Tagged with Prior Art

Printed Publication? Prove it: IPR Petitioners Bear Burden of Establishing Status as Prior Art

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

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House Committee Approves Innovation Act With Changes to AIA Post-Grant Proceedings

Author: C. Brandon Rash

On the heels of the Senate Judiciary Committee approving the PATENT Act, the House Judiciary Committee approved its own patent reform bill, known as the Innovation Act, on June 11, 2015. Several provisions in the Innovation Act impact AIA post-grant proceedings.

The Innovation Act includes several of the same changes regarding post-grant proceedings as the PATENT Act. For example, the Innovation Act changes the claim construction standard in AIA proceedings from the “broadest reasonable interpretation” standard to the Phillips standard used in district courts, and requires the USPTO to consider any prior district court constructions. The Act also allows the patent owner to submit new testimonial evidence with its preliminary response and allows the petitioner to file a reply to new issues raised in the preliminary response.

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Using Declarations to Invoke AIA First-Inventor-To-File Exceptions

Author: Stephanie M. Sanders
Editor: Maureen D. Queler

This chart illustrates how to use declarations under 37 C.F.R. § 1.130 to invoke an exception to 35 U.S.C. § 102(a) and have a reference disqualified as prior art. This information only applies to an America Invents Act (AIA) patent application, i.e., an application having an effective filing date on or after March 16, 2013.

Click here to read a full explanation of the chart above.


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