PTAB: Data about the device not disclosed in a video is not prior art; Compatibility: The video itself – if publicly available – is considered prior art | Akin Gump Strauss Hauer & Feld LLP

[co-author: Lisa Hladik]

The Patent Trial and Appeals Board dismissed a petition to institute the case between parting review, there was no reasonable prospect that the petitioners would win in their apparent appeals. In issuing its decision, the PTAB rejected the construction of the claim proposed by the petitioners as inconsistent with simple meaning and incorrectly based on unrelated embodiments. PTAB also refused to rely on statements about a device captured on video because these statements fall outside the scope of prior art under 35 USC § 311(b). Finally, while the majority opinion refused to address the question of whether the video itself was a print publication, a judge found, by consensus, that a publicly available video could be considered a print publication by law. More details about these provisions are provided below.

The petitioners challenged several claims to a device and method for treating the skin using electrical stimulation as being obvious in light of the prior art. The petitioners and the patent owner disagreed on creating a claim term directed to cause coagulation around each electrode. The patent holder argued that the construction proposed by the petitioners incorrectly introduced additional limitations on the claims, which is contrary to the plain and simple meaning. The PTAB agreed, finding that the petitioners impermissibly attempted to read the structures found in inapplicable embodiments in the language of the objected claims.

The petitioners base their axiomatic arguments on a prior art consisting of a YouTube® video describing a handheld device with microneedling capabilities (“INTRAcel Device”). However, the petitioners’ axiomatic argument was based on screenshots from the video in conjunction with other statements made about the INTRAcel device that were not included in the video itself. The patent owner argued that such statements made outside of the video should be ignored. PTAB agreed with the patent owner because this data was not prior art disclosed, and therefore did not qualify as a “printed publication” under 35 USC § 311(b). The majority of the PTAB Committee noted that even if the INTRAcel device itself contained all the required claim limitations, this was not the appropriate analysis of the clarity query. Instead, the issue the petitioners had to address was whether the printed publication disclosed every limitation.

In a footnote, the majority also stated that it was not necessary to address whether a video qualifies as a print publication, as this issue was not in dispute. One of the judges on the panel, in a concurring opinion, took up the matter. He noted that the patent owner only acknowledged that the video was a “published”, not a print publication – the latter being published in such a way that the public interested in the art can access it before the critical date of the appeal. patent. It also examined a well-established precedent that the text, images, and audio of a video qualifies as a “print publication”. The supporting judge further noted that the concept of “print publishing” had evolved with an emphasis on accessibility to the public – not whether it was “printed” in the strict sense of the word. Building on the previous rationale, the judge concluded that if the video is publicly available, it qualifies as a print publication that falls under the PTAB review.

Practice Tips:

While the claims should be read in light of the specifications, the majority opinion serves as a reminder that unrelated forms of specifications cannot be used to add limitations to those claims. Furthermore, in the event that videos of devices are relied upon to support the axiom argument, petitioners should note that the physical devices themselves are not prior art under 35 USC § 311(b). A related inquiry is whether the printed publication discloses the limitations of the contested claim, and not whether the device itself (as can be demonstrated by non-prior technical evidence alone) contains the limitations of the claim. Finally, petitioners seeking to rely on the non-patent literature as prior art must support evidence in the petition demonstrating public access prior to the critical date.

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