Miss a Date: $250 Million . . .

Encyclopaedia Britannica v. Dickstein Shapiro (D.D.C. 2010)

EB sued a host of defendants in 2006-2007 for patent infringement. On summary judgment, the district court found the patents invalid — holding that they did not properly claim priority to their parent application. Now, EB has sued its prosecution firm for malpractice.

In the cases of Air Measurement Corp v. Akin Gump (Fed. Cir. 2007) and Immunocept v. Fulbright & Jaworksi (Fed. Cir. 2007), the Federal Circuit clarified that it often holds appellate jurisdiction even over legal malpractice claims.

This claim may be largely driven by the financial woes of the encyclopedia business. [Link]

  • EB's original application was filed in 1989.
  • The invalidated patents are U.S. Patent Nos. 7,051,018 and 7,082,437.

38 thoughts on “Miss a Date: $250 Million . . .

  1. Fed Circuit has affirmed the invalidity of the ’018 and ’437 patents.

    The basis was due the ’955 application failing to specifically claim priority to the ’671 patent before it went abandoned.

    The Court held off ruling on the issue of whether you can file a continuation on the same day the parent issues. The questions from the Court indicated they were entertaining the idea. There is a Supreme Court opinion interpreting what “before” means in statutes.

    The Court also held off on determining the effect of filing an application without the first page and having the PTO refuse to grant a filing date.

    link to cafc.uscourts.gov

  2. IANAE, the US’955 application in question never was accorded a filing date. It never was legally filed.

    So, EVEN IF, it had a proper benefit claim to its parents, for example in the application papers, it could NOT under Section 120 form the basis any “benefit reference” from its children and therefor could not provide a link from its children to its parents.

  3. “Well, IANAE, I remained puzzled how an application can on the one hand not have a filing date and still have a filing date.”

    Can you name one such application? Every application I’ve ever seen either had a filing date or didn’t. Or, I suppose, initially didn’t and later got one.

  4. A patent application may bring in, say, $10,000 – $15,000. But if the prosecutor misses a critical date, or forgets to claim proper priority, or the like, the liability can be in the millions. The risk-to-reward ratio isn’t particularly good for patent prosecution.

    Still, hats off to the patent prosecutors of the world ! Their work is important, requires great skill and dedication, and is the backbone of the patent system.

    Patent litigators, for example, would not be able to rip-off their clients the way they do…Let me rephrase: make their wildly inflated salaries…if it were not for the patents that hard working patent prosecutors generate.

  5. A patent application may bring in, say, $10,000 – $15,000. But if the prosecutor misses a critical date, or forgets to claim proper priority, or the like, the liability can be in the millions. The risk-to-reward ratio isn’t particularly good for patent prosecution.

    Still, hats off to the patent prosecutors of the world ! Their work is important, requires great skill and dedication, and is the backbone of the patent system.

    Patent litigators, for example, would not be able to rip-off their clients the way they do…Let me rephrase: make their wildly inflated salaries…if it were not for the patents that hard working patent prosecutors generate.

  6. Question for all:

    If a “parent” never is accorded a filing date, is it an application “filed” in the United States — for it is only such “filed” applications that are subject to the benefit claim under Section 120.

    “35 U.S.C. 120 Benefit of earlier filing date in the United States.

    An application for patent for an invention disclosed in the manner provided by the first paragraph of section 112 of this title in an application previously filed in the United States….”

  7. Well, IANAE, I remained puzzled how an application can on the one hand not have a filing date and still have a filing date. This is far more complicated than just a lost priority claim.

    Further, beyond the opinion of the Director, there is no legal authority that holds that filing on the same day as the date a patent issues meets the legal requirement that a patent application seeking Section 120 benefit be filed “before” the patenting of the parent. See, e.g., Niefeld, Rick, at link to neifeld.com

    I would venture that anyone actually relying on the Director in this regard is a fool.

  8. The reason they were attempting to file it on that date is precisely because that was the date the parent issued. There’s a great lesson to be learned here about not leaving such things for the last minute.

    Word.

    In other news

    link to nytimes.com

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    Cell carriers go through life hoping nobody notices the cellephant in the room: that once everybody starts making free calls over the Internet, it’s Game Over for the dollars-for-minutes model.

  9. “What, if anyone knows, prompted the official filing date to be the very date its parent issued?”

    If anything had, we could have avoided this whole mess. As it happens, the application was never given a filing date, notably because of the same incompleteness that cost it the priority claim.

    The reason they were attempting to file it on that date is precisely because that was the date the parent issued. There’s a great lesson to be learned here about not leaving such things for the last minute.

  10. What, if anyone knows, prompted the official filing date to be the very date its parent issued?

    Perhaps because that was the date it was filed?

  11. The issued patent, 7,051,018, states the filing date of 08/113,955 application to be Aug. 31, 1993, the same date its parent, US patent 5,241,671 issued. What, if anyone knows, prompted the official filing date to be the very date its parent issued?

  12. pretty reasonable….also, “pretty reasonable” is the conclusion that if the patent office has not objected to the perfection of a claim of priority that the claim has been perfected…

    Was the claim objected to by the office?

  13. …only that they attempted a priority claim. Any further reading into the situation is conjecture.

    I think my conjecture was simply that since they atttempted a priority claim, they probably intended to claim priority. A pretty reasonable conjecture, in the absence of any contrary evidence, wouldn’t you say?

  14. The fact that they attempted a priority claim suggests…,/i>

    only that they attempted a priority claim. Any further reading into the situation is conjecture.

    Just an observation.

  15. and which is the case here?

    The patent at issue had a priority claim, but it was ineffective because of a lack of a “specific reference” in an earlier application. The fact that they attempted a priority claim suggests there was not a judgment call to forego the priority.

    In any event, several of the applications were filed after the earliest application issued. It’s a little tough after that to “make the call for a fuller term.”

  16. is it malpractice to make the call for a fuller term?

    Not if that’s the actual decision you’re making, and you inform your client of the risks inherent in giving up an earlier priority date.

    It is probably malpractice to have a patent invalidated based on prior art specifically because you failed to claim an earlier priority on your client’s instruction, regardless of the effect on patent term.

  17. ok, I am wrong…. but still…the new patent would have had a very short life….is it malpractice to make the call for a fuller term?

  18. Patent number: 7051018
    Filing date: Jun 13, 2005
    Issue date: May 23, 2006

    Correct me if I’m wrong, but it seems to me if they claimed priority to an ’89 application, the new patent would have expired before it was filed….

    ….so sue me..

  19. What I don’t understand from the file history of 08/113,955, is what is with all the third party oppositions? Third parties have no right to intervene during prosecution of another’s application, and in fact the USPTO considers such filings to be filed for an “improper purpose” and can subject the filer to disciplinary action. I don’t see how those parties got away with it in this case.

  20. “If someone has time, would you please find the date after which it became too late to “amended to contain a specific reference to the earlier filed application”

    feel free to check the PTO’s online archive of previous editions of the MPEP (riveting stuff).

    link to uspto.gov

  21. RE: “This claim may be largely driven by the financial woes of the encyclopedia business.”

    Background: No one is buying encyclopedia (to the degree they used to) because the info is available free on the Internet and in much more detail from smarter people.

    I remember how ACORN (Association of Community Organizations for Reform Now) came out and said they were going to sue this person and that person for their investigative reporting.

    On March 22, 2010, ACORN announced it was closing its remaining affiliated state chapters and disbanding due to falling revenue.

    ACORN’s March 22, 2010 press release didn’t indicate the status of their progress in suing the investigative “reporters”.

  22. More …

    It turns out they failed to file page 1 with the application on August 31, 1991. Of course, page 1 usually has the reference to section 120 priority.

    At that time MPEP 608.01 said that if any page is missing, you don’t get a filing date. Apparently the USPTO viewed each page of an application as a “part”, hence, missing part no filing date. Government logic, you gotta love it.

    MPEP 608.01 no longer says that “if any application page is missing, you don’t get a filing date.” Simple logic says this is a moronic idea. Page 1 usually has information that you can add after the application is filed (either background info taken from the public domain or field information taken from the already filed application or 120 info added after filing per statute).

    On September 14, 1993, the USPTO sent out a your screwed letter indicating that a filing date wasn’t assigned.

    That set off a chain of events lasting through March 9, 2010 that resulted in six (!) petition decisions.

    Dickstein logically sought to renumber the pages (page 2 becomes page 1, etc.) to meet the bizzare “missing page rule” but the PTO would here none of it.

    Encyclopaedia Britannica is appealing it’s lower court decision and the last Petition decision affecting Dickstein only came out March 9, 2010.

    It seem premature to be ‘a blaming Dickstein.

  23. This Northerner/Chicago based company lost in part because the Southerner/defendants Magellan Navigation and Tomtom successfully moved the case in 2007 from Wiscoinsin to the famous W.D. Texas.

    The case is at
    link to scholar.google.com

    Section 120 requires “if it contains or is amended to contain a specific reference to the earlier filed application.”

    First,they exposed the king
    “Because the 2nd Application contains no specific reference to the 1st Application, the Court finds that the 3rd Application is not entitled to the benefit of the filing date of the 1st Application as the 2nd Application breaks the chain of priority.”

    Once they expose the king, they went in for the kill:

    “Therefore, the Court concludes that the effective filing dates of the Patents-in-Suit is no earlier than February 28, 1994, the date that the 3rd Application was filed with the Patent Office. As Britannica does not dispute that the Published Application was published on May 16, 1991, nearly three years before the 3rd Application was filed with the Patent Office, the Court finds that the Patents-in-Suit are invalid over the Published Application as prior art because the Published Application anticipates the asserted claims in the Patents-in-Suit under 35 U.S.C. § 102(b).”

    ++++++++++++++++++++++
    Prosecution History
    ++++++++++++++++++++++
    You can find the prosecution history with the decisions of the two Petitions at
    link to portal.uspto.gov
    using app no. 08/113,955

    REQUEST: The prosecution history is very long and you can see the sweat on the people behind it. If someone has time, would you please find the date after which it became too late to “amended to contain a specific reference to the earlier filed application.” Thanks.

  24. Abe: “Sad commentary on state of affairs at the PTO.”

    Sure was. 21 years ago.

  25. “So more than one firm has said, why bother with prep & pros?”

    Good. I hope more say that. More work for me.

  26. So patent prep and pros isn’t a cash cow. But there are plenty of places to goof, in ways where its easy to prove you goofed. Like missing a date, or failing to claim priority. So there’s huge risk.digital photo viewer
    digital frame review
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    lcd digital picture frame (Ironicallly, rarely is anyone sued for writing a bad patent.) In contrast, when you litigate, the patent is presumably worth a lot, and so the client is willing to spend a lot more. But it’s generally a good idea to use separate prosecution and litigation counsel. So more than one firm has said, why bother with prep & pros?

  27. Actually, Ken, this case illustrates exactly why some big GP firms keep away from patent prep and pros: lots of risk, little reward. There’s only so much you can bill a client for a new patent application – in most cases, it’s not known at the time of filing how much a particular application will be worth, and if the client has limited resources, as is the case most of the time, they want to limit how much they’ll spend on prep & pros. So patent prep and pros isn’t a cash cow. But there are plenty of places to goof, in ways where its easy to prove you goofed. Like missing a date, or failing to claim priority. So there’s huge risk. (Ironicallly, rarely is anyone sued for writing a bad patent.) In contrast, when you litigate, the patent is presumably worth a lot, and so the client is willing to spend a lot more. But it’s generally a good idea to use separate prosecution and litigation counsel. So more than one firm has said, why bother with prep & pros?

    If you take this thinking to its logical conclusion, there won’t be any prep & pros firms. But that won’t happen either: there will always be suckers like you and me who are willing to take the risks of prep & pros – maybe because we actually enjoy doing it :-)

  28. When will these big firms learn. Patent prosecutors are not loss leaders, although in this case they may have caused the leading losses to the firm, our job is very, very important. It is just as important as any litigator. In fact I dare say that when a patent prosecutor makes a mistake the consequences are far more dire than when a litigator makes a mistake. This is proof of that.

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