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October 27, 2015

Comments

I'm pretty sure that you are misreading the decision.

The decision says that for provisional X to anticipate under 102e, it must result in a publication or patent that:

1. has at least one claim supported by X;
2. contains disclosure (in the spec or claims) that anticipates the patent under review

In other words, you need both 1 and 2 for the argument to work. I believe this has actually been the law pre-AIA for decades. Hal Wegner and Chisum have material about this. Whether or not this is still the law post-AIA is an open question depending on the interpretation of new 102(d).

Your contrary argument here is that the later prior art publication can invalidate if only 1 is satisfied, even if 2 is not satisfied. I'm pretty sure that is incorrect (and quite unfair as a matter of policy).

I am not seeing any strangeness - GIVEN the starting point of:

"provided the [provisional] disclosure does support the [non-provisional] claims of the invalidating patent reference."

where exactly is the problem?

Dear Kip,

Thank you for your comment. I agree that my scenario would be unfair as a matter of policy. And I agree that the rule should be that you need both 1 and 2 as you describe it (that you need support for the claim, and support in the disclosure), and in fact I suggested that practitioner provide support for both as a best practice. I also agree that this only necessarily applies to pre-AIA 102 (footnote 2 highlights this). However, I cannot find anything in this decision that supports your position for requiring anticipatory support in the specification. Indeed, the decision reads: “A reference patent is only entitled to claim the benefit of the filing date of its provisional application is the disclosure of the provisional application provides support for the claims in the reference patent in compliance with § 112, ¶ 1.” In addition, the Court indicated:

“Nowhere, however, does Dynamic demonstrate support in the Raymond provisional application for the claims of the Raymond patent. That was Dynamic’s burden. A provisional application’s effectiveness as prior art depends on its written description support for the claims of the issued patent of which it was a provisional. Dynamic did not make that showing.”

(emphasis in original). The decision does acknowledge that Dynamic provided claim charts related to the disclosure of the provisional, and it therefore could be argued that it was implicitly suggesting that such was required (and that it need not say anymore on the matter). However, the decision does not indicate such a showing is required (and in fact appears to suggest the opposite). If you still disagree, please let me know where you think support for your reading can be found in the decision. I hope that my scenario is inaccurate, because as you said, it would be extremely unfair.

Andrew

Andrew,

I agree with Kip that you're misreading the Drinkware decision. What the Federal Circuit says in the quoted statement is that Drinkware failed to show that any of the Raymond provisional disclosure provided "written description" support for any of the issued Raymond patent claims. In other words, Drinkware had failed to establish the required 119(e) priority to the Raymond provisional for the Raymond patent. Once it's shown that any of the Raymond provisional disclosure provided "written description" support for any of the issued Raymond patent claims, that 119(e) priority would then be established, and all of the disclosure in the Raymond provisional, whether or not required to provide "written description" support would be available as prior art as of the Raymond provisional filing date.

Andrew and Kip,

Using Kip's formulation above, it seems to me that the right reading of this case is that (i) you need both 1 and 2 and (ii) in this case, Dynamic only proved 2 and ignored 1.

I think that the panel could have been a little clearer. The panel essentially said "Dynamic didn't show 1, so they lose," from which it could be concluded out of context that 1 is the only test. What they really were saying in my opinion was "(you need both 1 and 2, and even though Dynamic proved 2), Dynamic didn't show 1, so they lose."

I can't say for certain what the accepted law on this point was before this case, but I think that this case will be news to many practitioners that a comparison needs to be made between a potential prior art reference's claims and that potential prior art reference's provisional disclosure, irrespective of whether that aspect of the provisional disclosure is relevant to the claim being examined or litigated.

This also brings to my mind an interesting question about 102(e) as it applies to published applications potentially being prior art as of their provisional's filing date, since the claims of a published application have pretty limited legal effect. It seems according to this case that you could have a published application with a single claim that is clearly never going to be allowed, and as long as that single claim is supported in the published application's provisional filing, the rest of that provisional's disclosure is fair game as prior art against other claims. Seems to me like part 1 of this test is more form over substance.

Dan

Hi Andrew,

The support for my interpretation is found in the following sources:

http://www.laipla.net/dynamic-drinkware-v-national-graphics-%C2%A7-102e-parent-patent-defeating-date-denied-burden-of-proof/

You can also google "hal wegner drinkware" to find more material. See also this blog post:

http://www.patentspostgrant.com/cafc-finds-prior-art-status-of-patent-depends-on-claim-scope

The argument here is based on the In re
Wertheim decision. Essentially, the CAFC just applied that decision to this case, without creating new law.

See also Chisum's discussion of Wertheim in pages 39-43 of this SSRN article:

http://papers.ssrn.com/sol3/papers.cfm?abstract_id=1969592

You write that: "I cannot find anything in this decision that supports your position for requiring anticipatory support in the specification."

Well, the support comes from 35 USC 102(a)(2) and other case law. It is also common sense. I would frame the issue like this: there are two requirements for prior art in these situations (1) priority and (2) disclosure. In the Drinkware decision, (1) is challenged based on the technicality of the Wertheim decision. Because (1) was at issue, the court does not discuss (2) much. But that does not mean that (2) is not also a requirement. If both are necessary, then a party only needs to defeat one to overcome the reference.

Kip, Eric, and Dan - I'm preparing a follow-up post in which I will highlight this discussion. I think this discussion is too important to remain in the comments. I will include some of the points that have been made here. While I may disagree on some points, I agree on others, and I respect everyone's opinion. If for some reason you do not want me to include your name, please let me know (although I assume it is OK, considering you included it here). Thanks.

Andrew

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