On August 10, 2026, the Federal Circuit issued a precedential decision in Dental Monitoring SAS v. Align Technology, Inc. that changes how a patent challenger establishes the prior art date of a reference patent or published application. The holding is this: a reference does not receive the filing date of its provisional application for prior art purposes unless the provisional application provides written description support for at least one claim of the reference. The Patent Trial and Appeal Board had been applying a less demanding standard.

Background

Dental Monitoring owns U.S. Patent No. 10,755,409, which covers a method of acquiring an image of a patient’s dental arch, analyzing the image with a deep learning device, and sending a message that guides the operator to take a new image if needed. Align Technology petitioned the Board for inter partes review of claims 1–15. The Board found all fifteen claims obvious over three references, one of which was a U.S. published application referred to as Carrier.

The effective filing date of the ‘409 patent fell after Carrier’s provisional application was filed but before Carrier’s non-provisional application was filed. Carrier was prior art only if it was entitled to the earlier provisional date under 35 U.S.C. § 102(d)(2).

Dental Monitoring argued that under the court’s 2015 decision in Dynamic Drinkware, Carrier could receive the provisional date only if the provisional supported at least one claim of the Carrier non-provisional. The Board disagreed. Relying on its own precedential decision in Penumbra v. RapidPulse, the Board held that Dynamic Drinkware applied only to pre-America Invents Act (AIA) law. Under Penumbra, a reference receives the earlier date if it meets the “ministerial” requirements of §§ 119 and 120 and the earlier application describes the subject matter relied on in the petition. The Board found that Carrier’s provisional met that test and treated Carrier as prior art.

The Court’s Decision

The Federal Circuit vacated and remanded. Section 102(d)(2) provides that a reference is effectively filed as of an earlier application’s date only if the reference “is entitled to claim a right of priority” under § 119 or the benefit of an earlier filing date under § 120. Section 119(e)(1), in turn, grants priority to a provisional application only if the invention is disclosed in the provisional “in the manner provided by § 112(a).” Read together, these provisions condition entitlement to priority on written description support, and nothing in § 102(d) creates a separate, less demanding standard for prior art purposes. Congress wrote “entitled to claim,” not “claims” or “asserts,” and the court declined to read that language out of the statute.

Align made two main arguments. First, it argued that Dynamic Drinkware was limited to pre-AIA § 102(e). The court responded that Dynamic Drinkware reserved the AIA question rather than deciding it, and that its policy concern remains valid: a challenger should not be able to backdate prior art using an earlier application that would not have supported a patent on the claimed invention. Second, Align argued that the AIA’s distinction between a claimed invention’s effective filing date under § 100(i) and a reference’s prior art date under § 102(d) shows that § 102(d) requires only ministerial compliance. The court held that § 100(i) defines a different inquiry and says nothing about what “entitled” means in § 102(d). Align’s legislative history argument also failed, because the statutory text is clear.

The court remanded rather than reversed because the Board never decided whether Carrier’s provisional actually supports a Carrier claim. That is a factual question for the Board.

What This Means for You

If you are challenging a patent, you can no longer rely on a reference’s provisional date simply because the provisional describes the subject matter you are citing. You must show that the provisional supports at least one claim of the reference as published or issued. Plan for that showing in the petition.

If you are defending a patent, examine the priority chain of every reference asserted against you. A reference that depends on a provisional date is vulnerable if the provisional does not support any of its claims. This argument is available both at the Board and in district court.

Please contact me if you would like to discuss how this decision affects your matters.