A Printed Publication May Be More Than Just a Label

Posted by Phylis Hétié on Jul 17, 2018

Phylis Hétié

As we have written previously, the PTAB is very active in defining what is and is not a printed publication, and what the PTAB decides can make or break the IPR. A recent decision illustrates yet again the pitfalls that petitioners can face when attempting to prove that a reference is a printed publication. In IPR2016-01614, the petitioner cited a drug label as a printed publication, and though it had a copyright date, the PTAB wanted to see more than just what was on the face of the label.

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Topics: Printed Publications

For PTAB Declarations, Better to Fly Solo

Posted by John Strand on Jan 22, 2018

John Strand

Many things in life are better done with someone else: board games, dinner parties, road trips, riding tandem bicycles. However, according to the PTAB, there’s one particular area where it’s best to fly solo: two people should not provide one declaration in an IPR. In CSL Behring GMBH v. Shire Viropharma Inc. (IPR2017-01512), the PTAB denied institution in large part because the petitioner submitted a joint declaration to support that one of its references was a printed publication.

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Topics: Printed Publications

PTAB Continues to Draw a Hard Line on Printed Publications

Posted by Marie McKiernan on Dec 6, 2017

Marie McKiernan

As we discussed in May, PTAB decisions are a primary source for guidance regarding what constitutes a “printed publication” under § 102, because the PTAB faces the issue so frequently.  Since that post, the PTAB has continued to define the scope of what is or is not a printed publication. In most instances, where the issue was contested, the PTAB found the petitioner failed to prove a document was a printed publication.                                                                                                 

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Topics: Printed Publications

Going (Way)back to the Future of Printed Publications

Posted by Janet Tse on Jun 2, 2017

Janet Tse

IPR challenges must rely on prior art “patents or printed publications” as the basis for invalidating US patents. But what if a useful prior art reference is not a typical printed publication such as a scientific literature reference or industry journal report? We explored the subject of what constitutes a prior art printed publication in a recent post; now we’ll take a closer look at this issue as it relates to digital content. Two related IPR decisions, Coalition for Affordable Drugs VIII, LLC v. The Trustees of the University of Pennsylvania (IPR2015-01835, Paper 56 and IPR2015-01836, Paper 58), demonstrate that it can sometimes be challenging to prove that a reference qualifies as a printed publication … leaving the petitioner wishing they could hop in the DeLorean to go back and change the prior art.

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Topics: Kyle Bass, BioPharma, Printed Publications

Who Knows Whether Something Is a "Printed Publication?" The PTAB Knows!

Posted by Austin Steelman on May 12, 2017

Austin Steelman

As one of the key phrases in both the pre- and post-AIA versions of § 102, what constitutes a prior art “printed publication” is a significant question in many patent validity challenges. The Federal Circuit has wrestled with the question since the court was created in 1982. However, despite its much shorter history, the PTAB likely has issued more decisions addressing this question than any other forum. Given the volume of guidance from the PTAB, petitioners who ignore what the PTAB thinks a printed publication is do so at their own peril.

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Topics: Printed Publications

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.