Addressing for the first time the sufficiency of evidence needed to establish an earlier priority date for purposes of post-grant review (PGR) eligibility versus the evidence required to antedate a prior art reference, the Patent Trial and Appeal Board (PTAB) held that the patentee must show § 112 support for each claim limitation as of the earlier priority date in order to antedate a reference. Inguran, LLC v. Premium Genetics (UK) Ltd., Case No. PGR2015-00017 (PTAB, Dec. 20, 2016) (Droesch, APJ).
Inguran sought PGR of 14 claims of Premium Genetics’ patent. The PTAB instituted trial on all 14 claims. PGR is only available to patents that are subject to the first inventor to file provision of the America Invents Act (AIA), which applies to patents and applications that include a single claim having an effective filing date on or after March 16, 2013. The challenged patent issued from an application filed on January 31, 2014, and claimed priority to several provisional and non-provisional applications filed before March 16, 2013. Thus, Inguran could only establish standing by identifying at least one claim in the challenged patent that was not entitled to a pre-March 16, 2013 priority date.
In the initial petition, Inguran argued that claims 1 and 2 were not entitled to a pre-AIA priority date and pointed to specific limitations in each claim that Inguran alleged were not disclosed in any priority application. Premium Genetics argued that both claims were entitled to pre-AIA filing dates. The PTAB agreed with Premium Genetics as to claim 1 and Inguran as to claim 2.
Premium Genetics interpreted the PTAB’s decision with respect to claim 1 as an affirmative finding that claim 1 was entitled to an earlier priority date. As such, Premium Genetics argued that the § 102(a) art cited by Inguran was no longer applicable. The PTAB disagreed. In deciding that Inguran failed to establish that claim 1 was not entitled to an earlier filing date, the PTAB had not decided whether claim 1 was in fact actually entitled to earlier priority date. Rather, the PTAB left that question open.
In order to affirmatively establish that a particular claim is entitled to an earlier filing date, Premium Genetics must show that the earlier application contains sufficient § 112 support for each claim limitation. Because Premium Genetics only rebutted Inguran’s argument with respect to a single claim limitation, Premium Genetics’ evidence in rebuttal was insufficient to show that claim 1 was entitled to an earlier filing date.
Practice Note: Each and every claim limitation need not be analyzed when establishing standing for purposes of PGR eligibility, but the patent owner must show § 112 support for each claim limitation in order show that a particular claim is entitled to an earlier filing date.