Penumbra, Inc. v. Rapidpulse, Inc., IPR2021-01466, Paper 34 (P.T.A.B. March 10, 2023)

In a PTAB decision that was recently designated precedential, the Board made two important decisions concerning provisional patent applications.  Critically, the Board held that the America Invents Act (AIA) brought forth a change in how provisional patent applications are considered in the prior art analysis.  The Board also considered whether a provisional application of the patent in suit satisfied the written description requirement, sufficient to allow the patent owner to claim priority to that application.

This IPR concerned an aspiration thrombectomy system used for treatment of ischemic strokes caused by blood clots.  The case turned on two provisional patent applications.  First, the patent-in-suit (the ’883 Patent), which was filed in 2019, claimed priority to a provisional application filed in October 2018.  The parties disputed whether the ’883 Patent could claim priority to the 2018 provisional application.  Second, the Teigen reference asserted as prior art was filed in July 2019, but claimed priority to two provisional applications filed in July 2018.  The parties disputed whether the petitioner was entitled to assert Teigen as prior art dating to the dates of its provisional applications.

Taking the latter issue first, the Federal Circuit previously held in Dynamic Drinkware, LLC v. Natl’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) that, in order to establish that a prior art reference is entitled to the priority benefit of its provisional applications, the challenger must show that (1) at least one claim of the patent is supported by the provisionals, and (2) the portions it intends to rely on are supported by the provisionals.

In 2012, the AIA went into effect.  The AIA redefined the scope of prior art.  Under Section 102(a)(2), a prior patent is prior art if “the patent or application . . . names another inventor and was effectively filed before the effective filing date of the claimed invention.”  Section 102(d) further states that a patent “shall be considered to have been effectively filed” if the patent “is entitled to claim a right of priority . . . or to claim the benefit of an earlier filing . . . as of the filing date of the earliest such application that describes the subject matter.”

The Federal Circuit held that this language was critical – it “draws a distinction between actually being entitled to a right of priority . . . and merely being entitled to claim a right of priority.”  Accordingly, “there is no need to evaluate whether any claim or [a reference] patent document is actually entitled to priority. . . . Rather, under the AIA, a reference patent document need only meet the ‘ministerial requirements’ of SS 119 and 120, and the provisional or other earlier application(s) to which the reference patent document claims a right of priority must ‘describe[] the subject matter’ relied upon in the reference patent document as prior art.”  It is no longer necessary that at least one claim be supported by the provisionals.  Teigen satisfied these requirements, and was thus given a priority date of July 2018.

Moving on to the other issue, the PTAB held that the ’883 Patent could not claim priority to its 2018 provisional application.  The provisional application had broad disclosures, but did not indicate that the inventor had possession of a specific limitation at issue, based on the PTAB’s construction of that limitation.

Because the ’883 Patent could not claim the date of its provisional application, and Teigen predated the ’883 Patent, Teigen was considered prior art.  In combination with other art, the PTAB held that all of the challenged claims in the ’883 Patent were invalid as obvious.

The opinion can be found here.

By Nika Aldrich

This article summarizes aspects of the law and does not constitute legal advice. For legal advice for your situation, you should contact an attorney.

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