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Penumbra, Inc. v. RapidPulse, Inc.

  • December 8, 2023
  • Article

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Summary

The U.S. Patent Trial & Appeal Board (“PTAB”) designated a portion of its decision in Penumbra, Inc. v. RapidPulse, Inc., as precedential on November 15, 2023.[1],[2],[3] This decision distinguishes the priority rules applicable to prior art patents cited against post-AIA patents from the priority rules applicable to pre-AIA patents. In 2015, the Federal Circuit issued an opinion in Dynamic Drinkware, LLC v. National Graphics, Inc., which established that any patent being used as a prior art reference can only have the benefit of priority to a provisional application if the provisional application provided support for the claims in the prior art reference.[4] However, the PTAB’s decision in Penumbra upends that rule for post-AIA patents.

The PTAB held that the language of AIA 35 U.S.C. §§ 102(a)(2) & 102(d) was sufficiently different from the corresponding language in the pre-AIA §102(e) to change the requirements for a reference patent to be entitled to the benefit of a parent provisional application’s filing date. As a result of the PTAB’s holding, there is no longer “[a] need to evaluate whether any claim of a reference patent document is actually entitled to priority when applying such a reference patent as prior art.”[5] Accordingly, for consideration of priority, a reference patent only needs to meet the ministerial requirements of 35 U.S.C. §§ 119 and 120, and the provisional in question need only describe the subject matter relied upon in the reference patent as prior art.[6]

Background

Petitioner Penumbra filed an IPR Petition to challenge U.S. Patent No. 10,531,883 (“the ’883 patent”) held by patent owner RapidPulse, Inc. The ’883 patent describes a medical device designed to aspirate blood clots from cerebral vasculature for the treatment of ischemic strokes. The device functions by alternatively applying and eliminating a vacuum at the distal end of the device such that a clot may be rocked back and forth before aspiration, thereby overcoming the static force of friction so that it can be removed more easily.

Analysis

The PTAB examined Claims 1-18 of the ’883 patent under Petitioner’s arguments that 35 U.S.C. § 103 may render the ’883 patent unpatentable over cited prior art. The cited prior art included U.S. patents to Teigen,[7] Grey,[8] Rubenstein,[9] Yang,[10] and Matteo[11], but only Teigen was of material significance to the precedentially designated portion of this PTAB decision.

The PTAB found that Teigen, along with various combinations of the other prior art references, was sufficient to invalidate all 18 challenged claims of the ’883 patent under 35 U.S.C § 103. However, the application which issued as the Teigen reference was filed on August 24, 2021, which postdated the July 18, 2019, filing date of application no. 16/516,232 (“the ’232 application”) which issued as the ’883 patent. Accordingly, Petitioner argued that Teigen was entitled to the benefit of priority to two provisional applications that predated the ’883 patent’s effective filing date: U.S. provisional application nos. 62/778,708 (“the ’708 provisional”), filed December 12, 2018, and 62/702,804 (“the ’804 provisional”), filed July 24, 2018. Patent Owner likewise argued that the ’883 patent was entitled to priority back to U.S. provisional application no. 62/750,011 (“the ’011 provisional”).

Accordingly, the relevant timeline is as follows:

  • the ’804 provisional (1st priority for Teigen) – 7/24/2018
  • the ’011 provisional (priority for the ’883 patent at issue) – 10/24/2018
  • the ’708 provisional (2nd priority for Teigen) – 12/12/2018
  • the ’232 application (’883 patent at issue) – 7/18/2019
  • Teigen – 8/24/2021

Priority for Patent at Issue

The PTAB determined that for the ’883 patent to be entitled to the benefit of priority extending back to the ’011 provisional, the ’011 provisional would need to provide written support for the claims of the ’883 patent, notably at issue here, “prevent[ing] forward flow.” The PTAB held that while the ’011 provisional described some embodiments of the device with very little forward flow, it also described embodiments with higher levels of flow and at no point was the key feature of “prevent[ing] forward flow” ever considered by the ’011 provisional as an important or desirable feature. The PTAB ultimately held that the challenged claims were not sufficiently supported by the written description of the ’011 provisional and so the ’883 patent was only entitled to a priority date of July 18, 2019.

Priority for Teigen

The PTAB held that a reading of AIA 35 U.S.C. §§ 102(a)(2) & 102(d) should distinguish AIA patents from pre-AIA patents. The PTAB stated that “AIA § 102 draws a distinction between actually being entitled to a right of priority to, or the benefit of, a prior-filed application … of a claimed invention … and merely being entitled to claim a right of priority to, or the benefit of, a prior-filed application for prior-art purposes.”[12]

Therefore, the requirements to establish priority for a prior art patent cited against an AIA patent are lower than the requirements to establish priority for an AIA patent otherwise. For the purposes of prior art, this means that a patent can be entitled to the benefit of priority to a provisional application so long as it satisfies the ministerial requirements of priority under 35 U.S.C. §§ 119 and 120, and the provisional application provides written description support for the relevant disclosure.

The PTAB also held that while the ’804 and ’708 provisionals did not meet the pre-AIA Dynamic Drinkware priority requirements, they did satisfy this new interpretation. Accordingly, Teigen had the benefit of its earlier priority date back to the ’804 provisional filing date of July 24, 2018.

Conclusion

Because Teigen’s provisional applications both satisfied these new requirements, the earliest priority date available for the Teigen patent was the ’804 provisional’s filing date of July 24, 2018, which predated the ’883 patent’s applicable priority date of July 18, 2019. Therefore, the relevant disclosure in Teigen was available as prior art against the ‘883 patent. This ultimately resulted in a holding of unpatentability for challenged claims 1-18 of the ’883 patent under 35 U.S.C. § 103.

The Penumbra opinion serves as an important reminder that the effective prior art date of a prior art patent may change depending on whether the patent being challenged is subject to the AIA or pre-AIA versions of the patent statute. That said, the Federal Circuit has not yet weighed in to affirm Penumbra’s interpretation of the AIA statute. Stay tuned until the appeals court has also addressed this interesting issue.  



[1] Penumbra, Inc. v. RapidPulse, Inc., IPR2021-01466, Paper 34 (March 10, 2023)

[2] https://www.uspto.gov/patents/ptab/precedential-informative-decisions

[3] §II.E.3 designated precedential, see pgs. 28 - 35

[4] Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015)

[5] Penumbra, Inc. v. RapidPulse, Inc., IPR2021-01466, Paper 34 (March 10, 2023) at pg. 32, emphasis added.

[6] Id. at pgs. 30-32

[7] Teigen et al., US 11,096,712 B2, issued Aug. 24, 2021

[8] Grey et al., WO 2014/151209 A1, published Sept. 25, 2014

[9] Morton K. Rubenstein, US 3,955,574, issued May 11, 1976

[10] Yang et al., US 2017/0238953 A1, published Aug. 24, 2017

[11] Joseph Matteo, US 2012/0138833 A1, published June 7, 2012

[12] Penumbra, Inc. v. RapidPulse, Inc., IPR2021-01466, Paper 34 (March 10, 2023) at pg. 31