131 Declaration That Was Successful in Prosecution Deemed Insufficient in Inter Partes Review

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The Board proved willing to overturn a previous patent examiner’s judgment in another type of issue in Iron Dome LLC v. E-Watch, Inc., IPR2014-00439, where, in instituting an inter partes review trial, the Board found that Patent Owner did not properly swear behind a prior art reference, despite the fact that, during earlier prosecution, the Patent Office found that the prior art was properly antedated.

The prior art at issue had an effective filing date of April 25, 1995 qualifying it as prior art under 35 U.S.C. §§ 102(a) and 102(e) because it was not issued or published more than one year prior to the effective filing date as the ‘871 patent, but the effective filing date was earlier than the effective filing date of the ‘871 patent. Id.

During the original prosecution of the patent-at-issue, the Examiner found that the inventor’s submitted declaration sufficiently antedated the prior art reference. Id at 6. The Board took a fresh look at the declaration in the inter partes review, however, and disagreed with the Examiner’s earlier determination. Id at 8. As such, the prior art was relevant in the IPR and the Board determined that there was a reasonable likelihood that the challenged claims were unpatentable in view of that art.

Patent Owner will, of course, have another opportunity with its Patent Owner Response to seek to antedate the prior art at issue, but in the meantime, this is another example of the Board’s willingness to reconsider issues that were purportedly decided during previous examination or reexamination.

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DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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