Federal Circuit Holds that Pre-AIA § 102(e) References Are Applicable in an IPR But is Only Entitled to the Priority Date of a Provisional Application if the Disclosure Provides § 112 Support for the Claims in the Reference

In Merck Sharp & Dohme Corp. v. Microspherix LLC (Fed. Cir. 2020), an appeal from the Patent Trial and Appeal Board’s decision, the Federal Circuit held that the asserted prior art reference was not entitled to its priority date, as the provisional application does not provide adequate written description for the claims in the asserted prior art.  The Court, quoting its decision in Dynamic Drinkware, LLC v. Nat’l Graphics, Inc. (Fed. Circ. 2015) reiterated 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 [the written description requirement].”  Here, the Court applied this standard to the asserted prior art reference and found that the Microspherix Patents were entitled to the priority date of the Micrsopherix provisional application as the Microspherix provisional application provides aequate support in view of § 112.  The Court further found that Zamora was not entitled to the priority date of the Zamora provisional as the Zamora provisional does not have aequate disclosure to provide support for the claims in Zamora.

The full opinion is accessible via http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/19-2197.OPINION.6-9-2020_1601130.pdf