Vidal Designates Precedential PTAB Decision on Provisionals as Prior Art Under AIA

U.S. Patent and Trademark Office (USPTO) Director Kathi Vidal today designated as precedential a Patent Trial and Appeal Board (PTAB) decision from March of this year that held a precedential U.S. Court of Appeals for the Federal Circuit (CAFC) ruling on prior art determinations for provisional patent applications applies only to pre-America Invents Act (AIA) patents.

The PTAB decision deemed precedential is Penumbra, Inc. v. RapidPulse, Inc., IPR2021-01466, Paper 34 (March 10, 2023) – (precedential as to section II.E.3). There, the PTAB found that Penumbra proved by a preponderance of the evidence that claims 1–18 of U.S. Patent No. 10,531,883 were unpatentable.

The section of the Final Written Decision (FWD) designated as precedential has to do with RapidPulse’s contention that, under the CAFC’s decision in Dynamic Drinkware, LLC v. National Graphics, Inc., in order to establish that the prior art reference in question, “Teigen”, was entitled to the priority benefit of its provisional applications—U.S. Provisional Application Nos. 62/778,708 and 62/702,804—”Petitioner has to show that (1) at least one claim of Teigen is supported by the Teigen provisionals, and (2) the portions of Teigen relied on to argue obviousness are supported by the provisional applications.” Since the ‘804 provisional did not provide written description support for one claim of Teigen, RapidPulse argued that Penumbra failed the first part of the Dynamic Drinkware analysis. Penumbra countered that the first part of the Dynamic Drinkware analysis is limited to pre-AIA patents and does not apply to Teigen.

The PTAB explained in its FWD that Penumbra was correct:

“For the reasons discussed below, we find that, under AIA §§ 102(a)(2) and 102(d), there is no need to evaluate whether any claim of a reference patent document is actually entitled to priority when applying such a reference patent as prior art.”

As explained in the Dynamic Drinkware decision, “the relevant provision of § 102(e)(2) was reorganized into newly designated § 102(d)(2) when certain aspects of the Leahy–Smith America Invents Act…took effect on March 16, 2013. Because the application for the patent at issue in this case was filed before that date, we refer to the pre-AIA version of § 102.”

In the Penumbra PTAB case, the patent in question had an earliest effective filing date of July 20, 2018, and thus the AIA version of Section 102 applied. The PTAB added:

“Based on the above, we determine that, for prior-art determinations under AIA § 102, ‘there is no need to evaluate whether any claim of [a reference] patent document is actually entitled to priority or benefit under 35 U.S.C. 119, 120.” MPEP § 2154.01(b) (emphasis added). Rather, under the AIA, a reference patent document need only meet the ‘ministerial requirements’ of §§ 119 and 120, and the provisional or other earlier application(s) to which the reference patent document claims a right of priority must ‘describe[] the subject matter’ relied upon in the reference patent document as prior art. 35 U.S.C. § 102(d)(2).”

This is the fifth decision designated as precedential in 2023.

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