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ARTICLE · 15 APRIL 2025

Provisionals' Disclosures Must Fully Support An Issued Claim For Pre-AIA Priority

Jones Day
Jones Day
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The PTAB recently provided a pre-AIA priority analysis for reference patents in Roku, Inc. v. Anonymous Media Research Holdings, LLC, No. IPR2024-01057, Paper 10 (P.T.A.B. Feb. 10, 2025).

United StatesIntellectual Property

The PTAB recently provided a pre-AIA priority analysis for reference patents in Roku, Inc. v. Anonymous Media Research Holdings, LLC, No. IPR2024-01057, Paper 10 (P.T.A.B. Feb. 10, 2025). This decision highlights the comprehensiveness required of a pre-AIA provisional application's disclosure to establish priority from its filing date. (For a comparison of priority analyses before and after the AIA, click here to read a PTAB Litigation Blog post about the precedential decision in Penumbra, Inc. v. RapidPulse, Inc.)

On July 15, 2024, Roku petitioned the Board to cancel U.S. Patent No. 10,719,848 B2 ("the '848 patent") as rendered obvious. The '848 patent generally relates to media monitoring and measurement technology. Id. at 4.

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