I. Introduction - The Leahy-Smith America Invents Act (“AIA”) was years in the making. From the first patent reform bill introduced by Representative Lamar Smith in June 20052.
In a decision denying summary judgment, the District of Massachusetts weighed in on an unsettled issue: whether after receiving a final written decision in an inter partes review.
The Board applies the substantive law of the Federal Circuit and Court of Customs and Patent Appeals on the issue of derivation, which requires sufficient independent corroboration .
Derivation Showing Overcome by Evidence of Respondent’s Prior Conception in Rare Derivation Proceeding - The Board issued a decision in a rare derivation proceeding.
Where a plaintiff claiming patent infringement has moved for partial summary judgment of validity following inter partes review of the patents, the defendant should be estopped from alleging invalidity based on any of the printed publication references included within its IPR petitions, but should be permitted to present other forms of evidence of prior-art systems