Relying On Provisional Application Filing Date Only Valid When Both Steps Of Dynamic Drinkware Analysis Are Proven

In Apple v. Telefonaktiebolaget LM Ericsson,¹ the Board denied institution of Apple's IPR because it failed to show that the asserted patent references were prior art. In its petition, Apple asserted two U.S. patent application publications, both of which were filed after the challenged patent's undisputed November 4, 2016 critical date. Thus, Apple had to show that the references were entitled to the effective filing dates of their respective provisional applications to predate the challenged patent's critical date.

To support a valid priority claim, the requirements of Dynamic Drinkware must be met.² In Dynamic Drinkware, the Federal Circuit held that "a reference patent is only entitled to claim the benefit of the filing date of its provisional application if the disclosure of the provisional application provides support for the claims in the reference patent in compliance with § 112 ¶ 1."³ First, a petitioner must demonstrate that the provisional