Five designated decisions on non-patent prior art split three to two at the institution stage. The showings that passed explained how a skilled person would have found the document. The ones that failed showed only that it existed.
Before you read
A ResearchGate page lists a 2012 conference paper “with 45 Reads.” Is that enough to show it was a printed publication?
No. In In-Depth Geophysical, a dated listing, a read count and an examiner’s citation did not show a reasonable likelihood that the paper was publicly accessible.
Part 1 of 6
The petitioners in In-Depth Geophysical v. ConocoPhillips relied on a conference paper. Their evidence was a ResearchGate printout listing it as “Conference Paper · September 2012 with 45 Reads,” next to a button reading “Request full-text,” plus a European examiner’s citation of the paper in a related application. The Board denied institution.
The tempting reading
A dated listing with 45 readers shows the paper was public in 2012.
What the Board found
The petitioners hadn’t shown “a reasonable likelihood that Li (Ex. 1005) is a printed publication.” A date and a later read count don’t explain when, or how, an interested reader could have found the paper.
Source
Part 2 of 6
An IPR can rely on only two kinds of prior art: patents and printed publications. Patents prove their own dates. A book, a thesis, a drug label or a conference paper doesn’t, so the petitioner has to show it was publicly accessible before the critical date, the cutoff the art must predate. Publicly accessible means available so that interested, skilled people exercising reasonable diligence could locate it.
In Hulu v. Sound View (2019), the Precedential Opinion Panel set the institution-stage standard. The petition “must identify, with particularity, evidence sufficient to establish a reasonable likelihood” that the reference was publicly accessible.
A date on the document, or the petition’s say-so, is not enough.
At institution the question is a reasonable likelihood. At trial the petitioner must prove its case by a preponderance of the evidence.
Part 3 of 6
Here is the evidence in each designated decision. Guess before you tap.
Part 4 of 6
The passing showings answered how someone would have found the document: a library, a catalog, a national index, a public government website. The failing ones showed that it existed.
5 designated decisions, 2016 to 2019
Tap a segment to see the evidence.
In Hulu, the Precedential Opinion Panel looked at the record as a whole: the publisher, the series and the conventional publication marks. It did not make a copyright notice conclusive by itself. Rehearing was granted and the case sent back to the merits panel. Hulu’s later outcome on the merits has not been checked.
Part 5 of 6
Choose your side.
0 of 5 reviewed
Part 6 of 6
These are institution-stage rulings from 2016 to 2019. A reasonable likelihood at institution can still fail at trial, where the petitioner must prove its case by a preponderance of the evidence. Four of the five are informative as to the cited sections only and don’t bind; only Hulu v. Sound View is precedential.
It means
It doesn’t mean
The takeaway
Your prior-art file needs the document and the route a reader would have taken to find it.
Each item is marked in the story with a dashed outline. We update the story when the official record confirms or corrects it.
Precedential decisions bind the Board within their designated scope. Informative decisions show the Office’s reasoning but do not bind the Board. Court opinions are cited for what they decided; later history was checked on the date shown above.