DENTAL MONITORING SAS v. ALIGN TECHNOLOGY, INC.
Authored by: Jeremy J. Gustrowsky
The Federal Circuit has clarified an important question about when a patent can claim the benefit of its provisional application’s filing date for purposes of qualifying as prior art under the America Invents Act (AIA). The court held that satisfying the written description requirement of Section 112(a) is necessary, rejecting the Patent Trial and Appeal Board’s view that only “ministerial” priority requirements need be met.
The dispute arose from an inter partes review in which Align Technology challenged claims 1-15 of Dental Monitoring’s U.S. Patent 10,755,409, which covers a method for acquiring and analyzing images of a patient’s dental arch using a “deep learning device.” The Board found the claims unpatentable as obvious over a combination of three references, including U.S. Patent Application Publication 2021/0068923 A1 (“Carrier”). The timing was critical because the ’409 patent’s effective filing date fell between the filing dates of Carrier’s provisional and non-provisional applications, meaning Carrier only qualified as prior art if it could claim the benefit of its provisional filing date.
Relying on its precedential Penumbra decision, the Board had concluded that under AIA Section 102(d)(2), a reference patent obtains the earlier filing date so long as it satisfies certain “ministerial” priority requirements and the earlier application describes the subject matter relied upon. The Board rejected the argument that Dynamic Drinkware, LLC v. National Graphics, Inc. required written description support for at least one claim of the non-provisional patent, reasoning that Dynamic Drinkware’s analysis was confined to pre-AIA law.
The Federal Circuit disagreed, focusing on the plain text of the statute. Section 102(d)(2) permits a reference to receive the earlier effective filing date only “if the patent or application for patent is entitled to claim a right of priority under [§] 119.” Section 119(e)(1), in turn, requires that the invention be “disclosed in the manner provided by [§] 112(a)” in the provisional. The court emphasized that Congress’s choice of the phrase “entitled to claim a right of priority” refers to substantive entitlement, not merely the procedural act of claiming priority. Treating the requirement as purely ministerial would render the phrase “entitled to” superfluous.
The court also rejected Align’s argument that the AIA’s distinction between a claimed invention’s effective filing date under Section 100(i) and a reference’s effective prior art date under Section 102(d) eliminates the written description requirement. While Section 100(i) identifies which statutory inquiry is being performed, it does not alter the substantive requirements incorporated by the word “entitled” in Section 102(d). The court further dismissed reliance on legislative floor statements about “ministerial” priority requirements, noting that the statutory text controls when it is clear. The concern underlying Dynamic Drinkware, that a challenger should not backdate prior art using a provisional that would not have supported the reference patent’s claims, remains valid under the AIA.
Because the Board never determined whether Carrier’s provisional application actually provides written description support for at least one claim of Carrier, the Federal Circuit vacated the Board’s decision and remanded for that factual determination. The court noted in a footnote that on remand, the Board need not address claims 1, 7, and 12 of the ’409 patent because those claims had already been found ineligible in a related decision, and the Board also need not reconsider the public accessibility of the Maninis reference.
This decision is significant for practitioners because it confirms that Dynamic Drinkware’s core principle survives under the AIA. Anyone seeking to rely on a published patent or application as prior art from its provisional filing date must be prepared to demonstrate that at least one claim of the reference finds written description support in that provisional. Merely satisfying the paperwork requirements for claiming priority is not enough.