On May 1, 2019, Unified filed an amicus brief in Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, urging the PTAB to clarify the standard used by PTAB panels to determine whether an asserted reference qualifies as a printed publication when deciding whether to institute trial in a post-grant proceeding.  Different panels have approached the question inconsistently, leading to a lack of certainty in what a petitioner must present in its petition to show that an asserted reference qualifies as a printed publication.

In IPR2018-01039, a PTAB panel declined to institute Hulu’s petition for inter partes review based on a finding that the copyright notice and a supporting affidavit submitted by Hulu were insufficient to demonstrate that a textbook reference qualified as a printed publication. Subsequently, the Board’s Precedential Opinion Panel authorized review, permitting the parties and interested third parties to address: “What is required for a petitioner to establish that an asserted reference qualifies as a ‘printed publication’ at the institution stage?”

Amicus briefs addressing the issue were submitted by (1) Unified, (2) AIPLA, (3) Canon Inc., (4) Google, Microsoft, Arista and Uber, and (5) Sandoz. All of the parties (with the exception of Sound View) generally advanced the same position as Unified, namely that the reasonable likelihood standard of 35 U.S.C. § 314(a) should apply to factual disputes at institution, including whether an asserted reference qualifies as a printed publication.

For more information about this proceeding and to view the briefing on this issue, visit Unified’s Portal. A copy of Unified’s amicus brief is provided below.