by Dennis Crouch
Ariosa (Roche) v. Illumina (Fed. Cir. 2017)
Interesting decision here on two different fronts: Reviewability of Ex Parte Reexamination Termination Decision; and Priority Prior Art Date for Patent Applications.
The dispute focuses on Illumina’s U.S. Patent No. 7,955,794 and arose after the inventors left Ariosa to form competitor Illumina.
Ex parte Reexamination Termination and Appeal: While the inter partes review (IPR) was ongoing Ariosa/Roche filed a set of three ex parte reexamination requests and the PTO determined that they collectively raised 18 substantial new questions of patentability. However, after siding with the patentee in the IPR, the PTAB also terminated the three pending reexaminations – finding that Ariosa had delayed unreasonably in filing the reexam requests and that the petitions were duplicative of the IPR. This was apparently the first time that the PTAB had ever collaterally terminated an ex parte reexamination. (Remember here, that reexaminations are handled by examiners not by the Board).
On appeal, the Federal Circuit refused to engage on the merits of the dismissal – rather writing a one-sentence disclaimer of jurisdiction:
Because we lack jurisdiction to review the termination of the ex parte reexamination proceedings, we dismiss the appeal of the termination of those proceedings.
Wow. PTAB has the right decision here (I think), but I continue to struggle with the no-appeal result. The argument for no right to appeal here is two-fold: (1) in an IPR only the final written decision can be appealable, and the decision here was separate from that paper; (2) A third-party has no right to appeal dismissal of an ex parte reexamination. What we don’t know is which of these (if either), the Federal Circuit would adopt.
Priority Prior Art Date for Patent Applications: As mentioned above, the PTAB sided with the patentee – holding that the primary reference “Fan” was not actually prior art. Again, rather than explaining its decision, the court simply wrote ¨Fan was not prior art.” This is better than a R.36 affirmance without opinion, but not by much.
Ariosa’s ‘794 patent is based upon an application filed in June 2002, but claims priority back to a September 2000 provisional patent application. The reference at issue – Fan – is not a patent but instead U.S. Patent Publication No. 2002/0172946. That application was published in November 2002, with a February 2001 filing date, and claims back to a provisional application filed February 2000.
Under PRE-AIA 102(e), a published US patent application counts as prior art as of its filing date. The question in the case, though was figuring out whether it is proper to stretch the date back to the provisional filing. The problem with the provisional: although it arguably teaches the Ariosa invention, it apparently does not fully support any of the claims pending in the Fan application as published.
For its holding, the PTAB relied upon a couple of major decisions:
- In re Wertheim, 646 F.2d 527 (Cust. & Pat. App. 1981) (in a CIP situation, a child patent is given the prior art date of the parent filing only if the child’s claims were fully supported by the parent application).
- Dynamic Drinkware, LLC. v. National Graphics, Inc., 800 F.3d 1375 (Fed. Cir. 2015) (extending Wertheim to provisional application situations – “A provisional application’s effectiveness as prior art depends on its written description support for the claims of the issued patent of which it was a provisional.”).
Extending these cases, the PTAB here held that Fan did not count as prior art as of its provisional filing date since “the claims of the [published] application are [not] supported by the provisional.” The PTAB goes well beyond the already problematic Dynamic Drinkware by placing such heavy legal merit on the claims in a published provisional application. On appeal, however, rather than grappling with these issues, the Federal Circuit affirmed – holding simply that ¨Fan was not prior art.”
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In the AIA, Section 102(e) was replaced with Section 102(a)(2). We still lack judicial guidance on what will count as the prior art date under 102(a)(2) when the purported prior art claims priority to a larger family of applications. ¿Notably, are Wertheim and Dynamic Drinkware still good law?
Under the post-AIA provision, a US published application is prior art to a claimed invention if it “names another inventor and was effectively filed before the effective filing date of the claimed invention.” 35 USC 102(a)(2). When considering when the purported prior art was “effectively filed,” Section 102(d) explains that a court should focus on the subject-matter for-which the prior art is being used and any parent applications where the application is “entitled” to claim a right of priority or benefit. The prior art date will be “the filing date of the earliest such application that describes the subject matter.”
In my mind, this statutory scheme rejects Wertheim, Dynamic Drinkware and also the PTAB analysis here — which collectively further require that the claims in the application being used as prior art be sufficiently supported by the priority document.
The major caveat to this analysis is that the 102(d)(2) specifically notes that the application must be “entitled” to the priority. That entitlement requirement could be used as a hook for a holding that an application is only entitled to a priority claim if at least one claim is fully supported by the priority filing.