Explanations, Not Bare Citations, Needed To Establish Prior Art Date, PTAB Litigation Blog
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Although provisional applications can be used to secure an earlier date for 102(e), the petitioner bears the burden of production in establishing a prior art date for the asserted prior art. The Patent Trial and Appeal Board (“PTAB”) explored this nuance when Motorola Mobility LLC (“Motorola”) claimed a patent’s provisional application supported a later-filed patent (“Hunzinger”) in arguing that Hunzinger was prior art to Maxell, Ltd’s (“Maxell”) patent, U.S. 7,072,673. Motorola Mobility LLC v. Maxell, LTD, No. IPR2023-00110 (P.T.A.B. June 15, 2023) (“Decision”).
* Ernie Olesky was a Summer Associate in Jones Day’s Cleveland Office who assisted in the preparation of this blog.
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