Eugene Goryunov in Bloomberg Law: New Evidence Precedent Gives Lawyers a Patent Board Road Map

01/15/2020

Haynes and Boone, LLP Partner Eugene Goryunov talked with Bloomberg Law about how a new precedent for handling evidence may help compel Patent and Trademark Office administrative judges to review patents.

Here is an excerpt:

Patent Trial and Appeal Board panels must weigh all the available evidence when determining whether non-patent literature could be used in a bid to invalidate a patent, the agency’s Precedential Opinion Panel said in Hulu, LLC v. Sound View Innovations, LLC. The board said Hulu “based on a totality of the evidence currently in the record” established a reasonable likelihood that a textbook was publicly available before the patent application was filed.

Historically, different panels of PTAB judges had different standards for allowing a challenger to use non-patent literature, or NPL, to try to invalidate a patent. That meant it was unclear what specific information, like a copyright date or affidavit, was enough for a particular panel to decide whether to review a patent.

After Hulu, practitioners say, they have a clearer picture of what to bring to the table to persuade the board to launch a review.

Practitioners are advising patent challengers to come to the table with a full picture to prove that prior art was publicly available.

Patent challengers should err on the side of caution and include additional evidence up front, for while Hulu does indicate room to add more later down the line, there’s “a very fruitful ground for dispute” as to whether something was properly submitted, Haynes and Boone, LLP Partner Eugene Goryunov, who leads the firm’s Chicago post-grant review trials practice, said.

“The word to the wise here is to err on the side of caution and include extra evidence, so you kind of cement your proof,” Goryunov said.

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