Addressing a petition to institute an inter partes review of a patent for communicating between different modem types, the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (PTAB or Board) declined to institute a review, finding that the key document used for all invalidity grounds did not constitute a printed publication and thus there was not a reasonable likelihood that the petitioner would prevail. Samsung Electronics Co. Ltd. v. Rembrandt Wireless Techs., LP, Case No. IPR2014-00891 (PTAB Dec. 10, 2014) (Busch, APJ).
Rembrandt Wireless asserted two patents against various Samsung entities in district court litigation, and Samsung responded by filing four inter partes review petitions against the first patent and six petitions against the second. Three of the petitions against the second patent relied on a draft version of a wireless standard that was being considered by a working group of an industry association. The question addressed by the Board was whether that draft constituted prior art as a printed publication.
According to a declaration by an editor of the standard, the draft in question was available to members of the working group as a password-protected download. The availability of the draft was announced, along with the password, to an email distribution list sent to the working group as well as anyone from the public who provided their email to be included in the distribution. The draft was also distributed at a meeting of the working group.
The Board concluded that the draft was not sufficient accessible to the public interested in the art. The Board pointed to the lack of evidence that the meeting was advertised or even announced to the public. As to the download, the Board concluded that the fact that individuals from the public would have to contact the working group to obtain the password, and know to do so, weighed against accessibility. The Board thus concluded that the draft did not constitute § 102 prior art and declined to institute reviews for the petitions that relied on it.
