Requirements for Relying on Patent Literature Prior Art Based on Its Provisional Application Priority

In March of 2025, the Federal Circuit held that a published patent application claiming priority to a provisional application qualifies as a 35 U.S.C. § 102(e) reference as of the provisional filing date if the provisional application supports a published claim from the non-provisional application and the subject matter for which the reference is relied upon to support a rejection. In re Riggs, Appeal No. 2022-1945 (Fed. Cir. Mar. 24, 2025).

In In re Riggs, the Applicant appealed to the Federal Circuit a PTAB decision affirming an Examiner’s Rejection of U.S. Patent Application 11/005,678 (‘678 application) under Pre-AIA 35 U.S.C. § 102(e) as being anticipated by U.S. Patent Application Publication No. 2002/0049622 A1  (“Lettich”).

The ‘678 application was appealed multiple times to the Federal Circuit, and those appeals were eventually dismissed for lack of jurisdiction or voluntarily dismissed. The PTAB heard the Appellants’ appeal, and the rejections were reversed in April 2016. However, the PTAB applied the wrong version of 35 U.S.C. §102(e) and determined that Lettich did not qualify as prior art.

The Examiner recognized the PTAB’s error and filed a Request for Rehearing before the PTAB. The Appellant appealed to the Eastern District of Virginia challenging, inter alia, the propriety of the Request for Rehearing. The district court dismissed the Appellant’s challenge, and the Federal Circuit affirmed.

The PTAB ultimately considered the Request for Rehearing and found in the Examiner’s favor.  The PTAB determined that Lettich was prior art under § 102(e) and affirmed the Examiner’s anticipation rejection of representative claim 1 and obviousness rejection of representative claim 3 based on Lettich and affirmed that the provisional application provided adequate support for claim 1 of Lettich.

Appellant again appealed to the Federal Circuit challenging: 1) the PTAB’s decision to grant the Examiner’s Request for Rehearing was ultra vires (i.e., beyond the PTAB’s legal authority); 2) whether the PTAB properly afforded Lettich the earlier filing date of its provisional application for determining that it was prior art under § 102(e); and 3) whether substantial evidence supports the PTABs finding of anticipation and motivation to combine.

The ’678 application is directed to logistics systems and methods for the transportation of goods from various shippers by various carriers across different modes of transport (e.g., by rail, truck, ship, or air). The logistics system connects and shares customer order information from various shippers and information about multiple carriers to provide ‘good visibility and management of shipments for all the parties involved.’” Lettich claims priority to provisional application No. 60/200,035 filed on April 27, 2000. Lettich is directed to a “one stop” internet site operated by a single entity. The internet site integrates shipping and logistics services, operations, and products provided by multiple entities to facilitate logistics operations, such as shipping, transporting, warehousing, and distribution of products for users.

The Federal Circuit determined that the Applicant is estopped from asserting the first challenge because the district court previously decided that the PTAB did not act ultra vires and the same arguments presented by the Applicant to the identical issue were previously addressed. The Federal Circuit did not address the third challenge.

Whether Lettich is prior art §102(e)

Lettich is a published non-provisional application that was filed on April 26, 2001, and claims priority to a provisional application filed on April 27, 2000. The ’678 application was filed on December 7, 2004, and claims priority to July 28, 2000.

MPEP § 2136.03 provides:

The critical reference date under pre-AIA 35 U.S.C. 102(e) of a U.S. patent, a U.S. patent application publication, as well as an international application publication having prior art effect under pre-AIA 35 U.S.C. 102(e), may be the filing date of a relied upon provisional application only if at least one of the claims in the reference patent, patent application publication, or international application publication is supported by the written description of the provisional application in compliance with pre-AIA 35 U.S.C. 112, first paragraph, or 35 U.S.C. 112(a).
MPEP § 2136.03 III (9th ed., Rev. 01.2024, Nov. 2024) (citations omitted). Additionally, the MPEP requires that “[t]he provisional application must also describe, in compliance with pre-AIA 35 U.S.C. 112, first paragraph, or 35 U.S.C. 112(a), the subject matter relied upon in the reference patent or publication to make the rejection.” Id.

PTAB relied on Dynamic Drinkware (Dynamic Drinkware, LLC v. National Graphics, Inc., 800 F.3d 1375 (Fed. Cir. 2015)), Amgen (Amgen Inc. v. Sanofi, 872 F.3d 1367 (Fed. Cir. 2017)), and MPEP § 2136.03III to conclude that “at least one claim in the Lettich Application Publication must find written description support in the Lettich Provisional Application in order for the Lettich Application Publication to be prior art against the instant claims.” J.A. 35; see also J.A. 34 (citing Dynamic Drinkware, 800 F.3d at 1382; Amgen, 872 F.3d at 1380). The PTAB and Examiner concluded that corresponding support was identified in the Lettich Provisional Application for each limitation of Lettich non-provisional application published as claim 1.

The Federal Circuit concluded that the PTAB’s test was not sufficient “where, as here, the Examiner (or any party challenging the validity of a patent) demonstrated support for one claim and then relied on other portions of the specification (e.g., the Summary of the Invention or Detailed Description, or even other claims) to support its rejection.” In re Riggs, Appeal No. 2022-1945, slip op. at 12 (Fed. Cir. Mar. 24, 2025) (emphasis added). That is, the Examiner showed support from the provisional for one claim of the published non-provisional application, but not support for the portions of the non-provisional application in which the Examiner relied on for the prior art rejections. 

The court found that “the provisional application must also provide written description support for the specific portions of the patent specification identified and relied on in the prior art rejection.” Id. In other words, the portions of the published application relied on for the rejection must also be supported by the provisional application to claim priority to the provisional filing date. Id.

The Federal Circuit noted that PTAB appeared to have interpreted Dynamic Drinkware and Amgen to mean that the priority date of the provisional application applies carte blanche to the published non-provisional application if only a single claim in the published non-provisional application is adequately supported by the written description of the provisional application regardless of whether the cited content in the published application was adequately supported by the written description of the provisional application.

The Federal Circuit rightfully held “[a] reference constitutes prior art for all that it teaches as of its earliest accorded filing date. A reference does not constitute prior art for all that it teaches as of its provisional application’s filing date solely because a particular claimed invention—which most often does not specify everything in the written description—is adequately supported by the provisional application.” Id., at 14.

Accordingly, the Federal Circuit vacated and remanded the case for the PTAB to determine whether the Lettich Provisional Application provides written description support for the specific disclosures in Lettich that the Examiner identified and relied on in the prior art rejections.

Conversely, post-AIA, a provisional application only needs to support the subject matter for which it is relied upon by the § 102 prior art document to receive the benefit of the earlier filing date. See MPEP 2154.01(b) citing Penumbra, Inc. v. RapidPulse, Inc., 2023 USPQ2d 292, IPR2021-01466, Paper 34 (March 10, 2023). Accordingly, written description and enablement support for one of the claims of the patent or non-provisional application in the provisional application is not required under the AIA. Therefore, a patent or published application qualifies as prior art as of the filing date of an earlier application to which the patent or application is entitled to claim priority to or benefit from, provided that the earlier application describes the subject matter relied upon for the rejection. See AIA 35 U.S.C. § 102(d). The provisional application is not required to enable a claim of the patent or published application.