November 27, 2014

Copyright Notice on Prior Art Establishes Priority Date in IPR

By Matthew L. Cutler, Principal

The PTAB weighed in on whether a copyright notice can be sufficient to demonstrate the priority date of a printed publication in FLIR Systems, Inc. v. Leak Surveys, Inc., IPR2014-00411, -434, -608, and -609.  In Flir, Petitioner relied in the petition upon a brochure that contained a copyright notice of 2002. Patent Owner argued that the printed publication was an “undated reference.” Order at 18. Given that the document contained the Copyright notice, however, the Board was persuaded that Petitioner had established a priority date of 2002, and allowed the document as prior art. Id. at 19.

Interestingly, the Board also considered another printed publication, a user guide, that failed to contain a publication date or copyright notice. The Board cited, however, to the testimony of a witness who stated that the user guide was distributed with a related product before the priority date of the subject patent. Further, the witness testified that the product and user guide was publicly available prior to the priority date of the patent-at-issue. Is this not an end-around the printed publication requirement by using a prior use to corroborate the publication? That is what a different PTAB panel found HERE when it decided that an undated document was not prior art because it contained no publication date and that panel decided that any testimony from a witness about a prior use of the underlying product disqualified the art as a prior use, not a printed publication.