How PTAB Is Addressing 'Inherent Anticipation'

For decades, parties accused of patent infringement in district court litigation have relied upon the doctrine of inherent anticipation to attack the validity of patent claims. Generally, such inherency arguments are supported by testimony from an expert witness. Because America Invents Act reviews before the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board allow parties to submit expert testimony and take limited depositions of fact witnesses, it is now possible for patent challengers in the PTO to develop inherency arguments to a greater extent than was practical under the prior inter partes re-examination framework. Likewise, the ability of patent owners to take depositions of expert witnesses in these new proceedings makes it possible for patent owners to more fully probe the underpinnings of any inherency arguments that are advanced against them. This article provides a brief overview of the law of inherent anticipation, and reviews how the PTAB has applied that doctrine in AIA proceedings to date.