Dynamic Drinkware v. National Graphics
The U.S. Court of Appeals for the Federal Circuit affirmed the Patent Trial and Appeal Board (PTAB or Board), finding that an IPR petitioner failed to meet its burden of proving that a cited prior art U.S. patent reference was entitled to its (earlier) provisional application’s priority date as its effective prior art date. Dynamic Drinkware v. National Graphics, Case No. 15-1214 (Fed. Cir. Sept. 4, 2015) (Lourie, J.).
The challenged patent had an effective filing date of November 22, 2000. The patent claimed priority to a provisional application filed in June of 2000. The owner of the challenged patent established that the inventor had completed the invention and reduced it to practice as of March 2000.
The asserted prior art, a U.S. patent, matured from an application filed in May 2000 and claimed priority back to a February 2000 provisional application filing. If the asserted prior art were entitled to a priority date of the provisional application, it would “beat” the challenged patent by about a month. The PTAB, however, held that Dynamic Drinkware failed to prove the cited patent was entitled to its February 2000 provisional filing date. Dynamic Drinkware appealed.
For a provisional application to qualify as art under § 102(a)(2) or pre-AIA § 102(e), it must support the claims of the application or patent asserting priority thereto. Here, because the provisional application did not support the claims of the issued patent (under § 112), an otherwise anticipatory disclosure found in a referenced provisional application was found to be ineffective as prior art, even though it was a provisional application of a duly issued patent.
On appeal, Dynamic Drinkware argued that issued patents are presumed to be valid and enabled, and, therefore, the cited prior art patent should presumptively be accorded its provisional filing date of February 2000. It further argued that the Board erred in requiring petitioner to prove entitlement to the earlier filing date. The Federal Circuit disagreed, stating that “because the PTO does not examine priority claims unless necessary, the Board has no basis to presume that a reference patent is necessarily entitled to the filing date of its provisional application.”
The Federal Circuit also agreed that Dynamic Drinkware, as the IPR petitioner, had the ultimate burden of persuasion to prove entitlement to the provisional filing date, explaining the distinction between the ultimate burden of persuasion assigned to a party who must prove something to a specified degree of certainty and the shifting burden of production of going forward with evidence. The Court explained that in an inter partes review, the petitioner carries the burden of persuasion to prove invalidity, the burden never shifts to the patent owner to prove validity. Here, Dynamic Drinkware as petitioner had the initial burden of production, which it satisfied by its assertion of invalidity in its petition. The burden of production then shifted to the patent owner, National Graphics, which contested the entitlement to the provisional filing date of the asserted prior art and presented evidence of an earlier reduction to practice date vis-à-vis the regular application filing date of the asserted prior art. The burden of production then shifted back to Dynamic Drinkware, which ultimately failed to establish entitlement to the provisional filing date.
The Panel explained that for a patent to claim benefit to the filing date of its provisional application “the specification of the provisionalmust contain a written description of the invention and the manner and process of making and using it, in such full, clear, concise, and exact terms, 35 U.S.C. § 112 ¶ 1, to enable an ordinarily skilled artisan to practice the invention claimed in the non-provisionalapplication.” (Emphasis in original.) The petitioner, however, never met its burden of proving that the disclosure of the provisional application supported the claims of the issued patent. Showing that the disclosures of both the provisional application and the cited prior art patent similarly anticipated the challenged patent did not establish support for the claims in the issued patent. As the Court explained, a provisional application’s effectiveness as prior art depends upon its written description support for the claims in the issued patent of which it was provisional.
Practice Note: If a petitioner plans to rely on an effective filing date of an earlier-filed provisional application, the petitioner must prove that the claims of the prior art patent are supported by the written description of that provisional application.