Inter Partes Review for Fluorescent Bar Signs

Sometimes the expert has to tell the client that their case probably won't hold up.

As happens so often, the defendant had petitioned for a reexamination of the asserted patent, and I was asked by the plaintiff to help out.  The patent-in-suit was a division of an older case, so the specification had a lot of good inventive stuff in it, but the actual claims of this patent concerned ultraviolet-activated fluorescent displays (the black-light ones you see in bars and restaurants that you write on with a fluorescent marker).   An interesting idea, for sure, but one that has been in wide use since the 1960s at least.  The defendant/petitioner pulled up a lot of prior art, including a Web catalogue from the Wayback Machine (archive.org) that showed the same kind of boards and fluorescent markers being offered for sale a decade before the priority date of the patent.  As far as I could see, they met every one of the limitations of each of the asserted claims.  As I couldn't find anything wrong with the prior art, I gave the client the bad news, which of course made it a short gig.

After I left the case, they kept on with the review, and the asserted claims were ruled unpatentable by the Patent and Trademark Appeals Board.