A Brutal D Three Provisional Patent Application Problem – by Patent Attorney Michael W. Goltry of Parsons & Goltry – Scottsdale Patent Attorneys

A Brutal D Three Provisional Patent Application ProblemD Three Enterprises, LLC v. SunModo Corp. (Fed. Cir. 2018)


by Michael W. Goltry, Registered Patent Attorney, Parsons & Goltry

Writing patent applications is tricky, even for skilled and experienced patent practitioners. The crux of patent protection often turns on one word, and the D Three case is an exemplary illustration of this.

Claims that lack a written description in a provisional application cannot claim priority from that provisional application, the U.S. Court of Appeals for the Federal Circuit (CAFC) held in D Three Enterprises, LLC v. SunModo Corp. (Fed. Cir. 2018). Affirming a judgment of the U.S. District Court for the District of Colorado granting summary judgment to SunModo that D Three could not claim priority from a 2009 U.S. Patent Application No. 61/150,301 (the 2009 provisional application), the CAFC determined that a person having ordinary skill in the art (PHOSITA) would not have understood the 2009 provisional application to have disclosed “washerless” assemblies as called for in claims asserted by D Three against SunModo of U.S. Patents in a chain of priority from the 2009 provisional application.

As a preliminary matter, 35 U.S.C. 111(b) enables a provisional application for patent to be made or authorized to be made by the inventor. Section 120 of the same Title provides for the right-of-priority from prior applications. In other words, an invention disclosed in a second patent application that claims priority to an earlier first application to the same invention shall have the same effect, i.e. the same filing date, as the first application. However, section 120 requires that the first application for patent must disclose the invention “in the manner provided by section 112(a)” of Title 35, which states that “[t]he specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.” Accordingly, when a second application claims the right-of-priority from an earlier first application and the disclosure of the first application does not satisfy the enablement and written description requirements of section 112(a) for the claims of the second application, the claims of the second application cannot rely on the priority of the disclosure of the first application. This was D Three’s problem.

D Three obtained patents directed to roof mount sealing assemblies useful for mounting objects on a roof and sealing the mounting location against water. D Three sued SunModo alleging infringement of certain Asserted Claims of the patents. To successfully assert the Asserted Claims of the patents against SunModo, D Three was required to establish a priority claim to the 2009 provisional application. If priority to the 2009 provisional application could not be established, D Three did not dispute that the Asserted Claims of the patents would be invalid due to intervening prior art. The district court divided the Asserted Claims into a category of claims requiring a washer, and another category of “washerless” claims not requiring a washer, determined that the 2009 application did not meet the section 112 written description requirement in support of the washerless claims, invalidated all but one of the Asserted Claims as anticipated based on D Three’s stipulation, and invalidated the remaining claim as being anticipated based on other prior art. The Federal Circuit affirmed.

In affirming the district court, the CAFC recognized that the “hallmark of the written description is disclosure,“ and that the written description “must clearly allow [a PHOSITA] to recognize that the inventor invented what is claimed,” such that “the disclosure of the application relied upon reasonably conveys to [a PHOSITA] that the inventor had possession of the claimed subject matter as of the filing date.” Quoting Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). The CAFC also emphasized that a “patentee bears the burden of establishing that its claimed invention is entitled to an earlier priority date than an asserted prior art reference.” Quoting In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1376 (Fed. Cir. 2016).

The CAFC agreed with the district court that none of the Asserted Claims recite a washer, that the provisional application discloses one washerless assembly that otherwise requires a W-pronged attachment bracket 1700, and that a PHOSITA would understand bracket 1700 not to be optional. However, the CAFC concluded that it must additionally determine “whether a PHOSITA would recognize ‘upon reading the [2009 Application]’ that any attachment brackets as claimed in the Washerless Claims could be used in washerless assemblies.” The CAFC agreed with the district court that the 2009 provisional application failed to describe washerless assemblies using attachments other than attachment bracket 1700 and the use of other types of attachment brackets in a washerless assembly, failed to use the term “washerless,” and failed to describe any attachment bracket other than bracket 1700 that could be used in the claimed roof mount assemblies, thereby obviating priority to the provisional application. Although D Three cited boilerplate language in the provisional application as evidence that the provisional application disclosed alternative brackets, namely, that “[PHOSITAs] will recognize certain modifications, permutations, additions and sub-combinations therefore,” and that “[i]t is therefore intended that the following appended claims hereinafter introduced are interpreted to include all such modifications, permutations, additions and subcombinations are within their true sprit [sic] and scope,” the CAFC correctly rejected this boilerplate language as being insufficient meet the written description requirement of the subject matter called for in the Asserted Claims. See Knowles Elecs. LLC v. Cirrus Logic, Inc., 883 F.3d 1358, 1367−68 (Fed. Cir. 2018) (finding lack of adequate written description where only general soldering was disclosed in a specification, but claims disclosed a specific means of soldering). The CAFC also correctly found D Three’s reliance on unspecific expert testimony insufficient to transform the provisional application into a section 112 disclosure from which the Asserted Claims could find support.

It’s a bummer for D Three that the 2009 provisional application failed, at least according to the CAFC, to consider a washerless assembly and alternatives to the 1700 bracket. I do believe that the provisional application is a breeding ground for carelessness, which is why the skilled patent practitioner, when writing a patent application, should never regard the patent application as either a provisional application or a nonprovisional application. Without a doubt a patent application is one thing and one thing only, a disclosure made in the manner provided by section 112(a). The 2009 provisional application is thorough and detailed, it just does not describe non-washer sealing interactions or washerless assemblies without requiring the 1700 bracket, at least according to the CAFC.

Long ago in Topliff v. Topliff, 145 U.S. 156, 171, 12 S.Ct. 825, 831, 36 L.Ed. 658 (1892), the Supreme Court stated that the patent application “constitute(s) one of the most difficult legal instruments to draw with accuracy.” The D Three case is illustrative of this observation. Whether an application is a provisional or a nonprovisional, it is a disclosure, so be careful. Many times I’ve heard other say “Oh, it’s just a provisional. Don’t worry about it.” Well, tell that to D Three. To be sure, the quality of the disclosure should always be of paramount importance. As I’ve said many times, when you write a patent application, “write it, and don’t be afraid!” Writing a patent application certainly takes skill and experience, e.g. what to say, what not to say, how to introduce criticality without losing your mind, when to incorporate “without” phrases and negative limitations, how to explain alternatives, how to define fields of art, how to describe what the PHOSITA would know or not know or think or not think, etc. Training, experience, skill, and the pursuit of perfection (not the attainment of perfection) can, however, enable a skilled patent writer to always write with the purpose of perfecting the technique of patent writing with the client and that “one word” in mind. Nothing else matters! Especially you, you provisional or nonprovisional!

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"Mr. Goltry took a provisional patent that we'd filed ourselves, and quickly and professionally turned our innovation into U.S. and foreign applications. His [patent claims] were a thing of beauty, and I was amazed by how deftly he countered the inevitable office actions. His language held up, and the U.S. Patent just issued. He was easy and efficient to work with, and his fees were remarkably reasonable. We're not planning to go anywhere else, ever."

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