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Swearing Behind: Overcoming Asserted Prior Art in PTAB Proceedings
Introduction
With the adoption of the America Invents Act (AIA) in 2011 and the accompanying change from a first-to-invent system to a first-to-file system, one might be tempted to conclude that first-to-invent concepts like prior conception and reasonable diligence are no longer relevant. But despite the passage of more than a decade since the enactment of the AIA, a significant number of patents with an effective filing date before March 16, 2013 remain in existence and will continue to be litigated under pre-AIA rules. (See, United States Patent and Trademark Office, Manual of Patent Examining Procedure (9th ed., rev. January 2024) (MPEP) §2159.) See also, Colleen V. Chien et al., “The AIA at Ten-How Much Do the Pre-AIA Prior Art Rules Still Matter?,” 35 Patently-O Patent Law Journal 1, 1 (2021) (reporting that approximately 90% of litigated patents fell under the pre-AIA system in 2020 versus 100% in 2013).
For such patents, patent owners may still be able to antedate or remove an asserted reference as prior art in Patent Trial and Appeal Board (PTAB or Board) proceeding by demonstrating an invention date prior to the effective date of the prior art or removing the prior art by demonstrating that the prior art described the inventor’s own work. See, MPEP §§715, 2132.01(I). Consequently, the legal standards and factual requirements for antedating and removing prior art will remain important for patent owners and petitioners alike to understand and consider, at least until the 20-year anniversary of the AIA’s enactment in 2033.
At a high level, antedating or removing a prior art reference requires the patent owner to demonstrate that the claimed invention is entitled to an earlier priority date than the prior art or that the prior art is the inventor’s own work, and therefore not the work “by another” as required under 35 U.S.C. §§102(a) and (e). See, MPEP §§715, 2132.01(I). Patent owners have the burden of production “to produce sufficient rebuttal evidence to prove entitlement to an earlier invention date.” Taurus IP, LLC v. DaimlerChrysler Corp., 726 F.3d 1306, 1322 (Fed. Cir. 2013); see, Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1379 (Fed. Cir. 2015) (“The burden of production may entail ‘producing additional evidence and presenting persuasive argument based on new evidence or evidence already of record.’”(quoting Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1327 (Fed. Cir. 2008)). To meet this burden, patent owners typically submit a combination of documentary evidence and declarations from relevant parties (e.g., inventors, corroborating witnesses) under 37 C.F.R. §1.131. (Affidavits and declarations under 37 C.F.R. §1.131 differ from those submitted under 37 C.F.R. §1.132, which are used to submit data in support of a patent application, typically to rebut obviousness rejections raised under 35 U.S.C. §103 by establishing unexpected results, commercial success, long-felt but unsolved needs, failure of others, skepticism of experts, etc.) However, due to complex legal and evidentiary standards, patent owners frequently face difficulties in successfully antedating and removing prior art.
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