Overview
In Dental Monitoring SAS v. Align Technology, Inc., No. 2025-1752 (Fed. Cir. Aug. 10, 2026), the Federal Circuit vacated a PTAB decision holding patent claims obvious. The decision clarifies the standard for determining whether a prior art patent or patent application is entitled to rely on a provisional application’s filing date under the AIA. That standard requires that the provisional application provide § 112(a) written description support for at least one claim of the reference patent.
The Earlier Legal Framework
In Dynamic Drinkware, the Federal Circuit held that a reference patent used as prior art under pre-AIA § 102(e) obtains the benefit of a provisional application’s filing date only if the provisional application provides § 112, ¶ 1 support for the reference patent claims. Dynamic Drinkware, LLC v. National Graphics, Inc., 800 F.3d 1375, 1381 (Fed. Cir. 2015). As for the AIA, the Federal Circuit stated that it did not interpret the corresponding provision, § 102(d). Id. at 1381 n.2.
A precedential PTAB decision, Penumbra, subsequently addressed AIA § 102(d). Penumbra, Inc. v. RapidPulse, Inc., IPR2021-01466, Paper 34 (PTAB Mar. 10, 2023). That decision held that Dynamic Drinkware does not apply to that provision, meaning that a petitioner need not show a provisional application provides § 112 support for the reference patent claims to obtain the benefit of the provisional application’s filing date.
PTAB Proceedings
Align petitioned for IPR, challenging a Dental Monitoring patent. Align sought to obtain the benefit of a provisional application’s filing date for one of its prior art references, a published patent application that the parties and Board called “Carrier.” Dental Monitoring, however, argued that Align failed to show under Dynamic Drinkware that the provisional application provided § 112 support for at least one of Carrier’s claims. The Board rejected that argument, relying on Penumbra’s rationale for AIA prior art, and determined that Carrier qualified as prior art. The Board held the challenged claims were unpatentable as obvious. Dental Monitoring appealed.
Federal Circuit Decision
The Federal Circuit rejected Dental Monitoring’s interpretation of § 102(d, explaining that “the statutory text expressly conditions entitlement to priority on satisfaction of § 112’s written description requirement.” In relevant part, under § 102(d)(2) a reference patent is only able to obtain an earlier filing date if “entitled to claim a right of priority under [§] 119.” And § 119(e)(1) requires § 112(a) support in a provisional application for such entitlement. Such support must exist for at least one claim of the reference patent.
The Federal Circuit further rejected the argument that the AIA’s distinction between a claimed invention’s effective filing date under § 100(i) and a prior art reference’s effective filing date under § 102(d) eliminates the § 112 support requirement. It reasoned that nothing in § 100(i) alters or addresses the meaning of § 102(d).
The Federal Circuit accordingly vacated the Board’s decision and remanded for the Board to consider whether Align has shown the provisional application provides written description support for at least one claim of Carrier.
Takeaways
This decision provides patent owners with an additional tool to defeat anticipation and obviousness challenges: arguing that a provisional application fails to provide § 112 support for a reference patent’s claims. But patent owners should be aware of potential tensions between such an argument and § 112 arguments defending their own patents and applications. Patent challengers should likewise be attuned to such tensions.
Parties will need to consider how to incorporate these arguments not only into new cases, but also currently pending cases.
When selecting a reference patent or publication that must rely on a provisional filing date, patent challengers should also consider family member patents or publications. Different family members may have differing claims, potentially facilitating a showing of § 112 support, while having similar disclosures and provisional dates. Patent challengers should also carefully consider all claims of potential references, as § 112 support for at least one claim is sufficient.
