Until recently, there appeared to be an inconsistency in how the PTAB was treating the question of whether patent claims were entitled to an earlier effective filing date. For example, the PTAB had held that it did not need to determine if a petitioner was correct in its argument that claims at issue were not entitled to an earlier priority date “because entitlement to a priority date for any claim is a matter for which [Patent Owner] bears the burden of proof.” Liberty Mutual Ins. Co. v. Progressive Cas. Ins. Co., CBM2013-00009, Paper 10 (Mar. 28, 2013). The Board explained that since the patent owner only made a “conclusory statement” regarding the effective filing date of a claim, the claim would be treated as having the filing date of the patent at issue, and not an earlier filing date for the purposes of the institution decision. Id.
More recently, however, the Board denied certain grounds in a petition for IPR because the petitioner only provided conclusory statements regarding the effective filing date of a claim. See Hewlett-Packard Co. v. MCM Portfolio, LLC, IPR2013-00217, Paper 10 (Sept. 10, 2013). The Board noted that the petitioner “provides little explanation regarding its proposed effective filing date, basing its entire argument” on an alleged admission by the patent owner’s exclusive licensee made during an ITC investigation. The petitioner “does not explain why the actions of [patent owner’s] licensee in another proceeding would be applicable here; not does [petitioner] provide any evidence, aside from one conclusory statement by an expert . . . to support this assertion.” The Board noted that none of the priority applications were in the record in the proceeding, and the expert does not even mention the earlier filed applications cited in a certificate of correction, suggesting that he may not even have been aware of them. Therefore, the Board declined to institute inter partes review based on the intervening references. The Board may have provided an explanation of how to distinguish these decisions in Polaris Wireless, Inc. v. TruePosition, Inc., IPR2013-00323, Paper 9 (Nov. 15, 2013). In that decision, the PTAB explained that “[i]n an inter partes review, the burden is on Petitioner to show a reasonable likelihood that it would prevail on a ground of unpatentability. With respect to entitlement to earlier effective filing dates, the Patent Owner is not presumed to be entitled to earlier filing dates of ancestral applications which do not share the same disclosure. But, the issue first has to be raised by Petitioner in its petition, by identifying, specifically, the features, claims, and ancestral applications allegedly lacking § 112, first paragraph, written description and enabling disclosure support for the claims based on the identified features. Then, the Patent Owner has to make a sufficient showing of entitlement to earlier filing date or dates, in a manner that is commensurate in scope with the specific points and contentions raised by Petitioner.”