Penumbra, Inc. v. RapidPulse, Inc.

When a reference patent document is applied as prior art under AIA 35 U.S.C. § 102(a)(2), the Board need not evaluate whether any claim of the reference is actually entitled to priority or benefit under 35 U.S.C. §§ 119 or 120, so the Dynamic Drinkware requirement that a reference patent's claim be supported by its provisional does not apply. Under § 102(d)(2), the reference need only meet the "ministerial requirements" of §§ 119 and 120, and the earlier application must "describe[] the subject matter" relied upon in the reference as prior art. No prior Board precedent directly addressed this issue. The decision clarifies that Dynamic Drinkware's claim-support requirement is limited to pre-AIA § 102(e) and does not carry over to AIA § 102(d). A petitioner relying on a reference patent's provisional date need not show that any claim of the reference is supported by its provisional. It must show that the provisional describes the subject matter relied on and that the reference meets the ministerial requirements of §§ 119 and 120. A patent owner can no longer defeat a reference's provisional date by attacking written description support for the reference's claims. It must instead attack the provisional's description of the specific subject matter the petition relies on, or the ministerial requirements. The Board relied on Dynamic Drinkware, 800 F.3d 1375 (Fed. Cir. 2015), and distinguished it as to AIA § 102(d), along with the statutory text of §§ 100(i)(1)(B), 102(a)(2) and 102(d), MPEP § 2154.01(b), and the Bahr 2018 memorandum. LEGAL TEST OR STANDARD: Under AIA § 102(a)(2) and (d), "a reference patent document need only meet the 'ministerial requirements' of §§ 119 and 120, and the provisional or other earlier application(s) to which the reference patent document claims a right of priority must 'describe[] the subject matter' relied upon in the reference patent document as prior art." Whether any claim of the reference is actually entitled to priority is not evaluated. TRIGGERING FACTS: The challenged patent's effective filing date was after March 16, 2013 (priority date July 18, 2019; earliest effective filing date July 20, 2018), so AIA § 102 applied. Petitioner relied on Teigen, which claimed the benefit of a PCT application and two provisionals, as § 102(a)(2) prior art. Patent Owner argued under Dynamic Drinkware that no claim of Teigen was supported by the provisionals. Teigen properly claimed the benefit, the applications were co-pending, and they shared common inventors. KEY QUOTE: "Based on the above, we determine that, for prior-art determinations under AIA § 102, “there is no need to evaluate whether any claim of [a reference] patent document is actually entitled to priority or benefit under 35 U.S.C. 119, 120.”" (Paper 34, p. 32) PRIOR PRECEDENT AFFECTED: Dynamic Drinkware, LLC v. Nat'l Graphics, Inc., 800 F.3d 1375 (Fed. Cir. 2015), is held inapplicable to AIA § 102(d) as to the claim-support requirement. The Board noted consistent nonprecedential decisions (Apple Inc. v. Telefonaktiebolaget LM Ericsson, IPR2022-00341, Paper 10) and distinguished Forescout Technologies, Inc. v. Fortinet, Inc., IPR2021-01328, Paper 12, as not addressing the claim-support question. No prior Board precedential or informative decision is directly affected. PRACTICE TIP: In a petition relying on a reference patent's provisional date under AIA § 102(a)(2), do not spend effort proving written description support for the reference's claims. Instead, show that the reference meets the ministerial requirements and map each relied-on disclosure to the provisional, with specific cites in the petition or a declaration. A patent owner should target the provisional's lack of description of the relied-on subject matter, not the reference's claims.