December 28, 2023

On November 15, 2023, Director Vidal designated as precedential Section II.E.3 of the Final Written Decision in Penumbra, Inc. v. RapidPulse, Inc., IPR2021-01466, Paper 34 (March 10, 2023).  This section of the PTAB’s decision addresses whether the priority analysis of Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378-79 (Fed. Cir. 2015), which is in the context of 35 U.S.C. § 102(e) pre-AIA, applies to prior art determinations under AIA § 102. Dec. at 28-35.

One of the patents the Petitioner in Penumbra relied on for obviousness grounds of unpatentability (Teigen) claimed the benefit of two provisional applications filed in 2018, the earliest of which was filed July 24, 2018. Id. at 28.  The Petitioner argued that Teigen qualified as prior art under AIA §§ 102(a)(2) and 102(d)(2) “because the relevant subject matter of Teigen relied on in the Petition is fully supported by both provisional applications such that Teigen has a priority date of July 24, 2018.” Id.

The Patent Owner contended that the priority test of Dynamic Drinkware had to be satisfied for Teigen to qualify as prior art to the challenged patent. Id. at 28-29.  It argued that this test requires a showing by Petitioner 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,” and that because Petitioner failed the first part of the test, Teigen is not prior art. Id. 

Because the challenged patent was found to have a priority date and effective filing date that are after March 16, 2013, the AIA version of § 102 applied. Id. at 29-30.  The PTAB thus evaluated the prior art status of Teigen under AIA §§ 102(a)(2) and (d). Id.  After considering the language of AIA § 102 and USPTO guidance on prior art determinations, the PTAB held 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).” Id. at 30-32.

The PTAB then determined that Teigen met the applicable “ministerial requirements” and, because it found that the Dynamic Drinkware analysis does not apply here, agreed with the parties that it need not reach the issue of whether a claim from Teigen is supported by either of the provisional applications. Id. at 33.  The PTAB also determined that Petitioner sufficiently showed the Teigen provisional applications “describe the subject matter relied on in Teigen.” Id. at 33-34.  It went on to address the merits of the instituted grounds of unpatentability and ultimately found the challenged claims were shown to be obvious. Id. at 34-69.  Patent Owner’s request for rehearing was denied and a Notice of Appeal was subsequently filed.