Claim-Based Analysis Required for Pre-AIA Patents Only

One of the more confusing developments in patent law was pronounced in Dynamic Drinkware v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). In Dynamic the Court held that a provisional application’s effectiveness as prior art under 102(e) depends on its written description support for the claims of the issued patent. In other words, if the patent claims ABC, and C is not supported in the provisional, the provisional loses 102(e) prior art status for all of its disclosure. So, if looking to use the provisional date for AB alone, which is supported, the claim-based analysis would still prevent such reliance.

The applicability of the strange claim-driven analysis of Dynamic was recently considered relative to AIA patents. Today’s precedential PTAB decision makes clear that the AIA statutory framework dispensed with this faulty claim-centric scheme.

The PTAB designated Section II.E.3 of Penumbra, Inc. v. RapidPulse, Inc., IPR2021-01466, Paper 34 (March 10, 2023), precedential explaining:

[U]nder 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).

(Emphasis added)

The Board cites to a more fulsome explanation of its reasoning at MPEP 2154.01(b), which explains the AIA distinction between being entitled to claim priority or benefit in AIA 35 U.S.C. § 102(d) and actually being entitled to priority or benefit under 35 U.S.C. § 119, 120, or 365.