In Globus Medical, Inc. v. DePuy Synthes Products, LLC, the PTAB denied institution because the Petitioner failed to prove that one of the references relied upon in all of the invalidity grounds was § 102(e) prior art. IPR2015-00099, Paper 15 (May 1, 2015).

The reference in question, Panjabi, was a U.S. patent that issued from a non-provisional application filed after the challenged patent’s priority date. However, the Panjabi application claimed priority to a provisional application filed before the priority date. Thus, Panjabi would be prior art if the subject matter relied upon in Panjabi was disclosed in the provisional.

The Board held that the Petitioner failed to prove that the subject matter relied upon was disclosed in the provisional. The Petitioner did not analyze in the petition whether the provisional disclosed the subject matter relied upon, did not cite to the provisional, and did not provide a copy of the provisional for the record. Based on these failures, the Board held that, for purposes of the institution decision, Panjabi’s effective § 102(e) prior art date was the filing date of the non-provisional application. Because that date was after the challenged patent’s priority date, Panjabi was held not to be prior art.

This case is a reminder that Petitioners have the burden of establishing a reasonable likelihood of prevailing, and failure to affirmatively prove that a reference relied upon is prior art will result in a denied petition. More specifically, when relying on § 102(e) references it is necessary to establish that the subject matter relied upon was disclosed in an application that pre-dates the challenged patent’s priority date.