Time to InventThe shock of the new

A lot turns on who invents a thing first. Billions maybe.

Patent law requires newness. The mandate can cause patent death even in the case of almost-but-not-quite “prior art”. If the older stuff “anticipates” the new thing, it renders the invention unpatentable.

A recent decision by the Federal Circuit highlights the anticipation question. 

A patent for optical illusions

Dynamic Drinkware applied for inter partes review of a National Graphics patent on plastic moldings that bear a “lenticular” image (i.e., an optical illusion). The Patent and Trademark Appeal Board took up the IPR but did not agree with Dynamic’s claim that a “provisional” patent filing by Raymond on February 5, 2000 counted as prior art that “anticipated” the National Graphics patent. Raymond had not filed a non-provisional application until May 5, 2000.

National Graphics applied for the patent on November 22, 2000 but cited its earlier provisional filing on June 12, 2000. It also put in proof that it had reduced the invention to practice by March 28, 2000.

The battle lines thus formed up as follows:

February 5 — Raymond provisional application

March 28 — National Graphics reduction to practice

May 5 — Raymond non-provisional application

June 12 — National Graphics provisional application

November 22 — National Graphics non-provisional application

The PTAB ruled that National Graphics carried its burden of proving when it reduced the invention to practice. It used that date — March 28 — to assess Dynamic’s anticipation defense.

The Board put on Dynamics the burden to persuade it that the Raymond provisional met the test for anticipation — a test that requires a single art reference to contain every element of the patent claim. Dynamics complained that the burden should have rested on National Graphics.

The Federal Circuit affirms

The panel observed that a party claiming the unpatentability of an invention always bears the burden of persuasion. Although Dynamics did come forward with evidence — the Raymond provisional — and thus met its burden of “production”, the PTAB did not have to believe that the Raymond provisional proved the anticipation defense.

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. In re Wertheim, 646 F.2d 527, 537 (CCPA 1981). As Dynamic acknowledges, it provided charts to the Board comparing the claims of the ’196 patent to the disclosure of the Raymond patent and claim 1 of the ’196 patent to the disclosure of the Raymond provisional application. See, e.g., Appellant’s Br. at 22. Nowhere, however, does Dynamic demonstrate support in the Raymond provisional application for the claims of the Raymond patent. That was Dynamic’s burden. A provisional application’s effectiveness as prior art depends on its written description support for the claims of the issued patent of which it was a provisional. Dynamic did not make that showing.

Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., No. 15-1214, slip op. at 11 (Fed. Cir. Sept. 4, 2015).

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