Relying on the priority date of a provisional patent application has been problematic for some Petitioners in Inter Partes Reviews. However, the Federal Circuit and the PTAB have recently issued decisions which provide guidance for using provisional patent applications in IPRs.

To be entitled to the priority date of a provisional patent application “the specification of the provisional must contain a written description of the invention and manner and process of making and using it, in such full, clear, concise, and exact terms to enable an ordinarily skilled artisan to practice the invention claimed in the non-provisionalapplication” New Railhead Mfg., LLC v. Vermeer Mfg. Co., 298 F.3d 1290, 1294 (Fed. Cir. 2002) (emphases in original) (internal quotations and citations omitted). Thus a showing of entitlement to a provisional application’s priority date typically requires a comparison between the claims of the non-provisional application and the disclosure of the provisional application.

Two recent decisions help us understand when this analysis needs to be performed in an IPR Petition. In Dynamic Drinkware, LLC v. National Graphics, Inc., the Federal Circuit was faced with the following priority dates:

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In Dynamic Drinkware, the Petitioner relied on the filing date of the utility application as a 102(e) reference since its filing date (5/5/2000) was less than a year before the earliest priority date of the challenged patent (6/12/2000). In its Patent Owner Response, the Patent Owner swore behind the filing date of the utility patent asserted as prior art by Petitioner. In its Reply Brief, the Petitioner provided evidence that the utility patent was entitled to the priority dates of the provisional application (2/15/2000) in order to pre-date the swear-behind date of the Patent Owner.

Under these circumstances, the Federal Circuit laid out a specific chain of “shifting burdens” between the Petitioner and Patent Owner:

1. Petitioner has initial “burden of production” to show challenged claims are invalid: “[Petitioner] had the initial burden of production, and it satisfied that burden by arguing that [the prior art] anticipated the asserted claims of the [challenged] patent under § 102(e)(2).”
2. Once the IPR is instituted, the burden shifts to the Patent Owner to swear behind the reference: “The burden of production then shifted to [Patent Owner] to argue or produce evidence that either [the prior art] does not actually anticipate, or, as was argued in this case, that [the prior art] is not prior art because the asserted claims in the [challenged] patent are entitled to the benefit of a filing date (constructive or otherwise) prior to the filing date of [the prior art].”
3. If the Patent Owner successfully swears behind the reference, the Petitioner then has the burden in its Reply Brief to show entitlement to the provisional filing date by comparing claims of the prior art reference to the provisional disclosure: “As a result, the burden of production returned to [Petitioner] to prove that either the invention was not actually reduced to practice as argued, or that the [] prior art was entitled to the benefit of a filing date prior to the date of [Patent Owner’s] reduction to practice.”

Thus in Dynamic Drinkware, where the Petitioner did not rely on the prior art provisional application’s priority date at the time of filing the Petition, the Petitioner did not have an initial burden of proving entitlement to that priority date.

The Federal Circuit’s decision in Dynamic Drinkware can be contrasted with the recent PTAB decision in Apple Inc. v. OpenTV, Inc. The PTAB decision dealt with the follow priority claims:

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In OpenTV, the Petitioner relied on the priority date of the provisional application (10/2/1995) to assert the utility patent as a 102(e) reference. The PTAB reasoned that since the prior art reference did not qualify as prior art unless it was entitled to the priority date of the provisional application, the Petitioner was required to include a comparison between the claims of the non-provisional application and the disclosure of the provisional application as described above. The Petitioner had not included such a comparison; instead, the Petitioner had included only a comparison of the provisional application’s disclosure against the claims of the challenged patent. The PTAB held that this showing was insufficient and that the Petitioner had failed to demonstrate that the prior art reference was actually prior art. As a result, the PTAB denied institution of the IPR on any grounds involving that reference.

Thus in OpenTV, where the Petitioner did rely on the prior art provisional application’s priority date at the time of filing the Petition, the Petitioner did have an initial burden of proving entitlement to that priority date.