A Closer Look at Dynamic Drinkware, LLC v. National Graphics, Inc.

By Andrew Williams --

Last week, we analyzed the Federal Circuit's Dynamic Drinkware, LLC v. National Graphics, Inc. case from early September.  In that case, the Federal Circuit held that an IPR petitioner did not adequately demonstrate that an invalidating reference under 35 U.S.C. § 102(e)(2) was entitled to its provisional filing date because it failed to compare the provisional application to the claims of the reference patent (as opposed to the patent attempting to be invalidated).  The opinion focused on the claims of the reference patent, and was silent as to whether the provisional disclosure would also need to be invalidating.  Therefore, it is clear that comparing the claims of the reference patent to the provisional is necessary, but is such a comparison sufficient to allow the reference patent to claim priority back to the provisional filing date for the entirety of its disclosure.

In analyzing the case, we highlighted the most important take away -- if you are attempting to invalidate a pre-AIA patent claim with a prior art under 102(e)(2), whether in an IPR proceeding or in district court, and you need to rely on the filing date of a provisional application, you must show where support for that prior art patent's claims can be found within the provisional filing.  This is contrary to the common-place practice of merely identifying in the provisional application where the invalidating disclosure can be found (similar to identifying in the 102(e) patent where the invalidating disclosure can be found).  However, even though we suggested that it would still be advisable to make such a showing in addition to where support for the claims can be found, we also provided a scenario demonstrating what problems can ensue if Dynamic Drinkware stood for the proposition that identifying support for the claims of the reference patent was necessary and sufficient for the entirety of the non-provisional disclosure to be entitled to the provisional filing date.

After the post published, we were accused by several commenters of misreading the case.  If their opinions had no merit, it would not warrant a response.  However, there were some valid points expressed that are worth noting, so we decided to prepare this follow-up post to air this controversy (if it can even be considered that).  For the record, we do not believe that we are misreading the Dynamic Drinkware case.  Instead, we are reading it for precisely what it says.  We do not disagree, however, that there might be an alternative reading that would address these problems.  However, for the alternative reading to be correct, the case needs to be read as incorporating information implicitly.  Nevertheless, this alternative reading is satisfying because it would do away with the problematic scenario that we identified, and it would eliminate the inherent unfairness of our reading of the case.

As commenter Kip explained:

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, according to this reading, there are two requirements -- you need to show support for the claims of the reference patent, and you need to identify where the disclosure in the provisional can be found for the patent being challenged.  This interpretation was echoed by commenter EG, long-time friend of the blog.

But unfortunately, there is no support in the Dynamic Drinkware case itself that supports this interpretation.  This could be due to a lack of clarity on the part of the Court, as commenter Dan Williams put it (no relation).  Dynamic didn't show that the claims had support, so no further analysis was necessary.  Or, as Mr. Williams put it, "[w]hat 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.'"  Nevertheless, there is no support anywhere else in this case for that interpretation, and despite requests, no one was able to provide any.

The best support, as provided by commenter Kip, was the citation in the opinion to In re Werthein, 646 F.2d 527 (CCPA 1981).  That case was authored by Judge Rich, and stood for the proposition that if you are citing a patent as invalidating art and claiming priority to a continuation-in-part application, you need to find support in that CIP.  The reasoning was the same as that for providing the invaliding effect of patents at the filing date, not the publication date or issue date -- that the ability to use a patent as prior art should not depend on the speed and/or efficiency of the Patent Office.  Correspondingly, the theory in this case holds that if the prior patent does not support the claims of the issued patent, than it itself never would have resulted in a patent (regardless of the speed of the Office).  Thus, if the provisional does not support the relevant disclosure, then priority to it is unavailable.

The problem is Wertheim came out in 1981, prior to the advent of provisional applications.  Therefore, how that case is applied to provisionals needs to be ascertained.  Moreover, rather than applying Wertheim as determinative of the present case, Dynamic Drinkware actually tells us how Wertheim applies to provisionals:  "A reference patent is only entitled to claim the benefit of the filing date of its provisional application if the disclosure of the provisional application provides support for the claims in the reference patent in compliance with § 112, ¶ 1."  It says nothing about the disclosure of the reference patent, much less the claims of the patent that is being challenged.

At this point, it should be noted that both interpretations have merits and flaws.  It will be interesting to see if these issues come up soon, or even at all.  What is clear is that if you are trying to invalidate the claims of a patent, and you need support to the provisional, you better include support related to the claims of the reference patent.    

Comments

[Paul F. Morgan]

If what is claimed in patent B is fully disclosed but never claimed in earlier-filed patent A as of A's filing date, A is still at least 103 prior art to B as of A's filing date. What statutory basis is there for for treating patents based on provisional applications differently? That is, assuming the subject disclosure is not later-added "new matter" as in some CIP based patents and some regular applications based on provisonals. Is this case confusing 103 prior art requirements with 112 requirements?

[skeptical]

Mr. Morgan,

You want to use "A" as a single reference 103?

I think you come close with the idea of CIP, though. There is clearly some "parallel" between a CIP and its parent (for added matter) and the Non-provisional and its parent (the provisional).

I just don't think that you need to go further than merely identifiying that not everything in a non-provisional rightly earns a critical date of the "parent" provisional.

[Kip]

"But unfortunately, there is no support in the Dynamic Drinkware case itself that supports this interpretation."

I agree. There is not much support *in this case* for that interpretation.

There is also not much support in this case for a common sense approach to obviousness. That's in KSR. There is also not much support in this case for a judicial exception to 101 for ancient and fundamental business methods. That's in Bilski and Alice.

In other words, there are lots of requirements for patent validity, and not all of them are in one case.

The Drinkware case is really focused one requirement: the Wertheim requirement. The Drinkware case basically establishes this requirement as an element of a petitioner's case of invalidity. You can't just assume that a prior art reference is entitled to a provisional application's earlier date, simply because the reference claims the earlier date. Instead, you must also show that the prior art reference satisfies the weird Wertheim rule.

In other words, the Drinkware case establishes that satisfying Wertheim is a necessary condition for proving invalidity. It does not say (ever) that it is sufficient.

In your earlier post, and in portions of this post, you seem to read Drinkware as establishing satisfaction of Wertheim as a *sufficient* condition for proving invalidity. But it is a merely necessary condition. You can see this by parsing the language of the decision. The Drinkware court says:

"A reference patent is only entitled to claim the benefit of the filing date of its provisional application if the disclosure of the provisional application provides support for the claims in the reference patent in compliance with § 112, ¶ 1"

The language "only ... if" indicates a necessary condition. It does not indicate a sufficient condition.

http://www.alphascore.com/posts/if-and-only-if-vs-if-or-only-if-whats-the-difference/

Because the Wertheim rule, as applied by Drinkware, is a merely necessary condition, there may be other necessary conditions. For example, to be valid, a patent must also satisfy 101, 102, 103, 112, and every other condition of patentability. (Mark Lemley has enumerated most of them in his article The Fractioning of Patent Law). So the existence of the Wertheim condition here does not imply (as you seem to suggest) an absence of other conditions. There are plenty of other conditions.

One of the other conditions is that the provisional must provide support for the relied-on disclosure, if that disclosure is going to be used (as of the provisional's filing date) as prior art. For that rule, you can simply read the text of former 102(e), or read decisions such as:

http://patentlyo.com/patent/2010/07/federal-circuit-extends-the-scope-of-102e-secret-prior-art.html

It is also common sense. It would be manifestly unjust to use a provisional's filing date as prior art, if the relied-on disclosure didn't exist by that date and was only added later.

[Kip]

BTW, I think my comment above confuses two things:

1. necessary condition for claim validity
2. necessary condition for claim invalidity

Let me clarify. The Drinkware decision writes that satisfying Wertheim is a necessary condition for invalidating a patent under 102e. So there may be other necessary conditions, such as the traditional disclosure requirement, which is discussed in the Giacomini case and flows from the language of old 102(e).

By *analogy*, there are many necessary conditions for patent validity. A valid patent must be new. But it must also be nonobvious. And it must also satisfy 112. Etc.

The point, in both cases (necessary conditions for invalidity under 102e, and necessary conditions for validity in general), is that a decision discussing one necessary condition need not discuss other necessary conditions. In the context of necessary conditions for invalidating under 102(e), a court that discusses Wertheim does not need to discuss Giacomini, if the Wertheim rule is not satisfied.

Similarly, in the context of necessary conditions for patent validity, a court that finds a patented invention old does not also need to discuss obviousness. Nor does it need to discuss section 101, or section 112. The existence of one necessary condition does not imply the absence of other necessary conditions. And, if one necessary condition fails, then the court can move on, because all necessary conditions must be satisfied for the relevant party to win - if a single necessary condition fails (e.g., if the Wertheim rule is not satisfied), then it's game over.

[Paul F. Morgan]

Skeptical, re "I just don't think that you need to go further than merely identifying that not everything in a non-provisional rightly earns a critical date of the "parent" provisional." Yes, but is not the Fed.-Cir.-confused issue here how that "identifying" is to be done, OTHER than the easy case when the subject disclosure was simply not present in the provisional as of the provisional filing date?
P.S. Yes a single reference 103 is unusual, and I was merely simplifying the question with that, but why is that not possible under KSR in some cases? By a missing non-novel claim element being provided by KSR's plurally-repeated "common sense" of the POSITA?