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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