Clcik here to view image.

Dynamic Drinkware, is an appeal from a final written decision by the Patent Trial and Appeal Board (“PTAB”) in IPR2013-00131 (“the ’131 IPR”).  SeeDynamic Drinkware LLC v. National Graphics, Inc., IPR2013-00131, Paper No. 42 (P.T.A.B. Sept. 12, 2014).  In the ’131 IPR, the PTAB found all of the challenged claims patentable over the asserted anticipatory reference U.S. Patent No. 7,153,555 (“the ’555 Patent”).  The PTAB based its decision on the prior art date of the ’555 Patent, and the issue on appeal was whether the PTAB legally erred in shifting the burden to Appellant to prove that the ’555 Patent was entitled to the filing date of its provisional application.  The Federal Circuit decision is unique and interesting in that it focused on the procedure for establishing the benefit to a provisional filing date, rather than the substantive merits of invalidity.

As background, the ’131 IPR was instituted on a single ground – anticipation of claims 1 and 12 of U.S. Patent No. 6,635,196 (“the ’196 Patent”) under 35 U.S.C. § 102(e)(2) over the ’555 Patent.  The challenged ’196 Patent was filed on November 22, 2000 and claims the benefit of an earlier provisional application, filed June 12, 2000.  During the ’131 IPR, Appellee Patent Owner successfully argued that it had a reduction to practice date of March 28, 2000.  (Patent Owner also argued an earlier date of conception and diligence, but the PTAB did not reach this issue).  The asserted ’555 Patent issued on December 26, 2006, and it has a pre-grant publication date of August 12, 2004, both after the filing date of the ’196 Patent.  The ’555 Patent was filed on May 5, 2000 and claims the benefit of a provisional application filed February 15, 2000.  Thus, the ’555 Patent is available as prior art under 35 U.S.C. 102(e)(2) based on its earlier application date.

In the petition for inter partes review, Appellant Petitioner asserted that the effective filing date of the ’555 Patent was the date of its provisional application, which was disputed in the Patent Owner Response.  In the Petitioner Reply, Appellant Petitioner provided a claim chart, showing that, like the ’555 Patent, the provisional application anticipated claims 1 and 12 of the ’196 Patent.  The PTAB determined that Appellant Petitioner failed to prove that the ’555 Patent was entitled to its provisional filing date and thus due to the earlier reduction to date, the ’555 Patent was not available as prior art.  The Federal Circuit affirmed the PTAB’s decision.

On appeal, Appellant argued that issued patents are presumed to be valid and enabled, and, therefore, the ’555 Patent is presumptively accorded its provisional filing date of February 15, 2000, and the Board erred in requiring petitioner to prove entitlement to the earlier filing date.  The Panel 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 Panel also agreed that the Appellant had the ultimate burden of persuasion to prove entitlement to the provisional filing date and explained 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.  In an inter partes review, the petitioner carries the burden of persuasion to prove invalidity, this burden does not shift to the patent owner.  In this case, Appellant Petitioner had the initial burden of production, which it satisfied by asserting invalidity in its petition.  The burden of production then shifted to Appellee Patent Owner, who contested the entitlement to the provisional filing date and presented evidence of an earlier reduction to practice date.  The burden of production then shifted back to Appellant Petitioner, who 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 provisional must 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-provisional application.”  (Emphasis in original and quotations omitted).  Appellant did not meet this burden.  The Appellant, however, never showed that the disclosure of the provisional application supported the claims of the non-provisional application.  Showing that the disclosures of both the provisional application and the ’555 Patent similarly anticipated the ’196 Patent, did not establish support for the non-provisional claims.  As the panel 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 a provisional.

This decision highlights the importance of presenting evidence when relying on a provisional filing date of a prior art patent.