United States: Relying On Provisional Application Filing Date Only Valid When Both Steps Of Dynamic Drinkware Analysis Are Proven

In Apple v. Telefonaktiebolaget LM Ericsson,¹ the Board denied institution of Apple's IPR because it failed to show that the asserted patent references were prior art. In its petition, Apple asserted two U.S. patent application publications, both of which were filed after the challenged patent's undisputed November 4, 2016 critical date. Thus, Apple had to show that the references were entitled to the effective filing dates of their respective provisional applications to predate the challenged patent's critical date.

To support a valid priority claim, the requirements of Dynamic Drinkware must be met.² In Dynamic Drinkware, the Federal Circuit held that "a reference patent is only entitled to claim the benefit of the filing date of its provisional application if the disclosure of the provisional application provides support for the claims in the reference patent in compliance with § 112 ¶ 1."³ First, a petitioner must demonstrate that the provisional application's "written description [provides] support for the claims of the [later] patent."⁴ Second, a petitioner must show that the "subject matter relied upon for prior art was effectively filed in the provisional application[]."⁵

Here, for each asserted reference, Apple satisfied the first requirement through mapping claim one of each reference to disclosures in their respective provisional applications. However, the Board concluded that Apple failed to meet the second requirement that the provisional applications "describe[d] the subject matter" relied upon as prior art in the reference publication.⁶ Instead, Apple merely relied on the disclosures of the asserted references without explaining how such disclosures were supported by their respective provisional applications. The Board found this omission "[f]atal to the Petition."⁷

Since Apple did not demonstrate that its prior art references were entitled to the priority dates of their provisional applications, the Board found that Apple did not show a reasonable likelihood that it would prevail in challenging the patentability of the asserted claims. Accordingly, the Board denied Apple's petition.

Take Away

Petitioners attempting to rely on the filing date of a patent reference's priority application must follow both steps of the Dynamic Drinkware test. Petitioners must demonstrate that (1) at least one claim of the reference is supported by its priority application, and (2) the specific subject matter relied upon as prior art is supported by the priority application.

Footnotes

1. IPR2022-00348, Paper 9 (Sept. 21, 2022),

2. See Dynamic Drinkware, LLC v. Nat'l Graphics, Inc., 800 F.3d 1375, 1380 (Fed. Cir. 2015).

3. Id. at 1381.

4. Id. at 1382.

5. Id. at 1380-81.

6. See 35 U.S.C. §102(d).

7. Apple, IPR2022-00348, at 6.

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