In IPR and CBM proceedings involving patents examined under
pre-America Invents Act (AIA) rules, a patent owner may seek to
disqualify a reference as prior art by demonstrating a date of
invention prior to the publication date of the reference (or filing
date, for a patent document). To "swear behind" a
reference in this manner, the patent owner must prove (1) a
conception and reduction to practice before the critical date of
the reference, or (2) a conception before the critical date
combined with diligence and reduction to practice after that date.
See Taurus IP, LLC v. DaimlerChrysler Corp., 726 F.3d
1306, 1323 (Fed. Cir. 2013). The option to swear behind a reference
is not available in Post Grant Review (PGR) proceedings, as these
proceedings only involve patents examined under the first inventor
to file provisions of the AIA.
To read more, visit our PTAB
Litigation Blog.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
