Intellectual Property Report

35 U.S.C. § 112 in IPR: I know you cannot use it to invalidate a claim, but how about breaking the priority chain?

Pilseon Yoo

It is well established that "a petitioner in an inter partes review ... is not permitted to assert a ground of unpatentability under 35 U.S.C. § 112." Dexcowin Golabl, Inc. v. Aribex, Inc., IPR2016-00436, Paper 12 (PTAB July 7, 2016). As such, IPR petitions solely relying on lack of written description under § 112 cannot avoid institution denial. A few IPR cases, however, teach an effective way for a petitioner to frame a § 112 dispute as a priority date dispute. Petitioners in those IPRs have successfully established the challenged patents were not entitled to an earlier filing date because they lacked written description support in the parent application under § 112.