Fresh From the Bench: Latest Precedential Patent Case

CASE OF THE WEEK

Penumbra, Inc. v. Rapidpulse, Inc., IPR2021-01466, Paper 34 (P.T.A.B. March 10, 2023)

In a PTAB decision that was recently designated precedential, the Board made two important decisions concerning provisional patent applications.  Critically, the Board held that the America Invents Act (AIA) brought forth a change in how provisional patent applications are considered in the prior art analysis.  The Board also considered whether a provisional application of the patent in suit satisfied the written description requirement, sufficient to allow the patent owner to claim priority to that application.

This IPR concerned an aspiration thrombectomy system used for treatment of ischemic strokes caused by blood clots.  The case turned on two provisional patent applications.  First, the patent-in-suit (the ’883 Patent), which was filed in 2019, claimed priority to a provisional application filed in October 2018.  The parties disputed whether the ’883 Patent could claim priority to the 2018 provisional application.  Second, the Teigen reference asserted as prior art was filed in July 2019, but claimed priority to two provisional applications filed in July 2018.  The parties disputed whether the petitioner was entitled to assert Teigen as prior art dating to the dates of its provisional applications.

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Editors:

Nika Aldrich, IP Litigation Group Leader, Schwabe, Williamson & Wyatt, P.C.

Jason A. Wrubleski, Shareholder