In a January 27, 2022 non-precedential decision in IPR2021-01328, the Patent Trial and Appeal Board ("PTAB") denied institution of an inter partes review ("IPR") proceeding because the petitioner failed to prove that the primary patent reference was prior art to the challenged patent. Specifically, despite relying on the filing date of a provisional application in order to assert that the primary patent reference used in all of its grounds was prior art to the challenged patent, in its IPR petition, the petitioner only addressed one of the two requirements in order to demonstrate entitlement to priority.
In its IPR petition, the petitioner (
To establish that a reference patent (or patent printed publication) is entitled to the benefit of its provisional application's filing date for prior art purposes, a petitioner has the burden to show that both of the following two requirements are met in its IPR petition:
- First, a petitioner must show that the provisional application provides sufficient support for at least one claim in the reference patent.12
- Second, a petitioner must show that the provisional application provides sufficient support for the subject matter relied upon for prior art purposes in the reference patent.34567
In IPR2021-01328, and although the petitioner argued that, under the post-AIA version of § 102, "no need exists to evaluate whether [the Primary Reference] is [actually] entitled to ... priority to the [Relied-on Provisional]" (an argument that the PTAB rejected in its institution decision), the petitioner addressed the first requirement (under Dynamic Drinkware) in its IPR petition, and argued that at least one claim of the Primary Reference had written description support in the Relied-on Provisional.89 However, in its decision denying institution, the PTAB agreed with the patent owner (
Takeaways for PTAB practitioners:
If you are representing a petitioner, regardless of whether you are challenging a pre-AIA or post-AIA patent, and if you are using a patent, or patent publication, reference that must be entitled to the fiiling date of a provisional application in order to qualify as prior art, make a showing, in the petition itself, that the provisional application meets both the (1) Dynamic Drinkware requirement (supports at least one claim of the later-filed patent/patent publication reference), and (2) Giacomini requirement (supports the relied-on subject matter of the later-filed patent/patent publication reference).
If you are representing a patent owner, this is another threshold, pre-institution showing that you should be looking for in Petitions, and for which you should be raising deficiencies in your Patent Owner Preliminary Responses.
Footnotes
1. See
2. Ex parte Mann, 2016 WL 7487271, at *6 (P.T.A.B.
3. See In re Giacomini, 612 F.3d 1380, 1383 (Fed. Cir. 2010) (requiring that the relied upon subject matter "was carried forward from an earlier
4.
5. Ex parte Mann, 2016 WL 7487271, at *5 (P.T.A.B.
6. Comcast Cable Commc'ns, LLC v. Promptu Sys. Corp., IPR2018-00345, Paper 10 at 25-26 (P.T.A.B.
7. See also MPEP § 2151 (9th Ed., Rev. 10.2019,
8. Forescout Techs., Inc. v.
9. Forescout Techs., IPR2021-01328, Petition, Paper 1 (
10. Forescout Techs., IPR2021-01328, Institution Decision at 8-10.
11. Id. at 9-10 ("
12. See Forescout Techs., IPR2021-01328, Patent Owner Preliminary Response, Paper 6 (
Disclaimer: This Alert has been prepared and published for informational purposes only and is not offered, nor should be construed, as legal advice. For more information, please see the firm's full disclaimer.
Mr
PA 19103-4196
E-mail: solutions@duanemorris.com
URL: www.duanemorris.com
© Mondaq Ltd, 2022 - Tel. +44 (0)20 8544 8300 - http://www.mondaq.com, source