Reproduced with permission from BNA’s Patent, Trademark & Copyright Journal, 91 PTCJ 1140. Copyright 姝2016
by The Bureau of National Affairs, Inc. (800-372-1033) http://www.bna.com
PATENTS
Printed Publications at the PTO
BYANANT SARASWAT AND DAVID L. CAVANAUGH
With the implementation of the America Invents
Act of 2011, inter partes review proceedings at
the Patent Trial and Appeal Board have become
a popular way to challenge the validity of a patent. The
types of information which may be used to challenge
validity are limited to ‘‘patents and printed publica-
tions.’’
1
Typically, when practitioners think of ‘‘printed
publications,’’ they think of articles in academic or in-
dustry journals. However, sometimes useful prior art
references are neither patents nor journal articles, but
another type of document. In such instances, a party
contemplating a validity challenge should consider
whether the document is a ‘‘printed publication’’ under
the statute.
This article surveys recent PTAB decisions which
provide an indication how the PTAB is evaluating the
status of a document as a printed publication. The ar-
ticle also provides guidance on what evidence the PTAB
has considered persuasive and what has been found
wanting.
Types of Alternative Documents That Have
Been Used in IPR Proceedings
Using patents or printed publications, such as journal
articles, to support unpatentability in an IPR unques-
tionably carries certain advantages. Patents and journal
articles are generally easy to search for via patent
search tools or library catalogs. Moreover, these docu-
ments (particularly patents and articles from widely cir-
culated journals) clearly meet the definition of a publi-
cation, and are seldom challenged on authenticity or
hearsay grounds.
However, sometimes important disclosures are made
in informal settings or in a less widely circulated me-
dium (e.g., message board) prior to dissemination in a
‘‘formal’’ document like a patent filing or journal ar-
ticle. In such situations, the use of the more informal
documents can allow a challenger to establish an earlier
date of disclosure, which can be desirable, even neces-
sary, for getting behind a challenged patent’s critical
date.
When challenging patents that relate to telecommu-
nications, for example, useful prior art can be found in
the archives of standards-setting bodies such as the In-
1
David Cavanaugh is a partner in Wilmer-
Hale’s Washington, D.C., office who has broad
legal experience in industry and private prac-
tice and provides clients with strategic,
business-focused counseling in the procure-
ment, management and exploitation of their
intellectual property. He has extensive experi-
ence in all aspects of intellectual property
practice, including IP litigation, patent pro-
curement, technology transfer and licensing,
and due diligence for corporate transactions.
Anant Sarawat is a counsel in WilmerHale’s
Boston office and represents companies at the
trial and appellate levels in intellectual prop-
erty cases involving technologies such as wire-
less communications, pharmaceuticals,
genomics, semiconductor fabrication, com-
puter architecture and data storage.
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