This article appeared in the July 22, 2014 Edition of IP Law 360
In proceedings before the Patent Trial & Appeal Board, whether a reference is publicly accessible and therefore qualifies as a prior art printed publication depends on the “facts and circumstances surrounding the reference’s disclosure to members of the public.” When a patent challenger in a PTAB case lacks evidence showing the specific date that a document became publicly accessible, a common approach for qualifying that document as a printed publication is to submit evidence of a routine business practice. But in cases before the PTAB, the evidentiary standard for establishing routine business practice appears far from settled.
The Manual of Patent Examining Procedure (“MPEP”) suggests that “[a] reference is proven to be a ‘printed publication’ ‘upon a satisfactory showing that such document has been 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.’” The MPEP references the Federal Circuit’s 1988 decision in Constant v. AMD as a leading authority for the proposition that routine business practice evidence may be used to clear the public accessibility hurdle.
In Constant (an appeal of a district court infringement action), the Federal Circuit held that evidence submitted by Intel regarding undated specification sheets showing how the company usually treated such specification sheets was enough to show that the sheets were accessible to the public before the asserted patent’s critical date. Since Constant, the Federal Circuit has not specifically addressed the level of proof required to prove a document is a printed publication using routine business practice evidence before the PTAB.
Interpreting the Constant decision, the PTAB held in its 2012 Micron decision that Constant requires “extensive and uncontroverted evidence of business practice,” an evidentiary threshold more akin to a clear and convincing standard. Micron, however, conflicts with more recent PTAB decisions invoking a lower “preponderance of evidence” standard in assessing routine business practice, all of which cite the Federal Circuit’s 1986 decision in In re Hall.
The need to rely upon routine business practice — and for application of a consistent evidentiary standard — to establish a reference’s public accessibility is particularly acute in the Internet age. More than ever, potential “printed publication” evidence is being posted on FTP servers, websites and other Internet-accessible computerized databases. Going forward, it would benefit practitioners and their clients if the PTAB recognized the tension in its rulings and offered clearer guidance on the proper evidentiary standard for advancing a routine business practice argument.
Federal Circuit Rulings on Routine Business Practice
The Federal Circuit first discussed routine business evidence in In re Hall. The patent applicant in In re Hall argued that the Patent Office incorrectly deemed the document in question a printed publication because there was no evidence of a “specific date” that the document became publicly accessible. In upholding the PTAB’s decision, the Federal Circuit held that public accessibility does not require evidence establishing a “specific date” of cataloging and shelving before the critical date.
The Federal Circuit concluded that “competent evidence of the general library practice may be relied upon to establish an approximate time when a thesis became accessible.” Citing the Federal Rules of Evidence and seminal evidence treatises, the court observed that the “value of routine business practice to show the performance of a specific act has long been recognized.”
A number of statements from the librarian’s affidavits were noted as supporting the court’s finding of public accessibility. Specifically, in responding to an inquiry from the Patent Office requesting (i) the exact date of indexing and cataloging of the dissertation or (ii) the time such procedures normally take, the librarian declared:
The Library copies of the Foldi dissertation were sent to us by the faculty on November 4, 1977. Accordingly, the dissertation most probably was available for general use toward the beginning of the month of December, 1977.
Further, because the librarian’s affidavits “consistently maintain[ed]” a general library procedure of indexing, cataloging, and shelving to prove the thesis was available to the public before the critical date, this also weighed in favor of conferring printed publication status on the thesis. Significantly, the patentee did not offer any rebuttal evidence to challenge the librarian’s statements of routine business practice.
Two years later the Federal Circuit decided Constant. The Federal Circuit again determined that a document qualified as a printed publication based on routine business practice evidence alone. In Constant, the patentee argued that a specification sheet document was not a printed publication because there was no evidence that a member of the public received the document before the critical date. Citing In re Hall, the Federal Circuit noted that evidence of routine business practice can be sufficient to prove that a reference was publicly accessible before the critical date. Because it found that “Intel [had] presented extensive uncontroverted evidence of business practice” before the critical date, the Federal Circuit determined that the specification in Constant qualified as a printed publication.
PTAB’s Dueling Standards for Routine Business Practice Evidence
When evaluating routine business practice evidence, the PTAB has wavered to date by applying two different standards for proving public accessibility: Constant’s “extensive and uncontroverted evidence of business practice” and a lower “preponderance of the evidence” standard.
On Sept. 26, 2012, the PTAB decided Micron Tech. Inc. v. Rambus Inc., finding two documents did not qualify as printed publications because the evidence was “much more limited than the ‘extensive and uncontroverted evidence of business practice’” in Constant:
Based on the foregoing discussion, Micron’s reliance on Constant v. Advanced Micro-Devices, Inc., 848 F.2d 1560, 1568-69 (Fed. Cir. 1988) is misplaced. (See App. Br. 19-20.) In Constant, the court cited “extensive and uncontroverted evidence of business practice.” The evidence presented here is much more limited.
Specifically, in Micron, the PTAB found unpersuasive patent challenger Micron’s arguments that document titles associated with the proffered references — “SCI-22Aug88-doc1” and “SCI-5May89-doc77” — meant that the documents were available on the dates embedded within the titles. The PTAB found that Micron failed to provide enough evidence to overcome a witness’s testimony that “there may have been a delay of some couple of months” in the mailing of the documents. Moreover, the PTAB stated that Micron’s evidence fell short of showing general business practice, such as what the date nomenclature in the document titles typically signify or how the date in the document titles signify a mailing.
On July 31, 2013, in Ex Parte Rasmussen the PTAB initially phrased the question of whether the reference at issue was qualified as a printed publication to require a showing of public accessibility by a preponderance of the evidence. But when specifically addressing routine business practice evidence, the PTAB cited to Constant and found that the evidence was lacking because the testimony only related to a single document and its publication date. Thus, the PTAB determined that testimony regarding a single document was not “extensive uncontroverted evidence of routine business practice” as discussed in Constant.
On June 19, 2013, in Ex Parte Swearingen the PTAB again discussed routine business practice evidence, but made no mention of the “extensive uncontroverted evidence” language from Constant. Instead, the PTAB discussed the Federal Circuit’s In re Hall decision at length. Applying a preponderance of evidence standard, the PTAB found that the librarian’s testimony regarding local practice and policies of the library was sufficient to prove the document was publicly accessible.
Considerations for Prosecution and Post-Grant Proceedings
In light of these recent PTAB decisions, patentees should strongly consider contesting declarations of routine business practice, focusing on a challenger’s inability to fully explain certain procedures, inconsistencies within declarations and between multiple declarations, conflicting evidence, or problems with corroborating evidence. For example, the PTAB has found that the failure to provide a “corroborating mailing list” undermines an assertion of routine business practice. As another example, the PTAB has determined that where “[n]o adequate explanation appears as to the standard procedure behind the date nomenclatures,” documents cannot be considered printed publications.
For patent challengers, relying exclusively on routine business practice evidence to qualify a document as a printed publication poses the risk that the PTAB may apply the Constant court’s higher evidentiary standard. Having a specific date of public accessibility is ideal. Patent challengers should note, however, that “dates for internal use” within an organization do not establish an actual publication date, and thus do not necessarily constitute evidence of public accessibility. When routine business practice evidence is the only mechanism to establish accessibility, alternative proposed grounds of rejections that use different prior art references should be used.
All three PTAB decisions regarding routine business practice arose in the context of prosecution and inter partes re-examination proceedings. The PTAB’s use of Constant’s “extensive and uncontroverted evidence of business practice” standard seems justifiable in these proceedings because discovery into the truth of the statements made in declarations of routine business practice is not permitted. Conversely, application of the Constant standard makes less sense in post-grant proceedings, where discovery into declarations of routine business practice is available and the patent is not imbued with any presumption of validity. These issues will almost certainly require the PTAB to clarify its position in the near future.
 In re Lister, 582 F.3d 1307, 1311 (Fed. Cir. 2009) (quoting In re Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004)).
 M.P.E.P. § 2128 (citing In re Wyer, 655 F.2d 221 (C.C.P.A. 1981)).
 See M.P.E.P. § 2128.02 (discussing Constant v. Advanced Micro-Devices, Inc., 848 F.2d 1560, cert. denied, 988 U.S. 892 (1988)).
Micron Tech., Inc. v. Rambus, Inc., Appeal No. 2012-001639, 2012 WL 4483376 at *16 (B.P.A.I. Sept. 26, 2012); see also Ex Parte Rasmussen, Appeal No. 2011-007741, 2013 WL 3971698 at *4 (P.T.A.B. July 31, 2013) (emphasis added).
See Ex Parte Swearingen,, Appeal No. 2013-003931, 2013 WL 3807415 at *3 (P.T.A.B. June 19, 2013) (discussing In re Hall, 781 F.2d 897, 228 USPQ 453 (Fed. Cir. 1986)).
 In re Hall, 781 F.2d at 898-99.
See id. (emphasis in original).
 See id. at 899 (emphasis in original).
 See id.
 See id. at 897-98.
Id. at 898.
Id. at 899.
 See id. at 899-900.
 See Constant, 848 F.2d at 1568.
 Id. at 1569.
 Id. at 1568-69 (emphasis added).
Micron Tech., 2012 WL 4483376 at *16.
 See id.
 See Ex Parte Rasmussen, 2013 WL 3971698 at *3.
See id. at *4.
 See Ex Parte Swearingen, 2013 WL 3807415 at *2-3.
See id. at *3.
 See id.
Micron Tech., 2012 WL 4483376 at *16; see also Micron Tech., Inc. v. Rambus, Inc., Appeal No. 2012-001639, Decision on Request for Reh’g, 2013 WL 4496318 at *2 (P.T.A.B. Aug. 21, 2013).
See Micron Tech., 2012 WL 4483376 at *16.
See Ex Parte Rasmussen, 2013 WL 3971698 at *3.
See Abbott Labs. v. Cordis Corp., 710 F.3d 1318, 1328 (Fed. Cir. 2013) (finding that discovery is prohibited in inter partes reexamination proceedings).
See 35 U.S.C. § 316(a)(5).