In IPR proceedings, a petitioner may only assert grounds of challenge that can be raised under 35 U.S.C. § 102 or 305 U.S.C. § 103 and only on the basis of prior art consisting of patents and printed publications. In PGR and CBM proceedings, a petitioner may also present challenges under 35 U.S.C. § 101 and 35 U.S.C. § 112. The following cases address these prior art requirements.
Sequenom, Inc. v. The Board of Trustees of the Leland Stanford Junior Univ., IPR2014-00337, Paper 11 (PTAB July 16, 2014). A provisional application does not qualify as 35 U.S.C. § 102(e) prior art in an IPR. All of the grounds of unpatentability presented in the petition were based on a provisional application, which petitioner argued was prior art under § 102(e). The Board disagreed and denied the petition. Two types of documents may be relied upon under § 102(e) to show that claims are unpatentable: (1) an application for a patent that is published under § 122(b), or (2) a patent granted on an application for patent. A provisional application does not meet either of these criteria. 35 U.S.C. § 122(b)(iii) provides that “[a]n application shall not be published if that application is…(iii) a provisional application filed under section 111(b) of this title.” Consequently, a provisional application is not an application for patent that is published under § 122(b). Further, a provisional application is not a patent.
NRT Tech. Corp. et al. v. Everi Payments, Inc., CBM2015-00167, Paper 14 (PTAB Jan. 22, 2016). A reference that is prior art under only 35 U.S.C. § 102(e) may not be asserted in a CBM review. AIA § 18(a)(1)(C).
Sawai USA, Inc. v. Nissan Chemical Industries, Ltd., IPR2015-01647, Paper 9 (PTAB Feb. 4, 2016). Petitioner relied on arguments made in an interference proceeding of a related patent to argue that patent owner disclaimed or otherwise lost the right to claim the features of the challenged claims. The Board indicated that interference estoppel cannot serve as the basis to challenge the patentability of claims in an IPR. Under § 311(b), a petitioner may rely only on a ground of unpatentability that could be raised under § 102 or § 103 and only on the basis of patents or printed publications. Interference estoppel does not meet these requirements.
Maxlinear, Inc. v. Cresta Tech. Corp., IPR2015-00594, Paper 90 (PTAB Aug. 15, 2016). A reference is not prior art under 35 U.S.C. § 102(e) unless it was created “by another.” A reviewing body “must look beyond the superficial fact that the references were issued to different inventive entities. What is significant is not merely the differences in the listed inventors, but whether the portions of the reference relied on as prior art, and the subject matter of the claims in question, represent the work of a common inventive entity.” Riverwood Int’l Corp. v. R.A. Jones & Co., 324 F.3d 1346, 1356 (Fed. Cir. 2013).