The Case Law Club’s Virtual Discussion of Hulu v. Sound View Innovations
By James Lampert, Retired, WilmerHale
On April 17, the Case Law Club moved to Zoom to discuss Hulu, LLC v. Sound View Innovations, LLC, Case IPR2018-01039 (PTAB Dec. 20, 2019) (Designated Precedential, Dec. 20, 2019). In Hulu, the Patent Trial and Appeal Board (PTAB) declined to institute inter partes review on the ground that “there was insufficient evidence, even at this stage, to show the book was actually accessible to the public or accessible only privately, and as to when any publicly accessible book was available.” The Precedential Opinion Panel (POP) of the PTAB reversed, concluding “that, based on the totality of the evidence currently in the record, Petitioner has established a reasonable likelihood that [such a] reference … was publicly accessible before the critical date of the challenged patent.” Jim Lampert, a retired WilmerHale partner, led the discussion.
Some of the principal issues discussed were: 1. Are “reasonable likelihood” and a “prima facie case” the same? The POP said that, “at the institution stage, the petition must identify, with particularity, evidence sufficient to establish a reasonable likelihood that the reference was publicly accessible….” The Petitioner and patent owner agreed that the “reasonable likelihood” standard requires the Petitioner to present a prima facie case at the institution stage. 2. Can a prima facie case satisfy the requirement for a preponderance of evidence at trial? If something less is enough at the institution stage, what, if any, additional evidence must a Petitioner present at trial? A prima facie case normally requires evidence that, unless rebutted, is sufficient to rule in favor of the party presenting it. What should be the standard at the institution stage? Should it differ from the standard during original prosecution of a patent application? During prosecution, an Examiner citing a non-patent reference rarely provides any evidence of publication beyond the reference itself; but the burden is then on the applicant. Should a Petitioner seeking IPR be required to show more? See Ex parte Grillo-Lopez, designated Precedential on April 7, 2020 and noting that “Examination and IPR Proceedings have Different Standards for Establishing a Printed Publication.” 3. The only evidence that the critical reference, “Dougherty,” was publicly accessible was its copyright page, which included the name of the publisher, a copyright notice, printing and reprinting dates, and an ISBN number. The Petitioner said it did not rely on a librarian’s declaration stating that a different version of the book was indexed and publicly available in the Cornell library. Are the copyright page statements hearsay? The POP said that whether the Federal Rules of Evidence apply at the institution stage “is beyond the scope of the POP question.” Do they apply at the trial stage? Do the copyright pages statements qualify for any hearsay exception? 4. Did the POP give weight to the Cornell librarian affidavit of accessibility despite the Petitioner’s statement? a. The POP said “Indicia on the face of a reference, such as printed dates and stamps, are considered as part of the totality of the evidence;” but the only “stamp” was on the Cornell version. b. Although the POP said “We do not find the [Cornell librarian] affidavit necessary to our decision,” the POP decision went on to “note that the affidavit is probative that Dougherty is the type of book that a university library would have collected and catalogued.” c. The POP cited three decisions to support its statement that “The Board has often found a reasonable likelihood that a reference is a printed publication for institution of an inter partes review when the evidence relied on provides strong indicia.” In all three, the evidence of accessibility included a declaration/expert testimony. Would you conclude you do not need either a library stamp or a declaration of public accessibility? The “totality of the evidence” in Hulu does not provide clear answers. Disclaimer: The views expressed in the article not necessarily represent those of the BPLA, or any of its members or their employers or clients.
Volume 51, Issue 2
2020 Ⓒ Boston Patent Law Association
Message from the President Michael Bergman
Message from the Editor-in-Chief
Recap of the BPLA Webinar with USPTO Director Iancu
Lessons on Inherency Challenges After Hospira v. Fresenius Kabi USA
PTAB Launches the Legal Experience and Advancement Program (LEAP) for the Next Generation of Patent Practitioners
Signing Documents Electronically
The Case Law Club’s Virtual Discussion of Hulu v. Sound View Innovations
In Memoriam Q. Todd Dickinson
The Supreme Court Upends the First Circuit’s Approach to Recovery of Defendant’s Profits Under the Lanham Act
United States Patent Office Finds Artificial Intelligence System Cannot Be An Inventor
The Pirates of Precedence, or How a Modest Copyright Case Could Affect Controversial Supreme Court Cases
Diversity Committee Meeting
BPLA Legislative Committee Holds Discussion on COVID-19 IP and Legislative Issues
Community Calendar
Officers and Board of Governors
In-House Committee Activities
Welcome Foreign Associates
Job Listings