CAFC requires written description support in priority applications to qualify as prior art
The Federal Circuit vacated a PTAB final written decision on an inter partes review (IPR) in which Dental Monitoring SAS’s (“Dental Monitoring”) patent directed to a method for acquiring and analyzing an image of a dental arch had been invalidated as obvious. Align Technology, Inc. (“Align”) filed a petition for the IPR to challenge the patentability of the method claims over the combination of three prior art references. The effective filing date of the Dental Monitoring patent fell between the provisional and non-provisional filing date of one of the prior art references, a US Patent Application Publ’n to Carrier. The central dispute in the appeal to the Federal Circuit thus arises from whether the Carrier reference is entitled to its provisional’s priority date to serve as a prior art under 35 U.S.C. § 102(d)(2).
Dental Monitoring applied the Dynamic Drinkware decision in which a reference only gets its provisional’s filing date as a prior art if the provisional provides § 112 written description support to at least one claim of the reference. The Board decided that the Dynamic Drinkware decision only applies to pre-AIA law and instead applied the Penumbra decision under AIA. In Penumbra, a reference needs only to satisfy the “ministerial requirements” of §§ 119 and 120 and the earlier application describes the subject matter relied upon in the reference to be entitled to the earlier filing date as the prior art date. The Federal Circuit rejected the Board's conclusion citing that whether a reference qualifies as a § 102 prior art is a legal question that requires statutory interpretation. The Federal Circuit reasoned that the statutory text expressly conditions entitlement to priority on satisfaction of § 112’s written description requirement. The language under § 102(d)(2) “entitled to claim a right of priority” should be interpreted as substantive entitlement, not merely the ministerial procedure of claiming priority. The Federal Circuit remanded the case for Align to show that Carrier’s provisional satisfies the § 112’s written description requirement to invalidate the Dental Monitoring patent.
This decision removed the application of Penumbra under AIA and directly impacts the USPTO’s position in MPEP 2154.01(b). The requirement for a reference to antedate a contested patent by relying on its provisional/foreign filing date is no longer merely ministerially claiming priority. This puts § 112 written description support back in the analysis. The consequence is tremendous for biotech patents, where provisionals routinely leave out bulk of data to non-provisionals. The same requirement goes to petitioners where factual evidence must be established to prove claim-by-claim support in prior art references to use priority date rather than just showing the priority chain.
