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Patent Trial and Appeal Board

Director Vidal designates decision as precedential

Penumbra, Inc. v. RapidPulse, Inc., IPR2021-01466, Paper 34 (March 10, 2023) – (precedential as to section II.E.3)

This decision addresses the holding by the Federal Circuit in Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015), that under pre-AIA 35 U.S.C. § 102(e), a reference patent’s claims must have written description support in its provisional application to be entitled to that provisional application’s filing date for prior art purposes. The decision designated precedential today determines that the holding in Dynamic Drinkware does not apply to AIA § 102(d), i.e., Dynamic Drinkware applies to pre-AIA patents, but not post-AIA patents. The decision explains that for prior art determinations under AIA § 102, a reference patent document need only meet the ministerial requirements of 35 U.S.C. §§ 119 and 120, and that the provisional or other earlier applications to which the reference patent claims a right of priority must describe the subject matter relied upon in the reference patent as prior art.

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