"The description of my case was wrong. Krause commented that 'the old German and French published patent applications seemed to come out of nowhere.' But in my inter partes review (IPR) proceedings: No new prior art was discovered. The primary reference relied upon by the PTAB (WOLF) had already been cited during prosecution. The claims were invalidated on an obviousness theory based on combining prior references and applying hindsight reasoning."
"My case does not support the claim that the PTAB primarily exists to correct examiner errors or clean up patents issued over missed prior art. The art was before the examiner. The patents were granted. The invention was commercialized. A U.S.-based manufacturing business was built around those patents, securing licensing partnerships and obtaining an International Trade Commission (ITC) exclusion order."
"Obviousness asks whether a hypothetical person of ordinary skill in the art (POSITA) would have combined prior references to reach the claimed invention. In practice, that analysis is highly vulnerable to hindsight bias. Secondary considerations, commercial success, industry praise and long-felt but unsolved need are meant to guard against that bias."
A former USPTO official misrepresented an inventor's PTAB case in a policy discussion, claiming prior art was newly discovered when it had actually been cited during prosecution. The case centered on obviousness rejections using hindsight reasoning to combine existing references, not on correcting examiner errors or identifying overlooked art. The inventor had successfully commercialized the patented invention, built a U.S. manufacturing business, secured licensing partnerships, and obtained an ITC exclusion order. This mischaracterization matters because it misframes the PTAB's actual function in the policy debate. Obviousness determinations are particularly vulnerable to hindsight bias, which secondary considerations like commercial success and industry recognition are designed to counter.
Read at IPWatchdog.com | Patents & Intellectual Property Law
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