Thursday, September 13, 2018

"Printed publication" issue in Nobel Biocare

The parties dispute whether the ABT Catalog qualifies
as a “printed publication” under pre-AIA § 102(b).
Whether a reference qualifies as a “printed publication” is
a legal conclusion based on underlying factual findings.
Jazz Pharm., 895 F.3d at 1356. The underlying factual
findings include whether a reference was publicly accessible.
In re NTP, Inc., 654 F.3d 1279, 1296 (Fed. Cir. 2011).
In an IPR, the petitioner bears the burden of establishing
by a preponderance of the evidence that a particular
document is a printed publication. Medtronic, Inc. v.
Barry, 891 F.3d 1368, 1380 (Fed. Cir. 2018).
“Because there are many ways in which a reference
may be disseminated to the interested public, ‘public
accessibility’ has been called the touchstone in determining
whether a reference constitutes a ‘printed publication’
. . . .” In re Hall, 781 F.2d 897, 898–99 (Fed. Cir. 1986).
“A reference will be considered publicly accessible if it was
disseminated or otherwise made available to the extent
that persons interested and ordinarily skilled in the
subject matter or art exercising reasonable diligence can
locate it.” Medtronic, 891 F.3d at 1380 (internal quotation
marks and citations omitted). “Whether a reference is
publicly accessible is determined on a case-by-case basis
based on the ‘facts and circumstances surrounding the
reference’s disclosure to members of the public.’” In re
Lister, 583 F.3d 1307, 1311 (Fed. Cir. 2009) (quoting In re
Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004)).
We first note that we are not bound by our prior affirmance
of the ITC’s holding that there was insufficient
evidence to find pre-critical date public accessibility. The
parties agree that our prior decision is not binding on this
factual issue. Oral Arg. at 13:05–14:17, 26:49–28:36. As
the Board correctly observed, the evidentiary standard in
its proceedings, preponderance of the evidence, is different
from the higher standard applicable in ITC proceedings,
clear and convincing evidence. See Board Decision,
2017 Pat. App. LEXIS 8329, at *22. The Board also had
“more evidence on this issue than what was before the
ITC.” Id. Moreover, we apply a substantial evidence
standard of review to both ITC and Board factual findings,
“and the possibility of drawing two inconsistent
conclusions from the evidence does not prevent an administrative
agency’s finding from being supported by substantial
evidence.” Consolo v. Fed. Mar. Comm’n, 383
U.S. 607, 620 (1966).


We agree with Instradent that substantial evidence
supports the Board’s finding that the ABT Catalog was
publicly accessible prior to the critical date. The Board
credited Chakir and Hantman’s testimony that Chakir
obtained a copy of the ABT Catalog at the March 2003
IDS Conference and that Hantman retained that copy in
his records thereafter. Hantman’s declaration included
excerpts of his copy of the ABT Catalog taken from his
files. The Board found that Hantman’s copy of the ABT
Catalog and the copy offered as prior art by Instradent in
the IPR had identical pages except for some handwriting
on the cover of Hantman’s copy. Nobel does not dispute
this finding. Hantman and Chakir provided specific
details as to why Chakir collected dental implant brochures
for Hantman at the March 2003 IDS Conference.
Hantman further provided specific details as to why he
remembers the circumstances under which he received
the ABT Catalog. The Board reasonably credited their
combined testimony as supporting its public accessibility
finding. See TypeRight Keyboard Corp. v. Microsoft Corp.,
374 F.3d 1151, 1159 (Fed. Cir. 2004) (stating that the
proffered testimony of two witnesses relating to public
accessibility at a trade show “is sufficient to support a
jury finding that the Marquardt document is prior art”).

The Finnigan case is cited:

We next address the sufficiency of the corroboration of
the testimony. “[C]orroboration is required of any witness
whose testimony alone is asserted to invalidate a patent,
regardless of his or her level of interest.” Finnigan Corp.
v. Int’l Trade Comm’n, 180 F.3d 1354, 1369 (Fed. Cir.
1999). Corroborating evidence may include documentary
or testimonial evidence. See TransWeb, LLC v. 3M Innovative
Props. Co., 812 F.3d 1295, 1301 (Fed. Cir. 2016).
Circumstantial evidence can be sufficient corroboration.
Id. We have articulated a number of factors that may be
considered in assessing the sufficiency of the corroboration
in prior invention or public use cases:


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