For the first time in five years, the Federal Circuit addressed the framework for determining the prior-art date of a U.S. patent claiming priority to a provisional application. In doing so the court reaffirmed the approach of Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375 (Fed. Cir. 2015), albeit in a non-precedential opinion.
In Dynamic Drinkware, the court held “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.” Id at 1381. The court explained that under a proper analysis, the claims of the prior-art patent are compared to the provisional priority document. If the provisional application provides written description support for the claims, then the prior-art date of the patent is the provisional filing date. If not, the patent’s prior-art date is the filing date of the non-provisional application.
In Merck Sharp & Dohme Corp. v. Microspherix LLC (Fed. Cir. 2020), the Federal Circuit applied Dynamic Drinkware and found that USPN 6,575,888 (Zamora) was not entitled to its provisional filing date because the provisional application did not support all limitations of claim 1. Specifically, the court found that the provisional application did not disclose “locating the radial plaque medium on the external surface of the tube.”
The Merck opinion solidifies the Federal Circuit’s position on back-dating § 102(e) prior art (and presumably § 102(a)(2)). The holding of Dynamic Drinkware was arguably a departure from In re Giacomini, 612 F.3d 1380 (Fed. Cir. 2010), and some questioned the longevity of the decision. Prior to Dynamic Drinkware, some district courts and administrative tribunals, citing Giacomini, analyzed the text of the provisional application versus the claims of the challenged patent, or the text of the provisional application versus the non-provisional application, to determine if the prior-art reference was entitled to the filing date of the provisional application. See Mortg. Grader, Inc. v. Costco Wholesale Corp. 2014 U.S. Dist. Lexis 185044 and Ex parte Glance 2015 Pat. App. Lexis 687.
Giacomini explained that a patent has a patent-defeating effect as of the filing date of a provisional application if the provisional application provides written description support for the claimed invention, but did not explain how a court should make this determination (having held that the patentee waived their right to contest the priority of the prior-art patent). Giacomini at 1384.
By again applying the framework of Dynamic Drinkware, Merck reinforced that Dynamic Drinkware will be the court’s position going forward. Under Dynamic Drinkware, the framework for determining the patent-defeating effect of a provisional application is as follows:
- The patent challenger (or examiner) applies a prior-art reference claiming priority to a provisional application. (There is tension between Giacomini and Dynamic Drinkware as to whether the challenger must make a prima facie showing that the prior-art reference is entitled to the priority claim in order to shift the burden to the patentee/applicant.)
- The patentee/applicant must then challenge that the provisional application does not provide written description support for the claims of the applied reference to shift the burden back to the challenger. Failure to do so results in waiver.
- The challenger, having the burden of persuasion, must prove that the provisional application provides written description support for the claims.