Antedating 102e reference
The burden of production was on Dynamic to prove that, under § 119(e)(1), Raymond was entitled to the benefit of the filing date of its provisional application, and it failed to do that. Since the PTO did not make a determination regarding priority, there is no finding for the district court to defer to.”). IIAsserting that it carried that burden, Dynamic argues that it provided sufficient evidence to prove that the Raymond provisional application provided written description support for the claims of the Raymond prior art patent. Cir.2004), and the Board's factual findings underlying those determinations for substantial evidence, In re Gartside, 203 F.3d 1305, 1316 (Fed. A finding is supported by substantial evidence if a reasonable mind might accept the evidence to support the finding. As the Board found, however, Dynamic failed to carry its burden of proving that Raymond's effective date was earlier than the date that the invention claimed in the ′196 patent was reduced to practice. Cir.2008) (“When neither the PTO nor the Board has previously considered priority, there is simply no reason to presume that claims in a [continuation-in-part] application are entitled to the effective filing date of an earlier filed application. The Tran patent's filing date was exactly a month after Giacomini filed his application, but the Tran patent claimed priority from a provisional application that antedated Giacomini's filing date. As relevant here, we found that “[b]ecause Giacomini never argued before the Board that the Tran provisional failed to provide written description support for the claimed subject matter in accordance with section 119(e), Giacomini waived the argument by failing to raise it below.” Id. We ultimately concluded that the Tran patent had the same “patent-defeating effect” as though it was filed on the date of the Tran provisional. Thus, the Board did not err in concluding that, in view of National Graphics' evidence of the actual reduction to practice of the invention of the ′196 patent, Dynamic had the further burden to prove that Raymond was entitled to claim the benefit of the filing date of its provisional application.
submitted five declarations that the witnesses had prepared review (IPR) filed by BMW of North America, LLC (“Petitioner” or BMW) seeking review of a patent that had already been challenged 12 times. Without reaching the merits, the Board exercised its discretion to deny institution under 35 U. On September 10, 2018, the Federal Circuit affirmed a decision by the Patent Trial and Appeal Board (PTAB) determining that there was no interference in fact between the University of California’s (“UC”) U. review (“IPR”) instructing the Patent Trial and Appeal Board (“Board”) to reweigh the evidence in a manner that placed the ultimate burden of persuasion to identify real parties-in-interest (“RPIs”) on Petitioner Bungie, Inc. Petitioner first argued that the challenged patent claims were not entitled to the priority date of a parent patent application because (1) the parent application failed to adequately incorporate by reference two other patent applications (the “incorporated patent applications”) and (2) the parent application itself did not provide written description support for the claims. The single claim addressed on appeal related to a method of using an oxaborole known as “tavaborole” to treat onchomycosis (a nail infection) caused by a dermatophyte. Petitioners requested permission to file an IEEE Declaration that attested to the public availability and authenticity of one of the references which served as the basis for which trial was instituted.
First, we find that Dynamic did not waive its argument that Raymond was entitled to an earlier effective date.
The Board then found that National Graphics reduced to practice its invention by March 28, 2000, before the May 5, 2000 filing date of the Raymond patent. National Graphics also argues that, even absent a determination of waiver, the Board's decision is supported by substantial evidence because Dynamic never compared the claims of the Raymond patent to the disclosure in the provisional application.
The Patent Trial and Appeal Board (“PTAB”) granted-in-part Patent Owner Twilio Inc.’s motion for additional discovery pursuant to 37 C. One reason for this result is the high standard applied to reverse a prior decision—abuse of discretion.
In this case, however, the petitioner, met its burden by arguing that the Board, “led to error by [the] Patent Owner,” based its decision on an erroneous interpretation of the law. In response, Melanoscan asserted multiple claims of the ’748 Patent in a counterclaim for infringement. The PTO's Manual of Patent Examining Procedure (“MPEP”), which is “commonly relied upon as a guide to patent attorneys and patent examiners on procedural matters,” Litton Sys., Inc. In Giacomini, the Board rejected certain claims of Giacomini's application as anticipated under 35 U. According to Dynamic, it then provided a claim chart in its reply brief to the Board establishing anticipation of claim 1 of the ′196 patent by the Raymond provisional application.