PGR Eligibility for Patents Issuing from Pre-AIA Examined Applications

US Endotronics, LLC. v. Gold Standard Instruments, LLC., PGR2015-00019

Patent applications filed on or after March 16, 2013, that claim priority to an application filed before March 16, 2013 (“transition applications”), are examined under pre-AIA first-to-invent provisions unless they contain one or more claims that are not supported by the parent application.  Patents issuing from transition applications are typically not eligible for post-grant-review.  In addition to continuation-in-part applications, the Board’s institution decision in US Endotronics, LLC. v. Gold Standard Instruments, LLC., PGR2015-00019, illustrated another example of a type of transition application that may be eligible for post-grant-review.

In US Endotronics, U.S. Patent No. 8,876,991 (“the ‘991 patent”), challenged by Petitioners, issued from U.S. Patent Application No. 14/167,311 (“the ‘311 application”), a transition application that claims priority to a series of continuation and divisional applications reaching back to June 7, 2005.  Except for their claims, the entire family includes applications that have the same specification.  That is, all family members are continuation or divisional applications, and not continuations-in-part.  In fact, the ‘311 application was examined by the USPTO under pre-AIA first-to-invent provisions.

Petitioners requested post-grant-review of the claims of the ‘991 patent alleging that the patent includes claims with an effective filing date of January 29, 2014, which is the actual filing date of the ‘311 application.  Petitioners did not dispute that the ‘311 application has substantively the same specification as the earlier applications.  Rather, Petitioners argued that neither the ’311 application nor any of the earlier applications provides an enabling disclosure for the claims, and therefore, the effective filing date for those claims is the actual filing date of the application.

Specifically, Petitioners alleged that a claimed step of heat-treating an endodontic instrument comprising a superelastic nickel titanium alloy at a range of temperatures to produce an angle of permanent deformation of greater than 10 degrees was not enabled.  The specification of the ‘311 application provides an example of heat-treating at a higher temperature within the claimed range to produce the claimed deformation but fails to provide examples of heat-treating at lower temperatures within the claimed range.  In support of their arguments, Petitioners also presented testing in which instruments were heat-treated at the lower temperatures and failed to exhibit the claimed deformation.

The Board agreed with Petitioners’ arguments that the claims are more likely than not unpatentable for failure to comply with the enablement requirement, and further, that the ‘991 patent is eligible for post-grant-review.  In reaching their decision, the Board reasoned that the effective filing date of an application is the actual filing date of that application unless a proper claim of priority can be established, and a proper claim of priority can only be established based on disclosure of the claimed invention in compliance with Section 112.  Based on US Endotronics, Petitioners who establish that claims of a patent issuing from a transition application fail to comply with the enablement requirement will establish eligibility for post-grant-review.

By: George Phillips (Jones Day Bio)