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2019 Pat. App. LEXIS 11904

Patent Trial and Appeal Board Representative Orders, Decisions and Notices

               December 20, 2019, Decided

  IPR2018-01039, Paper 29 ; Patent 5,806,062

USPTO Bd of Patent Appeals & Interferences; Patent Trial & Appeal Bd Decs.

Opinion

                  BOALICK, Chief Administrative Patent Judge.

                    DECISION

                    Granting Petitioner's Request for Rehearing

                                                                 37 C.F.R. § 42.71(d)                                                        

                    I. INTRODUCTION

                    Hulu, LLC ("Petitioner") filed a Petition (Paper 3, "Pet.") requesting an inter partes review of claims 1-3, 7, 10, 11, 14, and 15 of U.S. Patent No. 5,806,062 (Ex. 1001, "the '062 patent "). Petitioner asserted that the claims were obvious over Dale Dougherty, SED & AWK (Tim O'Reilly, ed., O'Reilly & Associates, Inc.) (Nov. 1990) (Ex. 1004, "Dougherty"). See Pet. 3-4.

                    Sound View Innovations, LLC ("Patent Owner") filed a Preliminary Response (Paper 10, "Prelim. Resp.") to the Petition. Patent Owner challenged Petitioner's showing that Dougherty was publicly available as a [*2]  printed publication before the filing of the '062 patent in 1995 . Id. at 3-23.

                    The Board issued a decision denying institution of an inter partes review. Paper 12 ("Decision"). The Board found that there was insufficient evidence to show that Dougherty was publicly accessible and concluded that Petitioner failed to show sufficiently that Dougherty qualifies as prior art under 35 U.S.C. §§ 102(a) and (b). Id. at 11-12.

                    Petitioner requested rehearing of the Board's decision, and requested Precedential Opinion Panel ("POP") review. Paper 13. Because prior Board decisions conflicted on requirements for institution involving issues of public accessibility of an asserted "printed publication," the POP ordered a review on rehearing to address the following issue:

                          What is required for a petitioner to establish that an asserted reference qualifies as "printed publication" at the institution stage?

                    Paper 15 (Order), 2 (citing Standard Operating Procedure 2 ("SOP 2"), 1 3-7). The POP set a briefing schedule for the parties and also invited briefing from amicus curiae. Id. at 2-3.

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2019 Pat. App. LEXIS 11904 *

  HULU, LLC, Petitioner, v. SOUND VIEW INNOVATIONS, LLC, Patent Owner.

Notice:

            

                                  [*1]   PRECEDENTIAL OPINION. Pursuant to the Board of Patent Appeals and Interferences Standard Operating Procedure 2, the opinion below has been designated a precedential opinion.

         

CORE TERMS

patent, printed publication, reasonable likelihood, print, inter partes, pop, reply, supplemental information, prevail, public access, prior art, sufficient evidence, canon, preponderance of evidence, unpatentability, indicia, critical date, dissertation, stamp