The State of “Printed Publication” Prior Art Case Law: Practical Considerations for Patent Holders and Patent Challengers

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


Conducted on Tuesday, October 23, 2018

Recorded event now available

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Program Materials

The CLE webinar will provide an in-depth discussion for counsel on the history and 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.

In Jazz Pharm. v. Amneal Pharm. (Fed. Cir. July 13, 2018), the Federal Circuit reiterated that whether a reference is a printed publication is a “case-by-case inquiry into the facts and circumstances surrounding the reference’s disclosure to members of the public.” The court affirmed the PTAB’s holding that the FDA advisory meeting minutes, transcripts and slides were sufficiently accessible to persons of ordinary skill in the art because the materials at issue were available through hyperlinks provided in a Notice in the Federal Register, among other things. Further, there was no reasonable expectation of confidentiality because the materials were distributed via public domain sources with no restrictions on access.

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
    1. Meeting the standard
    2. Klopfenstein factors
  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 to “confidentiality expectations” or restrictions on dissemination play in the public accessibility analysis?

Faculty

Angell, Jason
Jason S. Angell

Of Counsel
Hopkins & Carley

Mr. Angell is a trial lawyer and member of the firm’s Intellectual Property Practice. He has focused his career...  |  Read More

Greb, Emily
Emily J. Greb

Counsel
Perkins Coie

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

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