Court Holds Fact Finders May Compare Document Versions

Over the years, the Federal Circuit has faulted the PTAB for overly rigid printed publication analysis.  A recent Federal Circuit decision has provided further guidance on how the PTAB should determine what constitutes prior art in AIA trial proceedings, especially as it relates to the duties of a fact finder.
Continue Reading PTAB Faulted on Rigid Printed Publication Analysis

CAFC Emphasizes Flexibility of its Printed Publication Jurisprudence

Last week, I pointed out that the Federal Circuit faulted the Patent Trial & Appeal Board (PTAB) for its narrow public accessibility analysis in Medtronic, Inc. v. Barry. Given the de novo review of printed publication status at the Federal Circuit, it is an issue that is frequently challenged on appeal.

Last Friday the Court took another opportunity to apply its multi-factor analysis to a printed publication dispute in GoPro Inc., v. Cointour IP Holdings, LLC.  In GoPro, the Court once again emphasized that focusing on a single factor (expertise of the audience) to the exclusion of others is reversible error. In reversing the Board’s decision in GoPro, the Court emphasized (here) that the reasonable diligence standard is applied to those skilled in the art. And that, proof of actual dissemination is not required, only that a person of skill could have located the publication with reasonable diligence.

In still another recent case, the Court explained that a commonly emphasized factor at the PTAB, indexing/searchability, is not a requirement to prove a printed publication publicly accessible.
Continue Reading Publication Need not be Indexed/Searchable to be Prior Art

Best Practices for Presenting Prior Art

Join the PTAB for the final Boardside Chat webinar of 2017 today, Dec. 7 from noon-1 p.m. ET. The chat will discuss “Best Practices for Presenting Prior Art References and Proving a Document is a Printed Publication.”

PTAB Judges Lora Green and Brian McNamara will present and