Jones Day
The Patent Trial and Appeal Board (PTAB) denied institution in a inter partes review (“IPR”) after finding that the online store’s claim regarding when a particular product was “first made available” was not sufficient evidence to qualify as a printed publication. See Vectair Systems Inc. v. Fresh Products, Inc., No. IPR2024-00824, Paper 9 (P.T.A.B. Nov. 12, 2024).
On the 19th of April 2024, Vectair Systems Inc. (Vectair) filed a petition to IPR U.S. Patent no. Fresh Products, Inc. (“Fresh Products”) owns U.S. Patent No. 10,145,098 (the “‘098 patent”). Id., Paper 2. The ‘098 Patent discloses improved screens for urinals that are lighter, reduce unwanted splashing, and prevent large debris from entering the urinals. See id. Paper 9.
In its petition, Vectair argued the independent claims of ‘098 Patent lacked novelty, given a set Amazon listings which allegedly disclosed the invention. See id. The two Amazon listings cited depict Fresh Products’ Wave 3D urinal deodorizer screens, the product that appears to be disclosed in the ’098 Patent. See id. Exhibits 1005, 1006. The “Date[s] first available” listed on the listings is May 10, 2013, and September 3, 2013. Both dates are over a year before the priority date of the ‘098 patent, October 28, 2015. Id., paper 9.
Fresh Product rebutted the patent owner’s initial response by arguing that “Date[s] first available” cited in the Amazon listings was inaccurate. Id. In a declaration, the COO of Fresh Products stated that the Wave 3D Urinal Screens had been first publicly revealed at a tradeshow in November 2014 and that Fresh Products didn’t manufacture the Wave 3D Urinal Screens before March 2015, both within one year of the priority date of the ‘098 patent. If true, this statement would render the “Date[s] First Available” incorrect. If true, then the “Date
first available” would be incorrect. 35 U.S.C. SS 312. If Fresh Products wanted Amazon listings to prove the invalidity of the ‘098 Patent, then they would have to qualify as printed publications. See Vectair Systems, No. IPR2024-00824, Paper 9. Vectair was required to prove that Amazon listings were publically accessible at the date of disclosure in order for them to be considered printed publications. In its decision, the PTAB found that Vectair had not met its burden of proof. See id. The PTAB stated “
he first date a product appeared on a website. . . Id. (citing Next Step Grp., Inc. v. Deckers Outdoor Corp., No. IPR2024-00525, 2024 WL 3678413, at *5 (P.T.A.B. Aug. 6, 2024)). The rationale is that product listings do not remain static. Posters can update product listings periodically. See id. A petitioner who relies on the “first available” date of a product listing must provide additional proof that the listing is unchanged since that date. See id. If the petitioner fails to meet the burden of proof, they will not be able to prove their case at the institution level. See id.[t].
