by Marin Cionca and Iris Kim  

Two decisions by the Patent Trial and Appeal Board (PTAB, or Board) addressed how theses could be qualified as prior art, and the ways in which that qualification could be challenged.  GlobalFoundries U.S., Inc. et al. v. Zond, LLC, IPR2014-01086, Paper 36 (GlobalFoundries, Aug. 14, 2015), relating to U.S. patent number 7,147,759, involved the evaluation of a Russian language doctoral thesis Mozgrin, which had been catalogued at the Russian State Library.  

In this Final Decision, the Board addressed the issue of whether the Mozgrin thesis is prior art under 35 U.S.C. 102. A determination such as this one must be done on a case-by-case basis, by looking into the facts relating to the reference in question and its disclosure to the public. In re Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004). “To qualify as a prior art printed publication, the reference must have been disseminated or otherwise made accessible to persons interested and ordinarily skilled in the subject matter to which the document relates prior to the critical date. Kyocera Wireless Corp. v. Int’l Trade Comm’n, 545 F.3d 1340, 1350 (Fed. Cir. 2008).” Mozgrin is a doctoral thesis originally published in 1994, and GlobalFoundries, the Petitioner, provided a copy of the catalog entry for it at the Russian State Library along with a certified English translation. The thesis contained an imprint date of 1994 or at least 1995, reading, “Catalog of Dissertations in Russian (since 1995).” However, Zond, the Patent Owner, argued that this was insufficient evidence that Mozgrin was actually catalogued on that date.

The Board found GlobalFoundries to be persuasive, because although “evidence establishing a specific date of cataloging and shelving before the critical date would have been desirable, it is not required in a public accessibility determination. See Hall, 781 F.2d at 899” (GlobalFoundries, PTAB), the critical date being September 30, 2002. Since Zond was unable to give sufficient explanation or evidence otherwise, such as why there would exist a delay of seven years for cataloguing a thesis, the Board agreed with GlobalFoundries.  

Zond did also offer an argument that, even if Mozgrin had been catalogued, GlobalFoundries “would not have demonstrated that the thesis could have been obtained by any interested person outside of Russia or the countries under Russia’s control.” The Board called this argument “misplaced,” stating that there would have been “sufficient accessibility to interested persons exercising reasonable diligence.” The Board observed that Mozgrin “was cataloged and indexed in a meaningful way, by the author’s name, the IPR2014-01086 Patent 7,147,759 B2 44 title of the thesis (“High-Current Low-Pressure Quasi-Stationary Discharge in a Magnetic Field”), and the subject matter of the thesis (“Plasma Physics and Chemistry”)” (emphasis added).  

In contrast to this decision, the Board also made a decision relating to a thesis that had not been catalogued or indexed in a meaningful way. Friendfinder Networks Inc. v. WAG Acquisition, LLC, IPR2015-01033, Paper 8 (Friendfinder, Oct. 19, 2015) relates to U.S. patent number 8,327,011. The Petition provided Su, a thesis submitted to the Department of Computing and Information Science at Queens University in Ontario, Canada in September of 1998. The thesis bears a copyright notice of 1998, and the Petitioner asserted that Su was published and available at the National Library of Canada in 1999.  “However, Patent Owner contends that Petitioner has not met its burden to show when Su became publicly accessible and, therefore, Su has not been shown to be a prior art printed publication,” (Friendfinder, PTAB). This due in part to the Patent Owner’s argument that it is unclear whether Su was available beginning on the critical date of July 18, 2008, and unclear when Su was “accessible in a searchable or indexed manner, such that it could be located by persons interested and ordinarily skilled in the subject matter or art using reasonable diligence.”

Again, the Board referenced Kyocera Wireless, in making their determination of whether a reference is a printed publication.  In previous cases, a copyright notice has been used as a prima facie evidence of publication. However, such as in this case, “in the absence of further evidence, a copyright notice may not be determinative.” As such, the Petitioner acknowledged that Su was not published until 1999; therefore, the copyright notice posted on Su holds “no weight on the issue of public accessibility” (Friendfinder, PTAB). 

The Petitioner provided a “photograph of the microfiche copy of Su,” “a photograph of an envelope in which the microfiche is stored,” and an “index microfiche.” Unfortunately for the Petitioner, the envelope photograph displays only “Jan–Jul/Aug 1999 ISSN 0225-3216 Index A Authors Titles Series.” The Board stated that Su was only indexed by “rudimentary indexing,” of the author’s name and only the first word of the thesis title, “Continuous,” “which is the only indexing that the evidence suggests may have occurred before the priority date and does not suggest its relevance to the streaming media network transport problem addressed by the ’011 Patent” (Friendfinder, PTAB). 

The Board then concluded with a statement that “such indexing would not provide a meaningful pathway to a researcher who was not previously aware of the existence of the thesis and was searching by subject matter” (Friendfinder, PTAB, emphasis added).  These two decisions by the Board provide some guidelines for petitioners and patent owners alike. Providing a thesis as a reference may only be useful if one can also supply evidence of its availability, and that evidence should be focused around the critical date.

Challenging of that reference may be done by evaluating the institution’s policies for cataloguing of theses, how indexing is actually performed by those institutions, and whether an interested person of ordinary skill would be able to find that reference. If the indexing of a thesis is only done in a rudimentary fashion, as in the case of Su, that thesis may not be qualified as prior art.

PATENT and IP Law Blog

  • CIONCA IP - MC4/1/2023 5:21:45 PM

    UNICOLORS, INC. v. H&M HENNES & MAURITZ L. P. – A Synopsis of a Copyright Infringement Case

    More

  • CIONCA IP - MC1/14/2023 2:21:06 PM

    Broad specification or broad claims in a patent application?

    More

  • CIONCA IP - EC12/23/2022 9:28:33 PM

    Is Mariah Carey the “Queen of Christmas”?

    More

  • CIONCA IP - MC10/7/2022 9:33:56 PM

    Rejection of Invention or Rejection of Patent Claims?

    More

  • CIONCA IP (MC)7/13/2022 5:27:56 PM

    Who is the owner of the trademark? Priority and Senior User Disputes

    More

  • CIONCA IP TEAM (SE)5/6/2022 5:19:00 PM

    Documentarian

    More

  • CIONCA IP TEAM (SE)4/29/2022 4:56:42 PM

    An Apple from the Apple Tree

    More

  • CIONCA IP TEAM (SE)4/22/2022 4:44:26 PM

    Electrochemiluminescence

    More

  • CIONCA IP TEAM (SE)4/8/2022 4:51:08 PM

    Gametime

    More

  • CIONCA IP TEAM (BS)4/1/2022 5:05:16 PM

    Screentime

    More

  • CIONCA IP TEAM (SE)3/25/2022 4:58:23 PM

    Internet Protocol Addresses

    More

  • CIONCA IP TEAM (BS)3/16/2022 5:00:54 PM

    We TINK It Should Be Protected

    More

  • CIONCA IP TEAM (SE)3/4/2022 4:54:18 PM

    Tinker Bell

    More

  • CIONCA IP TEAM (SE)2/25/2022 5:01:34 PM

    Computer Memory

    More

  • CIONCA IP TEAM (SE)2/18/2022 4:22:47 PM

    Machine or Transformation

    More

  • CIONCA IP TEAM (SE)2/11/2022 4:52:28 PM

    Air Force 1

    More

  • CIONCA IP TEAM (SE)1/14/2022 4:52:22 PM

    Fees and more Fees?

    More

  • CIONCA IP TEAM (SE)12/17/2021 4:51:21 PM

    Royalty or Lowborn

    More

  • CIONCA IP TEAM (SE)12/10/2021 5:06:54 PM

    Short-Range Wireless Networks

    More

  • CIONCA IP TEAM (SE)12/3/2021 4:58:39 PM

    TIGHT or TITE

    More

  • CIONCA IP TEAM (SE)11/19/2021 4:57:10 PM

    TAG Your It!

    More

  • CIONCA IP TEAM (SE)11/12/2021 4:56:57 PM

    Medical Patents

    More

  • CIONCA IP TEAM (SE)11/5/2021 4:40:14 PM

    Authentic Army

    More

  • CIONCA IP TEAM (SE)10/29/2021 4:49:28 PM

    Scouting Trademarks

    More

  • CIONCA IP TEAM (SE)10/22/2021 4:10:03 PM

    Free Speech and Trademarks

    More

  • CIONCA IP TEAM (SE)10/15/2021 4:55:32 PM

    DNA of Patents

    More

  • CIONCA IP TEAM (SE)10/8/2021 5:02:03 PM

    Backyard Trademarks

    More

  • CIONCA IP TEAM (SE)10/1/2021 4:58:25 PM

    Take a seat and read about seats

    More

  • CIONCA IP TEAM (SE)9/24/2021 5:15:50 PM

    Let's take a ride on the Segway!

    More

  • CIONCA IP TEAM (SE)9/17/2021 4:57:53 PM

    An Apple off the Apple Tree

    More

  • CIONCA IP TEAM (SE)9/10/2021 4:59:08 PM

    VROOM VROOM VROOM

    More

  • CIONCA IP TEAM (SE)9/3/2021 4:56:24 PM

    On Copyrights of Annotations.

    More

  • CIONCA IP TEAM (SE)8/27/2021 4:55:40 PM

    Rejecting Trademark Contracts

    More

  • CIONCA IP TEAM (SE)8/20/2021 4:42:46 PM

    It's a Bratz Girl, in a Barbie World (Pt. 2)

    More

  • CIONCA IP TEAM (SE)8/13/2021 4:57:49 PM

    Personalized Medication

    More

  • CIONCA IP TEAM (SE)8/6/2021 4:39:04 PM

    It's a Bratz Girl, in a Barbie World

    More

  • CIONCA IP TEAM (SE)7/31/2021 3:21:56 AM

    Ice Cream, You Scream

    More

  • CIONCA IP TEAM (SE)7/23/2021 4:12:50 PM

    Cereal Killer

    More

  • CIONCA IP TEAM (SE)7/16/2021 5:00:45 PM

    Buy me a ring, darling

    More

  • CIONCA IP TEAM (SE)7/7/2021 2:52:33 PM

    Offensiveness vs Free Speech in Trademark Law

    More

  • CIONCA IP TEAM (SE)6/25/2021 4:45:12 PM

    Woof Woof - Trademark Law

    More

  • CIONCA IP TEAM (SE)6/18/2021 5:29:44 PM

    Forum Selection 101

    More

  • CIONCA IP TEAM (SE)6/11/2021 4:23:58 PM

    Willful v Innocent

    More

  • CIONCA IP TEAM (SE)5/17/2021 2:38:30 PM

    Thryv, Inc. v. Click-To-Call Technologies, LP

    More

  • CIONCA IP TEAM (SE)4/23/2021 5:34:02 PM

    Oracle Patent Problems

    More

  • CIONCA IP TEAM (SE)4/5/2021 5:38:23 PM

    Blockchain and the Expanding US Patent Landscape

    More

  • CIONCA IP TEAM (MC)3/24/2021 2:19:11 PM

    Invention and Art Analogy

    More

  • CIONCA IP TEAM (BR)1/19/2021 4:57:54 PM

    QuikTrip West, Inc. v. Weigel Stores, Inc.

    More

  • CIONCA IP TEAM (AP)12/7/2020 4:06:28 PM

    St Jude Medical LLC v Snyders Heart Valve LLC

    More

  • CIONCA IP TEAM (SE)12/1/2020 5:07:58 PM

    Allen v. Cooper, Governor of North Carolina

    More

  • CIONCA IP TEAM (JM)10/8/2020 2:57:24 PM

    Royal Crown Company Inc., Dr. Pepper/Seven Up Inc., v The Coca-Cola Company

    More

  • CIONCA IP TEAM (SG)10/6/2020 2:42:35 PM

    Apple, Inc., v. Voip-Pal.com, Inc.: Sanction Orders and Obviousness

    More

  • CIONCA IP Team (SE)9/16/2020 4:21:45 PM

    CIONCA IP Launches New Online Patent Website

    More

  • CIONCA IP Team9/15/2020 5:11:49 PM

    Comparing Apples to Apples: TTAB on In re Horizon Group USA, Inc.

    More

  • CIONCA IP Team9/3/2020 4:30:41 PM

    D2 Holdings v. House of Cards

    More

  • CIONCA IP Team8/31/2020 12:09:17 PM

    Blackbird Tech LLC, DBA Blackbird Technologies, v. Fitbit, Inc., Wahoo Fitness LLC: Obviousness

    More

  • CIONCA IP Team8/11/2020 11:56:24 AM

    Adidas AG v. Nike INC.

    More

  • CIONCA IP Team7/20/2020 7:40:21 PM

    Fitbit Inc. v. Valencell Inc.: Joint Parties in IPR Proceeding

    More

  • CIONCA IP Team7/14/2020 7:51:31 PM

    CIONCA IP Launches New Online Trademark Website

    More

  • CIONCA IP 5/19/2020 7:36:30 PM

    Uber Technologies, Inc. v. X One, Inc.: “Obvious to Try” Rationale

    More

  • Marin Cionca4/15/2020 4:41:43 PM

    The Day After COVID-19 Pandemic – Hope or Fear?

    More

  • CIONCA IP4/13/2020 9:33:36 PM

    Two of a Kind: TTAB on Shannon DeVivo v. Celeste Ortiz

    More

  • CIONCA IP3/16/2020 8:43:10 PM

    GS CleanTech Corporation v. Adkins Energy, LLC: Inequitable Conduct

    More

  • CIONCA IP3/10/2020 7:45:30 PM

    Koninklijke Philips N.V. v. Google LLC, Microsoft Corporation, Microsoft Mobile Inc.

    More

  • Marin Cionca2/9/2020 7:46:10 PM

    Analogous Prior Art or Not? A critical patent obviousness question

    More

  • CIONCA IP 1/15/2020 4:47:19 PM

    FOX Factory, Inc. v. SRAM, LLC: Presumption of Nexus

    More

  • CIONCA IP 1/9/2020 4:43:58 PM

    The Bigger Picture: TTAB’s Decision in In re James Haden, M.D., P.A.

    More

  • CIONCA IP 12/31/2019 4:29:41 PM

    The Chamberlain Group, INC. v. One World Technologies, INC.

    More

  • Marin Cionca12/9/2019 8:07:20 PM

    A “glove” approach to patent claim construction

    More

  • 11/15/2019 8:15:11 PM

    Liqwd, Inc. v. L’Oreal USA, Inc.: Objective Indicia and Copying

    More

  • CIONCA IP10/16/2019 1:28:13 PM

    To Use or Not to Use: The Statutory Period of Trademark Nonuse Prior to Presumed Abandonment

    More

  • CIONCA IP10/7/2019 5:44:50 PM

    A Decision in Henny Penny Corporation v. Frymaster LLC

    More

  • Marin Cionca9/27/2019 9:32:48 PM

    Can an Online Patent Attorney File My Patent?

    More

  • CIONCA Team Member9/4/2019 7:20:46 PM

    Guangdong Alison Hi-Tech Co. v. International Trade Commission: Objective Boundaries

    More

  • CIONCA Team Member8/19/2019 7:46:17 PM

    In re Yarnell Ice Cream, LLC: Trademark Descriptiveness and Acquired Distinction

    More

  • CIONCA Team Member8/5/2019 2:29:33 PM

    Is Speculation Enough Evidence for an Appeal?: General Electric Company v. United Technologies Corporation

    More

  • CIONCA Team Member7/5/2019 2:22:42 PM

    In re: Global IP Holdings LLC: Broadening Claims Through Reissue Applications

    More

  • CIONCA Team Member6/27/2019 7:41:52 PM

    Obviousness in a Single Prior Art Instance: Game and Technology Co., LTD., v. Activision Blizzard INC., Riot Games, INC.

    More

  • Marin Cionca6/11/2019 8:43:17 PM

    Can I Successfully License My Invention?

    More

  • CIONCA Team Member5/20/2019 8:25:57 PM

    PTAB Designates Cases as Precedential

    More

  • CIONCA Team Member5/7/2019 7:13:41 PM

    The Federal Circuit Defines a Technological Invention

    More

  • Marin Cionca4/17/2019 3:48:33 PM

    What Qualifies as Proper Use in Commerce Claim in a USPTO Trademark Application?

    More

  • CIONCA Team Member4/3/2019 7:25:37 PM

    The Patent Trial and Appeal Board (PTAB) Designates Three Decisions Precedential

    More

  • CIONCA Team Member3/21/2019 3:49:43 PM

    Defining Inherency: A Decision in Personal Web Technologies, LLC v. Apple, Inc.

    More

  • Marin Cionca3/1/2019 9:36:50 PM

    USPTO Director Andrei Iancu Visits Orange County!

    More

  • CIONCA Team Member2/19/2019 7:12:46 PM

    Revised Guidance by USPTO on Patent Subject Matter Eligibility and Examining Computer-Implemented Functional Claims

    More

  • CIONCA Team Member2/5/2019 7:22:27 PM

    TiVo Puts Tivoli on Pause: TTAB’s Decision in TiVo Brands LLC v. Tivoli, LLC

    More

  • Marin Cionca1/23/2019 9:45:30 PM

    Patent Law Alert: All Sales of the Invention, Including Secret Sales May Invalidate a Patent

    More

  • CIONCA Team Member1/4/2019 4:12:21 PM

    In re: Tropp: New Matter in a Continuation Can Be Relevant to Written Description Requirement

    More

  • CIONCA Team Member12/18/2018 6:12:48 PM

    Schlafly v. The Saint Louis Brewery: The Registration of Merely a Surname

    More

  • Marin Cionca12/8/2018 8:35:06 PM

    IP Assets - Procurement, Enforcement, Monetization

    More

  • CIONCA Team Member11/19/2018 1:07:51 PM

    The Appeals Process

    More

  • CIONCA Team Member10/16/2018 6:50:31 PM

    A Double-Edged Sword: Benefit of Priority or Longer Patent Term

    More

  • Marin Cionca10/1/2018 7:42:12 PM

    Can I Register a Color as a Trademark or Service Mark?

    More

  • CIONCA Team Member9/17/2018 4:33:20 PM

    Trademarks and Likelihood of Confusion: Federal Circuit’s Decision in In re: Detroit Athletic Co.

    More

  • Staff8/31/2018 7:26:58 PM

    Patent Claim Interpretation By Federal Circuit's on Facebook's Contiguous Image Layout

    More

  • Staff8/16/2018 4:24:01 PM

    Correcting or Changing a Patent After Issue Through the Central Reexamination Unit

    More

  • Marin Cionca7/31/2018 6:50:05 PM

    My patent expired? Can I still sue for patent infringement?

    More

  • 7/3/2018 7:44:33 PM

    Impax Laboratories Inc. v Lannett Holdings Inc. on Claim Invalidation

    More

  • CIONCA IP5/17/2018 9:54:58 PM

    Marin Cionca Presents at OCIPLA May 2018 Luncheon

    More

  • 5/4/2018 7:37:51 PM

    The Hague System for Protection of International Designs

    More

  • CIONCA Staff4/20/2018 5:25:25 PM

    USPTO Changes Examination Procedure Pertaining to Subject Matter Eligibility in View of Berkheimer v. HP, Inc.

    More

  • CIONCA Staff4/13/2018 9:10:04 PM

    It Take Two to Tango: Knowles v. Iancu, a Standing Dispute in a PTAB Decision

    More

  • 3/20/2018 12:50:05 PM

    Andrei Iancu - New Director of the USPTO

    More

  • 3/8/2018 1:25:46 PM

    Proceed with Caution: Consider Carefully when Narrowing Claims for Allowance

    More

  • CIONCA Team2/16/2018 4:07:48 PM

    Fashion and Intellectual Property

    More

  • CIONCA Team1/17/2018 8:12:06 PM

    A Fork in the Road: Production or Protection?

    More

  • 1/2/2018 7:47:09 PM

    The Lanham Act: Disparagement Provision Violates the First Amendment

    More

  • 12/26/2017 6:04:25 PM

    CIONCA Sets Foot in San Francisco

    More

  • 12/1/2017 8:01:27 PM

    An Introduction to Patent Cooperation Treaty Applications

    More

  • 11/17/2017 1:24:20 PM

    An Introduction to Patent Searches

    More

  • 11/10/2017 6:47:44 PM

    An Introduction to Design Patent Applications

    More

  • Staff11/3/2017 4:20:04 PM

    An Introduction to Provisional Patent Applications

    More

  • Staff9/28/2017 7:27:22 PM

    CIONCA

    More

  • staff9/27/2017 5:12:07 PM

    CIONCA - Patent and Trademark Law Attorney

    More

  • staff9/27/2017 5:00:12 PM

    Claim Indefiniteness During Patent Pre-Issuance: Define Your Invention, Not Just Your Audience

    More

  • staff9/15/2017 9:33:30 PM

    cionca

    More

  • CIONCA Staff8/20/2017 3:16:11 PM

    CIONCA on Patents: Think Twice Before Suing for Patent Infringement and Fight Back when Unreasonably Sued

    More

  • CIONCA - Staff8/9/2017 5:39:58 PM

    Patent Case Study: The Novelty Of An “Invention” Is NOT Enough To Make It Patentable

    More

  • CIONCA - Staff6/28/2017 8:26:07 PM

    Patent Law: Conditions Precedent May Expose Method Claim to Broad Interpretation During Prosecution

    More

  • CIONCA - Staff6/15/2017 5:32:14 PM

    Patent Law: Challenging the Patent Claim Definiteness Requirement

    More

  • Marin Cionca4/25/2017 9:48:49 PM

    Monetization of Patents: How to Make Money with Patents

    More

  • Marin Cionca2/21/2017 12:30:52 AM

    Software Patent Law Update: Federal Circuit Finds Graphical User Interface Patentable

    More

  • Marin Cionca9/15/2016 9:47:39 PM

    Patent Law Alert: Federal Circuit Opens Door for More Software Patents

    More

  • Marin Cionca9/6/2016 9:26:12 PM

    Patent Case Law: New Example of Software as Patentable Subject Matter

    More

  • Iris Kim, PhD6/1/2016 7:04:50 PM

    The Patent Trial and Appeal Board Designates Five More Decisions as Precedential

    More

  • Marin Cionca5/17/2016 8:57:23 PM

    Patent Claims Rejection Based on Inherency

    More

  • Iris Kim, PhD3/25/2016 8:34:14 PM

    Challenging a Claim’s Validity with Different Standards of Claim Construction

    More

  • I. Kim PhD2/26/2016 8:47:51 PM

    The U.S. Supreme Court Will Review Claim Construction Standards and Institution Decision Reviewability.

    More

  • Marin Cionca2/16/2016 6:34:53 PM

    In IPRs, patentees have to show that substitute patent claims are patentable

    More

  • M. Cionca and I. Kim2/4/2016 5:55:16 PM

    Software Inventions Are Still Patentable!

    More

  • Marin1/28/2016 9:15:16 PM

    The Patent Trial and Appeal Board Designates Two Decisions as Precedential

    More

  • Marin1/28/2016 9:10:56 PM

    How Unpredictability Can Affect Obviousness Challenges

    More

  • Marin11/19/2015 2:13:05 PM

    An Innovator’s Dilemma: Design or Utility Patent?

    More

  • Marin11/18/2015 7:31:35 PM

    When Is a Thesis Prior Art?

    More

  • Marin11/18/2015 6:15:40 PM

    Covered Business Method Claims Are Not Required to Particularly Target Financial Industry

    More

  • Marin11/18/2015 6:11:11 PM

    PTAB Decisions Give Examples of Patent Eligible Subject Matter

    More

Marin Cionca, Esq.

Registered Patent Attorney

USPTO Reg. No. 63899

VERIFY

CONTACT INFO

About CIONCA® IP Law firm: We are an Orange County, CA based boutique intellectual property firm with a focus on patent and trademark application, prosecution, opinion, licensing and IP enforcement services, offering its IP services primarily at flat fee rates. We serve local OC clients, as well as clients throughout US and international clients.

HOME               

Let’s talk!

We’d love to hear from you…we just need a little info
about your plans to take over the world!

P.S…Feel free to call us! (800)985-9198