As we noted previously on the blog (see here, here, here, and here), issues proving up prior art during inter partes review proceedings arise regularly at the PTAB.
Our colleagues, Miguel Bombach and Brandon White, reviewed the current state of PTAB rulings, and synthesized their findings in a short research paper, now available, entitled Inter Partes Review Practice: Challenges in Proving Up Publications as Prior Art. [PDF]
As Miguel and Brandon note, the issues discussed in their paper are timely and important, and they therefore offer both insight into the issues and practical strategies to address them:
When proving up prior art in inter partes review (IPR) patent challenges, patents and patent applications are easy in comparison to publications. The issues are far more complicated and unpredictable when working with books, journal articles, product manuals and other printed publications.
This article analyzes varying opinions from Patent Trial and Appeal Board panels, along with the concerns at play in Hulu, LLC v. Sound View Innovations, LLC, to help practitioners improve their strategies.
Please take a few minutes to download and review Miguel and Brandon’s paper. We hope that you will find their analysis both informative and useful for your practice.