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Believe What You Read in the Papers: In re Morsa and Press Releases as Prior Art.

Byline: Benjamin R. Huber

In today's saturated marketing environment, it can be tempting to try to ignore--or even escape--the ever-present advertisements that are the near-constant backdrop to our daily lives. But the Federal Circuit's recent precedential decision in In re Morsa is a reminder that press releases can be a potent resource when used by accused infringers to streamline discovery, to uncover key dates in the development of competing technology, and to locate prior art that may serve as essential to an invalidity argument.

The Federal Circuit's mid-October decision in Morsa was the second time the court had considered an appeal in the case. Pending before the Court was a dispute over whether a press release cited by the patent examiner--the so-called "Peter Martin Associates Press Release", or "PMA"--anticipated two of the claims in Mr. Morsa's patent application. Previously, the Court had remanded the case because the Patent Trial and Appeal Board had not performed a proper enablement analysis before determining that that claims were anticipated. On remand, the Board determined that the PMA press release was indeed enabling, and affirmed the Board's rejection of the claims at issue.

While Morsa arose in the context of patent prosecution and dealt largely with issues of whether or not a particular press release was enabling, Morsa serves as a potent reminder that press releases can be a potentially valuable tool for developing evidence of patent invalidity in the context of litigation and disputes likely to lead to litigation.

Locating and developing the facts that will ultimately add up to a clear and convincing case of invalidity is no easy task. The relatively long life of patent can result in situations where an accused infringer is tasked with looking backwards a decade or more to attempt to establish the state of the prior art and to assemble suitably aged references that establish invalidity. This can be particularly daunting for litigants in industries where patent filings are sparse, where legacy products were relatively unknown or unsuccessful in the market, or where detailed information about past products is otherwise hard to come by. The process of acquiring prior art can be further complicated in situations where the patentee and the accused infringer compete for customers in the marketplace, making widespread third-party discovery of customers (or other competitors) an unattractive option. Regardless of the industry backdrop, shrinking litigation budgets across industries often require counsel to rapidly focus on invalidity pursuits that are deemed most likely to bear fruit, and forgo those that don't initially appear to be promising.

Press releases are an often-overlooked tool to streamline the process to uncover likely prior art, especially when trying to narrow the scope and focus of third-party discovery. In many cases, press releases will be dated, will be publicly available online, and contain easily-understood facts and details. As such, they can be especially useful in identifying and documenting when and how products and competitors entered, operated in, and exited the marketplace. Where the memories of individuals within a business may be imprecise (or unavailable if key personnel have retired or moved on), press releases can also serve as a useful way to put a claimed invention into context and jog fading memories. Even if a located press release is not as complete or focused as the PMA press release in Morsa, the press release may nonetheless serve to as prior art in its own right as part of an obviousness argument, or direct an investigation to products, companies, or individuals who are likely to have stronger evidence of invalidity. Moreover, as a dated, published, and easily understood document, press releases may be particularly useful in the context of post-grant proceedings before the USPTO to help establish the state of the art and tie other references together.

While press releases may not be a one-size-fits-all invalidation solution, searching for and using press releases to focus and redirect invalidity investigations and related discovery can be a fast, cost-effective tool for identifying the prior art and other evidence that may otherwise be difficult to find and document.
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Publication:Inside Counsel Breaking News
Date:Dec 4, 2015
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