Penumbra Illuminates Priority Dates Pre And Post-AIA

USPTO Director Kathi Vidal recently designated precedential section II.E.3 of Penumbra, Inc. v. RapidPulse, Inc. and clarified that the priority analysis for an AIA reference patent as prior art is different than for a pre-AIA reference patent. USPTO, Director Vidal designates decision as precedential, USPTO (November 15, 2023).

When determining the priority date for an AIA reference patent, "there is no need to evaluate whether any claim of [the] reference patent document is actually entitled to priority when applying such a reference patent as prior art." Penumbra, Inc. v. RapidPulse Inc., IPR2021-01466, Paper 34 at 29-30 (March 10, 2023). This differs from establishing the priority date of pre-AIA reference patents where the petitioner needs to show that "the disclosure of the provisional application provides support for the claims in the reference patent in compliance with § 112, ¶ 1." Dynamic Drinkware, LLC v. National Graphics, Inc., 800 F.3d 1375, at 1381