Institution Denied for Failure to Show Disclosure in Provisional Application

by | Sep 13, 2024 | Prior Art Issues, PTAB Trial Basics, Real Party in Interest, Trial Institution

By David Linden and Dave Maiorana –

On December 1, 2023, Intelligent Wellhead Systems, Inc. (“Intelligent”) filed a petition for inter partes review (“IPR”) of U.S. Patent No. 11,401,779 (“the ’779 Patent”) (“IPR256”), assigned to Downing Wellhead Equipment, LLC (“Downing”).  Intelligent asserted five grounds of unpatentability, including an anticipation ground and an obviousness ground that both relied solely upon U.S. Patent Application Publication No. 2022/0268141 to Krupa et al. (“Krupa”).  Another obviousness ground relied upon Krupa in combination with another reference.  Krupa is the published version of a U.S. application filed on February 18, 2022, and claims priority to a provisional patent application filed nearly a year earlier on February 25, 2021 (“the Krupa Provisional”).  Importantly, the priority date of the ’779 Patent is May 17, 2021—after the filing date of the Krupa Provisional but before that of the nonprovisional U.S. application.  Intelligent asserted in the petition that Krupa is prior art to the ’779 Patent, merely citing the filing date of the Krupa Provisional.

In its preliminary response, Downing challenged the prior art status of Krupa.  It asserted that Intelligent failed to establish in its petition “that the subject matter relied upon in Krupa is supported by the Krupa Provisional,” and had thus not met its burden of showing that Krupa qualifies as prior art.  Intelligent requested to submit a preliminary reply brief to address Krupa’s arguments, arguing that it could not have reasonably foreseen a challenge to Krupa’s prior art status in Downing’s preliminary response.  The PTAB denied this request, noting that it was clear from the face of Krupa and the ’779 Patent that Intelligent could not rely on the actual filing date of Krupa but would instead need to establish an earlier priority date.

In an institution decision issued June 5, the PTAB outlined the threshold burdens of petitioners based on the filing dates of their prior art references compared with that of challenged patents.  When the actual filing date of a prior art patent predates the filing date of a challenged patent, the PTAB explained, the petitioner is only required to refer to the filing dates appearing on the face of the respective patent documents to show that the reference qualifies as prior art.  However, when the actual filing date of the prior art reference is after that of the challenged patent—as was the case in IPR256—the petitioner must establish a priority claim to an earlier application that describes the subject matter relied upon in the reference.  Moreover, the PTAB has no basis to presume that a patent is necessarily entitled to the filing date of its provisional, as priority claims are not examined by the Patent Office unless necessary.  The PTAB noted that the burden to establish that a reference patent document is entitled to the filing date of its provisional application thus “falls squarely on [Intelligent].”

Because Intelligent did not explain in its petition how the Krupa Provisional supports the relevant subject matter relied on in Krupa, or even introduce the Krupa Provisional into the record, this burden was not met.  The PTAB concluded without a substantive assessment that Intelligent did not have a reasonable likelihood of prevailing on any of the three grounds relying in whole or substantial part on Krupa.  The remainder of the institution decision involved a nuanced discussion of whether the remaining prior art references disclosed the limitations of the challenged claims of the ’779 Patent, including fluid being “continuously” pumped to one or both of a first valve and a second valve.  The PTAB determined that Intelligent had not shown that there was a reasonable likelihood of prevailing with regard to any challenged claims, and thus denied institution.

Takeaway

Petitioners should ensure to explain in their petitions how their prior art references meet threshold qualification standards.  A failure to do so may preclude the references from a meritorious evaluation with respect to the challenged patent.

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David Maiorana

Partner at Jones Day
Dave Maiorana is a trial lawyer with a notable combination of significant experience as a United States Patent and Trademark Office (USPTO) Examiner and more than 25 years litigating complex intellectual property matters. He has represented clients as both plaintiffs and defendants around the country and in the International Trade Commission (ITC). Dave has experience in diverse technology areas, including e-cigarettes, teeth whitening, diapers, fem care, antibodies, self-inflating tires, oxygen concentrators, flash memory, and digital cameras.