The Proof Is in the Priority: Director Squires Addresses Antedating and Prior-Art Qualification

Written institution opinions from Director Squires remain uncommon. But in two recent proceedings, the Director issued opinions addressing a shared threshold issue: whether an asserted reference could properly serve as prior art. One opinion considered whether Patent Owner had presented sufficient evidence of an earlier invention date, while the other considered whether Petitioner had established public accessibility before the patent’s priority date.

Medtronic, Inc. v. Moskowitz Family LLC, IPR2026-00162, Paper 25 (Director, Aug. 20, 2026)

In Medtronic, Inc. v. Moskowitz Family LLC, Director Squires issued a written opinion three months after institution to explain why trial was necessary to resolve a dispute over when a pre-AIA patent was invented.

Petitioner asserted that the disputed claims were either anticipated or obvious based on the prior art. Patent Owner argued that its claimed subject matter was conceived and reduced to practice prior to the prior art’s filing date. Petitioner rebutted this argument by asserting that Patent Owner relied only on the testimony of one named inventor, whom Petitioner should have the opportunity to depose, and failed to establish conception of certain claimed features.

Director Squires found that Petitioner had provided enough evidence on the preliminary record to call Patent Owner’s conception, diligence, and reduction to practice into question. Based on the evidence provided by Petitioner, the Director deemed the dispute to be sufficient to warrant trial and instituted the IPR.

Par Health, Inc. v. InfoRLife, S.A., PGR2026-00036, Paper 7 (Director, Aug. 20, 2026)

In Par Health, Inc. v. InfoRLife, S.A., Director Squires issued a written opinion to explain why Petitioner had not proven that an asserted reference qualified as prior art.

Petitioner attempted to establish that a data sheet for a ketamine product was prior art to the challenged patent. The data sheet was marked with a “date of revision” of June 15, 2021. Patent Owner argued that the data sheet did not qualify as prior art because the date only indicated when the document was revised, not when the document was published or made publicly available.

Director Squires agreed that Petitioner failed to establish that the data sheet qualified as prior art. Relying on Hulu, LLC v. Sound View Innovations, LLC,[1] the Director explained that petitioners must provide evidence sufficient to prove that it is more likely than not that a reference was publicly accessible before a patent’s priority date. Here, Director Squires reasoned that Petitioner’s reference to a “date of revision,” without further evidence of printed publication status, failed to prove that the data sheet was publicly accessible by the stated “date of revision,” thus failing to establish that the reference qualified as prior art.  

Endnotes

[1] Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 (PTAB Dec. 20, 2019) (precedential)