Authors: Jeffrey C. Totten and Rachel L. Emsley
Editor: Maureen D. Queler
By statute, prior art in IPRs is limited to patents and printed publications. Proving a document was published, as well as the publication date, often requires evidence beyond the document’s face. As recent Patent Trial and Appeal Board decisions illustrate, petitioners ignore the need for this evidence at their own peril.
For example, decisions denying institution in Coalition for Affordable Drugs (ADROCA)LLC v. Acorda Theraputics, Inc., IPR2015-00720 and IPR2015-0817, (August 24, 2015) found the petitioner had not established that scientific posters were prior art publications under 35 U.S.C. § 102(b). It was undisputed that the posters had been displayed at scientific meetings. Nonetheless, looking to the Federal Circuit’s In re Klopfenstein decision, the Board noted the record lacked evidence establishing: Continue reading