Defective Chain of Priority Results in Holding of Anticipation


01.12.11 Posted in Federal Circuit Opinions by

Encyclopaedia Britannica v. Alpine Electronics of America, No. 2009-1544 (Fed. Cir. 6/18/2010).  Encylopedia Britannica (EB) owns the ‘018 and ‘437 patents, pertaining to multimedia database search system for retrieving textual and graphical information.  EB sued defendants Alpine Electronics and several others alleging infringement of these two patents.

The defendants argued that the patents were invalid as anticipated. The two patents in the case were both filed on June 13, 1995, and claimed priority back to U.S. Application No. 07/426,917, filed Oct. 26, 1989.  The issue was whether the 1995 applications were actually entitled to the ‘917 priority date.

The district court agreed with the defendants that an intermediate application in the chain of priority failed to satisfy the requirements of 35 U.S.C. § 120.  Therefore, the June 1995 applications were not entitled to the priority date of the ‘917 application, and a PCT publication, WO 91/06916, published May 16, 1991, was anticipatory under 35 U.S.C. § 102(b).  The Federal Circuit panel affirmed the district court holding.

The intermediate application in question, 08/113,995, was filed on Aug. 31, 1993. The ‘955 application was intended to be a continuation of the ‘917 application, and was filed on the same day that the patent based on the ‘917 application issued.  The ‘995 application was filed with several missing parts, including page 1 of the specification with the priority claims, the filing fee, and an oath or declaration.  The USPTO responded that the proper filing date of the ‘955 application would be the date it received the missing page.   EB filed a Petition for Granting of Filing Date, but the petition was was dismissed, since the application was prima facie incomplete without the missing page, and EB failed to provide an oath or declaration.  The USPTO responded that EB could file for reconsideration if an oath or declaration was submitted.   EB did not file for reconsideration, and instead abandoned the ‘955 application.  From the record, it appears that the missing first page was never submitted.  A footnote in the opinion also indicates that it appears that EB never paid the filing fee for the ‘955 application.

Prior to the abandonment of the ‘955 application, EB filed a continuation, 08/202,985, claiming priority to the ‘955 application and asserting that the ‘955 application claimed priority to the ‘917 application.

The District Court held that the ‘955 application failed to meet the requirements of 35 U.S.C. § 120 because it did not contain the required specific reference to the earlier application filed on or before the issue date of the earlier application. The court further reasoned that because the ‘955 application was not entitled to claim priority to the ‘917 application, no later patent in the chain could claim priority to the ‘917 application through the ‘955 application.

On appeal, EB argued that the district court erred by interpreting the language of § 120 to require that each application in a series of continuing applications must contain a specific reference to the original application. The defendants disputed this interpretation, and also countered that the ‘955 application was not co-pending with the ‘917 application because the ‘955 application was filed on the same day the ‘917 application issued as a patent. The defendants also argued that the ‘955 application was not entitled to any filing date because EB never paid the required filing fees or filed an oath or declaration.

The core of EB’s argument was that § 120 states that the application can meet the co-pendency requirement if it is “filed before the patenting or abandonment of or termination of proceedings on … an application similarly entitled to the benefit of the filing date of the first application.” (Emphasis added). EB argued that the the full requirements of § 120 only apply to the final application in a chain of applications, and that “similarly entitled” intermediate applications are not required to contain a specific reference to an earlier filed application.  The Federal Circuit panel rejected this interpretation of § 120 and affirmed the district court.

Comment: It appears that EB engaged in sloppy continuation practice, rushing a continuation filing based on the ‘917 application at the last possible minute, and doing an incomplete and sloppy job.  Then, rather that properly cleaning up the mess, which could have been done rather easily, they attempted to sweep the problem under the rug with a subsequent continuation filing.  The end result was that a link in the chain was broken, and EB had to rely on strained statutory arguments to preserve their rights (which were unsuccessful).

Here is a similar scenario: US5651976 claims priority to appl. 08/077503, filed 6/17/1993.  No mention is made on the ‘976 patent priority claim of any earlier filed application.  However, the ‘503 application claims priority to 07/343,762, filed 4/14/1989.  Can the ‘796 patentee properly claim priority to the ‘762 filing date?  I would argue no, because there is no specific reference to the ‘762 application in the priority claim on the ‘976 patent.



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