In a May 1, 2015 decision, the PTAB declined to institute an inter partes review of a patent relating to a spinal column stabilization device because the petitioner failed to show that a key reference qualified as prior art under 35 U.S.C. § 102(e). Relying on a U.S. patent to Panjabi for every ground of unpatentability, the petitioner asserted that the challenged claims were obvious. The application that issued as Panjabi was filed on June 23, 2005, which was after the March 3, 2005 priority date of the challenged claims. Nevertheless, the petitioner contended that Panjabi was prior art under § 102(e) based on the June 23, 2004 filing date of a provisional application in Panjabi’s priority chain. The board declined to automatically adopt the filing date of the provisional application as Panjabi’s effective § 102(e) date, stating that the effective date of Panjabi as prior art “is the date on which an application in Panjabi’s priority chain was filed that discloses the information relied upon to prove unpatentability of the challenged claims.” The board observed that the petitioner did not analyze whether the provisional application disclosed the subject matter recited in the challenged claims or introduce a copy of the application into the record. Because the petitioner failed to make a showing that the relevant disclosure in Panjabi was in the provisional application, the board accorded Panjabi an effective prior art date of June 23, 2005, the date the non-provisional application was filed. Based on this determination, the board found that the petitioner failed to establish that Panjabi is prior art to the challenged claims and, therefore, failed to show a reasonable likelihood of prevailing in demonstrating unpatentability.

Globus Medical, Inc. v. Depuy Synthes Prods., LLC, Case IPR2015-00099 (PTAB May 1, 2015).