On August 10, 2026, the Court of Appeals for the Federal Circuit in Dental Monitoring SAS. v. Align Technology, Inc.[1] held that the prior art analysis framework prescribed in Dynamic Drinkware, LLC v. Nat’l Graphics, Inc.[2] applies to prior-art determinations under both pre-AIA 35 U.S.C. § 102(e) and AIA 35 U.S.C. § 102(d). As a result, a patent document[3] qualifies as prior art as of its earlier-claimed filing date only if it satisfies the Dynamic Drinkware framework. Dental Monitoring effectively overrules the Patent Trial and Appeal Board’s (PTAB) precedential decision in Penumbra, Inc. v. RapidPulse, Inc.[4], which held that the Dynamic Drinkware framework applies only to patent documents governed under pre-AIA § 102(e).
Case Background
In Dynamic Drinkware, the Federal Circuit established the framework for determining the effective prior-art date of a reference patent under pre-AIA § 102(e).[5] Under Federal Circuit law, a reference patent document is entitled to the filing date of an earlier application in its priority chain as its § 102(e) prior-art date if the following two prongs of Dynamic Drinkware framework are met:
- the portions of the reference patent document relied on as prior art are supported in the earlier application, and
- at least one claim of the reference patent document is supported “in compliance with [35 U.S.C.] § 112, ¶ 1” in the earlier application.[6]
In 2023, the PTAB designated as precedential its decision in Penumbra holding that prong (ii) of the Dynamic Drinkware framework does not apply to prior-art determinations under AIA § 102(d).[7] Specifically, Penumbra held that:
[U]nder the AIA, a reference patent document need only meet the ‘ministerial requirements’ of §§ 119 and 120, and the provisional or other earlier application(s) to which the reference patent document claims a right of priority must ‘describe[] the subject matter’ relied upon in the reference patent document as prior art.[8]
In other words, Penumbra held that there was no § 112 claim-support requirement (prong (ii) of the Dynamic Drinkware framework) for AIA reference patent documents.
The Dental Monitoring Decision
Dental Monitoring now makes clear that both prongs of the Dynamic Drinkware framework are required for prior-art determinations irrespective of whether the reference patent document is assessed as prior art under pre-AIA § 102(e) or AIA § 102(d).[9]
Dental Monitoring arose from an appeal of an inter partes review (IPR) between Align Technology (petitioner) and Dental Monitoring (patent owner).[10] In the IPR, the PTAB relied on Penumbra to conclude that one of Align’s asserted prior-art patent documents qualified as prior art under AIA § 102(d) as of its provisional application filing date, and determined that the challenged claims were unpatentable as obvious.[11] In reaching this conclusion, the PTAB held that, for purposes of AIA § 102(d)(2), a reference patent document receives the filing date of an earlier application as long as it satisfies the “ministerial requirements” of §§ 119 and 120 and describes the subject matter relied upon in the reference patent document.[12]
The Federal Circuit rejected the PTAB’s approach, effectively overruling Penumbra. The court found that the plain language of §§ 102(d)(2) and 119(e)(1) requires substantive compliance with § 112(a).[13] The court reasoned that AIA § 102(d)(2) instructs that a reference patent document is prior art as of its earlier effective filing date only if the document is “entitled to claim a right of priority under § 119”—which refers to substantive entitlement to priority under § 119 and not just ministerial act of claiming priority under § 119.[14]
Section 119(e)(1), in turn, provides that substantive entitlement to an earlier filing date exists only when the invention disclosed in the later-filed application is disclosed in the earlier provisional application “in the manner provided by § 112(a).”[15] This “statutory text expressly conditions entitlement to priority on satisfaction of § 112’s written description requirement.”[16] The court accordingly concluded that § 102(d) requires more than “ministerial requirements”—it requires that the earlier-filed application provide “written description support under § 112(a)”, for at least one claim in the reference patent document.[17]
Interestingly, the Federal Circuit previously affirmed the PTAB’s Penumbra decision in a Rule 36 affirmance.[18] No doubt recognizing that its decision in Dental Monitoring appears to contradict its previous affirmance of Penumbra, the court noted that its Rule 36 affirmance did not “endorse or reject any specific part” of the PTAB’s Penumbra reasoning and had “no precedential value and cannot establish applicable Federal Circuit law.”[19]
Key Takeaways
Whether a prior-art reference patent document is entitled to its earlier-claimed filing date can be critical in anticipation and obviousness challenges. Penumbra has been overruled.
Patent challengers can no longer avail themselves of the benefit of the simple “ministerial requirements” framework in Penumbra and must now satisfy the Dynamic Drinkware framework to assert a patent document as prior art as of the filing date of its earlier priority application. Likewise, patent owners can now hold challengers to the more demanding Dynamic Drinkware analysis, regardless of whether the reference patent document is asserted as prior art under pre-AIA § 102(e) or AIA § 102(d).
[1] Dental Monitoring SAS v. Align Technology, Inc., No. 2025-1752 (Fed. Cir. Aug. 10, 2026)
[2] Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375 (Fed. Cir. 2015).
[3] “Patent document” refers to a patent or published patent application.
[4] Penumbra, Inc. v. RapidPulse, Inc., IPR2021-01466, Paper 34 (March 10, 2023) (precedential as to section II.E.3).
[5] Dynamic Drinkware, 800 F.3d at 1381-82.
[6] Dynamic Drinkware, 800 F.3d at 1378, 1381-82; see also In re Riggs, 131 F.4th 1377, 1384 (Fed. Cir. 2025) (holding that “a provisional application [must] provide[] written description support for one claim of the non-provisional application or patent” and “must also provide written description support for the specific portions of the patent specification identified and relied on in the prior art rejection.”).
[7] Penumbra, IPR2021-01466, Paper 34.
[8] Id. at 32 (citations omitted).
[9] Dental Monitoring, No. 2025-1752.
[10] Id. at 2.
[11] Id. at 2-4.
[12] Id. at 3.
[13] Id. at 5-6, 8-9.
[14] Id.
[15] Id.
[16] Id. at 6, 9-10.
[17] Id.
[18] Id. at 8, fn 2; RapidPulse, Inc. v. Penumbra, Inc., No. 2024-1130, 2025 WL 2911056 (Fed. Cir. Oct. 14, 2025).
[19] Dental Monitoring, No. 2025-1752, at 8, fn 2.
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