Last week, we analyzed the Federal Circuit's Dynamic Drinkware, LLC v. National Graphics, Inc. case from early September.  In that case, the Federal Circuit held that an IPR petitioner did not adequately demonstrate that an invalidating reference under 35 U.S.C. § 102(e)(2) was entitled to its provisional filing date because it failed to compare the provisional application to the claims of the reference patent (as opposed to the patent attempting to be invalidated).  The opinion focused on the claims of the reference patent, and was silent as to whether the provisional disclosure would also need to be invalidating.  Therefore, it is clear that comparing the claims of the reference patent to the provisional is necessary, but is such a comparison sufficient to allow the reference patent to claim priority back to the provisional filing date for the entirety of its disclosure.

In analyzing the case, we highlighted the most important take away -- if you are attempting to invalidate a pre-AIA patent claim with a prior art under 102(e)(2), whether in an IPR proceeding or in district court, and you need to rely on the filing date of a provisional application, you must show where support for that prior art patent's claims can be found within the provisional filing.  This is contrary to the common-place practice of merely identifying in the provisional application where the invalidating disclosure can be found (similar to identifying in the 102(e) patent where the invalidating disclosure can be found).  However, even though we suggested that it would still be advisable to make such a showing in addition to where support for the claims can be found, we also provided a scenario demonstrating what problems can ensue if Dynamic Drinkware stood for the proposition that identifying support for the claims of the reference patent was necessary and sufficient for the entirety of the non-provisional disclosure to be entitled to the provisional filing date.

After the post published, we were accused by several commenters of misreading the case.  If their opinions had no merit, it would not warrant a response.  However, there were some valid points expressed that are worth noting, so we decided to prepare this follow-up post to air this controversy (if it can even be considered that).  For the record, we do not believe that we are misreading the Dynamic Drinkware case.  Instead, we are reading it for precisely what it says.  We do not disagree, however, that there might be an alternative reading that would address these problems.  However, for the alternative reading to be correct, the case needs to be read as incorporating information implicitly.  Nevertheless, this alternative reading is satisfying because it would do away with the problematic scenario that we identified, and it would eliminate the inherent unfairness of our reading of the case.

As commenter Kip explained:

The decision says that for provisional X to anticipate under 102e, it must result in a publication or patent that:

1. has at least one claim supported by X;
2. contains disclosure (in the spec or claims) that anticipates the patent under review

In other words, according to this reading, there are two requirements -- you need to show support for the claims of the reference patent, and you need to identify where the disclosure in the provisional can be found for the patent being challenged.  This interpretation was echoed by commenter EG, long-time friend of the blog.

But unfortunately, there is no support in the Dynamic Drinkware case itself that supports this interpretation.  This could be due to a lack of clarity on the part of the Court, as commenter Dan Williams put it (no relation).  Dynamic didn't show that the claims had support, so no further analysis was necessary.  Or, as Mr. Williams put it, "[w]hat they really were saying in my opinion was '(you need both 1 and 2, and even though Dynamic proved 2), Dynamic didn't show 1, so they lose.'"  Nevertheless, there is no support anywhere else in this case for that interpretation, and despite requests, no one was able to provide any.

The best support, as provided by commenter Kip, was the citation in the opinion to In re Werthein, 646 F.2d 527 (CCPA 1981).  That case was authored by Judge Rich, and stood for the proposition that if you are citing a patent as invalidating art and claiming priority to a continuation-in-part application, you need to find support in that CIP.  The reasoning was the same as that for providing the invaliding effect of patents at the filing date, not the publication date or issue date -- that the ability to use a patent as prior art should not depend on the speed and/or efficiency of the Patent Office.  Correspondingly, the theory in this case holds that if the prior patent does not support the claims of the issued patent, than it itself never would have resulted in a patent (regardless of the speed of the Office).  Thus, if the provisional does not support the relevant disclosure, then priority to it is unavailable.

The problem is Wertheim came out in 1981, prior to the advent of provisional applications.  Therefore, how that case is applied to provisionals needs to be ascertained.  Moreover, rather than applying Wertheim as determinative of the present case, Dynamic Drinkware actually tells us how Wertheim applies to provisionals:  "A reference patent is only entitled to claim the benefit of the filing date of its provisional application if the disclosure of the provisional application provides support for the claims in the reference patent in compliance with § 112, ¶ 1."  It says nothing about the disclosure of the reference patent, much less the claims of the patent that is being challenged.

At this point, it should be noted that both interpretations have merits and flaws.  It will be interesting to see if these issues come up soon, or even at all.  What is clear is that if you are trying to invalidate the claims of a patent, and you need support to the provisional, you better include support related to the claims of the reference patent.