Articles Posted in PTAB

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In its Institution Decision, the Board addressed whether Trevarthen, a bachelor’s thesis from the University of Wollongong, qualified as prior art against U.S. Patent No. 9,844,206 B2. The Board emphasized that “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 of the challenged patent.”

The Board found persuasive evidence that Trevarthen was publicly available through multiple channels. Notably, the thesis was published in the University of Wollongong’s Research Online digital archive, which “ensures that ‘a digital copy’ of each reference… published in the digital repository ‘is available universally on the Internet and located through search engines such as Google and Yahoo.'”

The decision highlighted corroborating evidence from the Internet Archive showing “Trevarthen was available on ‘Research Online on September 7 and 12, 2007, and March 22, 2008.'” The Board also found significant that download statistics indicated “Trevarthen was downloaded hundreds of times before September 2008.”

Particularly compelling was the thesis’s citation in an International Search Report dated March 18, 2008. The Board noted that “a patent examiner’s identification of a reference through a search for the purposes of locating prior art ‘is highly probative evidence of public accessibility.'” Continue reading

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The PTAB’s decision provides important guidance on when online product listings can qualify as prior art, particularly focusing on the challenges of establishing publication dates for Amazon listings.

Key Legal Standard

The Board emphasized that for an inter partes review, petitioners can only challenge patentability “on the basis of prior art consisting of patents or printed publications.” The key test is whether the reference was “publicly accessible.” As the decision explains, “A reference will be considered publicly accessible if it was disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence can locate it.”

Amazon Listings as Evidence

The petitioner, Vectair Systems, attempted to use Amazon product listings for a urinal screen showing a “Date First Available” of May 10, 2013 as evidence of prior publication, preceding the challenged patent’s purported priority of November 5, 2014. However, the Board rejected this approach, citing previous decisions that explain why such dates are insufficient:

“[T]he date that a product was listed as first available on a website . . . is not sufficient evidence that the content of the listing, including the photographs depicted therein, were published at that time.”

The Board explained the practical reasoning behind this position:

  • Product listings may be updated over time
  • Photographs of products may change
  • A “first available” date doesn’t prove when specific content appeared

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In a significant patent ruling issued January 6, 2025, the Federal Circuit affirmed the Patent Trial and Appeal Board’s (PTAB) decisions in Laboratory Corporation of America Holdings v. Ravgen, Inc., Case Nos. IPR2021-00902 and -0154, upholding the validity of claims related to non-invasive fetal DNA testing methods. The case centered on whether there was sufficient motivation to combine prior art references in an obviousness challenge.

LabCorp had challenged Ravgen’s ‘277 patent through inter partes review, arguing that claims directed to analyzing cell-free fetal DNA (cffDNA) using cell lysis inhibitors would have been obvious by combining a 2001 Chiu article with either the Bianchi patent or Rao publication. The PTAB rejected these challenges, finding insufficient motivation to combine the references.

The Federal Circuit’s decision, authored by Judge Lourie, systematically dismantled LabCorp’s attempts to reframe factual determinations as legal errors. “Simply put, Labcorp’s ‘disagreement with the Board’s interpretations… does not amount to a demonstration that the Board somehow failed to use the proper analysis,'” the Court stated, citing Eli Lilly & Co. v. Teva Pharms. Int’l GmbH, 8 F.4th 1331, 1347 (Fed. Cir. 2021).

Central to the Board’s analysis was its finding that a skilled artisan would have been discouraged from combining the references because Bianchi’s paraformaldehyde would create unwanted gaps in cell membranes, potentially contaminating the sample with maternal DNA. The Board also noted concerns about formaldehyde’s potential to damage nucleic acids. Even a small amount of DNA leakage – as little as 1% – would have negatively affected the analysis of fetal cell-free DNA. Continue reading

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In a recent Patent Trial and Appeal Board (PTAB) decision, the Board denied institution of an inter partes review (IPR) in Cambridge Mobile Telematics, Inc. v. Sfara, Inc. (IPR2024-00966), highlighting the critical importance of consistent claim construction strategies in patent challenges.

The Core Dispute

The controversy centered on Cambridge Mobile’s approach to construing the claimed “component” terms in U.S. Patent No. 9,333,946 B2. The patent owner, Sfara, Inc., argued for denial based on Cambridge Mobile’s divergent claim construction positions between district court litigation and the IPR petition.

In district court proceedings, Cambridge Mobile advocated for means-plus-function construction under 35 U.S.C. § 112(f), contending the terms were indefinite. However, in their IPR petition, they simply argued for “plain and ordinary meaning” without explaining this shift in position or providing an alternative means-plus-function construction.

Regulatory Framework

The dispute brought Rule 104(b)(3) into sharp focus. This regulation requires IPR petitions to explicitly state how challenged claims should be construed. For means-plus-function claims, petitioners must identify specific portions of the specification describing corresponding structure for claimed functions.

The significance of this requirement is underscored in the USPTO’s Consolidated Trial Practice Guide, which warns that petitioners who fail to address § 112(f) construction “risk failing to satisfy the requirement of 37 C.F.R. § 42.104(b)(3).” Continue reading

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In a recent Patent Trial and Appeal Board (PTAB) decision, the particularity requirement emerged as a critical factor in determining whether to institute an inter partes review (IPR). The case, involving IKEA Supply AG’s challenge to Everlight Electronics’ LED patent, highlights how failing to meet this requirement can doom even technically meritorious patent challenges.

Understanding the Particularity Requirement

The particularity requirement, codified in 35 U.S.C. § 312(a)(3), demands that IPR petitions identify “with particularity, each claim challenged, the grounds on which the challenges to each claim are based, and the evidence that supports the grounds for challenge to each claim.” As the Federal Circuit emphasized in Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., “It is of the utmost importance that petitioners in the IPR proceedings adhere to the requirement that the initial petition identify ‘with particularity’ the ‘evidence that supports the grounds for the challenge to each claim.'”

Why Particularity Matters

The requirement serves multiple purposes: it ensures efficient review, provides fair notice to patent owners, and prevents what some practitioners call “kitchen sink” petitions that overwhelm both the Board and respondents with numerous alternative theories. Continue reading