Case Overview: Dental Monitoring SAS v. Align Technology, Inc.

9.14.26

United States Court of Appeals for the Federal Circuit, No. 2025-1752 (Decided Aug. 10, 2026)

In Dental Monitoring S.A.S. v. Align Technology, Inc., the Federal Circuit vacated and remanded a Patent Trial and Appeal Board final written decision, rejecting the Board’s own precedential framework for determining when a patent or published application may claim the benefit of an earlier provisional filing date for prior-art purposes. The dispute arose in an inter partes review, where the outcome turned on whether a reference patent was entitled to reach back to its provisional application’s filing date under 35 U.S.C. § 119(e), and thereby qualify as prior art against Dental Monitoring’s challenged patent.

The Board had applied its own precedential decision in RapidPulse, Inc. v. Penumbra, Inc., which held that a reference is “entitled to claim” an earlier provisional filing date so long as the applicant satisfied ministerial requirements, such as filing a timely benefit claim, and the provisional described the specific subject matter relied upon as prior art. Notably, that standard did not require the provisional application to satisfy the written-description requirement of 35 U.S.C. § 112(a) for any claim of the reference itself. The Federal Circuit rejected this “ministerial” standard, holding instead that the statutory phrase “entitled to claim a right of priority to” necessarily imports the substantive entitlement requirements of § 119(e), which in turn require compliance with § 112(a). The court reasoned that “entitled to” is a term of substantive legal right, not a procedural checkbox, and that reducing it to ministerial compliance would let thinly described provisional filings anchor prior-art dates they had not actually earned.

The court articulated a cumulative two-part test going forward: the earlier provisional application must (1) provide written-description support for at least one claim of the reference patent, and (2) describe the specific subject matter actually relied upon as prior art. Because the Board never made the first finding, the Federal Circuit vacated and remanded for further proceedings, without deciding whether the reference at issue ultimately qualifies as prior art. This decision meaningfully raises the bar for IPR petitioners relying on provisional-backed prior art.

S. Chase Talbot | Associate Attorney