IPR Institutions Denied for Petitioners’ Failure to Show Support for § 102(e) Reference in Earlier Provisional Applications

The Board declined to institute inter partes review of a telephone communications patent as anticipated because the petition did not show how the asserted reference was prior art to the challenged claims under 35 U.S.C. § 102(e). "[The patent cited as prior art] is prior art only to the extent that its content is supported by disclosure of [a provisional application] in a manner that complies with 35 U.S.C. § 112, first paragraph. . . . [The] Petitioner’s analysis of its challenge against claims 1–23 relies solely on the disclosure of [the reference], without explaining how the specific disclosures it relies upon are supported by the [earlier provisional] application. . . . When the qualification of a reference as prior art depends on the existence of adequate support in another reference, this mandate requires that Petitioner explain where such support for its challenge can be found. . . . Because Petitioner fails to demonstrate that all parts of [the patent cited as prior art] relied on for its challenge to claims 1–23 are prior art to the [challenged patent], we conclude that Petitioner has not demonstrated a reasonable likelihood of prevailing on that challenge."

Petition for Inter Partes Review by Securus Technologies, Inc., IPR2015-00153 (PTAB May 1, 2015, Order) (Boucher, APJ)

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The Board declined to institute inter partes review of a patent claiming a spinal stabilization device on obviousness grounds because the petition failed to establish that an asserted reference was prior art under 35 U.S.C. § 102(e). "[T]he effective date of [the asserted patent] as prior art under § 102(e) is the date on which an application in [the patent's] priority chain was filed that discloses the information relied upon to prove unpatentability of the challenged claims. [The petitioner] neither analyzes whether the [earlier provisional application] discloses the subject matter recited in the challenged claims nor provides a copy of the [provisional application] for the record in this proceeding. . . . [F]or purposes of this decision, we accord June 23, 2005, the filing date of the application that issued as [the asserted patent], rather than the earlier filing date of the provisional application to which [the patent] claims priority . . . . Because, on the current record, the priority of the challenged claims predates June 23, 2005, [the petitioner] has failed to establish that [the asserted patent] is prior art to the challenged claims."

Petition for Inter Partes Review by Globus Medical Inc., IPR2015-00099 (PTAB May 1, 2015, Order) (Weatherly, APJ)