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In general, any disclosure that is available to the public before the date of filing of the patent to be invalidated is considered prior art.

Also, even if a patent application is published after the filing date of the patent to be invalidated, but the published patent applications filing date is before the filing date of the patent in question, then the published patent application is considered to be a prior art.

While the Federal Circuit (CAFC) sits below the Supreme Court in the hierarchy of U. federal courts, patent cases only have the right of appeal to the Federal Circuit. Unless overruled by a Supreme Court case, Federal Circuit decisions can dictate the results of both patent prosecution and litigation as they are universally binding on all United States district courts and the United States Patent and Trademark Office.

authorize IPR petitioners to challenge a patent for lack of written description or indefiniteness under § 112. 318(a) says the Board can issue a final written decision with respect to the patentability.

Rather, the statute states that: the Patent Trial and Appeal Board shall issue a final written decision with respect to the patentability of any patent claim challenged by the petitioner and any new claim added under section 316(d).

, Judge Sally Medley asked counsel how the Board could confirm the patentability of a patent claim, if the claim is invalid under § 112: JUDGE MEDLEY: What if we get involved in the trial and we determine, “Hey, we can’t figure out what these claims mean.” .

, the Board noted that two challenged claims failed to comply with 112 ¶ 4 (requiring dependent claims “contain a reference to a claim previously set forth”). further limit the subject matter of the claim from which they depend.” IPR2013-00172, No. This generally provides some insight into what the examiner felt was patentable and what concessions or representations were made by the applicant.Once one has determined the degree of relevance of the prior art cited by the examiner, one may determine what might be sought through searching for prior art which would be more relevant to the issue of patentability and validity.Additionally, invalidation/validation searches may also be considered before seeking license for a patent, and in evaluating the strength and value of patent portfolio during mergers and acquisitions.Before performing an invalidation search, one has to first establish the priority date of the claims in the patent which needs to be invalidated.




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