On April 7, 2020, the Patent Trial and Appeal Board (“PTAB”) designated one decision as precedential and four decisions as informative, all relating to the topic of prior-art status. Overall, the precedential decision clarifies the different standards for establishing a reference as a printed publication in IPRs versus patent examination, and the informative decisions provide examples of factual scenarios meeting and failing to meet the “threshold showing” for printed-publication status at the IPR institution stage. A summary of each decision is below.
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Prior Art
The Continued Prior Art Accessibility Saga: Beware of “Bare Attorney Argument”
By Maria A. Stubbings on
Building on one of the running topics on our blog—what a Petitioner must do to demonstrate public accessibility of a printed publication (see, for example, posts from Dec. 27, 2019; Dec. 2, 2019; Nov. 13, 2018; and Sept. 25, 2018)—the Patent Trial and Appeal Board (“PTAB”) has once again addressed the issue and held that bare attorney argument cannot overcome objective evidence of a reference’s accessibility. A summary of the institution decision in this case was published on our blog on March 5, 2019. …
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PTAB states the “reasonable likelihood” standard applies to demonstrating public accessibility at the institution stage
By Emily J. Greb & Bryan D. Beel on
It has become a significant open question in inter partes review proceedings what a petitioner must do to establish a reference as a printed publication. In a decision designated Precedential on December 20, 2019 (Hulu, LLC v. Sound View Innovations, LLC, IPR2018-1039) the Patent Trial and Appeal Board (“the Board”) provided practitioners with guidance regarding “what is required for a petition to establish that an asserted reference qualifies as a ‘printed publication’ at the institution stage.” Paper 29 at 6. The decision held, inter alia, that at the institution stage the “reasonable likelihood” standard applies to printed publications, and that the inquiry, as during other stages of the proceedings, is based on the totality of the evidence. Id. at 14-17. …
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Challenges in Proving Up Publications as Prior Art During IPR
By Bryan D. Beel on
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]…
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Helsinn Update: The Supreme Court Preserves the Substance of the Pre-AIA On-Sale Bar
By Maria A. Stubbings on
We previously published a post on the Federal Circuit’s decision in Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA, Inc., and Helsinn’s subsequent petition for certiorari.
On January 22, 2019, the Supreme Court affirmed the Federal Circuit in a unanimous decision, holding that a commercial sale to a party who is required to keep the invention confidential can still constitute prior art …
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Federal Circuit Upholds PTAB Decision Finding Library Website’s Indexing and Search Capabilities Insufficient to Establish Public Accessibility
By Andrew T. Dufresne on
As we have reported in several recent posts, the PTAB often rigorously evaluates public accessibility when considering non-patent prior art. Disputes over accessibility are often pivotal because insufficient evidence of accessibility can disqualify a reference as a “printed publication” under § 102. The Federal Circuit recently expanded on the applicable standard for online publications in a case rooted in computer technology, but the decision provides relevant insights for life science practitioners as well.
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Federal Circuit again finds product catalog distributed at trade show to be “publicly accessible”
By Emily J. Greb on
The Federal Circuit recently held that a product catalog distributed at a trade show was “publicly accessible,” and therefore qualified as prior art. In Nobel Biocare Services AG, v. Instradent USA, Inc., decided on September 13, 2018, the Federal Circuit affirmed the Patent Trial and Appeal Board’s (“PTAB”) finding that a catalog distributed at the International Dental Show (“IDS”) Conference in Cologne, Germany was publicly accessible. The court’s decision in Nobel hinged largely on the testimony of two declarants, one who went to the conference (Zvi Chakir), and another who Chakir gave the catalog to upon his return (Yechiam Hantman). …
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Granting A Motion For Discovery, Board Bars Changes In Theory Of The Evidence
By Bryan D. Beel on
We wrote previously regarding Incyte Corp. v. Concert Pharms., Inc., IPR2017-01256, in which the Board reached different conclusions regarding the availability of two pieces of prior art, over a dissent by Judge Fitzpatrick. Regarding art referred to as the Concert Backgrounder, the Board’s earlier ruling found public accessibility where the Backgrounder was 1) identified on a cached WebCite page, 2) cited in an International Search Report for a patent application, and 3) used in a law review article that cited the WebCite page. In a new decision in the same case, the Board ruled on Petitioner’s motion for additional discovery regarding public availability of the Concert Backgrounder, granting the discovery in part. Interestingly, the Board declined to allow discovery that it viewed as changing the Petitioner’s theory of public availability of the art.
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Federal Circuit overturns PTAB: catalog distributed at a trade show found to be publicly available prior art
By Emily J. Greb on
On July 27, 2018, in GoPro, Inc., v. Contour IP Holdings LLC, the Federal Circuit overturned the Patent Trial and Appeal Board (“PTAB”) in its most recent decision on what constitutes publicly available prior art. In GoPro the Court held that a catalog distributed at a trade show open only to dealers was publicly available prior art.
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FDA Advisory Committee Materials Determined to be Publicly Available Prior Art
By Emily J. Greb on
On July 13, 2018, in Jazz Pharms., Inc. v. Amneal Pharms., LLC, (Case Nos. 2017-1617, -1673, -1674, -1675, -1676, -1677, -2075), the Federal Circuit affirmed the Patent Trial and Appeal Board’s (“PTAB”) holding that certain FDA advisory meeting minutes, transcripts, and slides were publicly available such that the materials constituted prior art. We have previously discussed the PTAB’s public availability jurisprudence in Coalition for Affordable Drugs VIII, LLC v. The Trustees of the University of Pennsylvania, IPR2015-01835 where the PTAB held a presentation given to investors was not prior art. …
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