On August 10, 2026, the Federal Circuit issued a precedential opinion in Dental Monitoring SAS v. Align Technology, Inc., No. 2025-1752 (Lourie, Schall, and Taranto, JJ.). The court vacated the Patent Trial and Appeal Board's final written decision in IPR2023-01369, which had found claims 1 through 15 of U.S. Patent 10,755,409 obvious, and remanded. The holding is narrow and operational: a U.S. published application is prior art as of its provisional filing date only if the provisional provides section 112(a) written description support for at least one published claim of that reference. Dynamic Drinkware survives the America Invents Act. The Board's precedential Penumbra ministerial test does not.
The technology and the timing problem
The '409 patent covers a method for acquiring and analyzing an image of a patient's dental arch. Claim 1 recites acquiring the image, analyzing it with a deep learning device trained on a learning base, determining a value for an image attribute, comparing that attribute to a set point, and sending a message that can guide the operator to acquire a new image. Align petitioned for inter partes review. The Board found the claims obvious over three references: Salah (WO 2016/066651), Carrier (U.S. Patent Application Publication 2021/0068923), and a convolutional-neural-network paper, Maninis. The effective filing date of the '409 patent, based on a foreign priority application, fell between the filing date of Carrier's provisional (U.S. Provisional Application 62/417,985) and the filing date of Carrier's non-provisional. Carrier was prior art as of the provisional date, or it was not prior art on the date that mattered.
What the Board did
Dental Monitoring argued that Dynamic Drinkware, LLC v. National Graphics, Inc., 800 F.3d 1375 (Fed. Cir. 2015), still controlled: Carrier could take its provisional date only if at least one claim of the published Carrier application was supported by the provisional's written description. The Board disagreed. Relying on its precedential decision in Penumbra Inc. v. RapidPulse, Inc., IPR2021-01466 (PTAB Mar. 10, 2023), the Board treated Dynamic Drinkware as a pre-AIA rule. Under Penumbra, a reference received the earlier application's date if it met the ministerial requirements of sections 119 and 120 and the earlier application described the subject matter relied on as prior art. Because the Board found that the Carrier provisional described the subject matter Align used, it dated Carrier from the provisional and held the '409 claims unpatentable.
The holding, in the court's words (paraphrased)
AIA section 102(a)(2) makes a patent or published application prior art as of the date it was effectively filed. Section 102(d)(2) dates that filing from an earlier application only if the patent or application is entitled to claim a right of priority under section 119, or the benefit of an earlier filing date under section 120, based on a prior filed application that describes the subject matter. Section 119(e)(1), for provisionals, requires disclosure in the manner provided by section 112(a). The court read those provisions together. Entitled to claim a right of priority is a substantive condition, not a box-checking exercise. There is no separate, lesser ministerial standard for prior-art dating.
At slip opinion page 7, the court rejected Align's argument that Dynamic Drinkware is limited to pre-AIA section 102(e). Align, the court said, confused a reservation of decision with a holding on the merits. Dynamic Drinkware noted that it was not addressing newly designated section 102(d) because that question was not before the court, not because the court determined that section 102(d) abrogated the written description requirement. The concern that a patent challenger should not be able to backdate prior art by claiming priority from an earlier application that would not have supported a patent on the claimed invention still remains valid. Allowing a patent to claim an earlier priority date based on a provisional that does not support the patent's claims would create uncertainty about what constitutes prior art.
At slip opinion page 9, the court completed the statutory chain. Section 102(d)(2) requires that the patent or published application is entitled to claim a right of priority under section 119. Section 119, for provisionals, requires that the invention disclosed in the later-filed application is disclosed in the provisional in the manner provided by section 112(a). Thus, the statutory text requires section 112(a) support for at least one of the prior art patent's published claims before that reference may obtain an earlier filing date for prior art purposes. Floor statements that section 102(d) required only ministerial priority requirements did not control. The authoritative statement is the statutory text.
What Penumbra does not do
The Federal Circuit had affirmed the Board's Penumbra decision by Rule 36 judgment without opinion in October 2025. A Rule 36 affirmance, the court reminded the parties, establishes only that the judgment below was correct. It does not endorse or reject any specific part of the Board's reasoning, has no precedential value, and cannot establish applicable Federal Circuit law. Dental Monitoring now supplies the reasoned holding that Penumbra never received. Challengers who have been dating AIA references from provisionals on a describe-the-subject-matter showing should expect to have to prove claim-level written description support instead.
Why remand, not reversal
Dental Monitoring asked for reversal. Align asked for remand. The Board had never determined whether the Carrier provisional actually provides written description support for a Carrier claim. That is a factual finding the Board has to make. The court therefore vacated and remanded, with costs to Dental Monitoring. On remand, to use Carrier as prior art to the '409 patent as of the provisional date, Align must show that Carrier's provisional provides written description support for at least one claim of Carrier. The requirement to do so is not merely ministerial.
The related appeals, and what drops out
Two companion Federal Circuit decisions narrow the remand. In No. 2024-2270 (July 7, 2026), the court held claims 1, 7, and 12 of the '409 patent ineligible under section 101. The Board on remand need not decide those claims. In No. 2025-1879 (July 21, 2026), the court held that substantial evidence supported the Board's finding that Maninis was publicly accessible; the same conclusion applies here, so the Board need not reopen that issue. The district-court companion is Dental Monitoring SAS v. Align Technology, Inc., N.D. Cal. No. 3:22-cv-07335-WHA. The precedential opinion in 2025-1752 is an IPR appeal, not an appeal from Judge Alsup's docket, but the same patent family is in both places.
What this means in practice
For IPR petitioners, the work of using a published application as of its provisional date now looks like the old Dynamic Drinkware showing: identify at least one published claim of the reference, map section 112(a) support from the provisional to that claim, and then show that the provisional describes the subject matter actually relied on against the challenged patent. Expect patent owners to press the first step, especially where the non-provisional added claims, figures, or embodiments after the provisional was filed. For district-court invalidity cases, the same statutory chain applies. The AIA did not create a parallel, easier path for prior-art dating.
What to watch next
The Board's remand findings on whether Provisional 62/417,985 supports at least one published claim of Carrier 2021/0068923. If it does not, Carrier drops out as of the provisional date, and the obviousness combination has to be rebuilt without that earlier date. Watch also how quickly petitioners in pending AIAs start supplementing their Dynamic Drinkware showings, and whether the Office withdraws or rewrites the Penumbra precedential designation in light of this opinion.