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ARTICLE · 14 DECEMBER 2023

Penumbra, Inc. v. RapidPulse, Inc.

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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.

United StatesIntellectual Property
Evan Smith
Evan Smith
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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, 2023.1,2,3This 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.

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