Many issued patents are still governed by pre-America Invents Act (“AIA”) statutes. Among them is pre-AIA 35 U.S.C. § 102(e), which allows issued U.S. patents and certain published patent applications to be used as prior art as of their respective U.S. filing dates.1 When challenging validity using prior art under § 102(e), challengers often rely on a prior art reference’s claim of priority to a provisional application filed before the earliest filing date of the challenged patent. Although practitioners are generally aware that the disclosure relied on in the prior art reference must be supported by the description of the earlier-filed provisional application, it may be less widely known that the Federal Circuit has imposed an additional requirement -- the earlier-filed application also must support the claims of the prior art reference (whether an issued patent or published patent application). Failure to show the requisite support of the reference’s claims can doom an invalidity challenge. This article examines the Federal Circuit decisions on the issue, a pending petition for certiorari that could impact the current rule, and best practices where prior art under § 102(e) is at issue.
The Federal Circuit addressed the requirements that must be met in order for an issued patent to claim the benefit of the filing date of an earlier-filed provisional application for prior art purposes in Dynamic Drinkware, LLC v. Nat'l Graphics, Inc.2 In that case, the Federal Circuit affirmed a finding by the Patent Trial and Appeal Board (“PTAB”) that Dynamic Drinkware, the petitioner in an inter partes review (“IPR”) proceeding, failed to carry its burden of proving unpatentability. In the IPR, Dynamic Drinkware alleged that an issued U.S. patent that claimed priority to an earlier-filed provisional application anticipated the challenged patent based on the provisional filing date.3 In the course of the IPR, Dynamic Drinkware compared the claims of the challenged patent to the disclosure of the issued U.S. patent it relied on as prior art and offered a claim chart comparing a claim of the challenged patent to the subject matter of the earlier-filed provisional application.4 The PTAB concluded, however, that because Dynamic Drinkware failed to demonstrate that the relied-upon portions of the issued U.S. patent were “carried over” from the earlier-filed provisional application, it had not established by a preponderance of the evidence that the issued patent was entitled to the benefit of the earlier provisional filing date.5
In affirming the Board’s decision, the Federal Circuit considered 35 U.S.C § 119(e), which establishes the requirements for a patent to claim priority from the filing date of its provisional application.6 The Federal Circuit concluded that “[a] reference patent is only entitled to claim the benefit of the filing date of its provisional application if the disclosure of the provisional application provides support for the claims in the reference patent in compliance with § 112, ¶ 1.”7 The Federal Circuit found the PTAB’s decision to be supported by substantial evidence because Dynamic Drinkware “failed to compare the claims” of the issued patent it relied on as prior art to the disclosure of the earlier-filed provisional application and therefore failed to meet its burden to show that the relied-upon patent was entitled to the benefit of its provisional application.8
In Amgen Inc. v. Sanofi, the Federal Circuit confirmed that the principle articulated in Dynamic Drinkware also applies to published patent applications.9 At the district court, the defendants attempted to invalidate the asserted patents using two published PCT applications, both of which claimed priority to provisional applications that predated the asserted patents’ priority date.10 The district court excluded the published PCT applications as improper prior art, because the defendants had not shown that the provisional applications provided written description support for the claims of the published PCT applications.11 On appeal, the defendants’ argued that Dynamic Drinkware “only related to whether ‘a patent asserted as prior art under § 102(e)(2) was prior art as of the filing date of a parent application’ but does not relate to whether ‘published patent applications asserted as prior art under § 102(e)(1)’ were prior art as of the filing date of their provisional applications.”12 The Federal Circuit rejected this argument and concluded that the district court properly excluded the published PCT applications, because the defendants did not provide evidence that the provisional applications satisfied the written description requirement for the claims in the PCT applications or that the claims of the PCT applications were enabled by the provisional application.13
The Federal Circuit’s decisions in Dynamic Drinkware and Amgen have been subject to much criticism. After the Dynamic Drinkware decision, one commentator observed that the effect of the decision is that “under the first-to-invent rule the second inventor gets a patent.”14 A petition for certiorari filed earlier this year in Ariosa Diagnostics, Inc. v. Illumina, Inc.15 argues that the rule articulated in Dynamic Drinkware and Amgen should be overturned because it: (1) would result in instances where patents that would otherwise be invalid are upheld despite an earlier application disclosing the same invention or an obvious variant; (2) creates uncertainty about what constitutes prior art (given that the prior art status of a published application would depend on the content of draft patent claims that are subject to amendment); and (3) complicates proceedings by requiring “a trial-within-a-trial” to determine whether unexamined claims of a published application are supported by the earlier application.16 The petition for certiorari further argues that the decisions in Dynamic Drinkware and Amgen conflict with the Supreme Court’s decision in Alexander Milburn Co. v. Davis-Bournonville Co.,17 which it argues established the rule that “[i]f a person files a patent application and does not abandon it, the disclosure in any patent that issues from that application qualifies as prior art as of the application’s filing date” without regard to what was actually claimed.18
Absent intervention from the Supreme Court, however, parties should be prepared to follow the rule set out in Dynamic Drinkware and Amgen when dealing with prior art patents and published patent applications under § 102(e). Patentees facing validity challenges based on issued patents or published patent applications that rely on a claim of priority to an earlier-filed provisional application should be prepared to challenge that claim to priority. This has the effect of shifting the burden to the party challenging validity to prove that the patent or published application is entitled to the priority date of the earlier-filed application for prior art purposes.19 Parties challenging validity should be prepared to demonstrate (1) that the description from the earlier-filed application was “carried over” to the issued patent or published patent application relied-upon and (2) that the claims of the issued patent or published application are supported by the earlier-filed provisional application in accordance with pre-AIA 35 U.S.C. § 112, first paragraph (taking into account both the enablement and written description requirements of that section).
Similarly, practitioners involved in prosecuting patents before the USPTO should be prepared to use the rule articulated in Dynamic Drinkware and Amgen to their advantage.20 When faced with a rejection under 35 U.S.C. § 102 or § 103 that relies on the filing date of an earlier-filed provisional application to predate the applicant’s invention, practitioners should look for opportunities to argue that either the description of the earlier-filed provisional application was not “carried over” into the issued patent or published patent application relied on by the examiner and/or that the earlier-filed application fails to provide the requisite written description support for the claims of the relied-upon reference.
1 35 U.S.C. § 102(e) provides that a person shall be entitled to a patent unless “the invention was described in — (1) an application for patent, published under section 122(b), by another filed in the United States before the invention by the applicant for patent or (2) a patent granted on an application for patent by another filed in the United States before the invention by the applicant for patent, except that an international application filed under the treaty defined in section 351(a) shall have the effects for the purposes of this subsection of an application filed in the United States only if the international application designated the United States and was published under Article 21(2) of such treaty in the English language.”
2 800 F.3d 1375, 1378 (Fed. Cir. 2015).
3 See Dynamic Drinkware v. Nat’l Graphics, Inc., IPR2013-00131, Paper No. 42 at 6 (P.T.A.B. Sep. 12, 2014).
4 See Dynamic Drinkware, 800 F.3d at 1381.
5 See IPR2013-00131, Paper No. 42 at 6-7.
6 “An application for patent filed under section 111(a) or section 363 of this title for an invention disclosed in the manner provided by the first paragraph of section 112 of this title in a provisional application filed under section 111(b) of this title, by an inventor or inventors named in the provisional application, shall have the same effect, as to such invention, as though filed on the date of the provisional application filed under section 111(b) of this title . . .” 35 U.S.C. § 119(e)(1) (2006).
7 Dynamic Drinkware, 800 F.3d at 1381 (citing In re Wertheim, 646 F.2d 527, 537 (CCPA 1981)).
8 Id. at 1381-82 (“A provisional application’s effectiveness as prior art depends on its written description support for the claims of the issued patent of which it was a provisional.”)
9 872 F.3d 1367 (Fed. Cir. 2017).
10 See id. at 1380.
11 See id. at 1379-80.
14 Crouch, Federal Circuit Backtracks (A bit) on Prior Art Status of Provisional Applications and Gives us a Disturbing Result, https://patentlyo.com/patent/2015/09/provisional-applications-disturbing.html.
16 Id. at 28-30.
17 270 U.S. 390 (1926).
18 Petition for Writ of Certiorari, Ariosa Diagnostics, at 18.
19 The Federal Circuit has described that while the burden of persuasion to prove unpatentability rests with the challenger, the burden of production may shift, at least in PTAB proceedings. For example, in Dynamic Drinkware, the petitioner had the initial burden of production to argue that a prior art reference anticipated the claims under 35 U.S.C. § 102(e). The burden then shifted to the patent owner to argue that the prior art reference either did not anticipate or was not prior art. Having made an argument that the reference was not prior art because of an alleged earlier reduction to practice, the burden shifted back to petitioner to show that the prior art reference was entitled to the benefit of a filing date prior to the date of patent owner’s alleged reduction to practice. See Dynamic Drinkware, 800 F.3d 1375.
20 The United States Patent and Trademark Office has revised M.P.E.P § 2136.03 based on the holding in Dynamic Drinkware and, according to an April 5, 2018 memorandum, will update the M.P.E.P. to incorporate the changes effected by Amgen in due course.
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