Dental Monitoring SAS v. Align Technology, Inc.

Dental Monitoring SAS v. Align Technology, Inc. The Federal Circuit held that AIA § 102(d)(2) requires substantive entitlement to priority, including § 112(a) written-description support, before a reference patent or published application can use an earlier provisional filing date as its prior-art date. The Board erred by applying a merely “ministerial” priority standard. The decision rejects the PTAB’s Penumbra-style “ministerial” approach and requires petitioners relying on provisional priority for AIA § 102(a)(2) prior art to prove § 112(a) support for at least one published claim of the reference. Vacated and remanded. The Board must determine whether Carrier’s provisional application provides written-description support for at least one claim of Carrier; the Board need not revisit issues foreclosed by related Federal Circuit decisions identified in the opinion. The challenged patent covered acquiring and analyzing dental-arch images using a deep-learning device; the Board found all challenged claims obvious over Salah, Carrier, and Maninis. Carrier mattered because the ’409 patent’s effective filing date fell between Carrier’s provisional and non-provisional filing dates. The Federal Circuit read § 102(d)(2) together with § 119(e)(1) to require written-description support under § 112(a), not just compliance with priority-claim formalities. The court declined to treat its prior Rule 36 affirmance of the PTAB’s Penumbra decision as adopting the Board’s reasoning or establishing Federal Circuit law. Because the Board had not made the necessary written-description findings for Carrier’s provisional, the proper disposition was vacatur and remand rather than reversal. § 102 § 103 § 112(a) remand precedential Rule 36 affirmance § 102 § 112(a) § 103 remand precedential Rule 36 affirmance § 102 § 112(a) remand