Federal Circuit Holds That Prior Art References Must Satisfy Written-Description Requirement to Claim Provisional Filing Date

By Bailey Hopkins and Daniel Staren

In Dental Monitoring SAS v. Align Technology, Inc., the Federal Circuit recently considered whether a prior art reference could receive the benefit of an earlier provisional application’s filing date under section 102(d)(2) of the America Invents Act (AIA) without satisfying the written-description requirement of section 112(a). The Federal Circuit held that a prior art reference may claim the benefit of a provisional application’s filing date only if the provisional provides section 112(a) written-description support for at least one of the reference’s published claims. Rejecting the PTAB’s Penumbra-based “ministerial” standard, the Federal Circuit vacated the Board’s final written decision finding claims 1–15 of U.S. Patent No. 10,755,409 (the ’409 Patent) unpatentable as obvious and remanded.

Dental Monitoring SAS owns the ’409 Patent, which is directed to a method for acquiring and analyzing an image of a patient’s dental arch. Align Technology, Inc. petitioned for inter partes review of claims 1 through 15, asserting obviousness over a combination of three references, including the Carrier reference. Because the ’409 patent’s effective filing date fell between the filing dates of Carrier’s provisional and nonprovisional applications, Carrier was prior art only if entitled to the benefit of its provisional date. Dental Monitoring argued that, under Dynamic Drinkware, LLC v. National Graphics, Inc., Carrier’s provisional had to provide written-description support for at least one of Carrier’s claims. Applying its precedential decision in Penumbra, Inc. v. RapidPulse, Inc., the Board disagreed, holding that Dynamic Drinkware applied only to pre-AIA law and that a reference need satisfy only the “ministerial” requirements for claiming priority under sections 119 and 120. The Board reasoned that the earlier application must only “describe the subject matter relied upon in the reference patent” to obtain the benefit of an earlier filing date. Under that standard, the PTAB treated Carrier as prior art as of its provisional’s filing date.

On appeal, the Federal Circuit vacated based on the statutory text, reasoning that section 102(d)(2) confers an earlier effective filing date only if the reference is “entitled to claim a right of priority” under section 119, and section 119(e)(1) conditions priority to a provisional on disclosure “in the manner provided by section 112(a).” The Federal Circuit further reasoned that reading the statute to require only a priority claim, as the Board did, would render “entitled to” superfluous.

The Federal Circuit rejected Align’s contention that Dynamic Drinkware was confined to pre-AIA law because Dynamic Drinkware merely reserved the AIA section 102(d) question; it did not hold that the AIA eliminated the written-description requirement. The court additionally rejected Align’s reliance on legislative history describing section 102(d)’s requirements as merely ministerial, reasoning that “the authoritative statement is the statutory text, not the legislative history or any other extrinsic material.” The Federal Circuit also rejected Align’s reliance on section 100(i), explaining that the AIA’s section 100(i)’s distinction between a claimed invention’s effective filing date and a reference’s prior-art date does not dispense with section 119’s substantive requirements.  The Federal Circuit also noted that its Rule 36 affirmance of Penumbra “has no precedential value and cannot establish applicable Federal Circuit law.” Because the Board never decided whether Carrier’s provisional provides section 112(a) written-description support for any Carrier claim, the Federal Circuit vacated and remanded for further factual findings.

The decision confirms that a party relying on a reference’s provisional filing date must show that the provisional application provides written-description support for at least one of the reference’s published claims, giving patent owners a basis to challenge backdated prior art.