Dental Monitoring Sas v. Align Technology, Inc.

Summary

The Federal Circuit vacated the Board's IPR final written decision holding claims 1-15 of the '409 patent unpatentable as obvious and remanded. The court held that under AIA 35 U.S.C. § 102(d)(2), a reference qualifies as prior art as of a provisional application's filing date only if the reference is 'entitled to claim a right of priority' under § 119, which for provisional applications requires § 112(a) written description support for at least one claim of the published reference — rejecting the Board's 'ministerial requirements' standard drawn from its Penumbra decision. Because the Board never made written description findings regarding Carrier's provisional application, remand rather than reversal was the appropriate route.