United States: Printed Publications Qualified As Prior Art And Discretionary Denial Was Not Warranted Despite Successively Filed IPRs

In Signify North America Corp. v. Cao Lighting, Inc.,¹the Board instituted Signify's IPR and decided two issues: (i) whether the two asserted printed publication references qualified as prior and (ii) whether discretionary denial was warranted because Signify presented substantially the same prior art and arguments as those asserted by a third party in a previously filed IPR challenging the same patent.

For the first issue, the Board noted that both references included indicia of public accessibility on their face (date and price), were published by an "established publisher," and the publisher had webpages for the references indicating the same date identified on the references. The Board concluded that this evidence was sufficient to satisfy the reasonable likelihood standard that is applied at the institution stage when determining whether printed publications were publicly accessible before the critical date and, thus, prior art.²

For the second issue, the Patent Owner argued against institution under § 314(a) and § 325(d) because Signify presented substantially similar art and arguments as a previously instituted IPR filed by a third party and challenging the same patent.³ The Board refused to exercise its discretion to deny institution, relying predominantly on General Plasticsfactor 1 (whether the same petitioner filed the previous IPR), and factor 3 (whether the petitioner used the previous IPR as a roadmap to improve its arguments in the subsequent IPR). The Board weighed factor 1 "heavily against discretionary denial" because there was no evidence of any relationship between Signify and the petitioner in the earlier filed IPR. It rejected Patent Owner's argument that Signify's alleged copying of prior art and arguments from the earlier IPR created a relationship between the parties.⁴ The Board also weighed Factor 3 against denial because Patent Owner failed to present factual evidence showing that Signify used the Board's institution decision in the earlier IPR as a roadmap to improve its arguments. In fact, the Board noted that "road-mapping concern[s]" are either "not relevant" or "less relevant" when the earlier IPR was instituted, because it does not present a situation in which a petitioner obtains "multiple-bites-of-an-apple."

Take Away

When assessing the public accessibility of a printed publication, the Board may consider various indicia on the face of a reference, including date, cost information, identifiers indicating publishing year, reputation of publisher, and publisher's webpages corroborating the publication date.

Also, when a patent is challenged in multiple IPRs, the Board may consider a party's relationship to the petitioner of the earlier IPRs and whether the earlier IPRs were instituted, which may minimize or eliminate road-mapping concerns.

Footnotes

1. IPR2023-00214 (P.T.A.B. June 15, 2023).

2. Id. at 17-20.

3. Id. at 20.

4. Id. at 20-21.

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