Institution Denied for Failure to Show Disclosure in Provisional Application, PTAB Litigation Blog
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On December 1, 2023, Intelligent Wellhead Systems, Inc. (“Intelligent”) filed a petition for inter partes review (“IPR”) of U.S. Patent No. 11,401,779 (“the ’779 Patent”) (“IPR256”), assigned to Downing Wellhead Equipment, LLC (“Downing”). Intelligent asserted five grounds of unpatentability, including an anticipation ground and an obviousness ground that both relied solely upon U.S. Patent Application Publication No. 2022/0268141 to Krupa et al. (“Krupa”). Another obviousness ground relied upon Krupa in combination with another reference. Krupa is the published version of a U.S. application filed on February 18, 2022, and claims priority to a provisional patent application filed nearly a year earlier on February 25, 2021 (“the Krupa Provisional”). Importantly, the priority date of the ’779 Patent is May 17, 2021—after the filing date of the Krupa Provisional but before that of the nonprovisional U.S. application. Intelligent asserted in the petition that Krupa is prior art to the ’779 Patent, merely citing the filing date of the Krupa Provisional.
