In a final written decision in April 2017, the PTAB found that Petitioner did not satisfy its burden of proving claims of U.S. Patent No. 8,618,135 (“the ’135 patent”) were unpatentable in part because the PTAB found a slide deck presented to business persons was not prior art. In Coalition for Affordable Drugs VIII, LLC v. The Trustees of the University of Pennsylvania, IPR2015-01f835, Paper No. 56 (PTAB March 6, 2017) Petitioner argued that the ’135 patent was unpatentable over a combination of prior art that included a slide deck prepared by Evan Stein, M.D., Ph.D., for PPD, Inc. (“Stein”).
Stein was presented during Analyst Day at PPD, Inc. live and via webcast, and a hyperlink was distributed. Moreover, Stein was reported in Pink Sheet, a news webpage. In asserting Stein was prior art, Petitioner alleged Stein was “targeted to financial analysts, investors, and skilled artisans interested in drug discovery and development.” Petitioner also asserted that the presentation was publicized for weeks, and that skilled artisans would have taken great interest in it.
Applying factors enunciated in In re Kopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004)—(i) the length of time the display was exhibited; (ii) the expertise of the target audience; (iii) the existence (or lack thereof) of a reasonable expectation that the materials displayed would not be copied; and (iv) the simplicity or ease with which the material displayed would have been copied—the Board found, however, that Stein was not prior art because the presentation was directed towards business people, rather than skilled artisans.
In reaching its conclusion, the Board noted that the press release failed to offer any information related to the alleged technical components of the presentation and simply said that PPD, Inc. is a “leading global provider of discovery and development services and products for pharmaceutical, biotechnology and medical device companies.” Id. at 18. The Board acknowledged the report in Pink Sheet. The Board noted, however, that the report in the Pink Sheet was following the presentation and did not provide evidence that the target audience was an ordinary artisan. The Board thus concluded that “although the ordinary artisan may have been able to copy the presentation, and although there may have been an expectation that the materials could be copied, Petitioner [did] not provide any evidence establishing that the target audience would have been an ordinary artisan in the relevant field.” Id. at 19. While the conclusion of the Board’s final written decision—that Petitioner had not meet its burden of proving the claims unpatentable—depended on the rejection of all of Petitioner’s theories, the Board’s decision here informs Petitioners that the Board may take a careful look at less traditional pieces of prior art such as slide presentations.