In Dynamic Drinkware LLC v. National Graphics, Inc., IPR2013-00131, the Patent Trial and Appeal Board (PTAB) reminded all petitioners that the burden to establish an earlier effective date for a prior art reference falls on the petitioner.  The PTAB found that Petitioner failed to show by a preponderance of the evidence that claims 1 and 12 of US Patent No. 6,635,196 (the ‘196 patent) were anticipated by Raymond (US Patent No. 7,153,555) (Raymond).  It is a petitioner’s burden in an inter partes review proceeding to establish that a reference is entitled to an earlier effective filing date under 35 U.S.C. § 102(e) by demonstrating that the subject matter in that reference being relied upon in a petition was present in and supported by an earlier-filed application.

The Corrected Petition (Paper 10) in Dynamic Drinkware challenged claims 1, 8, 12 and 14 of the ‘196 patent on several grounds; however, the PTAB instituted trial for only claims 1 and 12 based upon one ground, i.e., anticipation by Raymond.  Raymond has a filing date of May 5, 2000 and claims the benefit of a provisional application filed on February 15, 2000.  In relying on Raymond as an appropriate prior art reference under 35 U.S.C. § 102(e), the Corrected Petition merely stated that Raymond had an effective filing date of February 15, 2000, compared to the June 12, 2000 effective filing date of the ‘196 patent.  The Corrected Petition provided no further explanation of why Raymond was entitled to the February 15, 2000 date. 

In a Response (Paper 22), Patent Owner argued that Petitioner failed to meet its burden of establishing that Raymond was entitled to the benefit of the earlier provisional filing date; therefore, Patent Owner argued Raymond’s effective date under 35 U.S.C. § 102(e) was its May 5, 2000 filing date.  Patent Owner further submitted declaration testimony and argued that it had reduced to practice claims 1 and 12 of the ‘196 patent prior to May 5, 2000.  Thus, the Patent Owner argued that Raymond was not prior art to the ‘196 patent.

Petitioner filed a Reply (Paper 34) and provided a claim chart comparing claim 1 of the ‘196 patent to the provisional application to which Raymond claimed priority.  The Petitioner also relied on declaration testimony asserting that the Patent Owner had not reduced claims 1 and 12 to practice before the May 5, 2000 filing date of Raymond. 

The PTAB found that the Petitioner failed to prove by a preponderance of the evidence that Raymond was entitled to the benefit of the earlier provisional filing date.  Relying on In re Giacomini, 612 F.3d 1380 (Fed. Cir. 2010), and Ex Parte Yamaguchi, 88 USPQ2d 1606 (BPAI 2008), the PTAB explained in the Final Written Decision (Paper 42) that “[t]o be entitled to rely on the February 15, 2000 provisional filing date, Petitioner had to establish that it relies on subject matter from Raymond that is present in and supported by its provisional.”  The PTAB further stated that Petitioner failed to compare the portion of Raymond relied on by the Petitioner to the claimed provisional application to demonstrate that those portions were carried over from the provisional and as a result failed to meet its burden of proof that Raymond was entitled to an effective date earlier than May 5, 2000.  Moreover, the PTAB determined that Raymond was not prior art under 35 U.S.C. § 102(e) because the Patent Owner had met its burden of proving that claims 1 and 12 of the ‘196 patent were reduced to practice before May 5, 2000.

The Dynamic Drinkware decision serves as a reminder that if a petition for inter partes review requires a prior art reference to have an effective date of an earlier provisional application, then the petition must demonstrate that the portions of the prior art reference relied on in the petition were carried over from the earlier provisional application.  As shown by this decision, the burden is solely on the petitioner, as the PTAB is unlikely to make its own determination of whether the prior art reference is entitled to an effective filing date of an earlier-filed provisional application.  Although this decision is specific to the effective date of a provisional application, the same reasoning should also apply to a petition that requires a reference to have an effective date of any earlier filed application in a priority chain in order to qualify as prior art.  Of course, where the desired priority date is that of a provisional application or an abandoned application, there is no earlier publication to rely on and making the necessary showing of entitlement to priority cannot be avoided.  More broadly, both petitioners and patent owners should strive to provide the analysis necessary to fully meet their burden of proof and not assume that the PTAB will do its own analysis to fill in any missing links.