PTAB Conclusion That the Standard for Qualifying a Reference as a “Printed Publication” During Examination Differs From the Standard Applied in IPR Proceedings is Designated “Precedential”

April 28, 2020

On April 7, 2020, the PTAB designated  Ex parte Grillo-López, Appeal No. 2018-006082 (PTAB Jan. 31, 2020) (Decision on Request for Rehearing) precedential.  The applicant in Grillo-López sought rehearing of a prior PTAB decision affirming the Examiner’s obviousness rejection of pending claims based on a transcript of a Food & Drug Administration Biological Response Modifiers Advisory Committee Meeting.  That decision found that the transcript was made sufficiently accessible to the interested public so as to render it a “printed publication” within the meaning of 35 U.S.C. § 102(b). Dec. at 1-2.  The applicant argued in its rehearing request that the “printed publication” finding was contrary to the PTAB’s decision in at least two IPR proceedings that the same transcript was not a “printed publication.” Id. at 2.  The PTAB noted in its decision denying the requested relief that there are “different legal frameworks and burdens for establishing a reference as prior art in IPR proceedings and examination.” Id. at 3.  Distinguishing the two types of proceedings, the PTAB explained that an IPR petitioner must present evidence and arguments sufficient to show a reasonable likelihood that it will prevail in establishing the unpatentability of the challenged claims whereas a burden-shifting framework applies during examination, under which the Office can shift the burden to the applicant to come forward with rebuttal evidence or argument to overcome a prima facie case. Id. at 2-3.  The PTAB found no point of law or fact that it overlooked or misapprehended in reaching its decision and reaffirmed its finding that, in view of the applicable framework, the Examiner sufficiently established that the transcript is a “printed publication.” Id. at 3-8.