IPR Petitioner Has Burden of Proving Prior Art Patent Entitled to Filing Date of Its Provisional

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Federal Circuit Review No. 67-02.
IPR Petitioner Has Burden of Proving That Prior Art Patent Is Entitled to the Filing Date of Its Provisional

Dynamic Drinkware, LLC v. National Graphics, Inc., No. 2015-1214, 2015 U.S. App. LEXIS 15764 (Fed. Cir. Sep. 4, 2015) (Before Lourie, Bryson, and O’Malley, J.) (Opinion for the court, Lourie, J.). Click Here for a copy of the opinion.

Dynamic Drinkware (“Dynamic”) petitioned for inter partes review of U.S. Patent No. 6,635,196, which the Patent Office (“PTO”) granted. In its petition, Dynamic argued that the claims of the patent were anticipated by U.S. Patent No. 7,153,555 (“Raymond”). The Patent Trial and Appeal Board (“Board”) found that Dynamic “failed to prove by a preponderance of the evidence” that the claims were anticipated under 35 U.S.C. § 102(e)(2) by Raymond. Dynamic appealed.

The Federal Circuit held that the Board correctly placed the burden on Dynamic to prove that Raymond was entitled to the filing date of its provisional application under § 119(e)(1). As the petitioner, Dynamic had the ultimate burden of persuasion to prove unpatentability by a preponderance of the evidence. As for the burden of production, Dynamic satisfied its initial burden by arguing that the claims were anticipated by Raymond under § 102(e)(2). However, this burden then shifted back to Dynamic when the patent owner provided evidence that the claimed invention was reduced to practice before Raymond’s filing date. The burden was then on Dynamic to prove that Raymond was entitled to an earlier effective date.

The Board rejected Dynamic’s argument that the effective date of a patent is presumed to be its provisional application filing date. The Court held that such a presumption was “not justified” because “the PTO does not examine provisional applications as a matter of course.” Since the PTO does not unnecessarily examine priority claims, “the Board has no basis to presume that a reference patent is necessarily entitled to the filing date of its provisional application.”

Substantial evidence also supported the Board’s determination that Dynamic failed to carry its burden. Dynamic independently compared the claims of the ‘196 patent to the disclosure in the Raymond reference and the disclosure in the provisional application. However, Dynamic failed to compare the claims of the Raymond patent to the disclosure in its provisional application. Since Dynamic failed show that the claims in the Raymond patent were supported by the disclosure in the provisional application, the Raymond reference was not entitled to the filing date of its provisional. Accordingly, the Court affirmed.

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One comment so far.

  • [Avatar for Paul F. Morgan]
    Paul F. Morgan
    September 12, 2015 09:08 am

    This should not have been a surprise to an IPR petitioner or patent owner. This issue with priority-claimed provisionals also occurs with CIP parent cases being priority claimed. The specifications are often not identical and there is no legal presumption that they are. Full 112 support in the provisional or other parent case for the subject claims needs to be shown.