PTAB: Statements About Device Not Disclosed in a Video Are Not Prior Art; Concurrence: Video Itself—If Publicly Available—Is Prior Art - JD Supra

[co-author: Lisa Hladik]

The Patent Trial and Appeal Board denied a petition to institute inter partes review, uncovering determination was nary tenable likelihood that petitioners would prevail connected their obviousness challenges. In rendering its decision, the PTAB rejected petitioners’ projected assertion operation arsenic being contrary to plain meaning and being improperly grounded successful irrelevant embodiments. The PTAB besides declined to trust connected statements concerning a instrumentality depicted successful a video due to the fact that those statements fell extracurricular the ambit of anterior creation nether 35 U.S.C. § 311(b). Finally, portion the bulk sentiment declined to code the contented of whether the video itself was a printed publication, 1 justice found, successful concurrence, that a publically accessible video tin suffice arsenic a printed work nether the statute. More details regarding those rulings are provided below.

Petitioners challenged respective claims directed to an apparatus and method for tegument treatments utilizing electrical stimulation arsenic being evident successful presumption of the anterior art. Petitioners and patent proprietor disagreed connected the operation of a assertion word directed to causing coagulation astir each electrode. The patent proprietor argued that petitioners’ projected operation improperly introduced further limitations into the claims, which was contrary to the plain and mean meaning. The PTAB agreed, uncovering that petitioners impermissibly attempted to work structures contiguous successful inapplicable embodiments into the connection of the challenged claims.

Petitioners grounded their obviousness arguments connected anterior creation consisting of a YouTube® video that described a handheld instrumentality with microneedling capabilities (the “INTRAcel device”). However, the petitioners’ obviousness statement was predicated connected screenshots from the video successful conjunction with different statements made astir the INTRAcel instrumentality that were not included successful the video itself. The patent proprietor argued that specified statements made extracurricular the video should beryllium disregarded. The PTAB agreed with the patent proprietor due to the fact that those statements were not disclosed successful the anterior creation and, thus, did not suffice arsenic a “printed publication” nether 35 U.S.C. § 311(b). The PTAB sheet bulk noted that adjacent if the INTRAcel instrumentality itself contained each of the required assertion limitations, this was not the due investigation for the obviousness inquiry. Rather, the contented that petitioners should person addressed was whether the printed work disclosed each limitation.

In a footnote, the bulk besides explained that it was unnecessary to code whether the video qualified arsenic a printed publication, arsenic that contented was not successful dispute. One of the judges successful the panel, successful a concurring opinion, took up this issue. He noted that the patent proprietor lone conceded that the video was a “publication,” alternatively than a printed publication—the second of which is disseminated successful a mode that is accessible to the nationalist funny successful the creation anterior to the captious day of the challenged patent. He besides examined well-established precedent holding that text, images, and audio of a video qualified arsenic a “printed publication.” The concurring justice further noted that the “printed publication” conception has evolved with an accent connected accessibility to the public—not whether it is “printed” successful the strictest consciousness of the word. Based connected the foregoing rationale, the justice concluded that if the video was publically accessible, it qualifies arsenic a printed work falling wrong the PTAB’s review.

Practice Tips:

While claims should beryllium work successful airy of the specification, the bulk sentiment serves arsenic a reminder that unrelated embodiments from the specification cannot beryllium utilized to adhd limitations into those claims. Furthermore, if relying connected videos of devices to enactment an obviousness argument, petitioners should beryllium mindful that carnal devices themselves are not anterior creation nether 35 U.S.C. § 311(b). The applicable enquiry is whether the printed work discloses the limitations of a challenged claim, not whether the instrumentality itself (as whitethorn beryllium established done non-prior creation grounds alone) contains the assertion limitations. Finally, petitioners seeking to trust connected non-patent lit arsenic anterior creation should enactment up grounds successful the petition demonstrating nationalist accessibility anterior to the captious date.