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Federal Circuit Examines Written Description Requirements for U.S. Patent Application Publications Used as Prior Art Under Pre-AIA
On March 24, 2025, a Federal Circuit panel consisting of Judges Moore, Stoll, and Cunningham issued a precedential opinion, authored by Judge Stoll, in In re Riggs, No. 2022-1945 (Fed. Cir. Mar. 24, 2025). Appellants in Riggs are the named inventors listed on U.S. Patent Application No. 11/005,678 (the 678 Application). Riggs, slip op. at 2. They appealed, among other rulings, the Patent Trial and Appeal Board’s determination that a published patent application qualified as prior art under pre-AIA 35 U.S.C. §102(e)(1). Id. (The inventor-appellants raised three issues on appeal, one of which was an issue preclusion matter. Riggs, slip op. at 7-10. That issue is not discussed here.) The Federal Circuit vacated and remanded, finding that the Board did an incomplete analysis in determining whether the published application did, in fact, qualify as prior art under §102(e). Id.
During prosecution of the 678 Application, the examiner rejected certain claims under pre-AIA 35 U.S.C. §102(e)(1) as anticipated by U.S. Patent Application Publication No. 2002/0049622 A1 (Lettich), which claims priority to U.S. Provisional Application No. 60/200,035 (the Lettich Provisional). Id. at 5. Lettich qualifies as prior art to the claims of the 678 Application only if it is entitled to the priority date of the Lettich Provisional. See, id. at 10. The Board reasoned that because the Lettich Provisional provides adequate support for claim 1 of Lettich, Lettich is prior art against the claims of the 678 Application. Id. at 11. The Board then sustained the examiner’s anticipation and obviousness rejections. Id. at 2.
In finding that Lettich is entitled to priority of the Lettich Provisional, the examiner and the Board relied on Dynamic Drinkware, LLC v. National Graphics, Inc., 800 F.3d 1375 (Fed. Cir. 2015) and Amgen Inc. v. Sanofi, 872 F.3d 1367 (Fed. Cir. 2017). Riggs, slip op. at 11. In these cited cases, the Federal Circuit explained that, for a prior art published application to claim benefit of its provisional application’s filing date, the provisional application must provide support for the “claims” of the prior art application. Id. at 12. The challengers in those cases failed to meet the threshold requirement of demonstrating that the provisional application provided adequate support for the claims of the prior art application. Id. at 13 (citing Dynamic Drinkware, 800 F.3d at 1381-82; Amgen, 872 F.3d at 1380)). However, the Federal Circuit in Dynamic Drinkware and Amgen did not address whether it is sufficient for patent challengers (or examiners) to demonstrate written description support for one claim in order to then rely on other portions of the specification for purposes of anticipation or obviousness. Id. (“As such, [the court] did not address the subsequent issue of whether the content of the prior art relied on in the rejection also required written description support in the provisional application.”).
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