In a January 27, 2022 non-precedential decision in IPR2021-01328, the Patent Trial and Appeal Board (“PTAB”) denied institution of an inter partes review (“IPR”) proceeding because the petitioner failed to prove that the primary patent reference was prior art to the challenged patent. Specifically, despite relying on the filing date of a provisional application in order to assert that the primary patent reference used in all of its grounds was prior art to the challenged patent, in its IPR petition, the petitioner only addressed one of the two requirements in order to demonstrate entitlement to priority.
In its IPR petition, the petitioner (Forescout Technologies, Inc.) challenged certain claims of U.S. Pat. No. 9,503,421 (the “Challenged Patent”), which was filed on March 17, 2014, with two obviousness grounds that both relied on U.S. Pat. No. 10,129,290 to Thomas et al. (the “Primary Reference”). The petitioner alleged that the Primary Reference, which was filed on April 1, 2016, was entitled to the priority benefit of the February 24, 2014 filing date of its provisional application (U.S. Prov. Pat. App. No. 61/944,019 (the “Relied-on Provisional”)) for prior art purposes under 35 U.S.C. § 102(a)(2).
To establish that a reference patent (or patent printed publication) is entitled to the benefit of its provisional application’s filing date for prior art purposes, a petitioner has the burden to show that both of the following two requirements are met in its IPR petition:
- First, a petitioner must show that the provisional application provides sufficient support for at least one claim in the reference patent.[i][ii]
- Second, a petitioner must show that the provisional application provides sufficient support for the subject matter relied upon for prior art purposes in the reference patent.[iii][iv][v][vi][vii]
In IPR2021-01328, and although the petitioner argued that, under the post-AIA version of § 102, “no need exists to evaluate whether [the Primary Reference] is [actually] entitled to … priority to the [Relied-on Provisional]” (an argument that the PTAB rejected in its institution decision), the petitioner addressed the first requirement (under Dynamic Drinkware) in its IPR petition, and argued that at least one claim of the Primary Reference had written description support in the Relied-on Provisional.[viii][ix] However, in its decision denying institution, the PTAB agreed with the patent owner (Fortinet, Inc.) that the petitioner failed to address the second requirement (under Giacomini), i.e., the petitioner did not make any attempt to show that the Relied-on Provisional provided sufficient support for the portions of the Primary Reference that the petitioner used in its grounds in its IPR petition.[x] In doing so, the PTAB confirmed that post-AIA § 102(d)(2) requires petitioners to make the Giacomini second requirement showing in their petitions.[xi] In this particular case, the patent owner identified several instances in which the petitioner relied on subject matter in the Primary Reference that was not found in the Relied-on Provisional.[xii] Accordingly, since the petitioner failed to demonstrate that the Primary Reference, which it relied on in all grounds of its petition, was prior art, the PTAB denied institution for failure to demonstrate a reasonable likelihood that the challenged claims were unpatentable.
Takeaways for PTAB practitioners:
If you are representing a petitioner, regardless of whether you are challenging a pre-AIA or post-AIA patent, and if you are using a patent, or patent publication, reference that must be entitled to the fiiling date of a provisional application in order to qualify as prior art, make a showing, in the petition itself, that the provisional application meets both the (1) Dynamic Drinkware requirement (supports at least one claim of the later-filed patent/patent publication reference), and (2) Giacomini requirement (supports the relied-on subject matter of the later-filed patent/patent publication reference).
If you are representing a patent owner, this is another threshold, pre-institution showing that you should be looking for in Petitions, and for which you should be raising deficiencies in your Patent Owner Preliminary Responses.
[i] See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1382 (Fed. Cir. 2015) (“A provisional application’s effectiveness as prior art depends on its written description support for the claims of the issued patent of which it was a provisional.”). Note: The Federal Circuit has not yet ruled on whether Dynamic Drinkware, and specifically its reliance on In re Wertheim, 646 F.2d 527, 537 (CCPA 1981), extends to post-AIA 35 U.S.C. § 102(d), and expressly declined to do so in its Dynamic Drinkware decision. Dynamic Drinkware, 800 F.3d at 1382 n.2. However, as the petitioner in IPR2021-01328 noted, the PTAB has applied this first Dynamic Drinkware requirement in several post-AIA cases. See Forescout Technologies, Inc. v. Fortinet, Inc., IPR2021-01328, Paper 1 (August 11, 2021), at 15 n.3.
[ii] Ex parte Mann, 2016 WL 7487271, at *6 (P.T.A.B. Dec. 21, 2016) (explaining whether Dynamic Drinkware requires “support in the provisional . . . for all claims, any claim, or something in between”)
[iii] See In re Giacomini, 612 F.3d 1380, 1383 (Fed. Cir. 2010) (requiring that the relied upon subject matter “was carried forward from an earlier U.S. provisional application or U.S. non-provisional application”).
[iv] Cox Communications, Inc. v. AT&T Intellectual Property I, L.P., IPR2015-01227, Paper 70 at 29 (P.T.A.B. Nov. 16, 2015) (“[T]he material relied upon as teaching the subject matter of the challenged claims must be carried through from that earlier filed application to the reference patent being used against the claim.”) (citing Giacomini, 612 F.3d at 1383).
[v] Ex parte Mann, 2016 WL 7487271, at *5 (P.T.A.B. Dec. 21, 2016) (explaining that “[t]his subject matter test is in addition to the comparison of claims required by Dynamic Drinkware,” and that “absurd results would be reached if a subject matter test were not required”)
[vi] Comcast Cable Commc’ns, LLC v. Promptu Sys. Corp., IPR2018-00345, Paper 10 at 25-26 (P.T.A.B. July 2, 2018) (finding Petitioner’s analysis insufficient to show “how the [provisional application] provides support for the subject matter relied upon [in the asserted reference]”).
[vii] See also MPEP § 2151 (9th Ed., Rev. 10.2019, June 2020) (“[a] U.S. patent document is effective as prior art as of the filing date of the earliest application to which benefit or priority is claimed and which describes the subject matter relied upon.”)
[viii] Forescout Techs., Inc. v. Fortinet, Inc., IPR2021-01328, Institution Decision, Paper 12 (P.T.A.B. Jan. 27, 2022), at 7.
[ix] Forescout Techs., IPR2021-01328, Petition, Paper 1 (August 11, 2021), at 14-21; see also n.1 above..
[x] Forescout Techs., IPR2021-01328, Institution Decision at 8-10.
[xi] Id. at 9-10 (“Forescout has an initial burden, not just to compare the challenged claims with the disclosure in [the Primary Reference], but to show that the subject matter that Forescout relies on in [the Primary Reference] is also found in the [Relied-on Provisional].”)
[xii] See Forescout Techs., IPR2021-01328, Patent Owner Preliminary Response, Paper 6 (October 29, 2021), at 16-22.