Several of our recent posts have discussed petitioners’ use of priority denial to attack patents with intervening prior art, but the issue of adequate support in an earlier filed application may also work in reverse against the petitioner when the prior art relied upon is a published patent application or granted patent with multiple filing dates. Last week, the PTAB twice held in final written decisinos that an IPR petitioner failed to show that a reference was entitled to the filing date of a provisional patent application; consequently, the reference did not constitute prior art under Section 102(e). VM Ware, Inc. v. Clouding Corp.; Ariosa Diagnostics, Inc. v. Illumina, Inc.

The PTAB confirmed that each petitioner had (1) the burden of persuasion to show unpatentability by a preponderance of the evidence, and (2) the burden of production to establish that an allegedly anticipatory reference was entitled to its provisional application’s filing date. Both decisions cited the Federal Circuit’s 2015 holding in Dynamic Drinkware, LLC. v. Nat’l Graphics, Inc. that a reference got the benefit of a provisional filing date only if the disclosure of the provisional application supports the claims in the reference patent in compliance with § 112, ¶ 1.

In VMware, the PTAB addressed a reference patent which, on its face, claimed priority to provisional and earlier-filed non-provisional applications. However, the petitioner merely explained how these applications disclose the claimed subject matter of the challenged patent, not the reference patent. The petitioner failed to show adequate written description support in either application for the claims of the reference patent in compliance with § 112, ¶ 1, and therefore failed to meet its burden of production.

In Ariosa, the PTAB rejected the petitioner’s arguments that (1) the petitioner lacked the burden to establish an earlier effective filing date, (2) incorporation by reference of a provisional application in a reference published application made the reference prior art as of the provisional’s filing date, and (3) Dynamic Drinkware and its predecessor applies to patents but not published applications. The PTAB held that the petitioner failed to meet its burden to demonstrate that the reference was entitled to an earlier effective filing date because it did not show that the reference’s claims were supported by the provisional’s disclosure in compliance with § 112, ¶ 1. Thus, the petitioner could not demonstrate that the reference anticipated the challenged claims.

These decisions illustrate that petitioners should not take filing dates in continuity chains at ‘face value’ and should make the case for § 112, ¶ 1 compliance if relying on the filing date of an earlier provisional or non-provisional application.