IPR Grounds Doomed For Failure To Show Patent Reference Was Supported By Disclosures In Priority Application

The Patent Trial and Appeal Board has denied institution of an inter partes review, in part because the petitioner failed to show that a key reference qualified as prior art. The PTAB ruled that the petitioner was required to explain how a patent application publication was entitled to the priority date of a provisional application to qualify as prior art under AIA §§ 102(a) and (d)(2). Because the petitioner did not provide any analysis, there was no basis to find that the patent application publication was prior art.

The challenged claims related to methods of performing a hydraulic fracturing plan. The petitioner asserted five grounds of unpatentability, three of which relied on a patent application publication as either the sole or primary reference in anticipation or obviousness challenges. The patent owner's preliminary response challenged the status of the patent application publication as prior art. The patent owner argued that under a PTAB precedential