PTAB Explains how to Determine Whether a Reference Qualifies as a “Printed Publication” Under 35 U.S.C. § 102(b)

Sep 7, 2016

Reading Time : 1 min

Apple filed a petition for inter partes review of a patent owned by VirnetX directed to secure methods for communicating over the Internet. Apple alleged that claims of VirnetX’s patent were obvious over a prior art patent in combination with a document identified as RFC 2401. VirnetX disputed whether RFC 2401 qualified as a printed publication as of the date identified on the face of the document and whether it was publicly accessible as of that date.

Apple relied on an expert declaration to explain what an RFC is and why RFCs meet the definition of printed publications. Apple’s expert testified that RFCs are documents that are prepared and distributed by the Internet Engineering Task Force, and each RFC relates to an Internet standards-related specification. Apple’s expert also opined that each RFC contains a date on its cover page that reflects the date that the document was released to the public.

In challenging RFC 2401, VirnetX attempted to analogize the document to a thesis with a date stamped on a cover page and a notation that the thesis was “approved for public release; distribution unlimited.” Prior PTAB decisions had found that, for such a document, absent any further indication that the document was actually released publicly, distributed to the public, or entered into a publicly accessible electronic database, the public accessibility of the document had not been established.

The PTAB credited Apple’s expert’s testimony establishing that RFCs are publicly disseminated and contain publication dates printed on their covers. The PTAB noted that RFC 2401 requested suggestions and improvements for an Internet standards protocol, “precisely the type of document whose very purpose is public disclosure,” and that the document was disseminated to persons of ordinary skill interested in computer networking security, which indicated that the document was “publically accessible.” In view of this evidence, Apple established that RFC 2401 qualified as a prior art printed publication under 35 U.S.C. § 102(b).

Apple Inc. v. VirnetX, Inc., IPR2015-00812, Final Written Decision, Paper No. 43 (PTAB Aug. 30, 2016).

Previous Entries

IP Newsflash

December 3, 2025

Federal Circuit: Patentee Acts as a Lexicographer to Impliedly Define Term by Consistently Referring to Feature with Interchangeable Language

The Federal Circuit recently held that a patentee acted as its own lexicographer to define a claim term even though it did not explicitly define the term. Rather, because the patentee consistently and clearly used two terms interchangeably to describe the same structural feature and did so in all of the embodiments in which the feature appeared, the patentee impliedly gave the term its own, unique definition.

...

IP Newsflash

December 2, 2025

Federal Circuit: Priority Document that ‘Broadly Outlines’ Possible Structures Fails to Provide Adequate Written Description Support for Subgenus of Linkers in Antibody-Drug Conjugate

The Federal Circuit recently held an asserted patent was not entitled to its priority date because the priority application lacked written description support for the asserted claims. In so doing, the court explained that broad disclosures that do not provide reasonably specific support for narrower claims do not meet the written description requirement. The court also considered whether the inventor’s testimony showed they possessed the full scope of the claimed genus at the priority date or whether it was more likely the inventors first became aware of the claimed embodiments from public disclosures of the accused product.

...

IP Newsflash

December 1, 2025

District Court: Launch Date, Not ANDA Filing Used for Hypothetical Negotiation in ANDA Case

In a Hatch-Waxman case, the District of Delaware denied a motion for summary judgment seeking to apply the ANDA filing date as the date of the hypothetical negotiation used to calculate reasonable royalty damages. Instead, the court determined that the appropriate date to use for the hypothetical negotiation is the launch date.

...

IP Newsflash

November 17,2025

Pre-Suit Willfulness Sufficiently Pleaded Where Detailed Facts Support Defendant’s Involvement in Opposition Proceeding of Related Patent and Participation in Relevant Industry

The district of Delaware recently denied a defendant’s partial motion to dismiss pre-suit willful infringement from the litigation, finding instead that the allegations taken as a whole were sufficient to support pre-suit willfulness at the pleading stage. Specifically, the court found that the allegations as to the defendant’s involvement in a related foreign opposition proceeding and participation in the relevant industry were accompanied by detailed factual support that sufficiently pleaded willful infringement for the pre-suit period.

...

© 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.

PTAB Explains how to Determine Whether a Reference Qualifies as a “Printed Publication” Under 35 U.S.C. § 102(b)

Share This Insight

Categories

Previous Entries