PRECEDENTIAL – Patent Appendix That Was Referenced, But Not Incorporated, Is Not Prior Art, PTAB Litigation Blog
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In Apple Inc. v. DoDots Licensing Sols. LLC, IPR2023-00939, Paper 12 (PTAB Jan. 3, 2024) (“Decision”), the PTAB clarified what is and what is not part of the prior art, and as such what can be considered by the PTAB in an IPR petition. More specifically, the PTAB denied Apple Inc.’s (“Petitioner’s”) request for inter partes review of U.S. Patent No. 8,510,407 B1 (“the ’407 Patent”), holding that certain appendices (primarily disclosing computer code), which were filed with the prior art patent application and referenced in the resulting patent, were not technically part of the patent as issued and could not be considered for the IPR analysis under 35 U.S.C. § 102(e).
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