Appeal from the United States Patent and Trademark Office, Patent Trial and Appeal Board in No. IPR2013-00131.
MATTHEW R. MCCLEAN, Davis & Kuelthau, S.C., Milwaukee, WI, argued for appellant. Also represented by PATRICK M. BERGIN, JOSEPH S. HEINO.
MICHAEL T. GRIGGS, Boyle Fredrickson, S.C., Milwaukee, WI, argued for appellee. Also represented by JOHN PAUL FREDRICKSON, SARAH M. WONG.
Before LOURIE, BRYSON, and O'MALLEY, Circuit Judges.
[116 U.S.P.Q.2d 1047] Lourie, Circuit Judge.
Dynamic Drinkware, LLC (" Dynamic" ) appeals from the decision of the United States Patent and Trademark Office (" PTO" ) Patent Trial and Appeal Board (" Board" ) in an inter partes review not to reject claims 1 and 12 of National Graphics, Inc.'s (" National Graphics" ) U.S. Patent 6,635,196 (the " '196 patent" ) as anticipated under 35 U.S.C. § 102(e) (2006). See Dynamic Drinkware, LLC v. Nat'l Graphics, Inc., No. 2013-00131, 2014 WL 4628897 (P.T.A.B. Sept. 12, 2014) (" Board Decision " ). Because Dynamic failed to carry its burden of proving unpatentability, we affirm.
National Graphics owns the '196 patent, which is directed to making molded plastic articles bearing a " lenticular" image. The '196 patent issued on October 21, 2003, from an application filed on November 22, 2000. The '196 patent claims the benefit of U.S. Provisional Application 60/211,112, filed on June 12, 2000.
Dynamic petitioned the PTO for inter partes review of the '196 patent. In its petition, Dynamic argued that claims 1, 8, 12, and 14 of the '196 patent were anticipated by U.S. Patent 7,153,555 (" Raymond" ). The application for Raymond was filed on May 5, 2000, claiming the benefit of U.S. Provisional Application 60/182,490 (the " provisional application" or " Raymond provisional application" ), filed on February 15, 2000. The PTO granted the petition in part, and instituted trial on claims 1 and 12.
The Board concluded that Dynamic failed to prove by a preponderance of the evidence that claims 1 and 12 were anticipated under § 102(e)(2) by Raymond. Board Decision [WL] at 13. The Board first found that Dynamic failed to prove that the Raymond patent was entitled to the benefit of its earlier February 15, 2000 provisional filing date, and hence that it was a § 102(e) reference as of its provisional date. [WL] at 3. According to the Board, " [t]o be entitled to rely on the February 15, 2000 provisional filing date, [Dynamic] had to establish that it relies on subject matter from Raymond that is present in and supported by its provisional." Id. (citing In re Giacomini, 612 F.3d 1380, 1383 (Fed. Cir. 2010); Ex parte Yamaguchi, 88 U.S.P.Q.2d 1606 (B.P.A.I. 2008)). The Board found that, rather than comparing " the portions of [Raymond] relied on by [Dynamic] to the Raymond provisional," Dynamic only compared claim 1 of the '196 patent to the Raymond provisional application. [WL] at 4. As a result, the Board found that Dynamic " failed to carry its burden of proof that Raymond's effective date is earlier than May 5, 2000." Id. It is worth emphasizing that the relevance of the Raymond provisional application date here is not to give the Raymond patent any earlier priority over a competing application or patent, but to serve third party Dynamic's goal of creating earlier prior art against the '196 patent.
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. [WL at 12. Thus, the Board concluded that Dynamic failed to demonstrate by a preponderance of the evidence that claims 1 and 12 of the '196 patent were anticipated by Raymond under § 102(e). [WL] at 13.
Dynamic timely appealed to this court. We have jurisdiction pursuant to 28 U.S.C. § 1295(a)(4)(A).
We review the Board's legal determinations de novo, In re Elsner, 381 F.3d 1125, 1127 (Fed. Cir. 2004), and the Board's factual findings underlying those determinations for substantial evidence, In re Gartside, 203 F.3d 1305, 1316 (Fed. Cir. 2000). A finding is supported by substantial evidence if a reasonable mind might accept the evidence to support ...