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ARTICLE · 30 MARCH 2016

Inherent Disclosure Argument Successful In Inter Partes Review

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A vast majority of the time, petitioners in USPTO post-grant proceedings attempt to show invalidity of challenged claims by showing the prior art explicitly discloses all limitations of the claims.

United StatesIntellectual Property
Christopher Baxter
Christopher Baxter
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A vast majority of the time, petitioners in USPTO post-grant proceedings attempt to show invalidity of challenged claims by showing the prior art explicitly discloses all limitations of the claims. A petitioner in a recent Inter Partes Review (IPR) proceeding successfully invalidated claims of U.S. Patent No. 5,930,444 (the "'444 patent"), titled "Simultaneous Recording and Playback Apparatus," by establishing some of the claim limitations are inherently present in the prior art.

The '444 patent relates to "an audiovisual recording and playback device that provides substantially simultaneous recording and playback, allowing user-controlled programming delay." Unified Patents Inc. v. Dragon Intellectual Property, LLC, IPR2014-01252, p. 3 (PTAB February 5, 2016). Claim 1 of the '444 patent partially recites "a keyboard having a record key and a playback key." Id. at 4. The petitioner contended one of the prior art references discloses a remote control for controlling

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