by Dennis Crouch
The Patent Trial and Appeal Board recently designated as precedential a portion of its Penumbra v. RapidPulse decision in that provides important guidance on the use of a provisional patent application’s filing date for 102(a)(2) prior art under the America Invents Act. Penumbra, Inc. v. RapidPulse, Inc., IPR2021-01466, Paper 34 (March 10, 2023) (made precedential as to section II.E.3 on November 15, 2023). This is a pretty long post, but key takeaways are: (1) the PTAB expressly rejected the Federal Circuit’s pre-AIA Dynamic Drinkware rule (we’ll see how it goes on appeal); (2) when using a patent/publication as prior art based on an earlier provisional filing date, a petitioner now only needs to show the provisional describes the relied upon subject matter instead of requiring claims supported under §112; (3) this lowers the bar for leveraging provisionals as invalidating prior art before the PTAB (i.e., makes it easier to invalidate patents); however, (4) it remains unclear whether the courts will adopt the PTAB’s interpretation given the fairly minor statutory distinction underlying the decision. Toward the end of the post, I note that the ultimate questions on appeal may focus on the purposes and policy goals of the 102(a)(2) prior art provision and recognition of the provision’s potential unfairness. These may push the Federal Circuit toward rejecting the USPTO approach and instead extending Dynamic Drinkware to AIA patents.
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The language of 35 U.S.C. 102(a)(2) is a bit clunky, but its effect is to codify the first-to-file regime created by the America Invents Act of 2011. The provision recognizes that a prior-filed patent application will typically serve as prior art against another later-application filed by a different inventor and assignee. The provision does have some important caveats. Notably, in order to be prior art under 102(a)(2), the application must first either (a) issue as a US patent (under 35 U.S.C. 151) or (2) be published as a US patent application publication (under 35 U.S.C. 122(b)). Although a PCT application is not actually published under Section 122(b), it is “deemed a publication under section 122(b)” so long as it designates the US. 35 U.S.C. 374.
Foreign patent applications and provisional applications typically do not publish under Section 122(b) or issue as US patents — and therefore do not directly qualify as prior art as of their filing dates. Here though there is an important caveat — the 102(a)(2) designates the US patent/publication prior art as of its effective filing date. Section 102(d) then stretches the prior art date back to the earliest priority filing date so long as the US patent/publication “is entitled to claim a right of priority … or to claim the benefit of an earlier filing date.” By its terms, the Section 102(d) reach-back does not apply to the patent or published application as a whole. Rather, the statute indicates that the earliest effective filing date for prior art purposes is determined based whether “subject matter described in the patent or application” that is being used as prior art is also described in the priority document.
(d) Patents and Published Applications Effective as Prior Art.—For purposes of determining whether a patent or application for patent is prior art to a claimed invention under subsection (a)(2), such patent or application shall be considered to have been effectively filed, with respect to any subject matter described in the patent or application … (2) if the patent or application for patent is entitled to claim a right of priority … or to claim the benefit of an earlier filing date …, as of the filing date of the earliest such application that describes the subject matter.
35 U.S.C. 102(d). Thus, for a U.S. patent or published application to be considered effectively filed as of the filing date of an earlier priority application under Section 102(d), (1) the patent or published application must be entitled to claim priority to the earlier application, and (2) the earlier priority application must describe the particular subject matter relied upon in the patent or published application being used as prior art against the claimed invention. I term these two requirements as “entitlement” and “description” respectively. As you’ll learn below, the USPTO recently adopted this approach — further delineating the entitlement portion as “ministerial entitlement.”
102(a)(2) serves an important role in post-AIA law because it codifies the rules of the first-inventor-to-file regime. This was an important change from pre-AIA that, at times, allowed patentees to claim priority back to their provable date of invention. At the same time, 102(a)(2) prior art smarts of some fundamental unfairness because the references are kept secret for (typically) 18 months only to spring forth with a back-dating to the filing date. Even the most careful and contentious inventors and applicants have no way of organizing their affairs to avoid unintentional duplication or minor extension because the references are kept secret. This is one reason why in Europe, the parallel prior art is only available for novelty purposes, not for obviousness.
A key question post-AIA has been the extent that this new law changes the rules developed under the old parallel statute previously codified at 35 U.S.C. 102(e). The main point of contention is the interpretation of the the two requirements of entitlement and description.
The Federal Circuit faced a parallel issue in its Dynamic Drinkware case, albeit under pre-AIA law. Dynamic Drinkware, LLC v. National Graphics, Inc., 800 F.3d 1375 (Fed. Cir. 2015). In Dynamic Drinkware, the Federal Circuit held that for a reference patent to receive the earlier filing date of its provisional application under pre-AIA 35 U.S.C § 102(e), the disclosure of the provisional “must provide adequate written description support for at least one claim of the issued [reference] patent” under 35 U.S.C. § 112, ¶ 1 (2006). In other words, it was not sufficient under the pre-AIA framework for the provisional application to merely disclose the subject matter relied upon in the reference patent to show obviousness of the claimed invention. Instead, Dynamic Drinkware required that the claims in the reference patent itself must also be fully supported by the written description of the priority provisional application under § 112, ¶ 1 in order to reach back to its earlier filing date for prior art purposes. Without full written description support, the priority filing does not serve as a proper anchor sufficient to justify the priority prior art date.
But, Dynamic Drinkware struck some folks as wrong because it focuses on what was claimed rather than what was disclosed. As I wrote back then:
Anyone who works with prior art knows that this setup is an oddball way to address the situation. A patent’s disclosure for prior art purposes should not depend upon what was claimed or not claimed but instead should focus on what was disclosed. . . .
Raymond came up with idea at issue first and disclosed it in a provisional patent application that eventually resulted in an issued patent. But, since Raymond’s non-provisional application included [and claimed] additional subject matter, the provisional disclosure no longer counts as effective prior art.
Crouch, Federal Circuit Backtracks (A bit) on Prior Art Status of Provisional Applications and Gives us a Disturbing Result, Patently-O (Sept. 8, 2015). I went on
Here comes the new decision. The USPTO recently designated a PTAB decision as precedential that rejects Dynamic Drinkware as applied to post-AIA patents. Penumbra, Inc. v. RapidPulse, Inc., IPR2021-01466, Paper 34 (March 10, 2023) (made precedential as to section II.E.3 on November 15, 2023). Although the USPTO does not have authority to overrule Federal Circuit decisions regarding the law of patents and what counts as prior art, it skirted the issue here by noting that the statute was substantially rewritten in the AIA.
IPR2021-01466 involves RapidPulse’s U.S. Patent No. 10,531,883 B1 which relates to an aspiration thrombectomy system used to treat ischemic strokes by removing blood clots. The petitioner, Penumbra, challenged the validity of claims 1-18 of the ’883 patent as obvious over prior art references including Teigen et al. (U.S. Patent No. 11,096,712).
But, Teigen only counts as prior art if it can reach back to its provisional application under 102(d). RapidPulse argued that Teigen did not qualify as prior art because the petitioner failed to establish written description support in Teigen’s provisional applications for claimed subject matter as required under Dynamic Drinkware.
In the precedential section of the Penumbra decision, the PTAB rejected the application of Dynamic Drinkware for determining whether a patent is entitled to claim priority to provisional applications for prior art purposes under §§ 102(a)(2)/(d) of the AIA. Under Penumbra, the PTAB identified the two statutory requiements:
- Entitlement: The patent or published application must meet the ministerial/procedural requirements to be entitled to claim priority to the provisional application under 35 U.S.C. §119 or §120. This does not require actually showing the claims are fully supported under §112, but only that the patent document need meets the “‘ministerial requirements’ of §§119 and 120.”
- Disclosure: The provisional application must describe the particular subject matter from the patent or published application that is relied upon as prior art against the challenged patent claims.
In other words, under the AIA statutory framework, a petitioner must show: (1) the reference patent meets certain formalities to claim priority to the provisional, and (2) the provisional application describes the specific portions of the reference patent that are asserted as prior art, even if other portions are not described in the provisional and even if no claims in the prior art patent are fully supported by the provisional.
The PTAB expressly rejects “extending” pre-AIA law, including the Federal Circuit’s Dynamic Drinkware decision, to require establishing §112 support for the claims of the reference patent itself. Only the subject matter relied upon to show obviousness needs written description support in the priority application to reach back to its earlier filing date.
This precedential PTAB decision thus begins to settle the question of whether Dynamic Drinkware applies under the AIA for the effective date of prior art patents and published applications. The holding particularly lowers the burden for petitioners seeking to rely on provisional and foreign filing dates for asserted references because the challenger no longer needs to show § 112 support for a reference patent’s claim, but rather only needs to show that the subject matter at issue is described in the provisional.
This case will certainly be appealed, and it is not entirely clear that the Federal Circuit will agree with the USPTO’s rejection of its precedent. Although the statutory framework is different, the statutory differences do not clearly indicate a shift in precedent. Thus, there is a good chance that this case will also be reversed on appeal.
The ultimate questions here may focus on the purposes and policy goals of the 102(a)(2) prior art provision and the recognition of the provision’s potential unfairness. Namely, is the provision primarily focused on enforcing the first-inventor-to-file aspects of the law? Or, is the provision’s primary purpose simply to expand the scope of invalidating prior art references?
If the main thrust of 102(a)(2) is to codify a first-inventor-to-file system, then the Dynamic Drinkware approach of requiring full written description support for the claims of a reference patent makes more sense. The claims dictate what has been invented first and claimed first. Provisional support for subject matter disclosed but unclaimed in the prior art patent does not establish first-inventor status.
However, if 102(a)(2) is intended principally to expand prior art, then the PTAB’s focus on merely requiring that the provisional describe the relied upon subject matter is more in line with that goal. Expansion of invalidating art takes priority over only allowing first-claiming inventors to rely on early priority dates.
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I would be remiss to post this without harping on one of my pet notions that provisional patent applications should all be considered prior art as soon as their file is open to the public. The USPTO needs to do a better job of making provisional applications publicly available — many include details and descriptions that are not found in the later non-provisional. But, as far as I am aware, there is no searchable database of US provisional applications.