitioner sought discovery from the Patent Owner about the dates Patent Owner was involved in submitting the documents for publication.  The PTAB rejected the discovery, noting that Petitioner “could, and should, have obtained [the information] by other means.”

By focusing on when the public could have received the publications, instead of when Patent Owner authorized the publications, the PTAB hit on something important.  If the documents were, in fact, publicly available at the time Petitioner contends, then there should be evidence of this availability.

There are many ways to find this information.  For example, library date stamps show at least the date that one entity received a publication.

This case underscores something that is going to become more important as electronic only resources increase.  Dates listed may not reflect actual dates of publication.  Differing content may exist between the epub ahead of print and the print version of an article.  Archives may estimate a date, particularly if document retrieval is automated, and therefore may simply have an incorrect date.  It is nice to see the PTAB being attuned to these issues, but we will need to see how PTAB reacts to the evidence that is currently of record in the proceeding.

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