The Software IP Report

Insufficient Written Description in Provisional Application Triggers On-Sale Bar of Subsequent Patent

A provisional patent application must include sufficient description to allow a person having ordinary skill in the art to make an invention as claimed in an asserted patent claiming priority to the provisional application, as recently upheld in Speedfit LLC et al v. Woodway USA, Inc. et al, No. 2-13-cv-01276 (E.D.N.Y. Jan. 9, 2020).

Plaintiff Speedfit, LLC owns U.S. Patent Nos. 8,308,619 and 8,343,016, directed to a leg-powered treadmill. Speedfit, LLC and Aurel Astilean sued Defendant Woodway USA, Inc. for infringement of these patents. Defendant filed a motion motion for summary judgment of invalidity of the ‘619 and ’016 patents, asserting that Plaintiffs violated the on-sale bar of pre-AIA 35 U.S.C. § 102. The asserted patents have a critical date of October 29, 2009, one year before the filing date of the ‘619 patent. Plaintiffs filed Provisional Patent Application No. 61/280,265 on Nov. 2, 2009, and the asserted patents claim priority to the ‘265 provisional.

Plaintiffs conceded that they offered a leg-powered treadmill for sale at a trade show in March 2009, six months before the critical date. Plaintiffs argued that the asserted patents were entitled to the priority date of the ‘265 provisional, filed within a year of the March 2009 sale.

The Court denied priority to the November 2009 filing date of the ‘265 provisional because the claims of the asserted patents were not supported by sufficient written description in the ‘265 provisional. As one example, claim 1 of the ‘619 patent recites, in part, “parallel slats attached to each other in a resilient fashion.” Plaintiffs’ technical expert admitted that the ‘265 provisional lacks this recitation, and the Court rejected Plaintiffs’ arguments that the recited structure was inherent in the written description of the ‘265 provisional. Indeed, the Court held that Plaintiffs provided no evidence that the ‘265 provisional provided written description to support the asserted patents. The Court held that the asserted patents could not claim priority to the ‘265 provisional and granted Defendant’s motion to dismiss.

Lessons for Practice

Provisional applications can be a useful tool for protecting inventions that need to be disclosed before a nonprovisional application can be prepared. However, as Speedfit found out, failing to describe crucial features in the provisional application can be fatal if future claims rely on newly added material.