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The court affirmed the decision of the PTAB in an inter partes review not to reject claims of the patent-at-issue as anticipated by the Raymond patent, because the petitioner, Dynamic, had failed to meet its burden of proving that the Raymond patent was prior art, i.e., that it was entitled to the filing date of its provisional application under 35 U.S.C. §102(e)(2) (pre-AIA).  The court explained the various burdens involved.  First, because Dynamic was petitioning the PTO to invalidate the patent, it bore the ultimate burden of persuasion to prove unpatentability by the preponderance of the evidence, a burden which never shifts.  Dynamic also bore the initial burden of production by arguing initially that the Raymond patent anticipated the claims.  The burden of production then shifted to the patent owner to argue or produce evidence that either Raymond does not actually anticipate the claims, or that it is not prior art because the claims of the patent-at-issue are entitled to a filing date prior to the filing date of Raymond. 

Having shown that the invention claimed in the patent-at-issue was reduced to practice prior to the filing date of the Raymond patent, the burden of production then shifted back to Dynamic to show that Raymond was entitled to a filing date prior to the date of the reduction to practice just demonstrated by the patent owner.  Thus, for the Raymond patent, which claimed priority to a provisional patent application, the burden of production was on Dynamic to prove that, under §119(e)(1), Raymond was entitled to the benefit of the filing date of its provisional application.  Dynamic argued that this burden was improper, because, as an issued patent, Raymond’s presumed effective filing date is the provisional filing date.  Dynamic was wrong, however, because the PTO does not examine provisional applications as a matter of course, and therefore such a presumption cannot attach where the PTO has not acted.

Dynamic further failed to meet its burden of proving that the Raymond patent was entitled to the filing date of its provisional application.  Dynamic argued that it met its burden by comparing the claims of the patent-at-issue in the inter partes review to the disclosure of the Raymond provisional application.  But, a provisional application’s effectiveness as prior art depends on its written description support for the claims of the Raymond patent of which it was a provisional.  Dynamic therefore failed to meet its burden of showing that the Raymond patent is prior art to the patent-at-issue in the inter partes proceeding. 

Dynamic Drinkware, LLC v. National Graphics, Inc., Case No. 2015-1214 (September 4, 2015); Opinion by: Lourie, joined by Bryson and O’Malley; Appealed From: Patent Trial and Appeal Board. Read the full opinion here.

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