When an alleged prior-art patent in an IPR claims priority to a provisional application, and the challenged patent claims priority to an intervening date between the provisional filing date and the non-provisional filing date of the reference patent, the burden is on the Petitioner to prove that the prior-art patent is entitled to the filing date of its provisional application—by demonstrating that the claims of the reference patent are supported by the provisional application.
In Dynamic Drinkware, LLC v. National Graphics, Inc., No. 2015-1214 (Fed. Cir. Sept. 4, 2015), this exact scenario was at issue. The Petitioner requested that the Board reject claims 1 and 12 of U.S. Patent No. 6,635,196 (“the ’196 patent”) as anticipated under 102(e) based on U.S. Patent No. 7,153,555 (“the Raymond patent”). The Federal Circuit affirmed the Board’s decision that the Petitioner failed to carry its burden to show that the challenged claims were unpatentable.
For context, the Raymond patent was filed on May 5, 2000, and claimed priority to a provisional application filed February 15, 2000. The ’196 patent was filed on November 22, 2000, and claimed priority to a provisional application filed on June 12, 2000. The Board found that the patentee had reduced its invention to practice by March 28, 2000.
In reviewing the Board’s decision, the Federal Circuit focused on two different types of burdens: the burden of production and the burden of persuasion. In an IPR, the burden of persuasion remains on the Petitioner to prove unpatentability by a preponderance of the evidence. The burden of production, however, shifts between the parties.
Here, the Petitioner met its initial burden of production by asserting that the Raymond patent was prior art under § 102(e). The burden of production then shifted to the Patent Owner, and the Patent Owner established that the claims of the ’196 patent were entitled to a date earlier than the Raymond patent filing date based on the invention’s reduction to practice. Then, the burden of production shifted back to the Petitioner to establish that the Raymond patent was entitled to the benefit of the filing date of its provisional application under § 119(e). The Petitioner failed to do this.
The Petitioner attempted to establish the Raymond patent as prior art by first comparing the claims of the ’196 patent to the disclosure of the Raymond patent. Then, the Petitioner compared the claims of the ’196 patent to the disclosure of the Raymond provisional application. However, the Board determined, and the Federal Circuit affirmed, that the Petitioner failed to meet its burden of production because the Petitioner failed to compare the claims of the Raymond patent to the disclosure of Raymond provisional application to prove that the Raymond patent claims were entitled to the earlier filing date. Accordingly, the reference patent was only entitled to its filing date, and not its provisional filing date.
…because the PTO does not examine priority claims unless necessary, the Board has no basis to presume that a reference patent is necessarily entitled to the filing date of its provisional application.
The Federal Circuit dismissed Petitioner’s argument that the Raymond patent is presumed to have an effective date as of its provisional application filing date, noting “because the PTO does not examine priority claims unless necessary, the Board has no basis to presume that a reference patent is necessarily entitled to the filing date of its provisional application.”
Because the Petitioner failed to demonstrate that the claims of the Raymond patent were supported by the disclosure in the Raymond provisional application, the Petitioner did not meet its burden of production to establish that the Raymond patent was entitled to the filing date of its provisional application. Accordingly, the Petitioner also failed to meet its burden of persuasion by failing to demonstrate that claims 1 and 2 of the ’196 patent were anticipated by Raymond under § 102(e).