To date, activity in the PGR (post-grant review) field is insignificant compared to activity in the IPR (inter partesreview) or CBM (covered business method review) fields.  For example, while there have been 3,953 petitions for IPR and 408 petitions for CBM filed through December 31, 2015, there have only been 15 petitions filed for PGR.  For that reason alone the decision granting institution in PGR2015-00019 is notable.  But, there is more …

By way of background, to be eligible for a PGR, the subject patent must have been subject to the first-inventor-to-file (“FITF”) provisions of AIA (applications filed after March 16, 2013 with claims that aren’t adequately supported by pre-March-16, 2013 applications – that is to say claims with an effective filing date on or after March 16, 2013). Additionally, and unlike in IPRs, any grounds of invalidity are available for the challenge including, as was the case here, grounds under section 112. One of the twists in this case was that as a challenge based on 112 grounds would not be available under IPR, the only way the Petitioner could challenge the present claims on section 112 grounds would be through a PGR petition – CBM was not an option.  Although the discussion below focuses on priority and enablement issues, we note that the PTAB also instituted the PGR on the ‘other’ part of section 112, first paragraph – written description – as well as more traditional 102 and 103 grounds.

In this case, US Endodontics LLC (Petitioner) filed a petition requesting post-grant review of US Patent 8,876,991, held by Gold Standard Instruments, LLC and relating to titanium dental instruments.  The application leading to the ’991 patent was filed after March 16, 2013 but claimed priority of various pre-March 16, 2013 applications – going back as early as June 2004.  However, a key question for the PTAB in this case was whether the challenged claims were supported in the earlier applications.  The PTAB, ruling that the ’991 patent was subject to the FITF provisions of the AIA, noted that “Petitioner’s argument for post-grant review eligibility is based on the ’991 patent containing claims with an effective filing date of January 29, 2014, rather than any of the earlier claimed priority dates. .  .”.  The PTAB pointed out that “Petitioner’s undue experimentation analysis argues that the Specification does not provide an enabling disclosure for the broad range of temperatures, heat-treatment durations, and alloy compositions within the scope of claims 12–16”, and held that:

Petitioner has demonstrated adequately that the applications to which the ’991 patent claims priority do not provide an enabling disclosure for the methods recited in claims 12–16. Because claims 12–16 are not entitled to priority to the earlier applications, the effective filing date for claims 12–16 is January 29, 2014, the actual filing date of the ’311 application. Thus, the ’991 patent is subject to the first-inventor-to-file provisions of the AIA.

Interestingly, the PTAB agreed with Petitioner’s arguments that, as none of the earlier applications provided an enabling disclosure for the challenged claims, the effective filing date for the challenged claims was the actual filing date (January 29, 2014) of the application leading to the challenged claims, citing to 35 U.S.C. § 100(i)(1)(A) and noting that:

Under this definition, if a claim in a patent application is not entitled to an earlier filing date, then subparagraph (B) does not apply and the effective filing date is the actual filing date of the application under subparagraph (A), regardless of whether the disclosure in the application is sufficient to support the claim.  Accordingly, we agree with Petitioner that if claims 12–16 are shown to lack support in the ’311 application and all of the earlier applications to which priority is claimed, the effective filing date for those claims is the actual filing date of the ’311 application.