The PTAB recently denied IPR institution in Sophos v.
Sophos ("Petitioner") filed a petition requesting IPR review of
Before addressing the substance of the prior art, the PTAB held that Petitioner failed to establish the public accessibility of Li because the Petitioner's expert, Dr. Hall-Ellis, had cited to webpage links, and not exhibits, meaning that her declaration was unsupported by properly-submitted evidence. Id. at 13; see 37 C.F.R. §§ 42.65(a), 42.63(a), 42.6(c).
The PTAB noted two important functions of exhibits: first, to preserve evidence as originally presented because webpages can be deleted or moved; and second, to provide public access to the record. Id. at 13-14. One of the cited webpages did change. Id. Dr. Hall-Ellis had cited that Google Scholar indicated 31 citations to Li, but it, in fact, had later changed to 30 when a panel member checked. Id.
Even though Petitioner's failure to submit exhibits was dispositive, the PTAB addressed Petitioner's prior-art-establishment arguments, which it ultimately found deficient. Id. at 15. The PTAB found that Petitioner had not shown a reasonable likelihood that Li "has been disseminated" or that Li was "otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence, can locate it." Id. at 15; SRI Int'l, Inc. v. Internet Sec. Sys., Inc., 511 F.3d 1186, 1194 (Fed. Cir. 2008).
First, Li was undated. Dr. Hall-Ellis testified that Li was published at least by
Additionally, Dr. Hall-Ellis did not claim personal knowledge of Li being presented at the conference. Id. at 10. She obtained Li from a digital repository, and testified that Li "is" available from other repositories as well – ResearchGate, Google Scholar, and CiteSeer. Id. at 17. However, the repositories' listing of
Dr. Hall-Ellis also pointed out that Google Scholar had 31 citations to Li, but citation alone does not establish a publication date. Id. at 18. Dr. Hall-Ellis singled out two of these papers particularly as indicating public accessibility, but both were by Li co-authors, which is unpersuasive because "a work is not publicly accessible if the only people who know how to find it are the ones who created it." Id. at 18; Samsung Elecs. Co. v.
Finally, Petitioner did not address any factors like "whether the copies were freely distributed to interested members of the public" or whether there was a "legal obligation of confidentiality" when distributing any copies. Id. at 16;
Thus, the PTAB found Petitioner's assertion that Li is prior art to be mere speculation, and denied IPR institution on § 103 grounds. Id. at 19.
Takeaway: Petitioners should be thorough and careful when proving the prior art status of their references, where all cited evidence should be submitted as exhibits to ensure its proper consideration.
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