Japanese patent publications are typically considered to be fairly safe prior art references, as long as you prove up authenticity and offer sufficient evidence of publication.
But it turns out that that second part—showing publication—is kind of important.
In F'real Foods LLC v. Hamilton Beach Brands, Inc., C.A. No. 16-41-CFC, Judge Connolly excluded a Japanese Patent Office Utility Model Publication on a motion in limine because the defendants failed to show that it was publicly accessible under § 102, based largely on defendants' own position in opposing IPR estoppel.
Couldn't Have Found Reference = No IPR Estoppel
The F'real defendants had previously filed an unsuccessful IPR, and plaintiff moved to exclude the reference based on IPR estoppel. The Court denied that motion based in part on two declarations filed by defendants stating that trained researchers could not find the reference despite "exhaustive" searches on various databases, meaning that the defendants could not "reasonably . . . have raised" the reference in the IPR under 35 U.S.C. § 315.
Couldn't Have Found Reference = Not Publicly Accessible?
But those declarations came back to bite defendants, because the Court then granted plaintiff's motion in limine to exclude the reference as not publicly available. Plaintiff essentially argued that if "trained researchers" couldn't find the reference with the best tools in 2014, then how could a person of skill in the art find it as of the priority date in 2002?
Judge Connolly seemed to agree. He rejected defendants' arguments to the contrary, including (among others) the argument that Japanese law requires publication of such patents, that the MPEP states that foreign patent documents are publicly available, and that the Federal Circuit and other courts have found foreign patents to be printed publications.
Defendants raised the issue again in post-trial motions (unsuccessfully), and included it in their notice of appeal last week. Update: This was docketed as C.A. No. 20-1996 at the Federal Circuit.
How Much Evidence Do You Really Need to Show Accessibility of a Foreign Patent Publication?
The appeal may lead to an interesting result, if the issue makes it into an opinion. Japan Patent Office publications (in various forms) and other foreign patent documents are frequently relied on, sometimes without a lot of additional evidence of publication.
Here, defendants appear to have offered essentially zero factual evidence of publication other than a citation to Japanese law and the date on the face of the patent.
They did not even point to the INID codes on the front of the patent or get into the WIPO standards. See Tokyo Electron Ltd. v. Daniel L. Flamm, Case IPR2017-01072, Paper No. 7, 2017 Pat. App. LEXIS 13067, at *24-27 (“the Japanese Patent Office's use of INID code 43 to describe the publication dates . . . provides sufficient evidence to conclude that both [references] constitute printed publications under § 102”).
Nor did defendants offer any apparent expert testimony or declarations about availability (at least, it wasn't cited), and their FRE 103 offer of proof regarding the reference says nothing about publication.
Defendants did note, at the PTC, that "this is the first time that an official publication from a foreign Patent Office has been declared publicly inaccessible."
In denying a stay of the permanent injunction, Judge Connolly noted that the appeal will be judged on an abuse of discretion standard:
My evidentiary ruling was consistent with sworn declarations and briefing filed by Defendants . . . , and will be reviewed under an abuse of discretion standard.
Since this is something that comes up a lot, it would be great if the Fed. Cir. ends up addressing exactly how much proof of publication is required for foreign patent office references (beyond the date on the face of the publication)—even if it's decided on an abuse of discretion standard. We'll have to wait and see.