A Printed Publication in Patent Prosecution May Not be Printed Publication in an IPR Proceeding

In a recently designated precedential decision (Ex parte Grillo-Lopez), the Patent Trial and Appeal Board (PTAB) explained the differences regarding what a printed publication is during inter partes review (IPR) and what a printed publication is during examination.     This decision centered on an FDA transcript that was the subject of an earlier IPR proceeding in which the PTAB held that the FDA transcript was not shown to have been a printed publication.

To provide additional context, the FDA transcript was cited as prior art by a petitioner in the earlier IPR proceeding. The PTAB found that the petitioner did not provide adequate evidence that the FDA transcript was a prior art printed publication. More specifically, the PTAB explained that the Petitioner did not explain “how such persons may have known that the FDA transcript existed and was available, upon request, in the DDM Public Reading Room.” In other words, the Petitioner held the initial burden to show that the FDA transcript was a prior art printed publication in the IPR petition.

In contrast to being cited in an IPR petition, the FDA transcript was cited by a Patent Examiner during prosecution of a patent application. As explained in the decision, “the examination context involves a burden-shifting framework under which the USPTO can shift the burden to the applicant to come forward with rebuttal evidence or argument to overcome a prima facie case.” In the present case, the Examiner met his burden of proof by establishing the nominal publication date of the FDA transcript. As such, the burden then shifted to the Appellant to disprove the prima facie publication date set forth by the Examiner.

As explained by the PTAB, IPR proceedings and examination proceedings are different legal frameworks. Given the different legal frameworks, the burdens for establishing a reference as prior art in IPR proceedings differ than those during examination. In an IPR proceeding, the petitioner must provide adequate evidence that something qualifies as a prior art publication. Within an examination proceeding, the Examiner can establish a prima facie case that something qualifies as a prior art publication by setting forth the nominal publication date. Once the prima facie case is established, the burden shifts to the Appellant to provide evidence or argument to overcome the Examiner’s prima facie case.