Dynamic Drinkware, LLC v. National Graphics, Inc., 800 F.3d 1375 (2015)
`116 U.S.P.Q.2d 1045
`
`
`
`KeyCite Yellow Flag - Negative Treatment
` Distinguished by Cisco Systems, Inc. v. Capella Photonics, Inc., Patent
`Tr. & App. Bd., February 17, 2016
`800 F.3d 1375
`United States Court of Appeals,
`Federal Circuit.
`
`DYNAMIC DRINKWARE, LLC, Appellant
`v.
`NATIONAL GRAPHICS, INC., Appellee.
`
`No. 2015–1214.
`|
`Sept. 4, 2015.
`
`Synopsis
`Background: Petitioner appealed decision of the United
`States Patent and Trademark Office, Patent Trial and
`Appeal Board, 2014 WL 4628897, in inter partes review
`not to reject claims of patent directed to making molded
`plastic articles bearing lenticular image.
`
`Holdings: The Court of Appeals, Lourie, Circuit Judge,
`held that:
`
`[1] petitioner had burden to prove that prior art patent was
`entitled to filing date of its provisional application;
`
`[2] petitioner did not waive argument that effective date of
`prior art patent related back to its provisional application;
`and
`
`[3] substantial evidence supported Board's determination
`that prior art patent did not relate back to its provisional
`application.
`
`Affirmed.
`
`Attorneys and Law Firms
`
`*1376 Matthew R. McClean Davis & Kuelthau, S.C.,
`Milwaukee, WI, argued for appellant. Also represented by
`Patrick M. Bergin, Joseph S. Heino.
`
`Michael T. Griggs, Boyle Fredrickson, S.C., Milwaukee,
`WI, argued for appellee. Also represented by John Paul
`Fredrickson, Sarah M. Wong.
`
`Before LOURIE, BRYSON, and O'MALLEY, Circuit
`Judges.
`
`Opinion
`
`*1377 LOURIE, Circuit Judge.
`
`Dynamic Drinkware, LLC (“Dynamic”) appeals from
`the decision of the United States Patent and Trademark
`Office (“PTO”) Patent Trial and Appeal Board (“Board”)
`in an inter partes review not to reject claims 1 and 12
`of National Graphics, Inc.'s (“National Graphics”) U.S.
`Patent 6,635,196 (the “′196 patent”) as anticipated under
`35 U.S.C. § 102(e) (2006). 1 See Dynamic Drinkware,
`LLC v. Nat'l Graphics, Inc., No. 2013–00131, 2014 WL
`4628897 (P.T.A.B. Sept. 12, 2014) (“Board Decision ”).
`Because Dynamic failed to carry its burden of proving
`unpatentability, we affirm.
`
`1
`
`The relevant provision of § 102(e)(2) was reorganized
`into newly designated § 102(d)(2) when certain aspects
`of the Leahy–Smith America Invents Act (“AIA”),
`Pub. L. No. 112–29, took effect on March 16, 2013.
`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.
`
`BACKGROUND
`
`National Graphics owns the ′196 patent, which is
`directed to making molded plastic articles bearing a
`“lenticular” image. The ′196 patent issued on October 21,
`2003, from an application filed on November 22, 2000.
`The ′196 patent claims the benefit of U.S. Provisional
`Application 60/211,112, filed on June 12, 2000.
`
`Dynamic petitioned the PTO for inter partes review of the
`′196 patent. In its petition, Dynamic argued that claims
`1, 8, 12, and 14 of the ′196 patent were anticipated by
`U.S. Patent 7,153,555 (“Raymond”). The application for
`Raymond was filed on May 5, 2000, claiming the benefit of
`U.S. Provisional Application 60/182,490 (the “provisional
`application” or “Raymond provisional application”),
`filed on February 15, 2000. The PTO granted the petition
`in part, and instituted trial on claims 1 and 12.
`
` © 2017 Thomson Reuters. No claim to original U.S. Government Works.
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`Dynamic Drinkware, LLC v. National Graphics, Inc., 800 F.3d 1375 (2015)
`116 U.S.P.Q.2d 1045
`
`The Board concluded that Dynamic failed to prove by
`a preponderance of the evidence that claims 1 and 12
`were anticipated under § 102(e)(2) by Raymond. Board
`Decision at 13. The Board first found that Dynamic failed
`to prove that the Raymond patent was entitled to the
`benefit of its earlier February 15, 2000 provisional filing
`date, and hence that it was a § 102(e) reference as of its
`provisional date. Id. at 3. According to the Board, “[t]o
`be entitled to rely on the February 15, 2000 provisional
`filing date, [Dynamic] had to establish that it relies on
`subject matter from Raymond that is present in and
`supported by its provisional.” Id. (citing In re Giacomini,
`612 F.3d 1380, 1383 (Fed.Cir.2010); Ex parte Yamaguchi,
`88 U.S.P.Q.2d 1606 (B.P.A.I.2008)). 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. Id. at 4. 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. 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.
`
`The Board then found that National Graphics reduced to
`practice its invention by March 28, 2000, before the May
`5, 2000 filing date of the Raymond patent. Id. at 12. 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). Id. at 13.
`
`Dynamic timely appealed to this court. We have
`jurisdiction pursuant to 28 U.S.C. § 1295(a)(4)(A).
`
`*1378 DISCUSSION
`
`[1]
` We review the Board's legal determinations de novo,
`In re Elsner, 381 F.3d 1125, 1127 (Fed.Cir.2004), and the
`Board's factual findings underlying those determinations
`for substantial evidence, In re Gartside, 203 F.3d 1305,
`1316 (Fed.Cir.2000). A finding is supported by substantial
`evidence if a reasonable mind might accept the evidence
`to support the finding. Consol. Edison Co. v. NLRB, 305
`U.S. 197, 229, 59 S.Ct. 206, 83 L.Ed. 126 (1938).
`
`[2]
` For a patent to claim priority from the filing date of its
`provisional application, it must satisfy 35 U.S.C. § 119(e)
`(1) (2006), which provides that:
`
`An application for patent filed under
`section 111(a) or section 363 of
`this title for an invention disclosed
`in the manner provided by the first
`paragraph of section 112 of this title
`in a provisional application filed
`under section 111(b) of this title,
`by an inventor or inventors named
`in the provisional application, shall
`have the same effect, as to such
`invention, as though filed on the date
`of the provisional application filed
`under section 111(b) of this title....
`
`(emphases added). “In other words, the specification of
`the provisional must ‘contain a written description of the
`invention and the manner and process of making and
`using it, in such full, clear, concise, and exact terms,’ 35
`U.S.C. § 112 ¶ 1, to enable an ordinarily skilled artisan
`to practice the invention claimed in the non-provisional
`application.” New Railhead Mfg., L.L.C. v. Vermeer Mfg.
`Co., 298 F.3d 1290, 1294 (Fed.Cir.2002) (emphases in
`original).
`
`I
`
`Dynamic argues that the Board erred in shifting the
`burden to Dynamic to prove that the Raymond patent was
`entitled to the filing date of its provisional application.
`According to Dynamic, as a presumptively valid prior
`art patent, Raymond's presumed effective date is its
`February 15, 2000 provisional application filing date.
`Dynamic contends that it made a prima facie showing that
`Raymond was thus prior art to the ′196 patent under §
`102(e) as of its provisional date, and, under Giacomini,
`the burden should have shifted to National Graphics to
`prove that Raymond was not entitled to the filing date of
`its provisional application.
`
`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. According to National
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`Dynamic Drinkware, LLC v. National Graphics, Inc., 800 F.3d 1375 (2015)
`116 U.S.P.Q.2d 1045
`
`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.
`
`112 of this title in an application previously filed in
`the United States ... shall have the same effect, as to
`such invention, as though filed on the date of the prior
`application....” (emphasis added).
`
`[3]
` We agree with National Graphics that the Board
`did not err in placing the burden on Dynamic, the
`petitioner in the inter partes review, to prove that the
`prior art Raymond patent was entitled to the filing date
`of its provisional application. As an initial matter, and to
`clarify the relative burdens, we begin with the established
`concept that there are two distinct burdens of proof: a
`burden of persuasion and a burden of production. See
`Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316,
`1326–27 (Fed.Cir.2008). The burden of persuasion “is
`the ultimate burden assigned to a party who must prove
`something to a specified degree of certainty,” such as by a
`preponderance of the evidence or by clear and convincing
`evidence. Id. (citations omitted). In an inter partes review,
`the burden of persuasion is on the petitioner to prove
`“unpatentability by a preponderance of the evidence,”
`35 U.S.C. § 316(e), and that burden never shifts to the
`patentee. “Failure to prove the matter *1379 as required
`by the applicable standard means that the party with the
`burden of persuasion loses on that point—thus, if the fact
`trier of the issue is left uncertain, the party with the burden
`loses.” Tech. Licensing, 545 F.3d at 1327.
`
`A second and distinct burden, the burden of production,
`or the burden of going forward with evidence, is a
`shifting burden, “the allocation of which depends on
`where in the process of trial the issue arises.” Id.
`(citations omitted). The burden of production may entail
`“producing additional evidence and presenting persuasive
`argument based on new evidence or evidence already of
`record.” Id.
`
`These burdens are illustrated in Technology Licensing,
`where the patentee, TLC, sued Gennum for infringement,
`and Gennum argued that TLC's patent was anticipated
`by certain prior art. Id. At issue was whether the asserted
`patent was entitled to the benefit of the priority date
`of a related nonprovisional application. Id. TLC argued
`that the asserted claim was entitled under 35 U.S.C. §
`120 to the benefit of the earlier filing date of its parent
`nonprovisional application. Id. Section 120, which has
`language similar to that found in § 119(e)(1), provides
`that a patent application for an “invention disclosed in
`the manner provided by the first paragraph of section
`
`Gennum, having the ultimate burden of proving its
`defense of invalidity based on anticipating prior art, also
`had the initial “burden of going forward with evidence
`that there is such anticipating prior art.” Tech. Licensing,
`545 F.3d at 1327. In response, TLC then had “the burden
`of going forward with evidence either that the prior art
`does not actually anticipate, or, as [TLC] attempted in this
`case, that it is not prior art because the asserted claim is
`entitled to the benefit of a filing date prior to the alleged
`prior art.” Id. 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. 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. at 1328.
`
`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. Although, as Dynamic
`notes, the patent in Technology Licensing was entitled to
`the presumption of validity under 35 U.S.C. § 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. Compare §
`282 (“The burden of establishing invalidity of a patent
`or any claim thereof shall rest on the party asserting
`such invalidity.”), with § 316(e) (“In an inter partes
`review ..., the petitioner shall have the burden of proving a
`proposition of unpatentability by a preponderance of the
`evidence.”).
`
`In this case, Dynamic, as the petitioner, had the burden of
`persuasion to prove unpatentability by a preponderance
`of the evidence, and this burden never shifted. Dynamic
`also had the initial burden of production, and it satisfied
`that burden by arguing that Raymond anticipated the
`asserted claims of the ′196 patent under § 102(e)(2).
`
` © 2017 Thomson Reuters. No claim to original U.S. Government Works.
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`Dynamic Drinkware, LLC v. National Graphics, Inc., 800 F.3d 1375 (2015)
`116 U.S.P.Q.2d 1045
`
`*1380 The burden of production then shifted to National
`Graphics to argue or produce evidence that either
`Raymond does not actually anticipate, or, as was argued
`in this case, that Raymond is not prior art because the
`asserted claims in the ′196 patent are entitled to the
`benefit of a filing date (constructive or otherwise) prior to
`the filing date of Raymond. National Graphics produced
`evidence that the invention claimed in the ′196 patent was
`reduced to practice prior to the filing date of Raymond,
`and thus contended that the asserted claims were entitled
`to a date of invention prior to that of the Raymond patent.
`
`As a result, the burden of production returned to Dynamic
`to prove that either the invention was not actually reduced
`to practice as argued, or that the Raymond prior art was
`entitled to the benefit of a filing date prior to the date of
`National Graphics' reduction to practice. As the Board
`found, however, Dynamic failed to carry its burden of
`proving that Raymond's effective date was earlier than the
`date that the invention claimed in the ′196 patent was
`reduced to practice. The burden of production was on
`Dynamic to prove that, under § 119(e)(1), Raymond was
`entitled to the benefit of the filing date of its provisional
`application, and it failed to do that.
`
`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. The PTO's Manual of Patent
`Examining Procedure (“MPEP”), which is “commonly
`relied upon as a guide to patent attorneys and patent
`examiners on procedural matters,” Litton Sys., Inc. v.
`Whirlpool Corp., 728 F.2d 1423, 1439 (Fed.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.
`
`MPEP § 211.05(I)(A) (2014) (emphasis added). 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. See, e.g., PowerOasis, Inc. v.
`T–Mobile USA, Inc., 522 F.3d 1299, 1305 (Fed.Cir.2008)
`(“When neither the PTO nor the Board has previously
`considered priority, there is simply no reason to presume
`that claims in a [continuation-in-part] application are
`entitled to the effective filing date of an earlier filed
`application. Since the PTO did not make a determination
`regarding priority, there is no finding for the district court
`to defer to.”).
`
`Indeed, Dynamic's reliance on Giacomini to argue for
`a presumption is misplaced. In Giacomini, the Board
`rejected certain claims of Giacomini's application as
`anticipated under 35 U.S.C. § 102(e) by the Tran patent.
`Giacomini, 612 F.3d at 1382. The Tran patent's filing date
`was exactly a month after Giacomini filed his application,
`but the Tran patent claimed priority from a provisional
`application that antedated Giacomini's filing date. Id.
`As relevant here, we found that “[b]ecause Giacomini
`never argued before the Board that the Tran provisional
`failed to provide *1381 written description support for
`the claimed subject matter in accordance with section
`119(e), Giacomini waived the argument by failing to raise
`it below.” Id. at 1383 (citation omitted). We ultimately
`concluded that the Tran patent had the same “patent-
`defeating effect” as though it was filed on the date of the
`Tran provisional. Id. at 1385. Because Giacomini waived
`the argument that the Tran provisional application did not
`support the Tran patent, we did not reach the question
`whether the Tran patent was presumptively entitled to the
`benefit of the filing date of its provisional application.
`
`Thus, the Board did not err in concluding that, in view
`of National Graphics' evidence of the actual reduction to
`practice of the invention of the ′196 patent, Dynamic had
`the further burden to prove that Raymond was entitled
`to claim the benefit of the filing date of its provisional
`application.
`
`II
`
`Asserting that it carried that burden, Dynamic argues that
`it provided sufficient evidence to prove that the Raymond
`
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`Dynamic Drinkware, LLC v. National Graphics, Inc., 800 F.3d 1375 (2015)
`116 U.S.P.Q.2d 1045
`
`provisional application provided written description
`support for the claims of the Raymond prior art patent.
`Dynamic contends that, as part of its petition, it compared
`the claims of the ′ 196 patent to the disclosure in
`the Raymond patent. According to Dynamic, it then
`provided a claim chart in its reply brief to the Board
`establishing anticipation of claim 1 of the ′196 patent
`by the Raymond provisional application. 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.
`
`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. National Graphics also argues that,
`even absent a determination of waiver, the Board's
`decision is supported by substantial evidence because
`Dynamic never compared the claims of the Raymond
`patent to the disclosure in the provisional application.
`
`[4]
` First, we find that Dynamic did not waive its
`argument that Raymond was entitled to an earlier
`effective date. 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. 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. Thus, there was no waiver.
`
`[5]
` 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. 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. In re Wertheim, 646 F.2d 527, 537 (CCPA 1981). 2
`As Dynamic acknowledges, it provided charts to the
`Board comparing the claims of the ′196 patent to the
`disclosure of the Raymond patent and claim 1 of the
`′196 patent to the disclosure of the Raymond provisional
`application. See, e.g., Appellant's Br. at 22. Nowhere,
`however, does Dynamic demonstrate support in the
`Raymond provisional application for the claims *1382
`of the Raymond patent. That was Dynamic's burden. 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. Dynamic did
`not make that showing.
`
`2
`
`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).
`
`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. We have considered Dynamic's
`remaining arguments and find them unpersuasive.
`
`CONCLUSION
`
`Because the Board properly concluded that Dynamic
`failed to demonstrate by a preponderance of the evidence
`that claims 1 and 12 of the ′196 patent are anticipated by
`Raymond under § 102(e), we affirm.
`
`AFFIRMED.
`
`All Citations
`
`800 F.3d 1375, 116 U.S.P.Q.2d 1045
`
`End of Document
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`© 2017 Thomson Reuters. No claim to original U.S. Government Works.
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` © 2017 Thomson Reuters. No claim to original U.S. Government Works.
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