Categories: 102 Date: Sep 30, 2015 Title: Dynamic Drinkware, LLC, v. National Graphics, No. 2015-1214 (Fed. Cir. 2015)
Written by: Justin Blaufeld
The Federal Circuit holds that in order to rely on the provisional filing date of a prior art patent under 35 U.S.C. § 102(e), one must prove that the prior art patent is actually entitled to the benefit of priority, in addition to showing that the provisional application anticipates the patent being challenged.
National Graphics Inc. (“National”) owns U.S. Patent No. 6,635,196 (the “’196 patent”), which covers a method of making molded plastic with a lenticular image. A lenticular image is an optical illusion that gives the appearance of depth or movement depending on the angle from which it is viewed. National alleges that Dynamic Drinkware LLC (“Dynamic”) infringed the ‘196 patent by producing a number of promotional cups featuring the decoration.
Dynamic challenged the validity of the ‘196 patent in an AIA review before the Patent Trial and Appeal Board (“Board”), arguing that several of its claims were anticipated by U.S. Patent 7,153,555 (“Raymond”) under 35 U.S.C. § 102(e). Although the ‘196 patent was reduced to practice in March 2000 – two months before Raymond’s May 2000 filing date – the Raymond art claimed priority to a February 2000 provisional application.
To prove the ‘196 patent was anticipated, Dynamic submitted a claim chart comparing the Raymond provisional application to the ‘196 patent’s claims. However, the Board ruled that Dynamic’s claim chart was not enough. According to the Board, Dynamic could not rely on the Raymond provisional application unless Dynamic also proved that the Raymond patent was entitled to the benefit of the provisional application.
Dynamic appealed, arguing that the Board erred in requiring Dynamic to prove Raymond’s provisional claim. In their view, Raymond’s presumed effective date is its February 2000 provisional filing date, because the Raymond reference issued as a patent, and patents enjoy a presumption of validity.
The Federal Circuit affirmed the Board’s decision to keep the ‘196 patent intact. Writing for the unanimous panel, Judge Lourie explained that giving patents a presumption of priority to their provisional applications “would be unsound, because the PTO does not examine provisional applications as a matter of course.” Turning to the MPEP, he pointed out that the PTO only considers a provisional application if its filing date is necessary, e.g., in an interference or to overcome a reference. See MPEP § 211.05(I)(A) (2014).Thus, when relying on a reference patent’s provisional date to prove invalidity of another patent, it is not enough to merely show how the reference patent anticipates the other patent. The petitioner must also prove that the reference patent was entitled to the benefit of priority, by showing that the reference patent’s claims are supported by the provisional application’s disclosure under the standard in 35 U.S.C. § 112, para. 1.