By Ernie Oleksy,* Robby Breetz, and Matt Johnson

Although provisional applications can be used to secure an earlier date for 102(e), the petitioner bears the burden of production in establishing a prior art date for the asserted prior art. The Patent Trial and Appeal Board (“PTAB”) explored this nuance when Motorola Mobility LLC (“Motorola”) claimed a patent’s provisional application supported a later-filed patent (“Hunzinger”) in arguing that Hunzinger was prior art to Maxell, Ltd’s (“Maxell”) patent, U.S. 7,072,673.  Motorola Mobility LLC v. Maxell, LTD, No. IPR2023-00110 (P.T.A.B. June 15, 2023) (“Decision”).

Motorola attempted to predate the challenged ʼ673 patent under 102(e) using a provisional application (“Hunzinger Provisional”) because the reference itself, Hunzinger, was filed after the challenged patent.  Decision at 13. The PTAB noted that petitioners begin with the burdens of persuasion and production to show unpatentabilityId. at 19.  The burden of production may shift to the patent owner after a petitioner demonstrates an earlier prior art date—like from a provisional application.  Id.

Maxell’s patent describes technology which calculates a radio handset’s location.  Id. at 3.  Generally, the ʼ673 patent’s invention uses base stations with identical spread codes and pilot PN offset values.  Id.  These offset values identify handset locations by isolating the stations’ different PN offset values.  Id. at 3–4.  The asserted prior art, Hunzinger, describes technology that similarly determines the position of a mobile station through global positioning, triangulation between base stations, and internal calculations.  Id. at 14.

To prove Hunzinger was entitled to its provisional, Motorola was required to show: (1) the provisional application must sufficiently support one or more claims in the reference patent or published patent application (here, Hunzinger) and (2) the provisional application must sufficiently support the subject matter which that patent or patent application relied upon for prior art purposes.  See MPEP § 2136(I)(B).

The PTAB found Motorola did not show that the provisional sufficiently supported the subject matter relied upon for prior art purposes.  Decision at 23.

For instance, on the limitation of “storing information of a plurality of radio stations,” Motorola asserted that “essentially the entirety of the description in the Hunzinger Provisional,” supported this limitation.  Id. at 24. This disclosure from Hunzinger Provisional was found insufficient to show reliance because “more than ‘merely render[ing] the invention obvious’” is needed to say a patent relied upon its provisional application’s subject matter.  Id. at 26–27 (quoting Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351–52 (Fed. Cir. 2010) (en banc)).

Similarly, the PTAB rejected Motorola’s argument that “Hunzinger discloses a mobile station containing a processor 200 (i.e., a CPU)” because Hunzinger’s claim 1 recites elements like “storing means,” “signal receiver,” and “CPU,” but “Hunzinger Provisional [merely] generically refers to a ‘system’ and does not describe the system as being a mobile station as described in Hunzinger [without reference to any of those elements].”  Id. at 25–26.

Because the PTAB found that Motorola provided only “bare citation[s] . . . with no further explanation,” the prior-art reference Hunzinger was not entitled to its provisional’s filing date for prior-art purposes.  Id. at 23 (emphasis added).


Petitioners attempting to use a prior-art reference’s provisional application should specifically identify and explain the provisional application’s disclosures that form the basis for the prior-art subject matter.

* Ernie was a Summer Associate in Jones Day’s Cleveland Office.

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Matt Johnson is one of the Firm's primary contacts on practice before the PTAB. Currently co-chairing the Firm's PTAB subpractice and involved in proceedings at the Board since the first day of their availability in September 2012, Matt regularly represents clients as both petitioners and patent owners at the Board. He further works as an advocate for clients in appeals from Board proceedings at the Federal Circuit.