By Charles Kim and Anuja Mehta –
The Federal Circuit recently issued a precedential decision in Dental Monitoring SAS v. Align Technology, Inc., vacating and remanding a PTAB final written decision that held Dental Monitoring’s claims unpatentable as obvious.
Key Question
Whether Carrier, a published U.S. patent application, qualifies as prior art under AIA § 102(d)(2) based on its provisional or non-provisional filing date.
Background
Align Technology filed an IPR petition challenging claims 1–15 of U.S. Patent 10,755,409, owned by Dental Monitoring. The PTAB issued a final written decision that determined the challenged claims unpatentable as obvious over Salah, Carrier, and Maninis.
Carrier is a published U.S. patent application (2021/0068923) claiming benefit of an earlier provisional application. The Board found that the effective filing date of the ’409 patent, which claimed priority to an earlier foreign application, fell between the filing date of Carrier’s provisional application and its non-provisional application.
Dental Monitoring argued that under Dynamic Drinkware, LLC v. National Graphics, Inc., 800 F.3d 1375 (Fed. Cir. 2015), Carrier’s provisional application filing date can be used only if the provisional application provided written description support for at least one claim of the non-provisional application.
The Board disagreed, holding that Dynamic Drinkware’s written description support analysis applied only to prior art under pre-AIA § 102(e) and did not govern prior art determinations under AIA § 102(d)(2), which applies to applications filed on or after March 16, 2013.[1]
Instead, the Board relied on its precedential in Penumbra, Inc. v. RapidPulse, Inc., IPR2021-01466, 2023 WL 2605070 (PTAB Mar. 10, 2023), under which a reference U.S. patent document receives an earlier application’s filing date if it satisfies the “ministerial requirements” of Sections 119 and 120 (i.e., without evaluating whether it is actually entitled to priority or benefit) and the earlier application describes the subject matter relied upon as prior art under AIA § 102.[2] On that basis, the Board treated Carrier as prior art as of its provisional application’s filing date.
Discussion
The Federal Circuit rejected the “ministerial requirements” approach under Penumbra, holding that the phrase “entitled to claim a right of priority under [§] 119” in § 102(d)(2) incorporates § 119(e)(1)’s requirement of disclosure “in the manner provided by [§] 112(a).” The Court also addressed the distinction between “entitled to claim a right of priority” in § 102(d)(2) and “entitled . . . to a right of priority” in § 100(i), explaining that § 100(i) determines the effective filing date of a claimed invention but does not alter the substantive requirements for determining a reference’s effective filing date under § 102(d)(2). The Court held that “the statutory text requires § 112(a) support for at least one of the prior art patent’s published claims before that reference may obtain an earlier filing date for prior art purposes.”
Notably, the Federal Circuit had previously affirmed the Board’s Penumbra decision by Rule 36 judgment without opinion. The Court clarified that a Rule 36 affirmance “does not endorse or reject any specific part of the [Board’s] reasoning” and “has no precedential value and cannot establish applicable Federal Circuit law.”
Because the Board made no findings that Carrier’s provisional application provides § 112(a) support for at least one claim of Carrier, the Court vacated and remanded.
Takeaways
Penumbra’s ministerial standard abrogated
The PTAB’s Penumbra “ministerial” standard no longer applies. To rely on a provisional application’s filing date for prior art purposes under AIA § 102(d)(2), at least one claim of the reference U.S. patent document (U.S. patent, U.S. published application, or likely also the WIPO publication of a PCT application that designates the U.S., although the Court addressed only a published U.S. application) must be sufficiently supported by the provisional application under § 112(a).
Enablement
Note that § 112(a) requires written description and enablement support.[3] Dynamic Drinkware addressed both, requiring that the provisional specification “contain a written description of the invention . . . in such full, clear, concise, and exact terms . . . to enable an ordinarily skilled artisan to practice the invention claimed in the non-provisional application.” 800 F.3d at 1378 (first and second emphases added) (quoting New Railhead Mfg., L.L.C. v. Vermeer Mfg. Co., 298 F.3d 1290, 1294 (Fed. Cir. 2002)).[4] Dental Monitoring, however, is silent on the enablement requirement of § 112(a) as that issue was not presented before the Federal Circuit.
Patent challengers and owners
Patent challengers relying on a U.S. patent document’s provisional filing date must now affirmatively demonstrate sufficient § 112(a) support in the provisional application for at least one claim of the U.S. patent document. Also, challengers will still likely need to show that the earlier application describes the subject matter relied upon as prior art.[5]
Patent owners gain a new tool to disqualify such references by scrutinizing whether the provisional application sufficiently supports at least one claim of the reference under § 112(a).
Pre-AIA vs AIA 102
Pre-AIA § 102(e) limits a U.S. patent document’s effective filing date to its earliest U.S. filing date,[6] while AIA § 102(d)(2) allows U.S. patent documents to have an effective filing date of the earliest U.S. or foreign application. Dental Monitoring’s reasoning could therefore extend to U.S. patent documents claiming foreign priority under 35 U.S.C. § 119, requiring the foreign application to provide § 112(a) support for at least one claim of the U.S. patent document.[7]
AI-generated provisionals
Sufficient § 112(a) support in a provisional application will become critical, especially as AI tools are increasingly used to aid in drafting such applications. A provisional application that lacks § 112(a) support (AI-generated or otherwise) creates risk for the applicant, whose claims may not be entitled to the earlier filing date, and for those relying on the resulting published application or patent as prior art under AIA § 102.
[1] As a side note, AIA § 112 applies to applications filed on or after September 16, 2012.
[2]The Penumbra decision, a portion of which was made precedential in November 2023, referred to prior USPTO guidance that explained the requirement that one of the claims in the reference US patent document be supported by the written description of the provisional application under pre-AIA § 112 (first paragraph) or AIA § 112(a), “is not applicable when examining an application subject to the first inventor to file provisions of the AIA.” Robert W. Bahr, Memorandum re: Critical Reference Date Under pre-AIA 35 U.S.C. § 102(e), at 2 (Apr. 5, 2018), available at https://www.uspto.gov/sites/default/files/documents/dynamic_memo_05apr2018_0.pdf (first citing Dynamic Drinkware, 800 F.3d at 1381 n.2; then citing 157 Cong. Rec. S1369-70 (Mar. 8, 2011) (noting that the Congressional Record “explain[s] the distinction between being entitled to claim priority or benefit in AIA 35 U.S.C. § 102(d) and actually being entitled to priority or benefit under 35 U.S.C. §§ 119, 120, or 365”)).
[3] Best mode is a third requirement of § 112(a), but is not relevant here.
[4] See Amgen Inc. v. Sanofi, 872 F.3d 1367, 1380 (Fed. Cir. 2017) (“In Dynamic Drinkware, we clearly explained that for a non-provisional application to claim priority to a provisional application for prior art purposes, ‘the specification of the provisional [application] must contain a written description of the invention . . . in such full, clear, concise, and exact terms, to enable an ordinarily skilled artisan to practice the invention claimed in the non-provisional application.’”).
[5] See MPEP § 2154.01(b) (“AIA 35 U.S.C. 102(d) requires that 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.”).
[6] In re Hilmer, 359 F.2d 859 (C.C.P.A. 1966). Note that certain PCT international application filings are considered filings in the U.S. for prior art purposes under pre-AIA § 102(e).
[7] See In re Gosteli, 872 F.2d 1008, 1011 (Fed. Cir. 1989) (“[T]o preserve symmetry of treatment between sections 120 and 119, the foreign priority application must be examined to ascertain if it supports, within the meaning of section 112, ¶ 1, what is claimed in the United States application.”); see also MPEP § 216 (“The foreign application must be examined for the question of sufficiency of the disclosure under 35 U.S.C. 112 as well as to determine if there is a basis for the claims sought.”).