In a recent decision, the Federal Circuit affirmed a district court's determination that the asserted claims of a patent were not entitled to the effective filing date of the earliest application in a chain of four applications, and that as a result the claims were anticipated by intervening prior art.  The court explained its recent decision in PowerOasis, where the court seemed to put the burden of proof on the patentee when the issue was entitlement to an earlier effective priority date.  Rejecting this interpretation, the court stated:

Carefully read, however, PowerOasis says nothing more than, and should be understood to say, that once a challenger (the alleged infringer) has introduced sufficient evidence to put at issue whether there is prior art alleged to anticipate the claims being asserted, prior art that is dated earlier than the apparent effective date of the asserted patent claim, the patentee has the burden of going forward with evidence and argument to the contrary. As we noted earlier, it is a long-standing rule of patent law that, because an issued patent is by statute presumed valid, a challenger has the burden of persuasion to show by clear and convincing evidence that the contrary is true. That ultimate burden never shifts, however much the burden of going forward may jump from one party to another as the issues in the case are raised and developed.

This should eliminate much of the speculation and commentary regarding the burden of proof on validity issues that had appeared after the PowerOasis decision.

More detail of Tech. Licensing Corp. v. Videotek, Inc. after the jump.

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In a decision Wednesday, the Ninth Circuit affirmed a district court's grant of summary judgment that the producer of Grand Theft Auto: San Andreas had a First Amendment defense against a claim of trademark infringement.  The plaintiff owns a strip club known as the "Play Pen" on the eastern edge of downtown Los Angeles.  Grand Theft Auto: San Andreas includes, in its fictional city "Los Santos," a virtual strip club "Pig Pen" in the neighborhood "East Los Santos."  The Ninth Circuit, agreeing with the district court, held the First Amendment defeated the infringement claim.  Specifically, the court held the game's producers' "modification of [the] trademark is not explicitly misleading and is thus protected by the First Amendment."

More detail of E.S.S. Entm't 2000, Inc. v. Rock Star Videos, Inc. after the jump.

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In a decision recently designated precedential, the Board of Patent Appeals and Interferences considered the question of whether a reference that is prior art under § 102(e) is prior art as of its provisional priority date or the actual filing date of the reference.  In affirming the examiner, the Board determined the reference was prior art as of its provisional date, as long as the relied-upon disclosure in the reference was sufficiently supported in the provisional filing.

Based on language in the opinion, Examiners have the initial burden of showing the reference's entitlement to the provisional date.  The Board stated (emphasis added):

Although the Examiner's statement regarding the correspondence between the Narayanan patent and its underlying provisional application is somewhat terse and conclusory, the Examiner nonetheless found that both documents "clearly show the same subject matter"—a factual finding.  By making this factual finding, the Examiner then shifted the burden to Appellants to show why such a factual finding was erroneous.

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In a decision yesterday, the Federal Circuit vacated a district court's denial of a preliminary injunction.  The district court denied the injunction on the basis of a substantial question of validity of the patent.  The accused infringer alleged the patent was invalid under 35 U.S.C. § 102(b) based on a prior public use by the patentee, and argued that created a substantial question regarding the validity of the patent.  The patent issued from an application that included a reference in the application data sheet to a provisional application with identical specification and claims, although the reference did not initially appear on the face of the issued patent, but was instead added via a certificate of correction.  The patentee initially did not dispute the critical date used by the accused infringer (which was based on the nonprovisional filing date), but later realized the proper critical date should be based on the provisional filing date, and pointed this out to the district court.  The earlier priority date would prevent the asserted public use from being a statutory bar.  The district court held there was a substantial issue regarding whether the patent was entitled to the priority date, in the main because the patentee had initially not contested the accused infringer's assertion regarding the applicable critical date.

The Federal Circuit vacated.  The court noted it was undisputed that the accused infringer was aware of the provisional application, and a copy of the patent (and the certificate of correction adding the reference to the provisional application) was attached to the complaint.  Counsel for the patentee conceded not raising the issue earlier was an "oversight," and the court held that in such a situation, it was improper for the district court to have found a substantial question of validity based on the patentee's failure to raise the issue earlier in the preliminary injunction proceedings.  The court then addressed the merits of the accused infringer's assertion that the patent was not entitled to the provisional application's priority date, finding them to be without merit.  As a result, the Federal Circuit held the patent was entitled to the earlier priority date, vacated the denial of the injunction, and remanded the case for the district court to consider whether a preliminary injunction is appropriate in light of the correct priority date.

More detail of E.I. du Pont de Nemours & Co. v. MacDermid Printing Solutions, L.L.C. after the jump.

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In a decision Friday, the Federal Circuit affirmed a district court's grant of summary judgment of invalidity with respect to all asserted claims of two patents.  More particularly, the court held that the claims of the patents were not entitled to the priority date of an earlier-filed application, and were therefore anticipated by intervening prior art.  The original application was filed in 1997, however the court determined that written description support was not found in the application family until a 2000 CIP application.  As a result, a prior product in public use in 1999 (which was the predecessor of the accused product) anticipated the asserted claims.

Of particular interest, however, was the Federal Circuit's treatment of the presumption of validity on appeal.  The district court held that because the issue of priority was never addressed by the USPTO, the patentee had the burden to show it was entitled to the earlier priority date.  The Federal Circuit agreed, stating:

When neither the PTO nor Board has previously considered priority, there is simply no reason to presume that claims in a CIP application are entitled to the effective filing date of an earlier filed application.  Since the PTO did not make a determination regarding priority, there is no finding for the district court to defer to.

Of course, the logic of this holding could easily be extended to other issues not addressed by the PTO, such as whether claims of a patent are valid over a reference not considered during prosecution.  As Professor Crouch points out at Patently-O, this issue is the subject of a petition for certiorari currently before the Supreme Court in the Microsoft v. z4 Technologies case.  The response to Microsoft's petition for certiorari is due May 1.

More concerning PowerOasis, Inc. v. T-Mobile USA, Inc. after the jump.

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In a decision last week, the Federal Circuit construed the scope of § 121's allowances for subsequent patent applications directed toward nonelected inventions in response to a restriction requirement.  There were three patents at issue, one directed to pharmaceutical compounds, one to compositions containing those compounds, and a third covering methods of suing the compounds.  The method of use patent was derived from a continuation-in-part application filed after a restriction requirement in the original application.  The district court held that notwithstanding how the application was styled, it was entitled to the original application's priority date.

The Federal Circuit disagreed, holding that § 121, by its terms, is limited to divisional applications.  As a result, the method of use patent was not entitled to the earlier filing date, and was invalid for obviousness-type double patenting based on the composition patent.  The court affirmed the district court's findings that the best mode requirement was not violated and that no inequitable conduct had occurred.

More detail of Pfizer, Inc. v. Teva Pharms. USA, Inc. after the jump.

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In a decision today, the Federal Circuit affirmed the BPAI's decision in an interference proceeding awarding priority to the senior party.  The junior party attempted to show an actual reduction to practice before the senior party's priority date.

While the junior party offered evidence of an earlier actual reduction to practice, the corroborating evidence was insufficient.  The corroborating witness just stated that he saw the device in question in the junior party's laboratory.  There was no corroborating evidence that the device actually worked for its intended purpose, and so the corroboration was insufficient to establish an earlier reduction to practice.  As a result, the court affirmed the decision to award priority to the senior party.

More detail of In re Garner after the jump.

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Today, the Federal Circuit held a patent was anticipated under 35 U.S.C. § 102(b) by another patent earlier in the patent-in-suit's priority chain.  The court held the district court erred in finding that the patent at issue was entitled to a priority date of the earlier-filed patent, leading to the district court's improper conclusion that the patent was not anticipated by an earlier filed patent.

The issue centered on the incorporation by reference clauses in the intervening patents in the priority chain.  The court held, as a matter of law, that one of ordinary skill in the art would understand that they were limited incorporations by reference, and that the disclosure necessary to support the asserted claims was not incorporated.  As a result, the claims were invalidated by an earlier patent in the chain.  

Judge Newman dissented, finding that the majority improperly made the inquiry an issue of law instead of an issue of fact.  Based on the district court's findings, she would have affirmed the finding that the incorporations by reference were sufficient, and that the claims were not anticipated.

More detail of Zenon Envtl., Inc. v. U.S. Filter Corp. after the jump.

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The Federal Circuit yesterday addressed the requirements for the use of a foreign filing date as a priority date in a U.S. interference proceeding.  The court awarded the interference party the priority benefit of the foreign filing date based on the "constructive reduction to practice of an invention whose disclosure is in compliance with the requirements of § 112."  As a result, the court reversed the Board of Patent Appeals and Interferences' finding of priority and awarded priority to the applicant relying on the foreign filing date.

More on Frazer v. Schlegel after the jump.

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