PTAB Confirms Petitioners Must Make Two Distinct Showings To Prove A Primary Patent Reference's Entitlement To A Provisional Application's Filing Date

• Published date: 21 February 2022
• Subject Matter: Intellectual Property, Patent
• Law Firm: Duane Morris LLP
• Author: Mr Christopher Tyson

In a January 27, 2022 non-precedential decision in IPR2021-01328, the Patent Trial and Appeal Board ("PTAB") denied institution of an inter partes review ("IPR") proceeding because the petitioner failed to prove that the primary patent reference was prior art to the challenged patent. Specifically, despite relying on the filing date of a provisional application in order to assert that the primary patent reference used in all of its grounds was prior art to the challenged patent, in its IPR petition, the petitioner only addressed one of the two requirements in order to demonstrate entitlement to priority.

In its IPR petition, the petitioner (Forescout Technologies, Inc.) challenged certain claims of U.S. Pat. No. 9,503,421 (the "Challenged Patent"), which was filed on March 17, 2014, with two obviousness grounds that both relied on U.S. Pat. No. 10,129,290 to Thomas et al. (the "Primary Reference"). The petitioner alleged that the Primary Reference, which was filed on April 1, 2016, was entitled to the priority benefit of the February 24, 2014 filing date of its provisional application (U.S. Prov. Pat. App. No. 61/944,019 (the "Relied-on Provisional")) for prior art purposes under 35 U.S.C. ' 102(a)(2).

To establish that a reference patent (or patent printed publication) is entitled to the benefit of its provisional application's filing date for prior art purposes, a petitioner has the burden to show that both of the following two requirements are met in its IPR petition:

• First, a petitioner must show that the provisional application provides sufficient support for at least one claim in the reference patent.¹²
• Second, a petitioner must show that the provisional application provides sufficient support for the subject matter relied upon for prior art purposes in the reference patent.³⁴⁵⁶⁷

In IPR2021-01328, and although the petitioner argued that, under the post-AIA version of ' 102, "no need exists to evaluate whether [the Primary Reference] is [actually] entitled to ... priority to the [Relied-on Provisional]" (an argument that the PTAB rejected in its institution decision), the petitioner addressed the first requirement (under Dynamic Drinkware) in its IPR petition, and argued that at least one claim of the Primary Reference had written description support in the Relied-on Provisional.⁸⁹ However, in its decision denying institution, the PTAB agreed with the patent owner (Fortinet, Inc.) that the petitioner failed to address the second requirement (under...