Explanations, Not Bare Citations, Needed To Establish Prior Art Date

Although provisional applications can be used to secure an earlier date for 102(e), the petitioner bears the burden of production in establishing a prior art date for the asserted prior art. The Patent Trial and Appeal Board ("PTAB") explored this nuance when Motorola Mobility LLC ("Motorola") claimed a patent's provisional application supported a later-filed patent ("Hunzinger") in arguing that Hunzinger was prior art to Maxell, Ltd's ("Maxell") patent, U.S. 7,072,673. Motorola Mobility LLC v. Maxell, LTD, No. IPR2023-00110 (P.T.A.B. June 15, 2023) ("Decision").

Motorola attempted to predate the challenged '673 patent under 102(e) using a provisional application ("Hunzinger Provisional") because the reference itself, Hunzinger, was filed after the challenged patent. Decision at 13. The PTAB noted that petitioners begin with the burdens of persuasion and production to show unpatentability. Id. at 19. The burden of production may shift to the patent owner after a