The Patent Trial and Appeal Board ("PTAB") recently denied institution of Teva Pharmaceutical USA, Inc.'s ("Petitioner") petition for inter partes review (IPR) primarily based on Petitioner's failure to make a sufficient threshold showing that two asserted references qualify as prior art. Less than a month earlier the PTAB denied institution (please click here for more information) of other IPR petitions filed by the same Petitioner as being time barred by one day, despite Petitioner's claim that the one day delay was due to technical issues with the PTAB's online filing system.
In this latest proceeding, the PTAB denied institution based on a finding that Petitioner had not adequately shown that the two asserted references, including a label with a 2002 copyright date, were in fact "printed publications" under 35 U.S.C. §§ 102 and 311(b). All grounds of unpatentability raised by Petitioner relied on these two references.
Petitioner argued that the Patent Owner had stipulated in a co-pending litigation that these references were prior art to the challenged patent. However, the PTAB rejected Petitioner's argument on two bases. First, the PTAB noted that Petitioner "filed no exhibits with its Petition, such as a court document, in relation to Patent Owner's alleged stipulation in a district court case." Accordingly, the PTAB found that on the record before them, they could not "tell whether any documents allegedly at issue in the district court case correspond to [the two asserted references] in this case."
Second, even assuming Patent Owner had stipulated in the co-pending litigation regarding the prior art status of the two asserted references, "that fact, by itself," the Board held, "also would be insufficient to provide a threshold showing" that either of the two asserted references is a "printed publication." In support, the Board cited a variety of reasons Patent Owner might have stipulated during litigation to the prior art status of the two asserted references regardless of whether or not they were, in fact, publicly accessible.
The Board further noted that the petition did not include or cite information related to whether the cited references were actually publicly accessible in the relevant time frame, how one might have obtained copies of these documents, or whether they were reasonably accessible through generally available means. "With more here," the Board concluded, "contentions by Petitioner do not rise to the level of 'threshold evidence' that justifies going forward with a trial on a ground that relies on [the two asserted references] as 'printed publication' prior art."
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