Keys To Successful Swear-Behind Attempts Before PTAB

By Jonathan Bowser, Christopher Cherry and Roger Lee (June 9, 2017, 1:04 PM EDT) -- For patents subject to pre-AIA 35 U.S.C. § 102, patent owners involved in post-grant challenges such as inter partes review before the Patent Trial and Appeal Board can disqualify an asserted reference by establishing an earlier date of invention before the critical date of the asserted reference, provided the reference does not constitute a statutory bar under § 102(b). In our previous Expert Analysis article, we explored common reasons why patent owners have generally been unsuccessful before the PTAB in swearing behind asserted references. The common reasons include insufficient corroboration of evidence, failing to establishing an earlier date of invention for all limitations of the challenged claims, insufficient evidence demonstrating diligence from conception through reduction to practice, and insufficiencies from relying on Rule 131 practice (37 C.F.R. § 1.131)....

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