Patent Family Tree: Grandparent Invalidates Grandchild

PatentLawPic104Zenon Environmental v. United States Filter (Fed. Cir. 2007)

At a bench trial, Zenon’s microfiltration patents were found not invalid but also not infringed. Both parties appealed, but the CAFC only needed to decide half the case — After deciding that Zenon’s asserted patent was anticipated one of Zenon’s prior patent, the issue of infringement became moot.  

The particular issue on appeal was whether Zenon’s asserted patent (the ‘319 patent) properly claimed priority to an earlier Zenon patent (the ‘373 patent).

Chain of Reference: The ‘319 patent claims to be a continuation of No. 6,294,039, which is a divisional of No. 6,042,677, which is a divisional of No. 5,910,250, which is a CIP of No. 5,783,083, which is a CIP of the ‘373 patent.

The claims in the asserted patent were disclosed in the original filing — the dispute arose because an intervening patent included only a reduced disclosure.

“In order to gain the benefit of the filing date of an earlier application under 35 U.S.C. § 120, each application in the chain leading back to the earlier application must comply with the written description requirement of 35 U.S.C. § 112.” Lockwood v. Am. Airlines, 107 F.3d 1565 (Fed. Cir. 1997).

Of course, the written description requirement can be satisfied by incorporating information by reference. That incorporation must, however, be explicit.  In one of the intervening patents, Zenon did include a reference to the ‘373 patent. However, the CAFC found that reference fell short because it did not explicitly state that it was incorporating the earlier patent by reference. (The reference was stated as follows: “details relating to … a most preferred skein are found in the parent U.S. Pat. No. 5,639,373.”).

Without the incorporation by reference of the proper written description, the asserted patent cannot claim priority to the filing date of the earlier patent. And, that lack of continuity of disclosure means that the early patent now serves as § 102 prior art.

Because it is undisputed that the ’373 patent discloses each and every limitation of the claims of the ’319 patent, and the ’373 patent was filed more than one year prior to the filing of the ’319 patent, we thus conclude that the ’319 patent is anticipated by the ’373 patent and hence invalid.3

In dissent, Judge Newman found it silly that the grandparent application would invalidate the grandchild. In addition to being silly, Newman argued that 35 U.S.C. § 120 requires that the later filing is “entitled to the benefit of the [earlier] filing date” so long as the family relationship is properly disclosed.

31 thoughts on “Patent Family Tree: Grandparent Invalidates Grandchild

  1. I don’t see how there can be any other answer. A CIP is a different application, and you have the choice of what you want to include. Consider the following situation: let’s say that you have some material in the specification that you really don’t like. You file a CIP, deleting the material, and you don’t incorporate the parent by reference. If the result were different, is that material included in your specificaiton, or isn’t it? Either a priority claim is an incorporation by reference, or it isn’t. It can’t be an incorporation by reference when I want that material back later, but then not if I want to get rid of some crap in the parent.

  2. Haven’t read the case, but the MPEP makes it very clear that a priority claim is not the same thing as an incorporation by reference statement. And that you have to use the magic words formed from the roots “incorporat” and “reference” to have that affect. If you claim priority through an intermediate filing that doesn’t contain your desired language, you don’t get to claim priority all the back to the original filing.

    The only exception I know of is the 37 C.F.F. 1.57(b), which allows incorporation in child cases of “inadvertantly omitted” items. This protects the applicant from clerical errors in child case, in case pages are missing. But this wouldn’t help here, where it appears the omission was deliberate.

    This seems rightly decided to me.

  3. I agree that the court’s holding is correct. I also agree with Newman’s sentiments that this result is “silly”. However, silly though it is, it is the law until the rules/laws are changed to say all priority documents are automatically considered to be incorporated by reference.

    I personally would not favor that change. There may be reasons why you don’t want priority documents incorporated. Also, such a rule would make an after-filing claim of priority impossible, because such a claim would automatically add new matter.

  4. Recently a number of practitioners have been using the following statement, in lieu of specifically incorporating by reference:
    “All publications, patent applications, accession numbers and otehr references cited in this specification are herein incorporated by reference as if each individual publication or patent application were specifically and individually indicated to be incorporated by reference.”

    I was taught the old way – incorporating individual documents by reference – any thoughts on this newer practice in view of the present decision?

  5. Real anonymous,

    I see your point, too. Thanks for the discussion.

    Interesting how Judge Lourie gets to add to his American Airlines opinion 10 years later.

  6. Jim H.,

    I see your points, but in the Zenon case, given that a patent applicant should (for policy public notice reasons) clearly delineate what is being disclosed (when I check the validity of a patent, I should never have to guess what the specification is disclosing), and given the Zenon incorporation was not a general incorporation (“in its entirety”) but rather a specific incorporation (as the MPEP said, to “specific portions of the referenced document where the subject matter being incorporated may be found” or as Zenon said, “Further details relating to the construction and deployment of a most preferred skein are found in the parent U.S. Pat. No. 5,639,373, and in Ser. No. 08/690,045, the relevant disclosures of each of which are included by reference thereto as if fully set forth herein”), wouldn’t it have been clear as day that Zenon was not incorporating by reference the entire document?

    The issue wasn’t that magic words weren’t used, but rather the clear import (to one reading the disclosure) of what the words which were used meant: the whole ’373 patent was nither incorporated nor intended to be incorporated by reference by the patent application drafter.

    Judge Newman’s point seemed to be that more deference should have been given to the findings of facts below, which I agree with completely. I always have thought Perini America (written by Chief Judge Markey, 832 F.2d 581, 4 USPQ2d 1621) had the clearest statements of the interplay of issues of law and fact in a patent case (Markey would likely have been horrified by where the CAFC has ended up in this respect, post-Markman):

    “…this court does not undertake to retry the entire case upon appeal. A trial court’s conclusions on the scope of the claims are reviewable as a matter of law, but findings on disputed meanings of terms in the claims … must be shown to have been clearly erroneous … That a claim must be interpreted in a certain way is a conclusion of law … Like all legal conclusions, that conclusion rises out of and rests on a foundation built of established (undisputed or correctly found) facts. Interpretation of a claim, or of its scope, should not be assayed until that foundation is in place. If the meaning of terms in the claim, the specification, other claims, or prosecution history is disputed, that dispute must be resolved as a question of fact before interpretation can begin … [Once the meaning of terms in the claims, specification, and prosecution history has been established,] it may still be necessary to interpret the claim, with its now-defined terms, in light of the specification and prosecution history, with their now-defined terms. It is that interpretation based on established facts that constitutes a legal conclusion reviewable as a matter of law.”

  7. Real anonymous,

    You make a great point. The Office encourages the use of the “magic words.”

    But wouldn’t you agree that a court of law must place the Law over the administrative agency’s Federal Rule and practice where there is a conflict between the two (ref Tafas/GSK). Where there is a conflict between the Law and an agency’s Rule, the Law prevails. Although the use of “magic words” simplifies the process and I don’t disagree with the use of them, “substance” still prevails over “form” in American jurisprudence. The non-use of “magic words” should not be determinative of the outcome in a court of law. Courts of law all over this land continually reject such principle (except for, now, the CAFC).

    Because I see a present conflict between the “incorporating by reference” standard that is now a part of patent law and the law of placing “substance over form” in the form of “magic words,” the law must prevail and the rule and practice must not be determiniative.

    In addition, please take note (and the CAFC must take note) the purpose of the “magic words”: “to provide the public with a patent disclosure which minimizes the public’s burden to search for and obtain copies of documents incorporated by reference which may not be readily available.” (Rev. 2 of MPEP). With continuations, isn’t there no burden? There is no public burden in a continuation. Moreover, the public receives notice — not just in the form of “magic words.”

  8. “Since when does merely filing an application more than one year earlier make it prior art to a later filed application by the same entity? Perhaps Zenon publicly disclosed the invention, but that’s not what the above quote says.”

    My guess is “filed” should have read –published–. (Different inventive entities may not be determinative absent a statutory bar.)

    Jim H., I doubt magic words were determinative since the rules for incorporation by reference were different in the ’90s than they are today (1.57 now requires that you use the magic words “incorporate[d by] reference”). Old MPEP 608.01(p) section B gave much more leeway, but nonetheless required that, “[p]articular attention should be directed to specific portions of the referenced document where the subject matter being incorporated may be found.”

    In any event, Newman’s dissent was based on the issue of fact/law distinction, which the CAFC has often felt it has the privilege, and even the obligation, to blur (e.g. as in Markman).

  9. Don’t tell me the CAFC panel has endorsed a “magic words” standard. Such standard is hugely rejected by court of law. Courts have historically and continuously placed “substance” over “form” — not “form” over “substance.”

    Gosh, this is truly scary jurisprudence. On petition for review, I hope that an en banc panel will take a step back from the narrowness of patent law and realize that the law comes first and that patent law needs to conform to the law — and not visa versa.

    Remember what happened in the Ebay decision. Having sensed self-importance because it was patent law, the CAFC decided to carve out a niche standard for the issuance of injuctions. SCOTUS, however, corrected the CAFC by essentially telling it to return to the roots of law and apply the traditional four-pronged standard applicable to any injunction.

    I can only hope that the full panel looks to the law first, returns to the “substance over form” standard of the law, and rejects the “magic words” test — which is unfortuneately is a carved out niche of patent law.

  10. I have to agree with Judge Newman on this. The grandchild application should not be invalidated by the grandparent if there is clear reference thereto in the spec. The fact that the application specifically does not state “incorporated by reference in its entirety” should not preclude priority to it. Moreover, I would agree with the above comments that a later amendment introducing incorporation language would be new matter; however, I wonder whether the problem can be remedied by argument to the contrary, or by a cert of correction.

  11. Patent leather wrote earlier: “Since when does merely filing an application more than one year earlier make it prior art to a later filed application by the same entity? Perhaps Zenon publicly disclosed the invention, but that’s not what the above quote says”

    What exactly are you trying to get at? What was the publication date for the grandfather?

  12. “Since when does merely filing an application more than one year earlier make it prior art to a later filed application by the same entity? Perhaps Zenon publicly disclosed the invention, but that’s not what the above quote says”

    The inventive entities for the two applications are not the same.

  13. Although there is something wrong here:

    “Because it is undisputed that the ’373 patent discloses each and every limitation of the claims of the ’319 patent, and the ’373 patent was filed more than one year prior to the filing of the ’319 patent, we thus conclude that the ’319 patent is anticipated by the ’373 patent and hence invalid.”

    Since when does merely filing an application more than one year earlier make it prior art to a later filed application by the same entity? Perhaps Zenon publicly disclosed the invention, but that’s not what the above quote says.

  14. I actually can’t disagree with the court here. It is well established that you can claim priority to a prior application for only commonly disclosed subject matter. That is why you must always incorporate by reference all priority documents. Although confused scotus does give some valid reasons why you may not want to, but I still think it’s better safe than sorry.

  15. This decision doesn’t seem that off to me. The patent applicant is responsible for clear communication to the public. Just like with a contract, it seems fair that when the drafter/applicant uses vague, ambiguous, or unclear English, the interpretation should go against the drafter. I was not persuaded that the incorporation by reference was indeed partial and side with the majority.

    The plain meaning of language should take precedence over “accepted practice” etc. This is part of a long running trend in the CAFC to have patents written so that people other than patent attorneys/agents can understand what they are about. It’s like use of “the invention”. When someone reads “the invention does whatever”, they tend to take it at face value. I hope the court continues to force practicioners to use clear plain English and retire odd and outdated practices. Why did the attorney have to be so obtuse in writing: details relating to the construction and deployment of a most preferred skein are found in the parent U.S. Pat. No. 5,639,373, and in Ser. No. 08/690,045, the _relevant_ disclosures of each of which are included by reference thereto as if fully set forth herein.

    The public needs to know what a patent discloses. In this case, how is the public supposed ot know what the “relevant disclosures” are? Why should the public have the chore (and possible penalty if wrong) of trying to figure out just what parts of ’373 and ’045 were incorporated.

    The wisdom of requiring full disclosure in each app in a chain is a separate issue. But if you assume that’s the law, then this decision makes sense to me.

  16. Gideon wrote:
    “2nd Lesson – Don’t count on common sense from the courts – count on a chronic narrowing of patent rights. The last 10 cases I have read have all restricted patent rights.”

    We all have read the same last 10 cases, yet Nuitjen is still pursuing an en banc rehearing. I don’t want to predict what the full court will do, but the trend would be for the en banc court to take a much harsher line than the panel did.

  17. Alan, you don’t always want to incorp by refernce all priority appls. Stmts made in those appls could prejudice your appl. For example, if your priority appl is a PCT appl complying with foreign jurisdiction patent rules, and your US appl is a by-pass cont based the foreign-rules-complying PCT appl, you may be better off not incorporating the PCT case by ref, as there may be statements in that appl that undre US law are prejudicial to claim scope. When you incorporate a document, everything goes with it, not just 112 support material, but also claim limiting material.

  18. “Yeah, those dissents are really persuasive. Especially to district court judges and patent examiners.”

    Examiners are only persuaded by one thing: the drum beat of PTO (mis)management to “reject, reject, reject” and you will be rewarded with many RCE counters and a nice bonus.

    I gave up trying to persuade examiners with appeals to follow the law a long time ago. It was a pointless exercise.

    Malcolm, I gotta say I’m sorely disappointed that I didn’t get so much as a “Thanks, JD” for teeing that J. Newman post up for you. I knew it would set off that hypersensitive radar of yours. :-)

    Keep those posts coming. They are the highlight of my day. (Seriously.)

  19. “Once again, J. Newman gets it right.
    We’re all gonna be in a world o’ hurt when she’s gone.”

    Yeah, those dissents are really persuasive. Especially to district court judges and patent examiners.

  20. It seems that there is no doubt Zenon kept their part of the patenting bargain: they contributed their novel and non-obvious invention to society. Yet they lose their property rights because they made what is no more than an insignificant oversight that may have been standard practice in 1997 when the application was drafted.

    This ruling reminds me of the scene in the Willy Wonka movie when Gene Wilder tells Charley that he has violated some obscure rule and therefore loses everything.

    Coupled with the new USPTO BPAI rules and the USPTO policy of not granting patents, it seems that “the system” does not want patents.

    What is funny or sad (I don’t know which) is that it seems that Americans will be the main victims. No patent protection in the US will make America cheaper, but never to Chinese or Indian levels. On the other hand, Euro lands will easily afford US prices, but the Americans won’t be able to afford Euro prices.

  21. Probably most practitioners don’t routinely strip “unneeded” stuff out of the disclosure of child cases, although some provisions of the new rules might cause you to rethink doing exactly that. I’ll bet another group of people routinely incorporate by reference which would also have avoided this problem.

    The following language is in the ’319 patent:

    Further details relating to the construction and deployment of a most preferred skein are found in the parent U.S. Pat No. 5,639,373… the relevant disclosures of each of which are included by reference…”

    The CAFC read this as a partial inclusion by reference of only the material related to the skein and decided that the necessary material wasn’t related to the skein. I think the dissent (Newman) correctly argues that the district court investigated the relationship between the skein and the gas distribution system and concluded as a matter of fact they were related and that the CAFC was simply (and improperly) substituting its own fact finding for that of the district court. Quite frankly, I think Newman is correct, although I don’t think most of us would fall in the same trap.

    The CAFC could have used this case to “editorialize” a little on 35 USC 120, but did not.

  22. “is there any reason why you should not automatically incorporate by reference the entirety of all predecessor applications in a continuity chain?”

    Not necessary if you wrote the new app by cutting and pasting new stuff into the old one – and why would you do it any other way? Still using a mechanical typewriter?

  23. wow: Inequitable conduct? Do you mean malpractice?

    is there any reason why you should not automatically incorporate by reference the entirety of all predecessor applications in a continuity chain?

  24. You’re confusing “inequitable conduct” with “malpractice”.

    This case is odd.

    1st lesson – don’t file CIPs except as a last resort when you hope the Examiner won’t look for art between the parent date and the new date and where your new claims are directed to the new material.

    CIPs should be killed – they’re useless.

    2nd Lesson – Don’t count on common sense from the courts – count on a chronic narrowing of patent rights. The last 10 cases I have read have all restricted patent rights.

    In this case, everything the court says is true, including the part about the intervening disclosures being insufficient and the incorporations by reference being inadequate.

    But so what. A priority claim is a priority claim is a priority claim.

    If you claim priority properly, you should be entitled to the original disclosure.

    As the dissent said, this result is silly.

  25. Such an amendment would, based on the courts ruling, HAVE to be new matter. If it was not already incorporated into the spec. (as was ruled), doing so at this time would be adding something that was not supported by the originally filed specification. Therefore, new matter.

    thanks,

    LL

  26. Here’s an obvious question: would an amendment to a specification changing the phrase

    “details relating to … a most preferred skein are found in the parent U.S. Pat. No. 5,639,373″

    to

    “details relating to … a most preferred skein are found in the parent U.S. Pat. No. 5,639,373, incorporated by reference herein”

    be barred as “new matter”?

  27. yet another sneaky trap for patent practitioners.

    Patent Attorney’s beware.

    By the way, was this considered inequitable conduct?

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