The following cases address the requirements for establishing that an asserted reference is entitled to the date of an earlier application for the purpose of establishing that the asserted reference is prior art against the challenged patent.
Polaris Wireless, Inc. v. TruePosition, Inc., IPR2013-00323, Paper 9 (PTAB Nov. 15, 2013). A patent is not presumed to be entitled to the earlier filing dates of ancestral applications which do not share the same disclosure as the challenged patent. However, petitioner first has to raise the issue in its petition, by specifically identifying 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, patent owner has to make a sufficient showing of entitlement to earlier filing date(s), in a manner that is commensurate in scope with the specific points and contentions raised by petitioner.
Focal Therapeutics, Inc. v. Senorx, Inc., IPR2014-00116, Paper 8 (PTAB Apr. 22, 2014). Since petitioner has the burden to show a reasonable likelihood that it would prevail on a ground of unpatentability, petitioner has the initial burden to specifically identify any features in the claims which lack § 112 support in a priority application. After such a showing, patent owner then has the burden to demonstrate that the priority application adequately discloses all the limitations in the claims at issue, in a manner that is commensurate in scope with the specific points and contentions raised by petitioner.
Schott Gemtron Corp. v. SSW Holding Co., Inc., IPR2013-00358, Paper 106 (PTAB Aug. 20, 2014). In determining whether the challenged claims are obvious, the Board resolved the level of ordinary skill in the art at the time of the invention. The Board first analyzed whether the challenged claims are supported by earlier-filed provisional applications to determine the date of the invention. Finding that the disclosure of the first provisional applications provides written description support for the challenged claims, the Board determined that the date of invention for the challenged claims is the filing date of the first provisional application. The Board then resolved the level of ordinary skill in the art at the time of the first provisional application.
Ford Motor Co. v. Paice LLC & the Abell Foundation, IPR2014-00568, Paper 12 (Sept. 8, 2014). The Board confirmed that a relied-upon reference was prior art against the challenged patent because the challenged patent was not entitled to the filing date of an earlier application. Under 35 U.S.C. § 120, a patent claim is entitled to the benefit of the filing date of an earlier-filed application only if the disclosure of the earlier application provides written description support for the patent claim as required by 35 U.S.C. § 112, ¶ 1. The test for determining compliance with the written description requirement is whether the disclosure of the earlier-filed application reasonably conveys to those skilled in the art that the inventor had possession at that time of the claimed subject matter. The Board credited petitioner’s expert that a person of ordinary skill in the art would not have understood the earlier application to support a particular claim feature in the challenged patent.
Dynamic Drinkware LLC v. National Graphics, Inc., IPR2013-00131, Paper 42 (PTAB Sep. 12, 2014). The Board indicate that petitioner had not met its burden of production by merely asserting that an asserted reference was entitled to the earlier date of its provisional application. To demonstrate that the asserted reference is entitled to an earlier date, petitioner had to demonstrate that the provisional application satisfies the requirements of 35 U.S.C. § 112 with respect to at least one claim of the asserted reference.
CeramTec GmbH v. Ceramedic LLC, IPR2015-01328, Paper 23 (PTAB Dec. 16, 2015). The Board denied institution because petitioner did not demonstrate that a relied-upon reference was prior art under 35 U.S.C. § 102(b) to the challenged patent. Petitioner argued that the challenged patent was not entitled to the priority date of a PCT application because the PCT application disclaimed a feature recited in the challenged claims. The Board disagreed, finding that there was no clear disclaimer of the recited features, either in the specification of the PCT application or in the prosecution history of the challenged patent. The Board therefore determined that the challenged patent is entitled to the priority date of the PCT application, and as such, a relied-upon reference did not qualify as prior art.
Securus Technologies, Inc. v. Global Tel*Link Corp., IPR2015-00153, Paper 12 (PTAB May 1, 2015). A petitioner has the burden of demonstrating that a relied-upon reference qualifies as prior art against the patent under review. The Board denied the petition because the petitioner did not demonstrate that the provisional of the relied-upon reference supports the subject matter of the reference in compliance with 35 U.S.C. § 112, first paragraph.
Ariosa Diagnostics, Inc. v. Illumina, Inc., IPR2014-01093, Paper 69 (PTAB Jan. 7, 2016). As the party challenging the patentability of the claims, petitioner has the burden to demonstrate that a relied-upon reference is entitled to its provisional fling date. Petitioner must therefore demonstrate that the claims of the reference patent publication relied upon by petitioner are supported by the provisional application, in compliance with 35 U.S.C. § 112, first paragraph. Although the reference patent publication incorporates the provisional by reference, that incorporation, by itself, does not meet the requirement that the claims of the reference patent publication are supported by the provisional.
VMware, Inc. v. Clouding Co., IPR2014-01304, Paper 35 (PTAB Jan. 7, 2016). The Board determined that petitioner did not demonstrate that an asserted reference is entitled to the priority dates of earlier provisional applications. Citing the Federal Circuit’s Dynamic Drinkware decision, petitioner has the burden of persuasion to prove that the challenged claims are unpatentable by a preponderance of the evidence, and the burden of production to demonstrate that the asserted reference is prior art to the patent. Petitioner argued that the earlier provisional applications provide support for the subject matter of the reference patent. However, petitioner is required to demonstrate that the earlier provisional provide adequate written description support for the claims of the reference patent. Therefore, petitioner has failed to demonstrate the reference patent is prior art to the challenged patent.
Benitec Biopharma Ltd. v. Cold Spring Harbor Lab., IPR2016-00015, Paper 7 (PTAB Mar. 23, 2016). The Board denied institution, in part, because petitioner did not demonstrate that an asserted reference qualified as prior art under 35 U.S.C. § 102(e) against the challenged patent. To qualify as § 102(e) prior art against the patent, petitioner was required to show that the asserted reference is entitled to the earlier filing date of its provisional application. To make such a showing, petitioner must demonstrate that the provisional application provides written description support for at least one claim of the reference patent. Petitioner did not meet its burden. Petitioner presents no expert opinion with respect to the understanding of one of ordinary skill in the art, including with respect to the disclosure of the provisional of the reference patent. Petitioner’s limited evidence and assertion that “critical elements” are expressly described in the provisional is insufficient to demonstrate that one skilled in the art would have understood the provisional to expressly, or inherently, disclose the features claimed in the reference patent.
Benitec Biopharma Ltd. v. Cold Spring Harbor Lab., IPR2016-00017, Paper 7 (PTAB Apr. 6, 2016). The Board denied institution, in part, because the asserted reference was not prior art to the challenged claims. Petitioner alleged that the asserted reference was prior art under 35 U.S.C. § 102(e) because the reference claimed priority to a provisional application that predated the filing date of the patent. To make such a showing, petitioner must demonstrate that the provisional application provides written description support for at least one claim of the asserted reference (citing Dynamic Drinkware, 800 F.3d 1375, 1381 (Fed. Cir. 2015)). However, the Board noted that Petitioner did not present any expert opinion with respect to the understanding of one of ordinary skill in the art, much less with respect to the disclosure of the provisional application. The Board was not persuaded by petitioner’s argument that the provisional application inherently disclosed the ranges claimed in the asserted reference because petitioner did not discuss how one of ordinary skill in the art would understand the disclosure of the provisional application. The Board therefore determined that petitioner did not demonstrate that the asserted reference qualified as prior art under 35 U.S.C. § 102(e).