Dynamic Drinkware, LLC v. National Graphics, Corporation. (Given. Cir. 2015)
It’s well recognized that to be able to establish that the patent is titled to assert priority to some formerly filed provisional application, it should be proven the claims from the patent wrote description support within the provisional. Indeed, this is exactly what 35 U.S.C. § 119(e)(1) requires:
A credit card applicatoin for patent filed under section 111 (a) or section 363 to have an invention disclosed in the way supplied by section 112 (a) (apart from the necessity to disclose the very best mode) inside a provisional application filed under section 111 (b), by an inventor or inventors named within the provisional application, shall have a similar effect, regarding such invention, as if filed around the date from the provisional application filed under section 111 (b) . . . .
It has additionally been a generally held thought that for any potentially invalidating prior art mention of the be titled towards the filing date of the provisional application, the provisional application itself must retain the same invalidating disclosure. Quite simply, it’s been thought that if your provisional application contains an invalidating disclosure, any patent claiming priority and that contains exactly the same (while not always verbatim) disclosure as that provisional could be prior art by the provisional filing date. However, recently, in Dynamic Drinkware, LLC v. National Graphics, Corporation., the government Circuit described that people counseled me doing the work wrong. Rather, just like every other analysis ascertaining valid priority states provisional applications, it’s the claims from the relevant patent which are important. Or, because the Federal Circuit place it “[a] provisional application’s effectiveness as prior art depends upon its written description support for that claims from the issued patent which it had been a provisional.” Obviously, this could produce the odd situation (as described below) in which a provisional application contains no disclosure whatsoever associated with the patent whose validity has been challenged, however it nonetheless may be used to establish an early on priority date — provided the disclosure does offer the claims from the invalidating patent reference.
This situation came about poor an IPR appeal in the Patent Trial and Appeal Board (“Board”). We’ve got the technology wasn’t particularly significant for that issues addressed, but National Graphics’ patent (U.S. Patent No. 6,635,196) was forwarded to making molded plastic articles bearing “lenticular” images. Lenticular imaging is described on National Graphics website. Dynamic Drinkware filed an IPR petition asserting that U.S. Patent No. 7,153,555 (“the Raymond patent”) anticipated this patent. The Board ultimately figured that Dynamic hadn’t meet its burden of creating with a preponderance from the evidence that two claims from the ‘196 patent were anticipated under § 102(e)(2) because, partly, it didn’t prove the Raymond patent was titled towards the provisional application filing date that it claimed priority (“the Raymond provisional”). Importantly, the Board thought it was significant that Dynamic only compared claims from the ‘196 patent towards the Raymond provisional instead of evaluating the servings of the Raymond patent relied upon to invalidate the ‘196 patent towards the Raymond provisional. Then, since the ‘196 patent claims were discovered to be reduced to rehearse between your filing dates from the Raymond provisional and also the Raymond patent, the Board concluded that it hadn’t been invalidating prior art.
The Government Circuit first worked using the issue of who’d the responsibility of creating either the Raymond patent was titled towards the prior date from the Raymond provisional, or the Raymond patent wasn’t titled towards the earlier priority date. Unsurprisingly, the responsibility of persuasion in creating the invalidity from the ‘196 patent never shifted in the petitioner, Dynamic. Rather, the appropriate issue was the responsibility of production. Within this situation, Dynamic initially stated that the Raymond patent anticipated certain claims from the ‘196 patent. This shifted the responsibility of production towards the patent owner. National had two choices for meeting this burden either reason that the Raymond patent didn’t anticipate, or, what National did, it reduced to rehearse prior to the Raymond patent. Once more, the development burden shifted, this time around to Dynamic to demonstrate the potentially invalidating Raymond patent was titled towards the Raymond provisional filing date. It didn’t meet this burden, and for that reason didn’t satisfy the ultimate burden of proof.
The Government Circuit noticed that Dynamic was essentially quarrelling that the patent is presumptively titled towards the priority date of their provisional application. This can’t be the situation since the Patent Office doesn’t routinely examine priority claims produced in a patent application. Only when it’s essential to make this type of determination will the patent office achieve this, for example when a job candidate tries to overcome a previous art reference or perhaps in an interference setting. See M.P.E.P. § 211.05(I)(A). Therefore, the government Circuit concluded, this type of presumption is wrong.
Because of its part, in quarrelling this appeal, National contended that Dynamic had waived the argument from the provisional filing date because it wasn’t produced in the initial petition. However, a legal court noticed that Dynamic didn’t have to raise this kind of argument to begin with, since the Raymond patent was regarded as prior art towards the ‘196 patent until Dynamic established an early on reduction to rehearse date. It had been only if the responsibility of production shifted that Dynamic was needed in the future forward using the provisional priority date argument.
Finally, as referenced above, Dynamic’s argument unsuccessful since it incorrectly made its priority claim that they can the Raymond patent. A Legal Court emphasized that “the relevance from the Raymond provisional application date here’s not to own Raymond patent any earlier priority more than a competing application or patent, but for everyone 3rd party Dynamic’s objective of creating earlier prior art from the ‘196 patent.” Therefore, because Dynamic didn’t compare the claims from the Raymond patent towards the Raymond provisional, it couldn’t prove the patent was titled to priority date.
It’s understandable that like a practical consideration, any claim of priority to some provisional should focus from the claims from the patent that priority is searched for. Obviously, it could also be better to show whereby the provisional the disclosure are available that’s highly relevant to the patent that invalidation is searched for. However , a predicament could be envisioned where a provisional application contains disclosure “A,” however a subsequent non-provisional application is filed adding disclosure “B.” This “B” disclosure might be like the claims of some other patent by having an earlier filing date compared to non-provisional application. The last conventional knowledge was this non-provisional application (or subsequent patent) couldn’t invalidate this other patent, whether or not the provisional filing date was earlier, since the provisional didn’t retain the invalidating “B” disclosure. Based on Dynamic Drinkware, however, if the non-provisional application (or any resulting patent) only contained claims which were based on disclosure “A,” it might nonetheless be anticipatory regarding the “B” disclosure. While the opportunity of mischief for patent applicants is most likely minimal, because there’s still a 1-year deadline for claiming priority towards the provisional, it will likely be interesting to determine how this latest method of analyzing priority claims will have out.
Dynamic Drinkware, LLC v. National Graphics, Corporation. (Given. Cir. 2015)
Panel: Circuit Idol judges Lourie, Bryson, and O’Malley
Opinion by Circuit Judge Lourie