In fact, that's why tons and tons of successful companies supported Microsoft in getting the Supreme Court to hear the case.
The problem is that once you submit evidence before the Patent Office, you cannot submit another set of arguments to convince the examiner if the examiner was not convinced by your original set of arguments.
Once one has determined the degree of relevance of the prior art cited by the examiner, one may determine what might be sought through searching for prior art which would be more relevant to the issue of patentability and validity.
The US patent office is invalidating patents they granted ten years ago!
These patents are the most lucrative successful patents.
If the patent is invalid, there can be no infringement, regardless of whether the technology is embraced by the claims. A review of the file wrapper frequently enables one to determine what rejections of claims were made by the patent office examiner, on what grounds those rejections were made, and what prior art was made of record.
This generally provides some insight into what the examiner felt was patentable and what concessions or representations were made by the applicant.
Such prior art may, for example, take the form of prior patents or publications. If the prior-art patent was issued within one year prior to the application filing date which eventually became the patent being evaluated, the effective prior-art date of the patent is the filing date of the application which became the prior-art patent.
With respect to publications and foreign patents, it is necessary to look at the date of actual publication or opening to the public.
While the minimum acceptable date of prior art is a date preceding the filing date of the patent application which became the patent being challenged, it is preferable to seek prior art with a date more than one year earlier than the filing date of such application.
authorize IPR petitioners to challenge a patent for lack of written description or indefiniteness under § 112. 318(a) says the Board can issue a final written decision with respect to the patentability.
The Board noted the deficiency and stated that Patent Owner “should provide sufficient explanation or evidence as to how dependent claims .