Back to Basics: Ensure Prior Art Meets Requirements of 35 U.S.C. § 102

January 16, 2018 – Article

Back to Basics: Ensure Prior Art Meets Requirements of 35 U.S.C. § 102

By Lisa Mandrusiak

The PTAB recently reminded Petitioners to be careful when relying on certain categories of prior art, declining to institute trial based on a publication alleged to be prior art under pre-AIA 35 U.S.C. § 102(a) because it was not a publication “by others.”


Aurobindo filed a petition against U.S. Patent No. 6,866,866 in June, 2017. The '866 patent, owned by Andrx and Teva, covers controlled-release drugs for managing non-insulin dependent diabetes including Fortamet® and Actoplus Max® XR. In the petition, Aurobindo relied on three separate grounds: 1) anticipation by Chen; 2) anticipation by Timmins; and 3) obviousness over Timmins and Cheng. Institution was denied for the first two grounds, but granted for the third.

Prior Art Status of Chen

Chen was a publication of a PCT application that pre-dated the filing date of the '866 patent by eight months. Accordingly, Aurobindo asserted that Chen qualifies as prior art under pre-AIA 35 U.S.C. § 102(a). The patent owners disputed this, noting that Chen lists the same inventors as the '866 inventor, and thus could not qualify as prior art under § 102(a) because it is not “by others.” The PTAB agreed, noting that one's own work is not prior art under § 102(a) even though it was published or disclosed in a manner which would otherwise fall under § 102(a). Accordingly, “absent evidence to the contrary, which has not been submitted here,” the PTAB determined that Chen does not qualify as prior art under § 102(a). The PTAB also noted that § 102(e) does not apply to international publications filed before November 29, 2000 (which Chen was), but even if so, would still be disqualified as it was not an invention “by another.”


The lesson from the PTAB is clear: ensure that key art relied upon in a petition actually qualifies as prior art. (Of course, the same would be true for prior art relied upon in litigation in other fora.) Checking the inventive entity before using Chen in the petition should have been a first step, but was somehow missed in this case. The PTAB also suggests that there is room for petitioners to make a creative argument in order to establish prior art status if necessary, but no such efforts were made here—presumably because the petitioner simply missed the fact that Chen was by the same inventors as the '866 patent.