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RESCHEDULED: Case Law Meeting - Hulu v. Sound View
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When: Friday, April 17, 2020
12:00 PM
Where: Video Conference
United States
Contact: Case Law Committee

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This event has been rescheduled from March 20 to April 17.

At this time of increasing and justified concern over COVID-19, we are all experiencing disruption to the usual ways of conducting business.


The Case Law Committee has decided it would be best in the short term to depart from our long standing practice of having in-person, round table discussions. We will be using a Zoom video conference to host this meeting.    Detailed instructions for connecting via the web or phone will be sent to registered participants at least 24 hours in advance


Therefore, please take note that the “location” for April 17 has changed from an in-person meeting at Wilmer Hale to a video conference. 


RESCHEDULED Date and Time: April 17, 2020, 12:00 pm

Location: Video conference - Call-in instructions to follow

Case presenters / moderators: James Lampert, Retired, WilmerHale

Yvonne Lee, WilmerHale


If you registered for the meeting originally scheduled for March 20, you do not have to re-register.






The Precedential Opinion Panel (“POP”) of the Patent Trial and Appeal Board (PTAB) at the United States Patent and Trademark Office recently granted a request by Petitioner, Hulu, LLC, for rehearing of a decision by the PTAB declining to institute inter partes review for failure to demonstrate that at least one of the challenged claims at issue was not patentable.  At issue during the rehearing was whether Petitioner had established that an asserted reference qualified as a “printed publication” under 35 U.S.C. §§ 102(a) or 102(b) in view of statutory provisions for institution of inter partes review.  The POP held in a twenty-two page slip opinion that “Petitioner has established a reasonable likelihood that the … reference is a printed publication that was publicly accessible before the critical date of the challenged patent,” and remanded the case back “to the original merits panel for further proceedings consistent with this opinion, including consideration of whether to institute a trial on the merits of the obviousness ground presented in the Petition.”


Among the issues that will be discussed are:


  1. Whether the standard for particularity in petitioning for inter partes review affects the timing and level of evidentiary proof that is required to establish that an asserted reference is a “printed publication” under §§ 102(a) and 102(b).  In other words, are “conventional markers” of publication sufficient to meet the standard for institution of inter partes review?
  2. Whether the statutory threshold for institution of an inter partes review, of a “reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition,” affects the level of evidentiary proof otherwise necessary under a standard of “clear and convincing evidence” to establish an asserted reference as a “printed publication”;
  3. In view of the fact there is a presumption in favor of institution of IPRs generally, should there be a presumption in favor of finding a reference to be a printed publication, as argued by some amici?  The POP held that there is no such presumption in favor of finding that a reference is a “printed publication” when deciding whether to institute an IPR.


Please review at least the POP opinion.  Links to the POP opinion and other relevant briefing can be found here: 

Case Law Committee Co-Chairs:

James Lampert, WilmerHale, Retired

Yvonne Lee, WilmerHale
Michelle Nyein, Wolf Greenfield

N. Scott Pierce, Foley Hoag LLP

David Thibodeau, VLP Law Group


Boston Patent Law Association
One Batterymarch Park, Suite 101
Quincy, MA 02169
Phone: 617.507.5570

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