July 1, 2015
Board Disqualifies Reference As Not Meeting Requirements of 102(e)
We are reminded once again, by the Board’s decision denying review in Cisco Systems, Inc. v. Constellation Techs., LLC, IPR2014-00914, that 102(b) art is better than 102(e) art. In Cisco, Petitioner relied on a reference (Riley) it asserted to be 102(e) prior art. In making that argument, Petitioner had the burden of convincing the Board that the Riley reference was support by the two provisional applications to which it claimed priority. Petitioner tried to meet that burden through expert declaration testimony.
The Board was not persuaded by the proffered testimony, which the Board found to be conclusory and thus entitled to little, if any, weight. Decision at 23. As a result, the earliest available priority date of the reference was after the priority date of the challenged patent. Thus, the Board denied review as to the grounds which included the Riley reference.
The lesson here, as is the case with many aspects of IPR practice, is that if you need to prove a point, be sure to include specific, detailed analysis.