Federal Circuit IP

Penumbra, Inc. v. RapidPulse, Inc.

By Tucker Mottl Published March 6, 2024

PTAB IPR2021-1446

March 10, 2023; Designated Precedential November 15, 2023

(Melvin, Cotta, Wisz; PTAB Precedential)

Summary: Precedential PTAB opinion details the test for a patent or published application to obtain the effective filing date of a claimed provisional under AIA Section 102(d).


  • Petitioner (Penumbra) filed an IPR challenging U.S. Patent No. 10,531,883 (“the ’883 patent”) which was filed in July 2019 and claimed priority to an October 2018 provisional.
  • Petitioner’s IPR grounds relied on U.S. Patent No. 11,096,712 (“Teigen”) as a lead reference. Teigen was filed in August 2020 and claimed priority to a July 2018 provisional.
  • Patent Owner (RapidPulse) argued under the Federal Circuits Dynamic Drinkware analysis that Teigen is not prior art as of its July 2018 provisional because Petitioner failed to show that the provisional supports at least one published or issued claim.

Key Issue

  • Before the PTAB, what is the standard to claim the effective filing date of a provisional application for AIA patents under AIA Section 102(d)? 

Applicable Rule/Statute

  • Pre-AIA § 102(e) & Dynamic Drinkware v. Nat’l Graphics, Inc., 800 F.3d 1375, 1381 (Fed. Cir. 2015) (“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 § 112, ¶ 1.”)
  • AIA § 102(d): For purposes of determining whether a patent or application for patent is prior art to a claimed invention under subsection (a)(2), such patent or application shall be considered to have been effectively filed, with respect to any subject matter described in the patent or application … (2) if the patent or application for patent is entitled to claim a right of priority under section 119 … or to claim the benefit of an earlier filing date under section 120 … based upon 1 or more prior filed applications for patent, as of the filing date of the earliest such application that describes the subject matter.
  • MPEP § 2154.01, 2nd ¶: The AIA draws a distinction between actually being entitled to priority to, or the benefit of, a prior-filed application according to the definition of “effective filing date” of a claimed invention in AIA 35 U.S.C. 100(i)(1)(B), and merely being entitled to claim priority to, or the benefit of, a prior-filed application according to the use of “effectively filed” in AIA 35 U.S.C. 102(d). As a result of this distinction, … there is no need to evaluate whether any claim of a U.S. patent document is actually entitled to priority or benefit under 35 U.S.C. 119, 120, … when applying such a document as prior art.
  • MPEP § 2154.01, 1st ¶: A U.S. patent document “is entitled to claim” priority to, or the benefit of, a prior-filed application if it fulfills the ministerial requirements of: (1) containing a priority … to the prior-filed application; (2) being filed within the applicable filing period; and (3) having a common inventor or being by the same applicant.
  • MPEP § 2154.01, 3rd ¶: AIA 35 U.S.C. 102(d) requires that a prior-filed application to which a priority or benefit claim is made must describe the subject matter from the U.S. patent document relied upon in a rejection. However, AIA 35 U.S.C. 102(d) does not require that this description meet the enablement requirements of 35 U.S.C. 112(a).


  • Before the PTAB, patents subject to AIA § 102(d) need not establish that the provisional supports a published or issued claim under Dynamic Drinkware to claim the effective filing date of a provisional application. They need only satisfy the ministerial requirements of (i) claiming priority to the provisional and (ii) that the relied upon subject matter is supported by the provisional.
  • Claims 1-18 of the challenged ’883 patent were held unpatentable.


  • AIA Section 102(d) provides express statutory language for claim the effective filing data of an earlier application, which is different than pre-AIA Section 102(e).
  • For AIA patents, the standard to claim the effective filing date of a provision is being developed based on AIA Section 102(d).
  • When considering the priority of AIA patents, review the appropriate test for the applicable court/jurisdiction.