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.
BOALICK, Chief Administrative Patent Judge.
Granting Petitioner's Request for Rehearing
37 C.F.R. § 42.71(d)
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"), 3-7). The POP set a briefing schedule for the parties and also invited briefing from amicus curiae. Id. at 2-3. Read The Full CaseNot a Lexis Advance subscriber? Try it out for free.
Full case includes Shepard's, Headnotes, Legal Analytics from Lex Machina, and more.
2019 Pat. App. LEXIS 11904 *
HULU, LLC, Petitioner, v. SOUND VIEW INNOVATIONS, LLC, Patent Owner.
[*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.
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