In Dynamic Drinkware, LLC v. National Graphics, Inc., No. 2015-1214 (Fed. Cir. Sept. 4, 2015), the Federal Circuit affirmed the final written decision of the Patent Trial and Appeal Board (Board) that U.S. Patent No. 7,153,555 (“the ’555 patent”) does not anticipate under 35 U.S.C. § 102(e) (post-AIA) claims 1 and 12 of U.S. Patent No. 6,635,196 (“the ’196 patent”) owned by National Graphics, Inc.  Specifically, agreeing with the Board, the Federal Circuit concluded that Dynamic failed to prove that the ’555 patent qualified as a § 102(e) reference as of the filing date of the provisional application to which the ’555 patent claims priority.  The Federal Circuit, however, seemingly based its conclusion on reasons different from those relied upon by the Board.

The ’196 patent is directed to making molded plastic articles bearing a “lenticular” image.  The ’196 patent was granted from an application filed on November 22, 2000, claiming priority to a U.S. provisional application filed on June 12, 2000.

Dynamic petitioned the Board for inter partes review of the ’196 patent, arguing that claims 1, 8, 12, and 14 of the ’196 patent were anticipated by the ’555 patent.  The ’555 patent issued from an application filed on May 5, 2000, which claims the priority date of a U.S. provisional application (the “Raymond provisional application”) filed on February 15, 2000.  The Board instituted trial on claims 1 and 12 only.

The Board concluded that Dynamic failed to prove by a preponderance of the evidence that the ’555 patent anticipated claims 1 and 12 of the ’196 patent under § 102(e).  The Board found that National Graphics reduced to practice its inventions by March 28, 2000, which is before the May 5, 2000, filing date of the ’555 patent, but after the February 15, 2000, filing date of the Raymond provisional application.  The Board further found that Dynamic failed to prove that the ’555 patent was entitled to the filing date of February 15, 2000, when the Raymond provisional application was filed.  The Board explained:

To be entitled to rely on the February 15, 2000 provisional filing date, Petitioner had to establish that it relies on subject matter from [the ’555 patent] that is present in and supported by its provisional.  In re Giacomini, 612 F.3d 1380, 1383 (Fed. Cir. 2010) (“Therefore, an applicant is not entitled to a patent [under § 102(e) (2)] if another’s patent discloses the same invention, which was carried forward from an earlier U.S. provisional application . . . .”); Ex Parte Yamaguchi, 88 USPQ2d 1606 (BPAI 2008) (precedential).
. . .

Petitioner has not provided the analysis of common subject matter required by Yamaguchi and Giacomini.  Instead, Petitioner’s chart compares only one ʼ196 patent claim to the Raymond provisional.  It does not compare the portions of [the ’555] patent]’s patent relied on by Petitioner to the Raymond provisional, to demonstrate that those portions were carried over from the provisional.  We therefore conclude that Petitioner has failed to carry its burden of proof that [the ’555 patent]’s effective date is earlier than May 5, 2000.

Dynamic Drinkware LLC v. Nat’l Graphics, Inc., IPR2013-00131, Paper 42, Final Written Decision, at
6-7.

On appeal, the Federal Circuit referred to the Board’s common subject matter analysis, upon which the Board based its conclusion that the ’555 patent is not a § 102(e) reference as of the filing date of the Raymond provisional application.  The court, however, did not make clear in its opinion whether the Board’s requirement that common subject matter be present in both the patent and the parent provisional is sufficient, necessary, or not actually required at all for a U.S. patent to qualify as a § 102(e) reference as of the filing date of the parent provisional.

Instead, the Federal Circuit required the analysis of a reference’s date to be conducted under the framework of § 112, ¶ 1 (pre-AIA).  According to the court:

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, No. 2015-1214, slip op. at 11.

In other words, under the Federal Circuit’s view, in determining whether the ’555 patent is a § 102(e)(2) reference as of the filing date of the Raymond provisional application, Dynamic, the petitioner, has the burden to prove that the Raymond provisional application provides both written description and enablement support for the claims of the ’555 patent.  The Federal Circuit found that “[n]owhere, however, does Dynamic demonstrate support in the Raymond provisional application for the claims of the [’555] patent.”  Id.  The Federal Circuit affirmed the Board’s decision.

While the decision is not explicit, practitioners need to be aware that, under a reading of Dynamic, for a U.S. patent to qualify as a § 102(e) reference as of the filing date of a parent provisional application, both the common subject matter requirement and § 112, ¶ 1, should be satisfied.  Under this reading, a U.S. patent which previously would have been believed to qualify as a § 102(e) reference as of the filing date of the parent provisional may no longer be qualified.  For example, practitioners previously would have considered that a U.S. patent is effective as a § 102(e) reference as of the filing date of the parent provisional if the patentability or validity defeating subject matter is present in both the parent provisional and the U.S. patent.  Under Dynamic, however, that U.S. patent may no longer qualify as a § 102(e) reference as of the filing date of the parent provisional if the claims of the U.S. patent cannot find support in the parent provisional.  Further case law will likely be needed to clarify this point.