PTAB Provides Guidelines on Swearing Behind References, PTAB Litigation Blog
In IPR and CBM proceedings involving patents examined under pre-America Invents Act (AIA) rules, a patent owner may seek to disqualify a reference as prior art by demonstrating a date of invention prior to the publication date of the reference (or filing date, for a patent document). To “swear behind” a reference in this manner, the patent owner must prove (1) a conception and reduction to practice before the critical date of the reference, or (2) a conception before the critical date combined with diligence and reduction to practice after that date. See Taurus IP, LLC v. DaimlerChrysler Corp., 726 F.3d 1306, 1323 (Fed. Cir. 2013). The option to swear behind a reference is not available in Post Grant Review (PGR) proceedings, as these proceedings only involve patents examined under the first inventor to file provisions of the AIA.
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