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ARTICLE · 23 JANUARY 2020

POP: What Makes A Book A "Printed Publication"?

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A petition to institute an inter partes review (IPR) can only be filed on the basis of prior art consisting of patents and printed publications. But what makes a reference a "printed publication"?

United StatesIntellectual Property
Yang Li Ph.D. (Alex)
Yang Li Ph.D. (Alex)
Matthew Johnson
Matthew Johnson
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A petition to institute an inter partes review (IPR) can only be filed on the basis of prior art consisting of patents and printed publications. But what makes a reference a "printed publication"? On December 20, 2019, the Precedential Opinion Panel of the Patent Trial and Appeal Board issued a decision in Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039 (Paper 42), in which the Panel opined on what makes a textbook a "printed publication."

The patent-at-dispute between the parties is U.S. Patent No. 5,806,062, filed October 17, 1995, whose subject matter is directed to certain apparatus and methods related to computer databases. Patent Owner Sound View Innovations has asserted the patent in multiple infringement lawsuits against tech companies such as the petitioner Hulu, as well as Facebook, Twitter, and LinkedIn. In May 2018, Hulu filed an IPR petition before the Board to review the patent, in which it argued that the patent was obvious in view of

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