At first glance, the decision by the Court of Appeals for the Federal Circuit ("CAFC") affirming the Patent Trial and Appeal Board's ("PTAB") decision in Dynamic Drinkware v. National Graphics ("Dynamic Drinkware") seems to cut against traditional "first to invent" notions.  Interestingly, and perhaps worrisome, is that the decision results in an inventor obtaining a patent even though he invented the idea later than another. 

Digging deeper, however, reveals the ripple effect of failing to understand three key aspects: (1) the burdens placed upon each party during an inter partes review; (2) how to properly prove a non-provisional application is entitled to the effective filing date of its earlier filed provisional application; and perhaps most importantly, (3) to ensure that a provisional application sufficiently enables the claims of a later filed non-provisional application claiming the benefit of the provisional application's filing date.

The ultimate issue during this appeal was whether Dynamic had satisfied its burden of proving that the claims of U.S. Patent No. 7,153,555 to Raymond (the "Raymond Patent") were supported by the written description of Provisional Application No. 60/182,490 (the "Provisional Application"), thus permitting the use of the disclosure of the Provisional Application to anticipate the claims of U.S. Patent No. 6,635,196 (the "'196 Patent") to National Graphics, LLC ("National").

Before delving into the convoluted language of pre-America Invents Act ("AIA") 35 U.S.C. § 102(e), the court analyzed the legal equivalent of the game of "tag" by reviewing the particular burdens placed upon each party during an inter partes review.  The court first explained that "Dynamic, as the petitioner, had the burden of persuasion to prove unpatentability by a preponderance of the evidence, and [that] this burden never shifted."  (Slip Op. at 7).  Further, "Dynamic also had the initial burden of production, and it satisfied that burden by arguing that Raymond anticipated the asserted claims of the '196 patent under § 102(e)(2)."  (Id.).  At this point, "the burden of production then shifted to National Graphics to argue or produce evidence that either Raymond does not actually anticipate, or, as was argued in this case, that Raymond is not prior art."  (Id. at 8).  Finally, "the burden of production returned to Dynamic to prove that either the invention was not actually reduced to practice as argued, or that the Raymond prior art was entitled to the benefit of a filing date prior to the date of National Graphics' reduction to practice."  (Id.).  The result of this back in forth was that "[t]he burden of production was on Dynamic to prove that, under § 119(e)(1), Raymond was entitled to the benefit of the filing date of its provisional application."  (Id.).

After establishing the burden carried by each party, the court focused on Dynamic's ill-fated reliance upon In re Giacomini[1] to argue that a failure to raise an argument that a provisional application did not support the later filed non-provisional application constitutes a waiver, and that as a result, a presumption arises that the claims of a non-provisional application are entitled to the effective filing date of an earlier filed provisional application.  (See, e.g.Slip Op. at 9.)

Pointedly, the court noted that "we did not reach the question [in Giacomini of] whether the Tran patent was presumptively entitled to the benefit of the filing date of its provisional application."  (Slip Op at 10).  Indeed, "Dynamic's proffered approach would create a presumption that a patent is entitled to the benefit of the filing date of its provisional precursor" which "would be unsound because the PTO does not examine provisional applications as a matter of course; such a presumption is therefore not justified."  (Slip Op at 9).  The court stressed this point by noting that MPEP § 211.05(I)(A), as well as established case law, clearly indicate 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."  (Slip Op. at 9, citing PowerOasis, Inc. v. T-Mobile USA, Inc., 522 F.3d 1299, 1305 (Fed. Cir. 2008)).

Dynamic's troubles did not end there.  Since Dynamic was not entitled to a presumption that a non-provisional application claims priority to its provisional application, Dynamic had the burden of proving that the Raymond Patent was entitled to the benefit of the filing date of the Provisional Application.  Unfortunately, Dynamic merely compared "the claims of the '196 patent to the disclosure of the Raymond Patent and claim 1 of the '196 patent to the disclosure of the Raymond provisional application," and therefore failed to meet this burden.  (Slip Op. at 11, citing Appellant's Br. at 22).

Because Dynamic failed to meet its burden, the court ultimately agreed with National Graphics, noting 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.  (Slip Op. at 11, citing In re Wertheim, 646 F.2d 527, 537 (CCPA 1981).)  The court included a reminder that "[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."  (Slip Op. at 11).  Ultimately, the court noted, by failing to "compare the claims of the Raymond patent to the disclosure in the Raymond provisional application," "Dynamic did not make that showing."  (Id., citing Appellant's Br. at 22, emphasis added).

Although the court decided the case without analyzing whether the Provisional Application actually did contain sufficient disclosure to enable the Raymond Patent, the PTAB intimated that the Provisional Application did not include disclosure that was part of the Raymond Patent.  For example, the court stressed that in order to be entitled to the earlier filing date of the 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-provisionalapplication."  (Slip Op. at 4, quoting New Railhead Mfg., L.L.C. v. Vermeer Mfg. Co., 298 F.3d 1290, 1294 (Fed. Cir. 2002), emphasis in original)).  Thus, while the end result of this decision will perhaps most be remembered for its highly peculiar result, the key takeaway from this decision is the importance of filing provisional applications with sufficient disclosure to enable any non-provisional application claiming priority thereto.

In order to best protect clients, practitioners should strive to draft provisional applications very near the quality of a non-provisional application.  Understandably, especially in view of the "first to file" provisions of the AIA, the instinct is to place a provisional application on file as early as possible; however, Dynamic Drinkware illustrates the pitfalls of taking such an approach.  While the court stressed at several points that the decision in Dynamic Drinkware only applies to applications filed pre-AIA, the lessons gleaned from this decision still hold relevance post-AIA.  Much of the language from pre-AIA 102(e) was incorporated into post-AIA 35 U.S.C. § 102(d), and thus, the importance of drafting provisional applications including as much disclosure as possible should remain a focus of practitioners.