What Is Prior Art?

Admitted prior art unavailable in IPR (posted 02/10/22)

Section 311(b) of the Patent Act:

Scope. – A petitioner in an inter partes review may request to cancel as unpatentable 1 or more claims of a patent only on a ground that could be raised under section 102 or 103 and only on the basis of prior art consisting of patents or printed publications.

In Qualcomm Inc. v. Apple, Inc., the Federal Circuit agreed with Qualcomm that patent owner admissions cannot be used to challenge validity of a patent in an inter partes review and reversed the PTAB on this point. The court rejected Apple's argument that §311(b) permits “the use of any 'prior art'–including AAPA–that is contained in any patent or printed publication, regardless of whether the document itself is prior art, can be used as a basis for a challenge in inter partes review.” The court agreed with both Qualcomm and the PTO that “patents or printed publications” that form the “basis” of a ground for inter partes review must themselves be prior art to the challenged patent, and relied on Supreme Court precedent/dicta to support this conclusion.

Fed. Cir. reverses §112 indefiniteness rejection on basis of intrinsic record (posted 02/01/22)

In Nature Simulation Systems, Inc. v. Autodesk, Inc.,* a majority of a panel decision authored by Judge Newman holds that the district's “standard of unanswered questions” raised by the claim limitations, which required “that the questions are answered in the claim language, standing alone” is “not the correct standard of law, and is contrary to uniform precedent. Patent claims are viewed and understood in light of the specification, the prosecution history, and other relevant evidence, as 'would have allowed a skilled artisan to know the scope of the claimed invention with reasonable certainty'” (internal citations omitted).

*This opinion was modified and reissued on 10/17/22 following a petition for rehearing filed by Appellee. This blurb was updated to reflect the updated opinion.

Dissent: Judge Dyk dissented. Dyk argues that:

Judge Dyk dissented, stated that the 'claim language, standing alone' language was “quoted from Autodesk's expert declaration, appears nowhere in the district court's opinion, and forms no part of its decision,” and further, that “the expert himself did not apply an incorrect standard. In searching for a meaning for the term “modified Watson method,” the expert looked not just to the claim language itself, but also to the specification, including the very figures that the majority cites.”

Judge Dyk further explains:

The majority relies on the prosecution history as somehow providing clarity to the meaning of the claim language. The majority states that the prosecution history is “significant,” Maj. Op. 15, and implies that the district court erred when it “gave no weight to the prosecution history showing the resolution of indefiniteness by adding the designated technologic limitations to the claims,” Maj. Op. 17. But the majority does not identify anything in the prosecution history, whether statements by the applicant or by the examiner, that would illuminate the meaning of “modified Watson method” or the language “removing duplicate intersection points, identifying positions of end intersection points, and splitting portion of each triangle including an upper portion, a lower portion, and a middle portion.”

(Internal citations omitted).

PTAB precedential ruling requires evidence of availability (posted 01/08/20)

In Hulu LLC v. Sound View Innovations LLC, the PTAB issued a precedential ruling for printed publications such as books, at the institution stage, the petition must identify, with particularity, evidence sufficient to establish a reasonable likelihood that the reference was publicly accessible before the critical date.

User Tools