IP Newsflash

The Patent Trial and Appeal Board denied a petition to institute inter partes review, finding there was no reasonable likelihood that petitioners would prevail on their obviousness challenges. In rendering its decision, the PTAB rejected petitioners’ proposed claim construction as being contrary to plain meaning and being improperly grounded in irrelevant embodiments. The PTAB also declined to rely on statements concerning a device depicted in a video because those statements fell outside the ambit of prior art under 35 U.S.C. § 311(b). Finally, while the majority opinion declined to address the issue of whether the video itself was a printed publication, one judge found, in concurrence, that a publicly accessible video can qualify as a printed publication under the statute. More details regarding those rulings are provided below.

In an inter partes review, the Patent Trial and Appeal Board applied guidance from the U.S. Patent and Trademark Office and declined to consider an obviousness ground that was based on admissions about prior art in the specification of the challenged patent.

In an August 18 memorandum¹, the U.S. Patent and Trademark Office (USPTO) issued binding agency guidance on the proper role of “applicant admitted prior art” (AAPA) in inter partes review (IPR) proceedings. The memorandum clarified that AAPA, which generally consists of the applicant’s statements in a challenged patent, cannot serve as the sole reference in an invalidity ground because AAPA is not a “prior art patent or printed publication” under 35 U.S.C. § 311(b). AAPA may, however, be used to show “general knowledge” in the art at the time of the invention if it is asserted in combination with other, qualified prior art.