Pulling Teeth for Priority: Federal Circuit Bites into Loose Prior Art Standards

DENTAL MONITORING SAS v. ALIGN TECHNOLOGY, INC.

Dental Monitoring SAS v. Align Technology, Inc. (Aug. 10, 2026) addressed an issue practitioners encounter with some regularity – priority-date requirements for prior art under the AIA. The question was whether a reference with a priority chain in which the earliest, but not latest, priority date predates the application at issue can serve as proper prior art under AIA §102.  The decision is precedential because the prior leading case, Dynamic Drinkware, was decided under the pre-AIA version of §102, olden days which fewer and fewer of us remember.¹ 

The underlying technology involved computer-analyzed dental imagery, specifically deep-learning devices for monitoring orthodontics (because even teeth now apparently require machine-learning).  The legal issue was whether §102(d)(2) under the AIA requires substantive written-description support for a priority claim, or whether a ministerial priority claim is enough to carry the day in terms of providing a hook for priority.  The PTAB concluded that the ministerial claim was sufficient to establish the reference’s priority date and invalidated the challenged claims in an IPR. The panel then had the task of deciding whether this decision was correct. 

The panel vacated the PTAB decision, holding that a reference is entitled to claim a right of priority only if substantive 35 U.S.C. §112(a) compliance exists for at least one claim, consistent with the pre-AIA approach. The CAFC found nothing in §102(d)(2) of the AIA exempts prior-art determinations from the entitlement requirements in §119(e)(1), or that creates a looser, “just check the box” ministerial standard for prior-art purposes. Nor, as a policy matter, did the court find it sensible to let a patent have an earlier priority date based on a provisional that does not support the patent’s claims; that would turn priority into something closer to a legal scavenger hunt, with the map drawn after the treasure was found, thereby giving a priority claim more legal force than the disclosure it supposedly rests on. The panel also held that §100(i) does not eliminate the enablement inquiry (or other substantive requirements) needed to determine a reference’s effective filing date for priority purposes. The court therefore rejected the purely ministerial test and remanded the case for the Board to determine enablement of the prior art. 

Takeaways 

1) On the preparation side: if you file a non-provisional application based on one or more provisional applications, treat the provisional as more than a filing-date receipt. It needs to contain written description sufficiently detailed to support at least one claim in the non-provisional to obtain priority. 

2) On the prosecution side: if art having a priority chain is cited against you, and at least one later application postdates your earliest priority date, review the earlier applications to determine whether written description support exists for the material being cited against you². This is less likely to be an issue when the earlier application is a foreign application than when it is a U.S. provisional application, but priority surprises of this type are not known for respecting jurisdictional boundaries. 

Footnotes

¹ The practitioner regulation numbers were around 60,000 when the AIA was enacted.  At present, they are in the 83,000 series, with only an estimated 22,000-27,000 practitioners actively filing and working in front of the USPTO

² There is no specific AIA case related to enablement on this point, but since a provisional can rely heavily on the background knowledge of a POSITA to satisfy enablement, priority disputes rarely turn on whether a provisional is enabling – and such an argument is unlikely to win at the PTO.