PTAB Briefing Webinar Series: Evidence at the PTAB: New Precedent, Guidance for What Qualifies, and Proceeding Impacts

As a way of keeping in touch with our clients and keeping them informed on PTAB developments during the COVID-19 pandemic, the firm launched the PTAB Briefing Webinar Series. This informal and interactive series will address current PTAB issues from a practical perspective. The third webinar was Evidence at the PTAB: New Precedent, Guidance for What Qualifies, and Proceeding Impacts. The speakers included Counsel Christopher O’Brien and Associate David Roadcap, Ph.D. The webinar was moderated by Director Michael Specht.

The PTAB’s evolving evidentiary standards have often perplexed petitioners and patent owners. Historically, significant party effort has gone into establishing that non-patent literature, such as articles, textbooks, conference proceedings, and the like qualified as a printed publication. Often times this was a frustrating exercise in futility given the lack of reasonable certainty as to what a particular panel would require. This is absolutely critical as often times the best prior art is not a patent reference. Whether non-patent literature qualifies as a printed publication can mean the difference between institution and non-institution or claim cancellation and confirmation.

During our third webinar, we explored the evolution of evidentiary standards and addressed the current state of play, which the PTAB has begun to clarify. In particular, over the last several months, beginning with its decision in Hulu, LLC v. Sound View Innovations, the PTAB has designated a flurry of decisions as either precedential or informative to clarify what constitutes a printed publication. Most recently, on April 7, 2020, the PTAB designated four cases informative for their printed publication holdings. Earlier in the year, the PTAB designated Ex parte Grillo-Lopez as precedential, which contrasted the printed publication standards in the PTAB versus examination context. The webinar addressed these decisions and highlighted their importance to petitioners and patent owners.

To learn more about this topic and/or webinar, please contact the presenters.