USPTO Confirms Different Frameworks for Pre-AIA and Post-AIA Prior-Art Determinations

On November 15, 2023, Director of the United States Patent and Trademark Office (USPTO) Kathi Vidal designated as precedential the Patent Trial and Appeal Board’s (PTAB) final written decision in Penumbra, Inc. v. RapidPulse, Inc.[1] The decision, which issued in March 2023, held that the US Court of Appeals for the Federal Circuit’s framework in Dynamic Drinkware, LLC v. Nat’l Graphics, Inc.[2] for prior-art determinations applies only to pre-AIA determinations and not to post-AIA determinations.

In Dynamic Drinkware, the Federal Circuit held that a reference patent is entitled to the priority benefit of its provisional application, and thus qualifies as prior art under pre-AIA § 102(e) as of the provisional application’s filing date, if two conditions are met:

(i) the portions of the reference patent relied on as prior art are supported by the provisional application, and

(ii) at least one claim of the reference patent is supported by the provisional application.[3]

However, the Penumbra panel held that part (ii) of the Dynamic Drinkware framework does not apply to prior-art determinations under AIA § 102, stating: “under AIA §§ 102(a)(2) and 102(d), there is 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.”[4] Instead, the panel articulated the following requirements for qualifying a reference patent document as prior-art under AIA § 102 as of the filing date of a prior application in its priority chain:

(i) the reference patent document must meet the ministerial requirements of §§ 119 and 120, and

(ii) the prior application to which the reference patent document claims a right of priority must describe the subject matter relied upon as prior art in the reference patent document.[5]

The panel reasoned that under AIA §§ 102(a)(2) and (d) a reference patent document is “effectively filed” for prior-art purposes as of the filing date of a prior application in its priority chain if the reference document is merely entitled to claim a right of priority of or benefit to the prior application.[6] The panel noted that there is no requirement for the reference document to actually be entitled to the priority of or benefit to the prior application.[7] Accordingly, the PTAB held that “for prior-art determinations under AIA § 102, there is no need to evaluate whether any claim of a reference patent document is actually entitled to priority or benefit under 35 U.S.C. 119, 120.”[8] To support its decision, the panel relied on the difference in language between the old and new statutory provisions, as well as a prior, non-precedential PTAB decision and the USPTO’s guidance to the Patent Examining Corps indicating the difference between post-AIA and pre-AIA prior-art determinations.[9]

The elimination of Dynamic Drinkware’s requirement to find support for a claim in the priority document for post-AIA prior-art determinations is important. Whether a reference patent document can get an earlier filing date can be critical in anticipation and obviousness challenges. The USPTO’s framework for post-AIA prior-art determinations is easier to meet than the Federal Circuit’s Dynamic Drinkware framework (which now only applies to pre-AIA prior-art determinations). This distinction would make anticipation and obviousness challenges against the AIA patents easier compared to the pre-AIA patents.

The Penumbra decision arose in an inter partes review (IPR) proceeding that Penumbra filed against RapidPulse’s patent. After deciding that a reference patent used by Penumbra for obviousness challenge qualified as prior art as of its priority date, the PTAB held the challenged claims unpatentable. RapidPulse has filed a notice of appeal before the Federal Circuit, but it remains unclear whether RapidPulse will challenge the PTAB’s Dynamic Drinkware analysis.

[1] Penumbra, Inc. v. RapidPulse, Inc., IPR2021-01466, Paper 34 (March 10, 2023) (precedential as to section II.E.3).

[2] Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375 (Fed. Cir. 2015).

[3] Dynamic Drinkware, 800 F.3d at 1378, 1381-82.

[4] Penumbra, IPR2021-01466, Paper 34, at 29-30.

[5] Id. at 32.

[6] Id. at 30-31.

[7] Id.

[8] Id. at 32 (emphasis in original) (emphasis added).

[9] Id. at 30-33 (citing Apple Inc. v. Telefonaktiebolaget LM Ericsson, No. IPR2022-00341, Paper 10, at 14-22 (PTAB Sept. 14, 2022); Robert W. Bahr, Memorandum re: Critical Reference Date Under pre-AIA 35 U.S.C. §102(e) (Apr. 5, 2018), available at http://www.uspto.gov/sites/default/files/documents/dynamic_memo_05apr2018_0.pdf; MPEP § 2154.01(b)).