Federal Circuit Clarifies Priority Requirements For Prior Art In Dental Monitoring SAS v. Align Technology

In Dental Monitoring SAS v. Align Technology, Inc., the Court of Appeals for the Federal Circuit ruled on the requirements for a U.S. patent publication to be prior art as of the filing date of a provisional application from which it claimed priority.

Background

Align Technology, Inc (Align) filed an inter partes review of U.S. Patent No. 10,755,409 (the ‘409 patent). The United States Patent Trial and Appeal Board (the Board) determined that claims 1–15 of the ’409 patent had been shown to be unpatentable as obvious over a combination of references that includes U.S. Patent Application Publ’n 2021/0068923 A1 (Carrier). The Court of Appeals vacated the Board’s decision and remanded the case for further proceedings

Statutory Provisions

35 USC § 102(a)(2) states that a person shall be entitled to a patent unless “the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.”

35 USC § 102(d)(2) states that “For purposes of determining whether a patent or application for patent is prior art to a claimed invention under subsection (a)(2), such patent or application shall be considered to have been effectively filed, with respect to any subject matter described in the patent or application — if the patent or application for patent is entitled to claim a right of priority under section 119, 365(a), 365(b), 386(a) or 386(b), or to claim the benefit of an earlier filing date under section 120, 121, 365(c) or 386(c), based upon 1 or more prior filed applications for patent, as of the filing date of the earliest such application that describes the subject matter.”

The United States Patent Trial and Appeal Board

The reference at issue, Carrier, was filed on November 18, 2020, and claimed priority to U.S. provisional application No. 62/417,985, filed on November 4, 2016. The Carrier reference would only be prior art to the ‘409 patent if it was entitled to claim a right of priority under section 119 to the provisional application. This was because the effective filing date of the ’409 patent, based on a foreign priority application, fell between the filing date of Carrier’s provisional application and the filing date of Carrier’s nonprovisional application.

For purposes of the inter partes review proceeding, the Board determined that Carrier was effectively filed on the date that the provisional application was filed and was thus prior art to the ‘409 patent. The Board held that, for purposes of AIA § 102(d)(2), a reference patent receives the filing date of an earlier application as long as it satisfies the “ministerial requirements” of §§ 119 and 120 and the earlier application “describes the subject matter relied upon in the reference patent.” In other words, the Board held that it was only necessary for the provisional application to describe the subject matter relied upon in the reference patent. It was not necessary for the provisional application to support any of the claims in the non-provisional Carrier reference.

The Court of Appeals for the Federal Circuit

On appeal, the Court of Appeals for the Federal Circuit held that 35 USC § 102(d)(2) provides that a patent is prior art as of an earlier effective filing date of a provisional application only if the patent is entitled to claim a right of priority under 35 USC § 119.” In other words, at least one claim in the reference patent must be supported by the provisional application. The Court determined that to hold otherwise would ignore the requirement of “entitled to.” The Court found that it is not enough that the reference patent claimed priority to the provisional application, but that the reference patent must be entitled to the filing date of the provisional application.

During the inter partes review proceeding, the Board did not determine whether the Carrier provisional application provides sufficient written description support for the Carrier reference patent. Accordingly, the case was remanded back to the Board so that Align can establish whether Carrier’s provisional application provides written description support for at least one claim of the Carrier reference patent.

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