Provisional Describes “Incompressible Solid” Despite Disclosure Of “Little” Compression, PTAB Litigation Blog
Visit the PTAB Litigation Blog
In a recent decision denying institution, the PTAB rejected Petitioner Mercedes Benz USA’s argument that the challenged patent was not entitled to the filing date of its provisional application. Mercedes-Benz USA, LLC v. Westport Fuel Systems Canada Inc., Case IPR2023-00351, Paper No. 10 (June 20, 2023). The Petitioner had sought to establish a later priority date in order for its main asserted reference, Gottlieb, to qualify as prior art. To show sufficient written description support, the provisional must reasonably convey to those skilled in the art that the inventor had possession of the later-claimed subject matter as of the provisional’s filing date. Ariad Pharms. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010). This inquiry is a question of fact. Id. Finding that the provisional application did provide sufficient written description support for the challenged claims, the PTAB disqualified Gottlieb as prior art, which outcome was “fatal” to the petition. Decision Denying Institution, at 13.
