Prior Art 102(e) Date of Provisional Filing Linked to Scope of Utility Patent Claims?

Last Friday the Court of Appeals for the Federal Circuit (CAFC) affirmed the decision of the Patent Trial & Appeal Board (PTAB) in Dynamic Drinkware LLC v. National Graphics Inc. IPR2013-00131 (here).  While an affirmance is typically good news for the agency, going forward, the Court’s decision may create an unexpected headache for both the Board and USPTO Examining Corps.

In its Final Written Decision (here), the Board found that claims 1 and 12 of the subject patent were not unpatentable over a certain prior art patent known as Raymond. This final IPR decision was appealed by Dynamic to the CAFC.

In the IPR, the Raymond reference was applied as 102(e) art. Raymond is a U.S. Patent claiming the benefit of an earlier provisional application filing. During trial, the Patentee was able to antedate the Raymond utility filing, but not the provisional filing date. The Board found the claims not unpatentable as claim 12 was not compared at all to the provisional disclosure, and while claim 1 was mapped to the provisional, the Board explained that: “[Dynamic] did not compare the portions of Raymond’s patent relied on by Petitioner to the Raymond provisional, to demonstrate that those portions were carried over from the provisional.”
(Note: the Raymond patent was filed before the 2004 rule change (37 CFR 1.57(a) which would have incorporated the provisional as a matter of law).

At the CAFC, the aspect of the appeal of most interest to me is Dynamic’s argument that the mapping of claim 1 to both of the provisional and utility applications, when taken together, was enough to show the continuity of subject matter.

In denying this argument, the Court explains:

A reference patent is only entitled to claim the benefit of the filing date of its provisional application if the disclosure of the provisional application provides support for the claims in the reference patent in compliance with § 112, ¶ 1.  As Dynamic acknowledges, it provided charts to the Board comparing the claims of the ’196 patent to the disclosure of the Raymond patent and claim 1 of the ’196 patent to the disclosure of the Raymond provisional application. Nowhere, however, does Dynamic demonstrate support in the Raymond provisional application for the claims of the Raymond patent. That was Dynamic’s burden. 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. Dynamic did not make that showing.
(internal citations omitted, emphasis added)

As a reminder, the Board found that the cross citations of claim 1 to both the provisional and utility disclosures were not clearly linked.  While Dynamic argued this position a hyper-technicality to the CAFC, the Court’s affirmance passes over this issue altogether to introduce a different requirement — a showing of provisional support for the Raymond claims.

Certainly, for Raymond to have an effective benefit claim to his provisional, the claims of his utility must be compared to the provisional; this is hardly a controversial concept. Yet, in my view, the perspective changes when we switch from a priority analysis to prior art status.

Let’s take an example.

The Raymond provisional discloses a combination of elements A, B and C.

The Raymond utility also discloses ABC, and newly introduces D to the combination.

Raymond claims only the ABCD combination.  

In the above scenario, the benefit of the provisional filing cannot extend to the claims as “D” is not disclosed in the provisional combination. But, what about the prior art status of ABC? In the courts view, ABC would not have a 102(e) date that extends to the provisional filing as claims ABCD are not supported in the provisional. One might imagine another scenario in which the utility focuses on an altogether different invention, perhaps focusing on method claims instead of the underlying hardware that is fully disclosed in both the utility and provisional. Another twist would be claims that involve lexicography or other complicated claim terminology that might require claim construction.

Why should a patent applicants claiming strategy matter for assessing the technical disclosure of a public document? Seems to me the priority perspective and prior art perspective are mutually exclusive as to the technical disclosure of a provisional filing. 35 U.S.C. 119(e) explains a proper benefit claim must include 112 support as to the ultimate claims.  But, 112 support for a given claim is a priority concept.  In my view, common technical disclosure is a broader concept when assessing prior art status. Indeed, in recent years the Court has emphasized that disclosed but unclaimed subject matter (such as ABC above) is dedicated to the public. Johnson & Johnston Associates Inc. v. R.E. Service Co., Inc. And Mark Frater, 285 F.3d 1046 (Fed. Cir. 2002).  

This decision is troubling for the agency as the Court’s proposed priority/claim mapping is simply not done at any level of the USPTO — not that I have ever seen.  When a patent is cited against an applicant in patent prosecution/reexamination that stems from a provisional, common practice is that the examiner simply cites to the utility. Now, if that benefit claim is challenged, cross citation to the provisional is not enough, a comparison of that provisional to the ultimate claims of the prior art patent appears necessary. Strange.