Post Grant Review provides a breath of fresh air to Patent Office patentability challenge procedures by allowing prior sales and prior uses as eligible prior art. But, of course, PGR is only available for post-AIA patents and only within 9 months of their issue date. For inter partes review, only patents or printed publications can be used in patentability challenges. That has not stopped some petitioners from trying to shoehorn prior uses into the proceedings by disguising them as printed publications…without success.

For example, in A.R.M., Inc. v. Cottingham Agencies, Ltd., IPR2014-00671, involving US Pat. No. 7,666,103, in each of the challenge grounds, Petitioner relied on a prior art reference that related to the operation of an amusement park ride.  The petition and expert testimony both failed to identify the precise date of the reference and, instead, only indicated that the amusement park ride of the reference was built and operated well before the effective filing date of the ‘103 patent.  Decision at 6. The Board took issue with the Petitioner’s reliance on this testimony of “prior use” of the invention to establish a date of the printed publication.

Under 35 U.S.C. § 311(b), inter partes review is limited to challenges based only on patents or printed publications.  Prior use challenges are not available in inter partes review.  Id. at 7. In this proceeding, the Board found that Petitioner did not adequately show that the amusement park ride “reference” was in fact a printed publication, as no prior art date was asserted and the “reference” was referred to as a prior use in both the petition and expert testimony.  With all asserted grounds relying upon the disqualified reference, the Board denied the Petition across all grounds. Id. at 8.