Printed Publication as Prior Art: New PTAB Guidance, Practical Considerations for Patent Holders and Challengers

Recording of a 90-minute premium CLE webinar with Q&A


Conducted on Thursday, July 16, 2020

Recorded event now available

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Program Materials

The CLE webinar will provide an in-depth discussion for counsel on the current state of the law regarding when a non-patent prior art reference qualifies as a "printed publication" for purposes of an invalidity challenge. The panel will discuss recent Federal Circuit, district court, and PTAB decisions and the emerging guidance for assessing whether a reference is sufficiently "publicly accessible" to be considered a "printed publication" under 35 U.S.C. 102. The panel will also review strategic approaches for demonstrating or disputing that a reference qualifies as printed publication prior art.

Description

The question of what constitutes prior art in a printed publication is significant in many patent validity challenges. A patent claim will be invalid if the claimed invention was, among other things, "patented, [or] described in a printed publication ... before the effective filing date of the claimed invention." It must be demonstrated and supported by evidence that a reference qualifies as a printed publication.

The Patent Trial and Appeal Board (PTAB) designated as precedential the decision in Ex parte Grillo-López (Jan. 31, 2020). It also recently identified as informative portions of the rulings in three cases, Seabery North America Inc. v. Lincoln Global Inc. (2016), Argentum Pharma. v. Research Corp. Techn. Inc. (2016), and In-Depth Geophysical Inc. v. ConocoPhillips Co. (2019). In designating these cases, the PTAB provides guidance on what is needed to meet the burden to establish that a reference constitutes a printed publication. These decisions instruct counsel on the standards governing printed publications and what is required to demonstrate that a reference was publicly available and qualifies as prior art.

Listen as our authoritative panel of patent attorneys addresses the public accessibility standard and evidence relied upon by courts and other tribunals in considering whether a reference qualifies as "printed publication" prior art. The panel will also offer guidance for demonstrating (or arguing against) printed publication prior art.

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Outline

  1. Public accessibility standard
  2. Recent PTAB and federal court decisions
  3. Printed publication issues
  4. Documents stored in public/private libraries
    1. Conference proceedings
    2. Oral and slide presentations
    3. Websites, online texts or documents
    4. Patent file histories
    5. Copyright notice
    6. Video recordings/web video clips
    7. Others
  5. Guidance for demonstrating (or arguing against) printed publication prior art

Benefits

The panel will review these and other priority issues:

  • How is the court evaluating public accessibility standards and evidence? How are these decisions influencing federal courts and the PTAB?
  • What lessons can patent counsel draw from recent decisions when assessing print publications as prior art?
  • What role do "confidentiality expectations" or restrictions on dissemination play in the public accessibility analysis?

Faculty

Greb, Emily
Emily J. Greb

Partner
Perkins Coie

Ms. Greb focuses her practice on patent infringement litigation and post-grant review proceedings in front of the...  |  Read More

White, Brandon
Brandon M. White

Partner
Perkins Coie

Mr. White’s practice focuses on pharmaceutical patent and regulatory litigation under the Hatch-Waxman Act and...  |  Read More

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