PTAB Finds Draft Technical Specifications Constitute Printed Publications

Mar 23, 2017

Reading Time : 2 min

In SRI Int’l, Inc. v. Internet Sec. Sys., Inc., the Federal Circuit held that a reference is publicly accessible “upon a satisfactory showing that such document has been disseminated or otherwise made available to the extent that persons interested in ordinary and skilled in the subject matter or art exercising reasonable diligence, can locate it.” 511 F.3d 1186, 1194 (Fed. Cir. 2008). To resolve the issue before it, the PTAB had to balance two factors for a printed publication to be considered public: indexing and public dissemination. Relying on Mass. Inst. of Tech. v. AB Fortia1 and In re Klopfenstein2, the Petitioner argued that public dissemination of the prior art at issue was enough to meet the public accessibility requirement. The Petitioner’s expert testified that drafts of 3GPP specifications to be discussed at meetings were handed out at the meetings to those in attendance. The draft specifications were also published on a file transfer protocol (FTP) service accessible to the general public without restriction, and 3GPP sent emails to participants when documents discussed during meetings were published. Based on the testimony from both parties’ experts, the PTAB found that the Petitioner’s prior art was distributed to at least a few dozen persons without any restriction.

The Patent Owner relied on SRI Int’l and focused on the indexing of draft specifications that were stored on 3GPP’s database. The Patent Owner argued that a person of ordinary skill would have to know the temporary document number and information about the meeting in order to find a document on the FTP site. The Patent Owner also argued that the Petitioner did not provide any evidence that the FTP site was indexed in a comprehensible manner. The PTAB rejected the Patent Owner’s argument. The PTAB found that “cataloging and indexing in a library or database is not required where there has been sufficient actual dissemination.” Because the documents at issue were physically disseminated, they were considered printed publications even if they were not easily searchable on 3GPP’s server.

LG Elecs., Inc. v. Core Wireless Licensing S.A.R.L., IPR2015-01986, Paper No. 34 (Mar. 16, 2017).


1 774 F.2d 1104, 1108-09 (Fed. Cir. 1985).

2 380 F.3d 1345, 1347 (Fed. Cir. 2004).

Share This Insight

Previous Entries

IP Newsflash

July 11, 2025

The Federal Circuit recently reversed a PTAB determination on remand that a patent was obvious over applicant admitted prior art (“AAPA”) in combination with prior art patents, holding that expressly designating AAPA as a “basis” for a ground is improper under 35 U.S.C. § 311(b). In doing so, the Court rejected the PTAB’s “blanket rule” that “AAPA used in combination with prior art patents or printed publications under § 311(b) is ipso facto not the basis or part of the basis of a ground.” Ultimately, while the case clarifies that expressly listing AAPA in an IPR ground is improper, the precise line between proper and improper uses of AAPA in other instances remains unclear.

...

Read More

IP Newsflash

July 1, 2025

In an appeal from an inter partes review, the Federal Circuit recently clarified that the enablement inquiry applied to prior art references in the context of an anticipation defense differs from the enablement inquiry applied when evaluating the claims of a patent.

...

Read More

IP Newsflash

June 26, 2025

The Northern District of Ohio denied a motion to compel the plaintiff to produce test results referenced in its initial disclosures and complaint. The court found that because the “test results are not facts but rather are opinions,” the information was protected as work product. Furthermore, because that testing would not be used as evidence in the litigation, the defendant was not prejudiced.

...

Read More

IP Newsflash

June 6, 2025

In a precedential opinion, the Federal Circuit definitively held that the Patent Trial and Appeal Board has jurisdiction over IPRs that concern expired patents.

...

Read More

IP Newsflash

June 6, 2025

In a patent infringement litigation in the U.S. District Court for the Eastern District of Texas, Judge Rodney Gilstrap denied a joint motion to stay the litigation pending resolution of inter partes review when it was uncertain that all defendants would be bound by the statutory estoppel provision of 35 U.S.C. § 315(e).

...

Read More

IP Newsflash

May 30, 2025

A district court recently dismissed a patent infringement complaint for improper venue under 28 U.S.C. § 1400(b), finding that the storage and distribution of products from an Amazon warehouse was not sufficient to establish that warehouse as a regular and established place of business in the district.

...

Read More

IP Newsflash

May 27, 2025

The Federal Circuit affirmed a District of Delaware finding of non-infringement in an ANDA litigation due to the patentee’s clear and unmistakable disavowal of claim scope during prosecution. Specifically, the court held that statements made during prosecution of a parent application before the asserted claims were allowed amounted to a prosecution disclaimer that extended to subsequent patents in the family. In reaching this conclusion, the court rejected an attempt by the patentee to resurrect the claim scope through a unilateral, self-serving statement made in later applications in the family.

...

Read More

IP Newsflash

May 13, 2025

The Federal Circuit recently affirmed a district court’s holding that patent term extension (PTE) for a reissued patent was properly based on the issue date of the original patent and not that of the reissued patent. The Federal Circuit concluded that, where both the original and reissued patents claimed a drug product under regulatory review, using the issue date of the original patent to calculate PTE comports with both the purpose of the Hatch-Waxman Act and the related statutory context.

...

Read More

© 2025 Akin Gump Strauss Hauer & Feld LLP. All rights reserved. Attorney advertising. This document is distributed for informational use only; it does not constitute legal advice and should not be used as such. Prior results do not guarantee a similar outcome. Akin is the practicing name of Akin Gump LLP, a New York limited liability partnership authorized and regulated by the Solicitors Regulation Authority under number 267321. A list of the partners is available for inspection at Eighth Floor, Ten Bishops Square, London E1 6EG. For more information about Akin Gump LLP, Akin Gump Strauss Hauer & Feld LLP and other associated entities under which the Akin Gump network operates worldwide, please see our Legal Notices page.