Building on one of the running topics on our blog—what a Petitioner must do to demonstrate public accessibility of a printed publication (see, for example, posts from Dec. 27, 2019; Dec. 2, 2019; Nov. 13, 2018; and Sept. 25, 2018)—the Patent Trial and Appeal Board (“PTAB”) has once again addressed the issue and held that bare attorney argument cannot overcome objective evidence of a reference’s accessibility. A summary of the institution decision in this case was published on our blog on March 5, 2019.
In Grünenthal GmbH v. Antecip Bioventures II LLC, the PTAB issued a final written decision finding certain challenged claims unpatentable. PGR2018-00092, Paper 25 at 2. Petitioner Grünenthal challenged the claims, which are directed to the use of neridronic acid for bone fractures, using several references, including an article published in the journal Rheumatology (“Varenna 2012”). Id. at 5–6. In finding certain claims unpatentable, the PTAB weighed the parties’ evidence (or lack thereof) and found that Varenna 2012 is a prior art printed publication. Id. at 14–19.
Grünenthal argued Varenna 2012 was prior art because the beginning of the publication plainly stated it was published in November 2012 (before the 2013 priority date), the article included a 2012 copyright date, and the article issued in a reputable journal. Id. at 16. A Grünenthal expert additionally noted that he had tweeted about the publication in early 2013, before the priority date. Id. Patent Owner Antecip countered that Grünenthal cited to no evidence to support the contention that the article is prior art, asserting that neither the article’s copyright notice nor Grünenthal’s expert’s testimony was sufficient to prove public accessibility. Id. at 15–18. The PTAB ultimately agreed with Grünenthal, reasoning that the information on the face of the publication was sufficient to establish that it constituted a printed publication—even without Grünenthal’s expert testimony. Id. at 16–19. The PTAB pointed to the copyright date and other indications that the article was published in 2012, such as statements of the exact publication date, journal page citations, and references to author contact information. Id. at 16–17. The PTAB recognized that Antecip’s challenge did not actually refute any of Grünenthal’s public accessibility evidence, but instead simply constituted attorney argument that Grünenthal’s evidence was insufficient. Id. at 17–19.
Ultimately, the PTAB’s analysis indicates that the prior art status inquiry remains intensely fact-driven. Because of its fact-driven nature, it is difficult to predict whether evidence put forth to support prior art status will be sufficient to a particular PTAB panel. Petitioners should therefore aim to bolster their prior art arguments with contextual evidence, declarations, and expert testimony when possible, and Patent Owners challenging prior art status should remember to challenge the sufficiency of this evidence with more than attorney argument.