August 27, 2015
Authored and Edited by Rachel L. Emsley; Jeffrey C. Totten; 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 Therapeutics, 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:
Without additional evidence, the Board could not conclude the posters had been published, meaning that the petitioner had not shown a reasonable likelihood of success, requiring denial of IPR institution.
In reaching this conclusion, the Board rejected the petitioner’s argument that an information disclosure statement (IDS) identifying dates the posters were presented established that the posters were publications. First, under Federal Circuit law, filing an IDS is not an admission that the information cited is material to patentability. Second, the IDS in question expressly stated that “[i]dentification of the listed references is not meant to be construed as an admission … that such references are available as ‘prior art’ against the subject application.”
The final written decision in Standard Innovation Corp. v LELO, Inc., IPR2014-00148, (Apr. 23, 2015) similarly found a petitioner’s evidence of publication wanting. The Board found a copyright date—“© 2005-2006”—on a product specification insufficient to show publication before February 2005. Further, even if copyrighted in 2005, the record did not show the document was available to those in the art, as § 102 requires of “printed publications.” The Board dismissed corroborating evidence, in the form of websites and search engine results, as inadmissible for lack of authentication and as hearsay.
As these examples illustrate, failing to prove publication can doom non-patent literature as prior art before the Board. Both petitioners and patent owners should be aware of the evidentiary snares surrounding “printed publications.”
Copyright © 2015 Finnegan, Henderson, Farabow, Garrett & Dunner, LLP.
DISCLAIMER: Although we wish to hear from you, information exchanged in this blog cannot and does not create an attorney-client relationship. Please do not post any information that you consider to be personal or confidential. If you wish for Finnegan, Henderson, Farabow, Garrett & Dunner, LLP to consider representing you, in order to establish an attorney-client relationship you must first enter a written representation agreement with Finnegan. Contact us for additional information. Additional disclaimer information.
10th Annual Georgia Asian Pacific American Bar Association Gala
May 29, 2024
Atlanta
INCONTESTABLE® Blog
April 19, 2024
Due to international data regulations, we’ve updated our privacy policy. Click here to read our privacy policy in full.
We use cookies on this website to provide you with the best user experience. By accepting cookies, you agree to our use of cookies. Please note that if you opt not to accept or if you disable cookies, the “Your Finnegan” feature on this website will be disabled as well. For more information on how we use cookies, please see our Privacy Policy.
Finnegan is thrilled to announce the launch of our new blog, Ad Law Buzz, devoted solely to breaking news, developments, trends, and analysis in advertising law.