Takeaways from PTAB’s Precedential Decision on Prior Art Analysis for Post-AIA Patents

“Even though Dynamic Drinkware does not apply to prior art analysis for post-AIA patents, petitioners must show that the reference patent meets the ‘ministerial requirements’ of Sections 119 and 120.”

prior artIn March 2023, the Patent Trial and Appeal Board (Board) addressed in Penumbra, Inc. v. Rapidpulse, Inc.,  IPR2021-01466, Paper 34 (Mar. 10, 2023), a key issue in inter partes reviews: how to establish a reference patent as prior art based on the filing date of an earlier-filed application, such as a provisional. The Board held that the requirements of the Federal Circuit’s decision in Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375 (Fed. Cir. 2015), do not apply for post-America Invents Act (AIA) patents. Penumbra, IPR2021-01466, Paper 34 at 29-35. On November 15, 2023, U.S Patent and Trademark Office (USPTO) Director Kathi Vidal designated the Penumbra decision precedential. This article explores the evolution of the law on this issue.

Changes Under Dynamic Drinkware

In September 2015, the Federal Circuit decided Dynamic Drinkware, holding that a patent challenger carries the burden to prove that a reference patent is entitled to the filing date of an earlier-filed application. Dynamic Drinkware, 800 F.3d at 1379-80. According to the court, a patent challenger must show that at least one claim of the reference patent is supported by the disclosure of the earlier-filed application, in compliance with pre-AIA 35 U.S.C. § 112, ¶ 1. Id. at 1380.

The AIA, however, changed the requirements for a reference to qualify as prior art under Sections 102(a)(2) and 102(d)(2). As such, questions remained whether the Dynamic Drinkware analysis applied to post-AIA patents, as the Court’s decision was limited to pre-AIA patents on its face. Id. at 1381, fn. 2.

Changes Under AIA 35 U.S.C. § 102

Since the Federal Circuit decided Dynamic Drinkware, practitioners have questioned whether its requirements apply to post-AIA patents. The AIA changed many aspects of patent law when it took effect in 2013, including how a reference qualifies as prior art. AIA Section 102(a)(2) provides:

“the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.”

Section 102(d)(2) provides:

“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 under section 119, 365(a), 365(b), 386(a), or 386(b), or to claim the benefit of an earlier filing date under section 120, 121, 365(c), or 386(c) based upon 1 or more prior filed applications for patent, as of the filing date of the earliest such application that describes the subject matter.”

The MPEP explains that for post-AIA patents, for prior art purposes, there is no need to determine “whether a patent or published application is actually entitled to priority or benefit with respect to any of its claims.” MPEP §2154.01(b). Instead, “a prior-filed application to which a priority or benefit claim is made must describe the subject matter from the U.S. patent document relied upon in a rejection.” And the subject matter described in the prior-filed application does not need to meet the enablement requirements of § 112(a). Id.

Recognizing some potential for confusion, the USPTO issued a Memorandum re: Critical Reference Date Under pre-AIA 35 U.S.C. §102(e) in April 2018. This guidance states that:

“the requirement that one of the claims in a patent [document]…be supported by the written description of the provisional application in compliance with pre-AIA 35 U.S.C. § 112, first paragraph (or AIA 35 U.S.C. § 112(a)), is not applicable when examining an application subject to the first inventor to file provisions of the AIA.”

Determining whether a reference patent qualifies as prior art to a post-AIA patent under § 102 is thus not affected by Dynamic Drinkware.

Treatment by the Board

The Board has applied the MPEP instructions and USPTO guidance in its analysis of whether a reference patent is prior art from its provisional filing date in inter partes and post grant reviews. For example, in G&H Diversified Manufacturing, LP v, Dynaenergetics Europe Gmbh, PGR2021-00078, Paper 10 (Nov. 1, 2021), the Board relied on the MPEP to hold that “the disclosures in the [reference patent] are available as prior art…to the extend described in the earlier-filed [provisional].” Because the petitioner demonstrated both the reference patent and earlier-filed provisional disclosed the subject matter of the challenged patent, the petitioner “made a sufficient showing with respect to the asserted prior art grounds.” Id. at 12-13.

Similarly, in Apple v. Telefonaktiebolaget LM Ericsson (“Apple I”),  IPR2022-00341, Paper 10 (Sep. 14, 2022), the Board held that “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 document as prior art.” Id. at 15-16. Accordingly, there was no need for the petitioner to undertake a Dynamic Drinkware analysis. Id. at 20. The petitioner’s parallel citations to the prior art reference and its provisional, chart comparing excerpts between the two documents, and related expert testimony was sufficient for the Board to consider the reference as prior art as of the filing date of its provisional. Id. at 21-22.

And most recently, in Penumbra, the Board held:

“There is no need to evaluate whether any claim of [a reference] patent document is actually entitled to priority of benefit under 35 U.S.C. 119, 120. Rather, under the AIA, a reference patent document need only meet the ‘ministerial requirements’ of §§ 119 and 120, and the provisional or 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.”

Penumbra, IPR2021-01466, Paper 34 at 32 (internal citations omitted). To meet these ministerial requirements, the reference patent must (1) “properly claim[] the benefit” of an earlier-filed provisional, (2) be “filed co-pending with the provisional application[],” and (3) “share common inventors” with the earlier-filed application. Id. at 32-33. As “the Dynamic Drinkware analysis does not apply” to post-AIA patents, the Board “need not reach the issue of whether a claim from [the reference patent] is supported by [an earlier-filed provisional].” Id. at 33.


Even though Dynamic Drinkware does not apply to prior art analysis for post-AIA patents, petitioners must show that the reference patent meets the “ministerial requirements” of §§ 119 and 120. It may also be advantageous for petitioners to establish similar disclosures between the reference patent and the earlier-filed application. This may be accomplished, as in Apple I, through dual citations, presentation of a table showing how passages in a reference patent are supported by an earlier-filed application, and possibly even including expert testimony on the topic. Patent owners, on the other hand, may consider scrutinizing a petitioner’s showing. Under Penumbra, patent owners also want to pay special attention to whether the reference patent meets the “ministerial requirements” of §§ 119 and 120.

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Join the Discussion

One comment so far.

  • [Avatar for Max Drei]
    Max Drei
    December 8, 2023 04:59 am

    Looking in from Europe, I am interested in the cited G&H decision (see quote from it above) and the situation (not as rare as a black swan) where a provisional application contains a key disclosure (determinative of the validity issue) but that vital disclosure is not present in the non-pro successor to the pro, nor in the specification of the patent that issues on the non-pro and enjoys priority from the filing date of the pro. The key disclosure becomes available to the public when the USPTO lays open its file to public inspection. But I wonder, given G&H, can a party attacking validity of a claim back-date that key disclosure of the laid-open pro to the filing date of the pro. for the purposes of prior art attack on another’s claim?

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