Federal Circuit Clarifies Standard For Public Accessibility Of Printed Publications; Offers Claim Drafting Tips

The Federal Circuit has affirmed the final written decisions of a Patent Trial and Appeal Board (the "Board") panel in six related inter partes review (IPR) proceedings. The Board held in those proceedings that (1) a reference is not publicly accessible if it is not meaningfully indexed such that an interested artisan can locate it, and (2) lack of a transition word between the preamble and the body of a claim does not cause the preamble to limit the scope of a claim.

Activision Blizzard, Inc.; Electronic Arts Inc.; Take-Two Interactive Software, Inc.; 2k Sports, Inc.; and Rockstar Games, Inc. (collectively, "Blizzard") filed six IPR petitions against patents owned by Acceleration Bay, LLC ("Acceleration"). The patents-at-issue are directed to a broadcast technique in which a broadcast channel overlays a point-to-point communications network. The Board instituted IPR on each petition and rendered six final written decisions. In three of those decisions, the Board determined that a number of asserted claims were unpatentable. In the other three, the Board concluded that the Lin reference was not a printed publication under 35 U.S.C. § 102(a). Both parties appealed portions of the Board's final written decisions.

Blizzard appealed the Board's determination that Lin was not a printed publication under § 102(a) despite having been uploaded into an electronic technical reports library at the University of California, San Diego. The Board found that, despite some indexing and search functionality on the host website, Lin was not publicly accessible. The Board determined that an artisan might, at best, have located Lin "by skimming through potentially hundreds of titles in the same year, with most containing unrelated subject matter, or by viewing all titles in the database listed by author, when the authors were not particularly known." The Board also determined that the website's advanced search function failed to allow a user to search keywords for the author, title and abstract fields reliably. Based on these facts, the Board held that Blizzard had not shown that a skilled artisan would have located Lin; thus, Lin was not a printed publication.

The Federal Circuit agreed and held that the Board did not err in determining that Lin was not a printed publication. In affirming the Board, the Federal Circuit clarified that the test for public accessibility is not whether a reference has been indexed. Instead, the ultimate question is whether the...

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