In an IPR review, Petitioner has the burden of proving by a preponderance of evidence the earlier effective date of a prior art reference. Dynamic Drinkware LLC v. National Graphics, Inc., IPR2013-00131, Paper 42 (PTAB Sept. 12, 2014). In this proceeding, a corrected petition challenging claims 1, 8, 12 and 14 of the '196 patent was filed but the board instituted trial only for claims 1 and 12 based on anticipation by Raymond reference. Raymond has a filing date of May 5, 2000 and claims benefit of a provisional application filed Feb. 15, 2000. In relying on the reference under 102e, the corrected petition merely stated that Raymond's effective date was Feb. 15, 2000. In its response, the Patent Owner argued that Petitioner failed to meet its burden of proof and that the effective date was the filing date of the nonprovisional. In its reply, the Petitioner provided a claim chart comparing claim 1 of the '196 patent to the provisional application. PTAB found that the Petitioner failed to meet its burden of proving by a preponderance of evidence that the Raymond reference was entitled to the benefit of the provisional filing date. PTAB reasoned that to be entitled to the earlier priority date, Petitioner had to establish that it relies on subject matter from Raymond that is present in and supported by the provisional. However, the Petitioner failed to compare the portion of Raymond relied on by the Petitioner to the claimed provisional application to demonstrate that those portions were carried over from the provisional and as a result failed to meet its burden. Even otherwise, the PTAB determined that Raymond was not a 102e reference because the Patent Owner provided declaration testimony asserting that it had reduced to practice claims 1 and 12 of the '196 patent.
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