ARTICLE
1 November 2024

Citing Issued Patent Instead Of Pre-Grant Publication Almost Costs Petitioner

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Recently, the Patent Trial and Appeals Board ("PTAB") released a final written decision finding no challenged claims were unpatentable in Duration Media LLC v. Rich Media Club LLC, IPR2023-00953,
United States Intellectual Property

Recently, the Patent Trial and Appeals Board ("PTAB") released a final written decision finding no challenged claims were unpatentable in Duration Media LLC v. Rich Media Club LLC, IPR2023-00953, Paper 74 (August 19, 2024). Of importance, the petitioner unsuccessfully argued that an asserted prior art patent was not prior art under pre-AIA 102(b), despite the fact that its pre-grant publication would have been 102(b) art.

The PTAB instituted Duration Media LLC's ("Petitioner") petition challenging Rich Media Club LLC's ("Patent Owner") patent, U.S. Pat. No. 11,443,329 ("the '329 patent"), namely claims 1–10. The '329 patent titled "System And Method For Creation, Distribution And Tracking Of Advertising Via Electronic Networks," is directed towards methods of creating electronic advertisements. It was determined that the effective filing date for the '329 patent is April 4, 2009.

Petitioner asserted three prior art references, US 10,380,602 B2 ("Krassner"), US 7,725,502 B1 ("Badros"), and US 2008/0221982 A1 ("Harkins"), that it alleged constituted prior art under 35 U.S.C. § 102(b). Petitioner argued claims 1–10 would have been obvious over Krassner, Badros, and Harkins or in the alternative obvious over Badros and Harkins. A threshold issue became whether Krassner constituted prior art. Krassner is assigned to Patent Owner and is within the same family of the '329 patent. In the Institution Decision, the PTAB found that the Krassner patent submitted with the petition is not prior art under 35 U.S.C. § 102(b) because it did not issue more than one year prior to April 4, 2009. Krassner issued on August 13, 2019. The institution decision determined that Krassner only qualified under § 102(e), where, in contrast to a §102(b) reference, it could have been circumvented via § 103(c).

In a Motion to Submit Supplement Information after instituion, Petitioner attempted to swap the Krassner patent for its pre-grant publication US 2007/0265923 A1 ("the Krassner publication"). This printed publication, published on November 15, 2007, which resulted in the Krassner patent, was not asserted in the petition but would have been 102(b) prior art had it been. The motion to submit supplemental information was denied, as was a rehearing request on the issue.

In the final written decision, the PTAB stated that the petitioner fundamentally misunderstood 35 U.S.C. § 311(b) which states "[a] petitioner in an inter partes review may request to cancel as unpatentable 1 or more claims of a patent only on a ground that could be raised under section 102 or 103 and only on the basis of prior art consisting of patents or printed publication." (emphasis added). The PTAB found that Krassner and the Krassner publication were two separate references. Because the petitioner's request did not include the Krassner publication, it would not be considered in the PTAB's final written decision. The PTAB confirmed Krassner is not prior art under 35 U.S.C. § 102(b), only 102(e). Fortunately, for the petitioner on the issue, the panel found the patent owner's attempt to disqualify the Krassner patent from being prior art via § 103(c) to be unconvincing and deemed it prior art to be applied under § 102(e).

Unfortunately for the petitioner, the panel found that another of the asserted references failed to disclose a key limitation, finding in favor of the patent owner on all claims.

Takeaway:

Practitioners are reminded that pursuant to 35 U.S.C. § 311(b) a patent and it's associated printed publication are considered two separate prior art references. It is critical to consider which version of a patent documents should be used to limit the patent owner's available counters.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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