iTakeaway: A patent or published application can qualify as prior art under 35 U.S.C. § 102(e) based on benefit of an earlier filed provisional application, but the provisional application does not qualify as prior art.
In its Decision, the Board denied institution of inter partes review of claims 1-17 of the ’415 Patent. According to the Board based solely on the Petition without any Preliminary Patent Owner Response, Petitioner had not established that there is a reasonable likelihood that it would prevail on proving that any of these claims were unpatentable.
Petitioner proposed twelve grounds of unpatentability all based on obviousness over Lo I alone or in combination with other references. Petitioner argued that Lo I is a provisional U.S. patent application that is prior art to the ’415 Patent under 35 U.S.C. §§ 102(e)/103(a) as of its filing date. The Board explained that only two types of documents may be relied upon under 35 U.S.C. § 102(e): “(1) an application for patent published under section 122(b), . . . or (2) a patent granted on an application for patent.” Because Lo I is merely a provisional application and is not published or a patent, the application cannot be relied upon as prior art. Although a patent or a published application may be relied upon as prior art based on claiming benefit of an earlier filed provisional application, the provisional application itself does not qualify as prior art. Because each ground of patentability asserted by Petitioner included Lo I, Petitioner did not show a reasonable likelihood of prevailing on any of its challenges to the ’415 Patent.
Sequenom, Inc. v. The Board of Trustees of the Leland Stanford Junior University, IPR2014-00337
Paper 11: Decision Denying Institution of Inter Partes Review
Dated: July 16, 2014
Patent 8,195,415 B2
Before: Lora M. Green, Francisco C. Prats, and Scott E. Kamholz
Written by: Prats
Related Proceedings: IPR2013-00390; Fam v. Lo, Interference No. 105,922 (PTAB May 3, 2013); and Verinata Health, Inc. v. Sequenom, Inc., Case No. 3:12-cv-00865-SI (N.D. Cal.)
