Turhan Sarwar

Turhan Sarwar assists the firm in the areas of patent, trademark, and copyright litigation.

Recent Posts

The Federal Circuit Provides a Roadmap for Using Articles in IPR

Posted by Turhan Sarwar on Dec 20, 2019

Turhan Sarwar

(Co-authored by Stuart Duncan Smith)

Too often some challenger in IPR declines to use non-patent literature (or “NPL”), such as academic and trade journal articles, because of the effort and risk associated with establishing that the NPL is prior art. The Federal Circuit’s recent decision in Telefonaktiebolaget LM Ericsson V. TCL Corp. (No. 17-2381) illustrates why that strategy can be a mistake and provides guidance on how to use NPL effectively.

As we have discussed, the PTAB often imposes specific requirements for establishing that an NPL reference is a prior art printed publication. Unlike with patent prior art, where challengers can ordinarily rely on the dates on the document itself, challengers typically have to introduce evidence that NPL was publicly accessible early enough to make it prior art. Getting that evidence can be challenging, which is why some challengers shy away from using NPL at all.

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Topics: "Federal Circuit", IPR, PTAB, NPL, Non-Patent Literature

Don’t Regift Prior Art (or Arguments) to the PTAB

Posted by Turhan Sarwar on Nov 17, 2017

Turhan Sarwar

When challenging a patent through IPR, petitioners may be tempted to offer an improved version of an argument that had been offered by the examiner during prosecution, using similar prior art but shoring up potential shortcomings of what came before. However, three decisions that the Board recently designated as “informative” illustrate that a petitioner that isn’t careful when reusing arguments may not be successful.

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Topics: Prior Art

Is It a Printed Publication? It Depends…

Posted by Turhan Sarwar on Sep 11, 2015

Turhan Sarwar

Last week, we discussed a recent IPR decision in which the Board—at the institution stage—was unpersuaded by copyright notices and evidence from the “Wayback Machinesuggesting dates of publication. Today we look at another recent decision, in IPR2014-01086, in which the Board was notably more forgiving regarding the public availability issue—at the final decision stage.

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Topics: Petitioners, Patent Owners, Printed Publications

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This blog is intended to promote thought and debate on developing areas of the law. The opinions, commentary and characterizations of cases provided on this blog are not legal advice and do not represent the opinions of Wolf Greenfield or its clients.