PTAB Confirms Petitioners Must Make Two Distinct Showings to Prove a Primary Patent Reference’s Entitlement to a Provisional Application’s Filing Date

In a January 27, 2022 non-precedential decision in IPR2021-01328, the Patent Trial and Appeal Board (“PTAB”) denied institution of an inter partes review (“IPR”) proceeding because the petitioner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.

PTAB Can Consider § 101 When Reviewing Amended Claims

The Patent Trial and Appeal Board has designated as precedential a decision holding that the Board may consider § 101 when evaluating the patentability of a patent owner’s proposed substitute claims in a motion to amend. The decision clarifies the impact of the Federal Circuit’s Aqua Products decision on the issue of subject matter eligibility of substitute claims. Continue reading “PTAB Can Consider § 101 When Reviewing Amended Claims”

Now in Effect – PTAB’s New Motion to Amend Procedures

Overview

As recently noticed in the Federal Register, the Patent Trial and Appeal Board’s (PTAB or Board) new motion to amend (MTA) procedures are now in effect as a one-year pilot program.  [1]  In sum, the patent owner (PO) now has the option to ask for preliminary guidance from the Board about its substitute claims in a first MTA, and can file a revised motion—with new substitute claims—after either the petitioner’s opposition paper or, if guidance was requested, after the Board issues its preliminary guidance.  The revised MTA then generates a further opposition opportunity for the petitioner on a tight, six-week turnaround.  In this article, we highlight important details of the new procedures, discuss the impact to PTAB practice, and provide some practice pointers to consider when forming PTAB strategy under the new procedures. Continue reading “Now in Effect – PTAB’s New Motion to Amend Procedures”

Law of the Case? Not in our Forum! Continuing Trend of PTAB Aggressively Using Its Discretionary Powers to Deny Institution of IPRs

By statute, Congress gave the Patent Trial and Appeal Board (“PTAB”) broad discretionary power in deciding whether or not to institute an inter partes review (“IPR”) proceeding.[1] Recently, the PTAB’s application of this discretionary authority to deny IPR petitions has continued to be aggressive in frequency and scope.

Several possible rationales for this continued upward trend exist including: (1) docket management, (2) concerns with protecting review process/patent owners from “abuse”, and (3) the SAS Institute Inc. v. Iancu decision.[2] Continue reading “Law of the Case? Not in our Forum! Continuing Trend of PTAB Aggressively Using Its Discretionary Powers to Deny Institution of IPRs”

Forum Selection Clause in Patent License Found to Preclude Challenging Patents at the Patent Trial and Appeal Board

On March 23, 2018, the U.S. District Court for the Northern District of California ordered a patent licensee to withdraw petitions to the Patent Trial and Appeal Board (“PTAB”) seeking to invalidate a licensor’s patents. The Court held that the forum selection clause of the patent license between the parties – which stipulated that “the parties agree…that disputes shall be litigated before the courts in San Francisco County or Orange County, California” – extinguished the patent licensee’s right to bring challenges against the licensed patents in the PTAB located in Alexandria, Virginia. Continue reading “Forum Selection Clause in Patent License Found to Preclude Challenging Patents at the Patent Trial and Appeal Board”

Federal Circuit Reverses Course, Allows Appeal of Time-Bar Determination

This blog post was co-authored by Nicole Candelori and Justus Getty

In a break from previous cases on the issue, the Federal Circuit in January issued an en banc decision holding that time-bar determinations in inter partes review (IPR) proceedings are appealable. Wi-Fi One, LLC vs. Broadcom Corporation Nos. 2015-1944, 2015-1945, 2015-1946, 2018 U.S. App. LEXIS 387 (Fed. Cir. Jan. 8, 2018). As a result, decisions of the Patent Trial and Appeal Board (“Board”) finding claims of several Wi-Fi One, LLC (“Wi-Fi One”) patents to be unpatentable were remanded to the Board for consideration of whether the petitioner, Broadcom Corporation (“Broadcom”), was time-barred from bringing the petitions.

Under 35 U.S.C. § 315(b), an IPR may not be instituted if a petition is filed more than one year after the petitioner, real party in interest, or privy of the petitioner is served with a complaint for patent infringement.  In a 2015 decision, the Federal Circuit had held that a determination by the Board that a petitioner was time-barred was non-appealable. Achates Reference Publishing, Inc. v. Apple Inc., Achates Reference Publishing, Inc. v. Apple Inc., 803 F.3d 652, 658 (Fed. Cir. 2015). In that case, the Federal Circuit based its decision on the language of 35 U.S.C. § 314(d), which states that the Director’s determination “whether to institute an inter partes review under this section shall be final and nonappealable.”  Continue reading “Federal Circuit Reverses Course, Allows Appeal of Time-Bar Determination”

PTAB Panel Estops Petitioner Under 315(e)(1)

A panel of judges at the Patent Trial and Appeal Board (“the Board”) recently estopped a Petitioner from joining a petition for inter partes review under 35 U.S.C. § 315(e)(1). The panel’s order denying institution and joinder is notable for its interpretation of the Federal Circuit’s decision in Shaw Industries Group v. Automated Creel Systems, Inc. 817 F.3d 1293 (Fed. Cir. 2016). The panel’s interpretation is markedly different from an earlier application of that case by Judge Robinson of the U.S. District Court for the District of Delaware.

Continue reading “PTAB Panel Estops Petitioner Under 315(e)(1)”

Successful Motions to Amend Claims at the PTAB

In April, the USPTO released the results of a study on claim amendments in AIA proceedings. The study showed that of 118 Motions to Amend Claims filed at the PTAB, just six had been granted. The abysmal success rate of patent owners seeking to amend claims (just 5% by the PTO’s own numbers) has been a source of strong criticism of the PTAB.

For patent owners searching for a successful amendment strategy, we’ve collected the allowed claim amendments from those six successful motions to amend at the PTAB, which are presented below: Continue reading “Successful Motions to Amend Claims at the PTAB”

Extending Depositions in IPRs

In the vast majority of depositions taken pursuant to an inter partes review, the deponent will have previously provided direct testimony via a declaration. The typical IPR deposition is therefore an opportunity for an opposing party to cross examine the witness, and the PTAB has set the standard duration of cross examination at seven hours. 37 C.F.R. 42.53(c)(2) (further providing four hours for re-direct examination and two hours for re-cross examination).

The seven-hour cross examination rule does contemplate extending the duration of a deposition, as may be “stipulated by the parties or ordered by the Board.” Id. Where each party retains an expert fact witness in an IPR, it can be mutually beneficial for the parties to stipulate to extended depositions. In one extreme case, the parties agreed to stipulated extensions such that the deposition of a single witness extended over a five-day period. Continue reading “Extending Depositions in IPRs”

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The opinions expressed on this blog are those of the author and are not to be construed as legal advice.

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