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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As mentioned previously, the BPAI designated an opinion as precedential today addressing the issues of obviousness, enablement, and the written description requirement in the context of biotechnology inventions. These issues were addressed in the context of patenting a gene involved in regulating the immune system.

Addressing the obviousness issue, the board determined that the previous knowledge of the protein sequence in other species combined with the limited number of approaches to isolate the gene rendered the invention obvious under the "obvious to try" standard. Citing to KSR, the Board determined that the results obtained were merely the product of ordinary skill and common sense and affirmed the rejection of the examiner.

The enablement and written description issues stemmed from the claim of sequences with at least 80% identity to the isolated sequence. The enablement rejection was reversed because while extensive experimentation may be required, the experimentation would have been routine, not undue. However, the board upheld the written description rejection on the grounds that the two exemplary sequences provided in the specification were not sufficiently different to demonstrate possession of the entire genus claimed (all sequences with 80% similarity).

More detail of Ex parte Kubin after the jump.

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