St. Louis patent litigator Matt Cutler recently spoke to Ian Lopez of Bloomberg Law about the new challenges patent applicants are facing to prove supposed prior art was not publically available.

The Patent Trial and Appeal Board ruled, in Ex parte Antonio J. Grillo-Lopez, that the Examiner was correct in denying Grillo-Lopez’s patent application for a lymphoma treatment because a meeting transcript from the Food and Drug Administration was prior art that made the invention obvious. This decision, coming to the PTAB from the examining division of the USPTO, stands in contrast to a decision from the PTAB, from an inter partes review, wherein the PTAB determined that the same FDA transcript was not prior art.

The decision was deemed precedential, cementing the need for applicants to provide “evidence or argument” to circumvent the examiner’s “prima facie case” that a reference could hold up as prior art.

The decision explained the differing burdens during examination and during a post grant proceeding. For example, in Hulu LLC v. Sound View Innovations LLC, the PTAB held that petitioners in Inter Partes Review proceedings are tasked with providing the evidence to support that a reference is prior art in an obviousness argument to invalidate a rival’s patent. In Grillo-Lopez, it is the patent owner who, during examination, must supply the evidence (or lack thereof) to demonstrate that a cited reference is not prior art.

As for the distinction between IPRs and Ex Parte Reviews, the PTAB supported its decision by holding that IPRs have “different legal frameworks and burdens for establishing a reference as prior art.” 

“It’s been a tumultuous two years for printed publications at the PTAB,” says Cutler. “A flurry of decisions from the Federal Circuit and the PTAB itself, however, is starting to create clarity and help foster more predictability as to what will or will not be deemed prior art.” 

For now, patent applicants involved in Ex Parte Reviews should consider using every tool at their disposal to conduct prior art searches, such as the USPTO’s own EAST system.

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