Dynamic Drinkware Dooms Another Petitioner’s Prior Art

Summary — Two Key Lessons:
(1) The petitioner bears the initial burden of production to show that a challenged patent is not entitled to its earliest effective filing date.
(2) Under Dynamic Drinkware, the petitioner must show that the claims of a published patent application are supported by a provisional application in order for that published application to be prior art as of the provisional application’s filing date.

Discussion:
In a Final Written Decision, the PTAB found that petitioner Ariosa failed to show that a reference was prior art to the challenged patent. IPR2014-01093. Two critical mistakes by Ariosa coupled with the Federal Circuit’s recent decision in Dynamic Drinkware led to this result. (Refer to my previous update below regarding the Dynamic Drinkware decision.)
First, Ariosa failed to recognize it had the initial burden of production regarding the challenged patent’s earliest effective filing date. The challenged patent was filed in June 2002 and claimed priority to applications filed in September 2000. However, Ariosa did not argue that the challenged patent was not entitled to a September 2000 priority date. Because Ariosa failed to put the Patent Owner on notice of this theory, the burden never shifted to the Patent Owner to demonstrate that the challenged patent was entitled to the earlier date.
Second, Ariosa failed to establish that its prior art reference, a patent application published in November 2002, was entitled to claim priority to a provisional application filed in February 2000. In its petition, Ariosa identified support in both the provisional and the published application for its argument that each challenged claim limitation was anticipated. Petition at 15–26. And, citing In re Giacomini, 612 F.3d 1380 (Fed. Cir. 2010), Ariosa argued that the published application “is clearly prior art because it incorporates the [provisional] application by reference and is entitled to the priority date of that application for the disclosures therein.” Final Decision at 8. But, that was not enough even though Ariosa was not relying on the claims in the published application for support. See Petition at 15–26. Under Dynamic Drinkware, Ariosa was obligated to demonstrate the claims of the published application were supported by the provisional in compliance with §112, first paragraph in order for that application to be prior art as of the provisional application’s filing date. Final Decision at 11, 14.

IPR2014-01093 Ariosa v. Illumina (Final Written Decision)