Antedating 102e reference

According to National Graphics, priority claims are not examined by the PTO as a matter of course, and consequently are not entitled to a presumption of adequate written description support in the provisional application. We concluded that once “TLC's evidence and argument in support of the earlier filing date is ․ before the court, the burden of going forward again shifts to the proponent of the invalidity defense, Gennum, to convince the court that TLC is not entitled to the benefit of the earlier filing date.” Id. The aforementioned shifting burdens and related priority claims under § 120 in district court litigation parallel the shifting burdens and related priority claims under § 119(e)(1) in inter partes reviews. § 282, the different evidentiary standard in an inter partes review does not alter the shifting burdens between the parties because § 316(e) also places the burden of persuasion on the petitioner to prove unpatentability. In response, National Graphics argues that the Board properly placed the burden of proof on Dynamic to support its contention that the Raymond provisional application provided written description support for the claims of the Raymond patent. We noted that “[t]his requires TLC to show not only the existence of the earlier application, but why the written description in the earlier application supports the claim.” Id. Because Dynamic failed to carry its burden of proving unpatentability, we affirm. As a result, it was not necessary for Dynamic to prove in its petition that Raymond was entitled to the filing date of its provisional application. We ultimately agree with National Graphics, however, that the Board's decision was supported by substantial evidence because Dynamic failed to compare the claims of the Raymond patent to the disclosure in the Raymond provisional application. Nowhere, however, does Dynamic demonstrate support in the Raymond provisional application for the claims of the Raymond patent. A provisional application's effectiveness as prior art depends on its written description support for the claims of the issued patent of which it was a provisional. We thus conclude that the Board's finding that Dynamic failed to prove that the Raymond patent was entitled to the filing date of its provisional application is supported by substantial evidence. Because we refer to the pre-AIA version of § 102, we do not interpret here the AIA's impact on Wertheim in newly designated § 102(d). As discussed supra, Dynamic did not have the burden of producing evidence relating to the Raymond provisional application until after National Graphics made its argument regarding reduction to practice. Because the application for the patent at issue in this case was filed before that date, we refer to the pre-AIA version of § 102.2.

In contrast, Dynamic's proffered approach would create a presumption that a patent is entitled to the benefit of the filing date of its provisional precursor, but that would be unsound because the PTO does not examine provisional applications as a matter of course; such a presumption is therefore not justified. Cir.1984), explains this: If the filing date of the earlier provisional application is necessary, for example, in the case of an interference or to overcome a reference, care must be taken to ensure that the disclosure filed as the provisional application adequately provides (1) a written description of the subject matter of the claim(s) at issue in the later filed nonprovisional application, and (2) an enabling disclosure to permit one of ordinary skill in the art to make and use the claimed invention in the later filed nonprovisional application without undue experimentation. Thus, 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. Indeed, Dynamic's reliance on Giacomini to argue for a presumption is misplaced. Dynamic contends that, as part of its petition, it compared the claims of the ′ 196 patent to the disclosure in the Raymond patent. The Board found that, rather than comparing “the portions of [Raymond] relied on by [Dynamic] to the Raymond provisional,” Dynamic only compared claim 1 of the ′196 patent to the Raymond provisional application. It is worth emphasizing that the relevance of the Raymond provisional application date here is not to give the Raymond patent any earlier priority over a competing application or patent, but to serve third party Dynamic's goal of creating earlier prior art against the ′196 patent. Thus, the Board concluded that Dynamic failed to demonstrate by a preponderance of the evidence that claims 1 and 12 of the ′196 patent were anticipated by Raymond under § 102(e). National Graphics responds that Dynamic only made a conclusory assertion in its petition that Raymond was entitled to an earlier effective date, and the argument is therefore waived. As a result, the Board found that Dynamic “failed to carry its burden of proof that Raymond's effective date is earlier than May 5, 2000.” Id. Dynamic argues that the combination of the two charts demonstrates that the Raymond provisional application provides written description support for the claims of the Raymond patent.review (IPR) finding that petitioner failed to demonstrate a reasonable likelihood of prevailing with respect to at least one challenged claim. The court ultimately affirmed the Board’s decision.The PTAB’s decision came after a nearly identical request for post-grant review (PGR) previously filed by petitioner on the same patent had been denied by the PTAB. (DRL), but because DRL was also time-barred pursuant to § 315(b), the Board terminated the proceeding. But first, the court held that Amerigen had standing to pursue the appeal. The PTAB found that the petitioner had failed to show good cause to excuse this clerical error, especially in light of the notice of the deficient filing provided by the PTAB.

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Before LOURIE, BRYSON, and O' MALLEY, Circuit Judges.

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