Takeaway: A provisional application, by itself, does not constitute prior art under 35 U.S.C. § 102(e). Instead, only a patent or published application claiming the benefit of an earlier filing date (including the filing date of a provisional application) may qualify as prior art under 35 U.S.C. § 102(e).
In its Decision, the Board denied Petitioner’s Request for Rehearing. The Board maintained its position that a U.S. provisional application, by itself, does not constitute prior art under 35 U.S.C. § 102(e).
Petitioner had challenged certain claims of the ’415 patent as being unpatentable in view of U.S. Provisional Patent Application 60/951,438 to Lo. A total of twelve grounds of unpatentability were purported to be based on Lo. For all of these challenges, Lo was alleged to be prior art under 35 U.S.C. § 102(e). The Board issued a Decision denying review of the challenged claims, in response to which Petitioner had filed a Request for Rehearing.
Petitioner’s primary challenge in its Request for Rehearing was that the Board had misapprehended or overlooked the holding in Ex parte Yamaguchi, 88 USPQ2d 1606 (BPAI 2008) (precedential). The Board disagreed, emphasizing that because Lo is a provisional application, it is neither a patent nor a patent application published under 35 U.S.C. § 122(b). Accordingly, Lo, by itself, is not prior art under 35 U.S.C. § 102(e). Therefore, the Board had not erred in denying the Petition. The fact that provisional applications may later become publicly available in some cases did not impact the Board’s Decision.
Sequenom, Inc. v. The Board of Trustees of The Leland Stanford Junior University, IPR2014-00337
Paper 14: Decision on Petitioner’s Request for Rehearing of Decision Denying Institution of Inter Partes Review
Dated: September 23, 2014
Patent: 8,195,415 B2
Before: Lora M. Green, Francisco C. Prats, and Scott E. Kamholz
Written by: Prats