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Printed Publications: Simply Existing Isn’t Enough, PTAB Litigation Blog

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When filing an IPR, petitioners should be careful not to take for granted one of the most fundamental aspects of challenging validity in this forum: Whether or not the relied upon references qualify as prior art.  Pursuant to 35 U.S.C. § 311, IPRs challenging patentability under either §§ 102 or 103 can only be based upon “prior art consisting of patents or printed publications.”  When petitioners rely on patents, establishing such references as prior art is straightforward.  When petitioners rely on printed publications, however, the Board must determine, at the institution stage, whether there is a “reasonable likelihood” that the alleged prior art reference(s) put forward by petitioners actually qualify as prior art.  Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential) (“[A]t the institution stage, the petition must identify, with particularity, evidence sufficient to establish a reasonable likelihood that the reference was publicly accessible before the critical date of the challenged patent and therefore that there is a reasonable likelihood that it qualifies as a printed publication.”).

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