What You Need to Know

• The USPTO has made precedential a recent PTAB decision, Penumbra, Inc. v. RapidPulse, Inc., where the PTAB reaffirmed the USPTO’s existing position that Dynamic Drinkware does not apply to AIA patents.
• Patent owners and applicants should consider making priority claims to expiring provisionals or soon-to-abandon, unpublished applications in new applications to bolster their defensive publications.
• This decision expands the scope of prior art that can be used by PTAB litigants to invalidate patents under the AIA.
• However, while this decision is consistent with previous USPTO guidance, it is premised on a minor difference in statutory language and legislative history, and the Federal Circuit has already shown some reluctance to follow the Penumbra line of thinking in other cases. Thus, the decision may not be followed by the district courts or the Federal Circuit.

The USPTO has reiterated its position that Dynamic Drinkware, LLC v. National Graphics, Inc. does not apply to patents and patent applications that fall under the America Invents Act (AIA) by designating the PTAB’s decision in Penumbra, Inc. v. RapidPulse, Inc., as precedential.

In Dynamic Drinkware, the Federal Circuit considered what the effective filing date should be for a prior art patent when the prior art patent claims priority to a provisional application. The court held that 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 [pre-AIA 35 U.S.C. § 112, ¶ 1].” In other words, for a reference patent to receive an earlier filing date of a provisional application under pre-AIA 35 U.S.C. § 102(e), it is not sufficient for the provisional application to simply disclose the subject matter at issue; instead, the claims of the reference patent also must be supported by the provisional application.

However, in Penumbra, Inc. v. RapidPulse, the PTAB held that this rule does not apply to AIA patents. In Penumbra, the petitioner cited a patent that claimed the benefit of a provisional application against an AIA patent. Contrary to Dynamic Drinkware, the PTAB found that the petitioner had “no need to evaluate whether any claim of a reference patent document is actually entitled to priority when applying such a reference patent as prior art.” The PTAB bases this position on a difference between being “actually being entitled to a right of priority,” as recited in 35 U.S.C. § 100(i)(1)(B), and “merely being entitled to claim a right of priority,” as recited in AIA § 102(d). This difference, the PTAB says, indicates that an AIA reference patent need only meet the “ministerial requirements for claiming priority” of (1) making the priority claim while (2) the applications are co-pending and (3) have overlapping inventors.

This position is not new for the USPTO. The MPEP already instructs examiners to treat these kinds of prior art references differently for AIA applications, and similarly points to the difference between §§ 100 and 102(d). Further, a 2018 Memo to the Patent Examining Corps, which was cited by the Penumbra panel, makes the same argument made in Penumbra, and actually specifically notes that Dynamic Drinkware does not apply to AIA cases. Thus, the Penumbra decision is less a change in course and more a further entrenchment of the USPTO’s existing stance.

The USPTO’s position gives patent owners and applicants more options in creating defensive publications against competitors. In certain edge cases where an applicant may otherwise allow a provisional application to expire (or even a nonprovisional application to abandon without publishing), applicants now may consider making a priority claim to those applications in other, unrelated applications. By doing so, the otherwise unpublished applications would constitute § 102(a)(2) prior art to competitors, and an applicant does not need to add claims to the material in the otherwise unpublished applications. This decision also expands the scope of prior art that can be used in PTAB litigations of AIA patents, particularly IPRs. Litigants do not need to consider whether a reference patent claiming priority to a provisional application includes claims that are supported by a provisional application. Instead, litigants need simply ensure that the three ministerial requirements are met.

However, there are two important caveats to note. First, the USPTO’s stance does not remove the requirement that the provisional application also describe the material upon which the prior art patent is being used. In fact, in Penumbra, PTAB distinguished the case from a prior PTAB decision where “the petitioner failed to show that the provisional application provided sufficient support for the subject matter relied upon in the reference patent.” Instead, Penumbra simply removes the requirement that the reference patent include claims that are supported by the provisional application to get the earlier effective filing date.

Second, it is still an open question how this issue would be resolved by the Federal Circuit should the issue be brought before them. It seems unlikely that the Federal Circuit would find the minor language difference between §§ 100 and 102 sufficient, by itself, to reject Dynamic Drinkware for AIA patents. A 2018 Memo to the Patent Examining Corps, cited by the Penumbra panel, points to legislative history for the AIA that indicated that this difference was intentional to indicate that § 102(d) only requires prior art patents to comply with the ministerial requirements to receive an earlier effective filing date. However, the Federal Circuit ignored the same Congressional record in Helsinn Healthcare S.A. v. Teva Pharm. USA, Inc., 855 F.3d 1356 (Fed. Cir. 2017), aff’d 139 S. Ct. 628 (2019) in finding that secret sales still trigger the “on-sale bar” under the AIA. Furthermore, that Congressional record contradicts certain findings that the Federal Circuit made in Dynamic Drinkware itself after the AIA was enacted, which suggests that the tension already exists between the Congressional record and post-AIA caselaw. Thus, patent owners/applicants and litigants should take care in relying on the Penumbra decision outside the USPTO.