PTAB Determines that a Patent’s File History is a Printed Publication, <i>PTAB Litigation Blog</i>

PTAB Determines that a Patent’s File History is a Printed Publication, PTAB Litigation Blog

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In a final written decision in Duodecad IT Services Luxembourg S.A.R.L, et al. v. WAG Acquisition, LLC (IPR2015-01036, paper 17), the PTAB took up the question of whether a patent’s file history qualifies as a "printed publication" under 35 U.S.C. 102(b) — and determined that it does. The petitioner, Duodecad IT Services, put forth an obviousness ground of unpatentability based upon U.S. Patent No. 5,822,524 (“Chen”) in view of the file history of the Chen patent. This might seem like an odd combination of references, but what happened during the prosecution of the Chen patent is that the prosecuting attorney overcame a prior art rejection by submitting a declaration under 37 CFR 1.131 to antedate (or "swear behind") the prior art. In so doing, the attorney included a document entitled "Quick Video Server" that described a commercial embodiment of Chen’s invention. The declaration also included a claim chart that mapped the Quick Video Server document to the pending claims of Chen’s application.

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