Docket No. 2015-1214
LOURIE, BRYSON, O’MALLEY
September 4, 2015
Brief Summary: PTAB decision that DD failed to prove anticipation by a preponderance of the evidence because it had not shown the asserted prior art patent was entitled to its provisional filing date affirmed (PTAB correctly placed burdens of persuasion and production on DD).
Summary: Dynamic Drinkware (DD) appealed from PTAB IPR decision not to reject claims 1 and 12 of National Graphics (NG) US 6,635,196 directed to making molded plastic articles bearing a “lenticular” image (printed images with an illusion of depth) as anticipated under 35 USC § 102(e) (2006). DD petitioned for review of whether claims 1, 8, 12 and 14 were anticipated by US 7,153,555 (“Raymond”), which was granted for claims 1 and 12. The PTAB concluded DD failed to prove anticipation by a preponderance of the evidence because it had not shown Raymond was entitled to its provisional filing date (“to be entitled to rely [on that date, DD] had to establish that it relies on subject matter from Raymond that is present and supported by its provisional” (In re Giacomini, FC 2010 and Ex parte Yamaguchi, BPAI 2008)) and NG “reduced to practice its invention…before the…filing date of the Raymond patent” (the actual filing date, not the provisional date). The FC found no error with the Board placing the burden of persuasion in the provisional on DD since in an IPR “the burden of persuasion is on the petitioner to prove ‘unpatentability by a preponderance of the evidence,’ 35 U.S.C. § 316(e), and that burden never shifts to the patentee…if the trier of the issue is left uncertain, the party with the burden loses” (Tech. Licensing, FC 2008). This differs from the “burden of production” in which may move between the parties as a petitioner raises prior art (or, as here, shows a patent is entitled to priority under its initial burden of production), the patentee defends against it, and so on. The FC found DD had also failed to meet its burden of production after NG established the date its invention had been reduced to practice before Raymond’s filing date (explaining that “it was not necessary for Dynamic to prove in its petition that Raymond was entitled to the filing date of its provisional application.”) The FC opinion explained that “the specification of a provisional must ‘contain a written description of the invention and the manner and process of making and using it, in such full, clear, concise, and exact terms’, 35 U.S.C. § 112, ¶ 1, to enable an ordinarily skilled artisan to practice the invention claimed in the non-provisional application” (New Railhead, FC 2002; MPEP § 211.05(I)(A) (2014) (“because the PTO does not examine priority claims unless necessary, the Board has no basis to presume that a reference patent is necessarily entitled to the filing date of its provisional application”); In re Wertheim, CCPA 1981). DD was required to “demonstrate support in the Raymond provisional application for the claims of the Raymond patent” but only compared the claims of NG’s ‘196 patent to the Raymond patent and provisional application (“A provisional application’s effectiveness as prior art depends on its written description support for the claims of the issued patent for which it was a provisional. Dynamic did not make that showing.”) Thus, the PTAB decision was affirmed.