News & Analysis as of

Intellectual Property Protection Inter Partes Review (IPR) Proceeding Printed Publications

Jones Day

Petitioner’s Proof of Printed Publication Falls Short

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On February 6, 2025, the PTAB denied IPR institution because the Petitioner failed to establish that its key prior art reference qualified as a printed publication under Section 102(b). The PTAB’s decision hinged on whether...more

Jones Day

PTAB Reiterates Strict Evidentiary Standard for Printed Publications

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The PTAB denied institution of inter partes review (IPR) for a patent directed to geothermal technology. Fervo Energy Co. v. Ormat Techs. Inc., IPR2014-00665, Paper 18 (PTAB Sept. 18, 2024). The claimed invention related to...more

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PTAB Deems Rule Set File A Printed Publication

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The Patent Trial and Appeal Board (PTAB) in an inter partes review: Keysight Technologies, Inc. and Palo Alto Networks, Inc. v. Centripetal Networks, LLC found a rule set file used by a network security program to be a...more

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Petitioners Beware: Screenshots Showing Product May Not Qualify as Printed Publication

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In a recent decision, the PTAB determined that images of products offered for sale via online retailers, such as Amazon, did not alone qualify as printed publications—even if the images showed the product and the date it was...more

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Availability of Document on Government Website Insufficient for Institution

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In denying inter partes review in OBM, Inc. & Cholla Energy LLC v. Lancium LLC, the PTAB again made clear that “technical availability” of a reference is not enough to establish it is a printed publication. Here, the PTAB...more

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Federal Circuit Slices PTAB’s Printed Publication Finding

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Recently, the Court of Appeals for the Federal Circuit reversed one and vacated another Patent Trial and Appeal Board (“PTAB”) final written decision in which the PTAB determined that Weber Inc. (“Weber”) failed to...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

[Webinar] Developments in IPR Estoppel - December 5th, 1:00 pm - 2:00 pm EST

Director Jason A. Fitzsimmons and Counsel Richard A. Crudo will present the “Developments in IPR Estoppel” webinar on Tuesday, December 5, 2023, at 1:00 PM ET. The possibility of being estopped from asserting prior art in...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

2021 PTAB Year in Review: Analysis & Trends

[co-author: Jamie Dohopolski] Love it or hate it, ignore the USPTO Patent Trial and Appeal Board (PTAB) at your peril. The introduction of the PTAB as part of the America Invents Act over ten years ago has forever changed...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2021 Decisions

[co-author: Jamie Dohopolski] Last year, the continued global COVID-19 pandemic forced American courts to largely continue the procedures set in place in 2020. The U.S. Court of Appeals for the Federal Circuit was no...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

[Webinar] Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2021 Decisions - February 17th, 1:00 pm - 2:00 pm EST

Sterne, Kessler, Goldstein & Fox invites you to a webinar, "Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2021 Decisions," on Thursday, February 17, 2022. In conjunction with the release of the firm's...more

Jones Day

Printed Publications: Simply Existing Isn’t Enough

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When filing an IPR, petitioners should be careful not to take for granted one of the most fundamental aspects of challenging validity in this forum: Whether or not the relied upon references qualify as prior art.  Pursuant to...more

Haug Partners LLP

Federal Circuit Affirms Reference Documents Relied on in Samsung’s Petition Are Publicly Accessible

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On February 1, 2021, the Federal Circuit affirmed the Patent Trial and Appeal Board’s (“the Board”) invalidation of a video compression patent challenged by Samsung Electronics Co. (“Samsung”). The Court examined two issues:...more

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Listserv Working Group Reference Not A Printed Publication

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“Printed publication” under 35 U.S.C. § 102(b) is typically construed to encompass any type of document, as long as the document is “publicly accessible.” See, e.g., Medtronic, Inc. v. Barry, 891 F.3d 1368 (Fed. Cir. 2018)....more

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