Patent Lawyer Blog
In its Institution Decision, the Board addressed whether Trevarthen, a bachelor’s thesis from the University of Wollongong, qualified as prior art against U.S. Patent No. 9,844,206 B2. The Board emphasized that “at the institution stage, the petition must identify, with particularity, evidence sufficient to establish a reasonable likelihood that the reference was publicly accessible before the critical date of the challenged patent.”
The Board found persuasive evidence that Trevarthen was publicly available through multiple channels. Notably, the thesis was published in the University of Wollongong’s Research Online digital archive, which “ensures that ‘a digital copy’ of each reference… published in the digital repository ‘is available universally on the Internet and located through search engines such as Google and Yahoo.'”
The decision highlighted corroborating evidence from the Internet Archive showing “Trevarthen was available on ‘Research Online on September 7 and 12, 2007, and March 22, 2008.'” The Board also found significant that download statistics indicated “Trevarthen was downloaded hundreds of times before September 2008.”
Particularly compelling was the thesis’s citation in an International Search Report dated March 18, 2008. The Board noted that “a patent examiner’s identification of a reference through a search for the purposes of locating prior art ‘is highly probative evidence of public accessibility.'”
While Patent Owner argued there was insufficient evidence of meaningful indexing, the Board cited precedent establishing that “indexing is not ‘a necessary condition for a reference to be publicly accessible’; it is but one among many factors that may bear on public accessibility.” The Board also found unconvincing Patent Owner’s expert’s inability to replicate a Google search identifying the thesis prior to the critical date.
This decision provides valuable guidance on how the PTAB evaluates public accessibility of academic works, particularly those available through university repositories. The Board’s analysis demonstrates that multiple forms of evidence can establish public accessibility, with particular weight given to documented retrievability through search engines and actual access by relevant persons in the field, particularly the listing of the reference in a patent examiner’s search report.
Administrative Patent Judge Andreas Baltatzis authored the decision, joined by Judges Sharon Fenick and Jamie T. Wisz. Smaxtec Inc. et al. v. ST Reproductive Technologies, LLC, Case No. IPR2024-00875, Paper 18 (PTAB Nov. 22, 2024).
The authors of www.PatentLawyerBlog.com are patent trial lawyers at Jeffer Mangels Butler & Mitchell LLP. For more information about this case, contact Greg Cordrey at 949.623.7236 or GCordrey@jmbm.com.