By Ernie Oleksy and Matt Johnson –
The PTAB recently provided a pre-AIA priority analysis for reference patents in Roku, Inc. v. Anonymous Media Research Holdings, LLC, No. IPR2024-01057, Paper 10 (P.T.A.B. Feb. 10, 2025). This decision highlights the comprehensiveness required of a pre-AIA provisional application’s disclosure to establish priority from its filing date. (For a comparison of priority analyses before and after the AIA, click here to read a PTAB Litigation Blog post about the precedential decision in Penumbra, Inc. v. RapidPulse, Inc.)
On July 15, 2024, Roku petitioned the Board to cancel U.S. Patent No. 10,719,848 B2 (“the ’848 patent”) as rendered obvious. The ’848 patent generally relates to media monitoring and measurement technology. Id. at 4.
The Board denied Roku’s petition for inter partes review (“IPR”) and decided that Roku did not show a reasonable likelihood of prevailing on its unpatentability assertions because it did not establish a relied-upon reference patent as prior art. Id. at 2. The ’848 patent’s effective filing date was May 27, 2004, so the pre-AIA statutory regime was applied in this decision. Id. at 6.
In reviewing Roku’s petition, the Board noted that “[a]ll of Petitioner’s assertions of unpatentability rely on teachings of” a particular reference (“Seet”) to argue that the ’848 patent’s claims were obvious under prior art. Id. at 8. Key to the Board’s decision was that the relied-upon reference’s disclosure in its provisional application did not support the full scope of at least one of the reference’s issued claims. Id.
Under 35 U.S.C. § 119(e)(1) (2006), a provisional application’s filing date can secure priority benefits for a reference patent. But a pre-AIA reference patent enjoys priority from its provisional filing date only if “the disclosure of the provisional application provides support for the claims in the reference patent in compliance with § 112, ¶ 1.” Dynamic Drinkware, LLC v. National Graphics, Inc., 800 F.3d 1375, 1381 (Fed. Cir. 2015). The required “support” within the provisional’s disclosure must describe the full scope of at least one of the issued claims. See Juno Therapeutics, Inc. v. Kite Pharma, Inc., 10 F.4th 1330, 1337 (Fed. Cir. 2021). So here, the Board noted that “Seet is not entitled to the benefit of its provisional filing date unless a claim in Seet has written description support in the Seet provisional.” Paper 10 at 12 (emphasis added).
But the disclosure in Seet’s provisional application did not meet that standard. The Board found that all of Seet’s issued claims “included a ‘media’ limitation” which disclosed methods related to both audio- and video-based media. Id. at 15–16. To establish priority from Seet’s provisional filing date under Dynamic Drinkware and Juno Therapeutics, the Seet provisional would then also need to disclose methods related to both audio- and video-based media to describe the full scope of an issued claim. But the Seet provisional’s disclosure merely disclosed methods related to audio-only media. Id. at 14. Thus, the Board ruled that Seet was not entitled to its provisional filing date because “no claim in Seet is supported by the description in the Seet provisional.” Id. at 16.
Without priority from its provisional filing date, Seet’s effective filing date is later than the ’848 patent’s effective filing date. Id. So, Seet is not prior art to the ’848 patent. All of Roku’s obviousness arguments relied upon Seet as a prior art reference. Id. at 6. Without Seet as prior art, the Board found that Roku failed to establish a basis to invalidate the ’848 patent on obviousness grounds. Id. at 16–17. The Board thus denied institution of IPR, leaving the ’848 patent intact. Id. at 17.
Takeaway:
Petitioners can only rely upon a pre-AIA reference patent’s provisional filing date as the reference’s priority date if the reference’s provisional application disclosure describes the full scope of at least one of the reference’s issued claims.
Matthew Johnson