The Federal Circuit held in Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) that for a pre-AIA 35 U.S.C. § 102(e) prior-art reference to be entitled to a provisional application’s priority date, the provisional application must: (1) describe the subject matter relied upon as prior art, and (2) provide written description support for at least one claim in the prior art reference. In a recent precedential decision, the Patent Trial and Appeal Board declined to apply the Dynamic Drinkware written description requirement to prior art references under AIA 35 U.S.C. § 102(d).
In an inter partes review of a patent with a priority date of July 18, 2019, petitioner asserted as prior art a reference claiming priority to a provisional application. Patent owner argued that the reference patent was not entitled to the earlier priority date because the provisional application to which it claimed priority was not shown to provide written description support for at least one claim; as such, patent owner argued that reference failed to qualify as such under Dynamic Drinkware. Petitioner countered that this requirement is limited to pre-AIA patents.
Based on statutory language and USPTO guidance, the board agreed with petitioner holding that, under the AIA, a prior art patent claiming priority to an earlier application need only meet the ministerial requirements of 35 U.S.C. §§ 119 and 120, and, under the current statutory text of 35 U.S.C. § 102(d), the earlier application must simply describe the subject matter relied upon in the reference patent document as prior art. The board, citing MPEP § 2154.01(b), reasoned that AIA § 102 merely requires that a reference patent be entitled to claim a right of priority and need not be actually entitled to priority under AIA 35 U.S.C. § 100(i)(1)(B). The board also relied on a 2018 USPTO Memorandum to the Patent Examining Corps stating that the pre-AIA written description requirement is not applicable to the first-inventor-to-file provisions of the AIA for prior art determinations. Consequently, according to the board, under AIA §§ 102(a)(2) and 102(d), there is no need to evaluate whether a provisional application’s written description actually entitles any patent claims to priority.
Practice Tip: Under current PTAB practice, a petitioner asserting an AIA reference claiming priority to an earlier-filed application need only meet the three ministerial requirements of (1) claiming priority to a (2) co-pending prior filed application that (3) shares a common inventor or is filed by the same applicant, as well as making a showing that the earlier application describes the subject matter relied upon as prior art. Parties should, however, exercise caution outside the confines of the PTAB in assessing AIA requirements under 35 U.S.C. §§ 102(a)(2) and 102(d) until the Federal Circuit rules on the issue.
Penumbra, Inc. v. RapidPulse, Inc., IPR2021-01466, Paper 34 (March 10, 2023).