Dental Monitoring Sas v. Align Technology, Inc.

Case: 25-1752     Document: 42    Page: 1    Filed: 08/10/2026




   United States Court of Appeals
       for the Federal Circuit
                   ______________________

                DENTAL MONITORING SAS,
                       Appellant

                             v.

                ALIGN TECHNOLOGY, INC.,
                          Appellee
                   ______________________

                         2025-1752
                   ______________________

     Appeal from the United States Patent and Trademark
 Office, Patent Trial and Appeal Board in No. IPR2023-
 01369.
                  ______________________

                  Decided: August 10, 2026
                   ______________________

    MICHAEL P. SANDONATO, Venable LLP, Los Angeles,
 CA, argued for appellant. Also represented by JOSHUA
 DANIEL CALABRO, New York, NY.

     NATHAN K. KELLEY, Ashurst Perkins Coie LLP, Wash-
 ington, DC, argued for appellee. Also represented by DAN
 L. BAGATELL, Hanover, NH; TARA LAUREN KURTIS, HARI
 SANTHANAM, Chicago, IL.
                 ______________________

   Before LOURIE, SCHALL, and TARANTO, Circuit Judges.
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 2         DENTAL MONITORING SAS v. ALIGN TECHNOLOGY, INC.




 LOURIE, Circuit Judge.
     Dental Monitoring SAS (“Dental Monitoring”) appeals
 from an inter partes review (“IPR”) final written decision of
 the United States Patent Trial and Appeal Board (“the
 Board”) determining that claims 1–15 of U.S. Patent
 10,755,409 (“the ’409 patent”) had been shown to be
 unpatentable as obvious. Align Tech., Inc. v. Dental
 Monitoring SAS, IPR2023-1369, 

2025 WL 676732

 (PTAB
 Mar. 3, 2025), J.A. 1–84 (“Decision”). For the following
 reasons, we vacate the Board’s decision and remand for
 further consideration in accordance with this opinion.
                        BACKGROUND
     Dental Monitoring owns the ’409 patent, which is di-
 rected to a method for acquiring and analyzing an image of
 a dental arch of a patient. See ’409 patent, Abstract. The
 steps of the claimed method comprise (1) acquiring an im-
 age of a dental arch; (2) analyzing the image using a “deep
 learning device”; 1 (3) determining a “value for an image at-
 tribute”; (4) comparing the image attribute with a “set-
 point”; and (5) sending a message regarding the
 comparison to, if needed, guide the operator to acquire a
 new image. 

Id.

 at col. 32 ll. 13–33 (claim 1).
     Align Technology, Inc. (“Align”) filed a petition for an
 IPR at the United States Patent and Trademark Office,
 challenging claims 1–15 of the ’409 patent. Decision,
 

2025 WL 676732

, at *3. Before the Board, the parties dis-
 puted the patentability of, inter alia, the claim 1 term
 “analysis of the analysis image by means of a deep learning
 device trained by means of a learning base.” See 

id.

 at *14–
 24. The Board determined that the challenged claims were
 unpatentable as obvious over the combination of three


     1  A “deep learning device” is a device that uses deep
 learning to “progressively learn[] to recognize patterns on
 an image.” ’409 patent, col. 16 ll. 46–48.
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 DENTAL MONITORING SAS v. ALIGN TECHNOLOGY, INC.             3



 prior art references: (1) WIPO Patent Application Pub’n
 WO 2016/066651 A1 (“Salah”); (2) U.S. Patent Application
 Publ’n 2021/0068923 A1 (“Carrier”); and (3) a published
 paper on convolutional neural networks (“Maninis”). Deci-
 sion, 

2025 WL 676732

, at *3, *34.
     Importantly here, the Board found that the effective fil-
 ing date of the ’409 patent, based on a foreign priority ap-
 plication, fell between the filing date of Carrier’s
 provisional application and the filing date of Carrier’s non-
 provisional application. See 

id.

 at *10–11 & nn.3–6. Ac-
 cordingly, whether Carrier qualified as prior art depended
 on whether it was entitled to the filing date of its provi-
 sional application under AIA 35 U.S.C § 102(d)(2), rather
 than only to the filing date of its non-provisional applica-
 tion.
     The Board rejected Dental Monitoring’s argument
 that, under Dynamic Drinkware, LLC v. National
 Graphics, Inc., 

800 F.3d 1375

 (Fed. Cir. 2015), Carrier
 could rely on its provisional filing date only if at least one
 claim of the non-provisional patent was supported by the
 provisional application’s written description. Decision,
 

2025 WL 676732

, at *10–11. Relying instead on its prece-
 dential decision in Penumbra, the Board concluded that
 Dynamic Drinkware’s written description analysis applies
 only to pre-AIA law and does not govern prior art determi-
 nations under AIA § 102. Id. at *11 (citing Penumbra Inc.
 v. RapidPulse, Inc., IPR2021-01466, 

2023 WL 2605070

 (PTAB Mar. 10, 2023), Paper 34 at 32).
      Applying Penumbra, the Board held that, for purposes
 of AIA § 102(d)(2), a reference patent receives the filing
 date of an earlier application as long as it satisfies the
 “ministerial requirements” of §§ 119 and 120 and the ear-
 lier application “describes the subject matter relied upon in
 the reference patent.” Id. (cleaned up). Because the Board
 found that Carrier’s provisional application described the
 subject matter on which the petition relied, it concluded
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 4         DENTAL MONITORING SAS v. ALIGN TECHNOLOGY, INC.




 that Carrier qualified as prior art as of the provisional ap-
 plication’s filing date. Id.
     It is worth emphasizing that the relevance of the Car-
 rier provisional application date here is not to give the Car-
 rier patent any earlier priority over a competing
 application or patent, but to serve Align’s goal of creating
 earlier prior art against the ’409 patent.
     Dental Monitoring timely appealed. We have jurisdic-
 tion under 

28 U.S.C. § 1295

(a)(4)(A).
                         DISCUSSION
      The central dispute that we resolve on appeal centers
 on whether Carrier is prior art under 

35 U.S.C. § 102

(d)(2).
 See Open. Br. 30–32; Resp. Br. 24–31. Specifically, the
 parties dispute whether Carrier’s provisional application
 needed to provide written description support for one of
 Carrier’s published claims for Carrier to obtain the benefit
 of its provisional date and thus antedate the ’409 patent, or
 whether Carrier need only comply with certain “ministe-
 rial” requirements of claiming priority for Carrier. See Re-
 ply Br. 3–9; Resp. Br. 24–31.
     “Whether a reference qualifies as a printed publication
 under [§] 102 is a legal conclusion based on underlying fac-
 tual findings.” Valve Corp. v. Ironburg Inventions Ltd.,
 

8 F.4th 1364

, 1372 (Fed. Cir. 2021) (internal quotation
 marks and citations omitted). “We review the Board’s legal
 determinations de novo, but we review the Board’s factual
 findings underlying those determinations for substantial
 evidence.” 

Id.

 at 1372–73 (internal quotation marks and
 citations omitted).
     Carrier’s qualification as prior art is a legal question
 requiring statutory interpretation. “When interpreting a
 statute, we start with the language of the statute itself.”
 Xianli Zhang v. United States, 

640 F.3d 1358, 1364

 (Fed. Cir. 2011) (citing Williams v. Taylor, 

529 U.S. 420, 431

 (2000)). “In reviewing the statute’s text, we give the
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 DENTAL MONITORING SAS v. ALIGN TECHNOLOGY, INC.                5



 words their ordinary, contemporary, common meaning, ab-
 sent an indication Congress intended them to bear some
 different import.” 

Id.

 (internal quotation marks and cita-
 tions omitted).
     AIA § 102(a)(2) provides that a patent or published pa-
 tent application may be prior art as of the date it was “ef-
 fectively filed.” And AIA § 102(d)(2) provides:
     (d) For purposes of determining whether a patent
     or application for patent is prior art to a claimed
     invention under subsection (a)(2), such patent or
     application shall be considered to have been effec-
     tively filed, with respect to any subject matter de-
     scribed in the patent or application—
     ...
           (2) if the patent or application for patent is
           entitled to claim a right of priority under
           [§] 119 . . . or to claim the benefit of an ear-
           lier filing date under [§] 120 . . . based
           upon 1 or more prior filed applications for
           patent, as of the filing date of the earliest
           such application that describes the subject
           matter.
 

35 U.S.C. § 102

(d)(2) (emphasis added). Section 119(e), re-
 garding priority for provisional applications for patent, re-
 quires “disclos[ure] in the manner provided by [§] 112(a).”
 

35 U.S.C. § 119

(e)(1).
                                  I
     With that statutory framework in mind, we turn to
 whether Carrier satisfies the requirements of § 102(d)(2).
 First, the plain language of §§ 102(d)(2) and 119(e)(1) re-
 solves the parties’ dispute by conditioning entitlement to
 an earlier prior art date on compliance with § 112(a). As
 relevant here, AIA § 102(d)(2) provides that a patent is
 prior art as of an earlier effective filing date only “if the
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 6         DENTAL MONITORING SAS v. ALIGN TECHNOLOGY, INC.




 patent or application for patent is entitled to claim a right
 of priority under [§] 119.” 

35 U.S.C. § 102

(d)(2). Section
 119(e)(1), in turn, makes clear that an application for pa-
 tent is entitled to claim priority from a provisional applica-
 tion only if the invention disclosed in the later filed
 application is “disclosed [in the provisional application] in
 the manner provided by [§] 112(a).” Thus, the statutory
 text expressly conditions entitlement to priority on satis-
 faction of § 112’s written description requirement. Sec-
 tion 102(d) therefore incorporates that substantive
 requirement, and there is nothing in its text that exempts
 prior art determinations from § 119(e)(1)’s entitlement re-
 quirements or otherwise creates a different, less demand-
 ing “ministerial” standard for prior art purposes. See
 Bostock v. Clayton Cnty., Ga., 

590 U.S. 644

, 654–55 (2020)
 (“[O]nly the words on the page constitute the law adopted
 by Congress and approved by the President.”).
     Our reading is further supported by Congress’s use of
 the phrase “entitled to claim a right of priority” in
 § 102(d)(2). That language naturally refers to substantive
 entitlement under § 119, not merely the procedural act of
 claiming priority. An applicant becomes “entitled to claim
 priority” only by satisfying the statutory prerequisites, in-
 cluding § 112’s written description requirement. In con-
 trast, the Board’s interpretation would effectively treat
 § 102(d)(2) as though it referred simply to a patent that
 “claims a right of priority” or “asserts a right of priority”
 loosely in general terms. Congress chose language requir-
 ing the satisfaction of statutory-based substantive require-
 ments, not language merely permitting an applicant to
 invoke priority. We generally presume that choice was in-
 tentional and should not construe § 102(d)(2) in a manner
 that renders the phrase “entitled to” superfluous. See TRW
 Inc. v. Andrews, 

534 U.S. 19, 31

 (2001) (applying the “car-
 dinal principle of statutory construction” that “no clause,
 sentence, or word shall be superfluous, void, or insignifi-
 cant” (citation omitted)).
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 DENTAL MONITORING SAS v. ALIGN TECHNOLOGY, INC.             7



     Align makes two primary arguments to support the
 Board’s interpretation. First, it argues that Dynamic
 Drinkware does not apply because its analysis was limited
 to the pre-AIA version of § 102. See Resp. Br. 24–26. Sec-
 ond, it argues that the AIA distinguished a claimed inven-
 tion’s effective filing date under § 100(i) from a reference’s
 effective prior art date under § 102(d), and that this dis-
 tinction means that § 102(d) requires only “ministerial” re-
 quirements for claiming priority under §§ 119 and 120,
 rather than entitlement to priority supported by § 112. See
 id. at 26–30. We disagree and address each argument be-
 low.
     We take the Dynamic Drinkware argument first. Align
 contends that Dynamic Drinkware does not apply to AIA
 patents because that decision confined its analysis to pre-
 AIA § 102(e). Id. at 24–26. Align confuses a reservation of
 decision with a holding on the merits. In Dynamic Drink-
 ware we noted that we were not addressing “newly desig-
 nated § 102(d),” 

800 F.3d at 1381

 n.2, because that
 question was not before us—not because we determined
 that § 102(d) abrogated the written description require-
 ment. The concern in Dynamic Drinkware—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 re-
 mains valid. See id. at 1381–82. Allowing a patent to claim
 an earlier priority date based on a provisional that does not
 support the patent’s claims would frustrate these goals by
 creating uncertainty about what constitutes prior art.
 Thus, even assuming Dynamic Drinkware did not control
 because it addressed pre-AIA § 102(e), that conclusion does
 not suggest that the AIA altered the underlying principle
 that a reference cannot receive the benefit of an earlier fil-
 ing date for subject matter not supported in an earlier ap-
 plication.
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 8          DENTAL MONITORING SAS v. ALIGN TECHNOLOGY, INC.




     We now turn to Align’s argument, relying on Penum-
 bra, 2 that the AIA’s distinction between a claimed inven-
 tion’s effective filing date under § 100(i) and a reference’s
 effective filing date under § 102(d) eliminates any require-
 ment that the earlier application provide § 112 support for
 the subject matter relied upon as prior art.
      Section 100(i) determines what effective filing date for
 a claimed invention means; it does not alter the require-
 ments for determining when a reference is entitled to an
 earlier effective filing date under § 102(d). The principal
 flaw in Align’s reasoning is that it treats Congress’s deci-
 sion to distinguish effective filing dates of inventions from
 effective prior art dates as though that distinction answers
 the meaning of the phrase “entitled to claim a right of pri-
 ority under [§] 119” in § 102(d). It does not. The distinction
 identifies which statutory inquiry is being performed, but
 it does not determine what substantive requirements “en-
 titled” incorporates. That is, nothing in § 100(i) suggests
 that Congress intended § 102(d) to dispense with those
 substantive requirements when determining a reference’s
 effective filing date for prior art purposes.
     As discussed above, § 102(d)(2) provides that a patent
 or published application is effectively filed for prior art pur-
 poses as of the earliest application if the patent or applica-
 tion for patent “is entitled to claim a right of priority under


     2    We affirmed the Board’s Penumbra decision by
 Rule 36 judgment without opinion. See RapidPulse, Inc. v.
 Penumbra, Inc., No. 2024-1130, 

2025 WL 2911056

 (Fed.
 Cir. Oct. 14, 2025). We note that a Rule 36 affirmance es-
 tablishes only that the judgment below was correct; “[i]t
 does not endorse or reject any specific part of the [Board’s]
 reasoning,” and “has no precedential value and cannot es-
 tablish applicable Federal Circuit law.” See Rates Tech.,
 Inc. v. Mediatrix Telecom, Inc., 

688 F.3d 742, 750

 (Fed. Cir.
 2012) (cleaned up).
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 DENTAL MONITORING SAS v. ALIGN TECHNOLOGY, INC.             9



 [§] 119.” 

35 U.S.C. § 102

(d)(2). Section 119, in turn, pro-
 vides that entitlement exists only when its statutory re-
 quirements are satisfied. For provisional applications, that
 includes that the invention disclosed in the later filed ap-
 plication is disclosed in the provisional application “in the
 manner provided by [§] 112(a).” 

35 U.S.C. § 119

(e)(1).
 Thus, the statutory text requires § 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.
      Align further argues that the legislative history for
 § 102(d) “confirms that [it] does not turn on whether any
 issued claim was actually entitled to priority.” Resp.
 Br. 29. We disagree. Align specifically points to floor state-
 ments that § 102(d) required only “ministerial” priority re-
 quirements, rather than written description support. Id.
 (citing 157 Cong. Rec. S1369–70 (daily ed. Mar. 8, 2011)).
 But “the authoritative statement is the statutory text, not
 the legislative history or any other extrinsic material.”
 Exxon Mobil Corp. v. Allapattah Servs., Inc., 

545 U.S. 546, 568

 (2005). Here, the statutory text is clear that a claim of
 priority must comply with § 119, which in turn requires
 written description support under § 112(a). The legislative
 history accordingly has no role in our analysis. See id. (“Ex-
 trinsic materials have a role in statutory interpretation
 only to the extent they shed a reliable light on the enacting
 Legislature’s understanding of otherwise ambiguous
 terms.”).
                               II
     Lastly, the parties dispute whether the Board’s error
 regarding the Carrier provisional warrants reversal or re-
 mand. See Open. Br. 32 (Dental Monitoring arguing for re-
 versal); Resp. Br. 30–31 (Align arguing for remand). Here,
 the Board did not determine whether the Carrier provi-
 sional provides sufficient written description support for
 Carrier. See Decision, 

2025 WL 676732

, at *10–11. The
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 10        DENTAL MONITORING SAS v. ALIGN TECHNOLOGY, INC.




 Board must make such factual findings, and thus remand
 is the most appropriate route. See L.A. Biomed. Rsch. Inst.
 at Harbor-UCLA Med. Ctr. v. Eli Lilly & Co., 

849 F.3d 1049

, 1068 n.9 (Fed. Cir. 2017).
                         CONCLUSION
      Accordingly, to establish Carrier as prior art to the ’409
 patent, Align must show that Carrier’s provisional applica-
 tion provides written description support for at least one
 claim of Carrier. 3 The requirement to do so is not merely
 “ministerial.” We therefore vacate the Board’s decision and
 remand for further proceedings consistent with this opin-
 ion. 4
                VACATED AND REMANDED


                             COSTS
 Costs to Appellant.




      3  In a related decision, we concluded that claims 1, 7,
 and 12 of the ’409 patent were directed to ineligible subject
 matter. See Dental Monitoring SAS v. Align Tech., Inc.,
 No. 2024-2270, 

2026 WL 1959297

, at *6 (Fed. Cir. July 7,
 2026). Accordingly, the Board on remand need not make a
 determination as to those claims. See 

id.

     4   In a related decision, we concluded that the Board’s
 determination that Maninis was publicly accessible was
 supported by substantial evidence. Dental Monitoring SAS
 v. Align Tech., Inc., No. 2025-1879, 

2026 WL 2093811

, at *4
 (Fed. Cir. July 21, 2026). Given the parties briefed the
 same issue before us in this case, see Open. Br. 32–33;
 Resp. Br. 31–33, that same conclusion applies here such
 that the Board need not reconsider it on remand.