Dynamic Drinkware, LLC v. National Graphics, Inc.
800 F.3d 1375
| Fed. Cir. | 2015Background
- National Graphics owns U.S. Patent 6,635,196 (the ’196 patent) claiming molded plastic articles with a lenticular image; issued Oct. 21, 2003; claims priority to a June 12, 2000 provisional.
- Dynamic filed an inter partes review petition arguing claims 1 and 12 of the ’196 patent were anticipated by U.S. Patent 7,153,555 (Raymond).
- Raymond’s application was filed May 5, 2000 and claimed priority to a provisional filed Feb. 15, 2000; Dynamic sought to treat Raymond as §102(e) prior art as of that provisional date.
- The PTAB instituted trial on claims 1 and 12 but found Dynamic failed to prove Raymond was entitled to the provisional filing date and also found National Graphics reduced its invention to practice by March 28, 2000.
- The Board concluded Dynamic did not prove anticipation by a preponderance of the evidence; Dynamic appealed.
Issues
| Issue | Dynamic's Argument | National Graphics' Argument | Held |
|---|---|---|---|
| Whether the petitioner bears the burden to prove a reference patent is entitled to an earlier provisional filing date under §119(e)(1) | Raymond, as a granted patent, should be presumptively entitled to its provisional filing date; burden should shift to National Graphics (citing Giacomini) | Petitioner must prove the provisional supports the later patent’s claims because PTO does not examine provisionals routinely | The petitioner (Dynamic) bears the burden of persuasion and initial production; PTAB did not err in requiring Dynamic to prove Raymond’s provisional supports Raymond’s patent |
| Whether Dynamic proved Raymond’s provisional provided written-description support for the Raymond patent claims | Dynamic provided charts and argued equivalence between Raymond patent and its provisional | National Graphics argued Dynamic never compared Raymond patent claims directly to the Raymond provisional; thus no written-description showing | Court held substantial evidence supports PTAB’s finding that Dynamic failed to demonstrate the provisional supports Raymond’s patent claims |
| Whether National Graphics’ reduction to practice before Raymond’s filing defeats Raymond as prior art | Dynamic argued Raymond (if entitled to provisional date) would be earlier prior art | National Graphics presented evidence of reduction to practice by March 28, 2000 | Court affirmed PTAB that National Graphics’ reduction to practice predates Raymond’s effective date as proved by Dynamic |
| Whether Giacomini creates a presumption that a patent is entitled to its provisional filing date in IPRs | Dynamic relied on Giacomini to shift burden to patentee | National Graphics distinguished Giacomini and argued no presumption where PTO hasn’t examined provisional | Court held Giacomini did not establish such a presumption; no automatic entitlement absent showing of written-description support |
Key Cases Cited
- In re Giacomini, 612 F.3d 1380 (Fed. Cir.) (waiver of argument that provisional lacked written-description support results in loss of that challenge)
- Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316 (Fed. Cir.) (distinguishes burden of persuasion from shifting burden of production)
- In re Elsner, 381 F.3d 1125 (Fed. Cir.) (standard of review for legal determinations)
- In re Gartside, 203 F.3d 1305 (Fed. Cir.) (substantial evidence standard for factual findings)
- New Railhead Mfg., L.L.C. v. Vermeer Mfg. Co., 298 F.3d 1290 (Fed. Cir.) (provisional must meet §112 written-description and enablement requirements to serve as priority)
- Consol. Edison Co. v. NLRB, 305 U.S. 197 (U.S.) (definition of substantial evidence)
- PowerOasis, Inc. v. T-Mobile USA, Inc., 522 F.3d 1299 (Fed. Cir.) (no presumption of priority entitlement when PTO has not considered priority)
- In re Wertheim, 646 F.2d 527 (CCPA) (provisional’s disclosure must support claims of the later patent to confer priority)
Disposition: Affirmed — PTAB decision that Dynamic failed to prove anticipation under §102(e) was supported by substantial evidence.