By Dennis Crouch
This post considers the meaning of priority in a continuation-in-part application and, in particular, when the claimed priority document can serve as prior art against the child.
Yesterday, I wrote about the majority opinion in Santarus v. Par Pharma (Fed. Cir. 2012). In that case, the patentee was fighting for the validity of its continuation-in-part (CIP) patent. A CIP is a patent filing that claims priority to a previously filed parent patent document but that also adds some amount of new material to the disclosure and/or claims. In CIP applications, priority date is determined on a claim-by-claim basis. Of course the priority date is important because it largely defines the scope of prior art available to potentially invalidate the patent claims.
In its decision, the Court of Appeals for the Federal Circuit ruled that some of the disputed claims were sufficiently disclosed in the parent filing and therefore properly claimed priority to that original filing date. Another set of claims, however, included matter that was added in the CIP. Those claims with new matter were not given priority to the original filing and thus had to rely on the filing date of the CIP application. Thus, for the claims with new matter any patent issued or document published more than one-year before the CIP filing date would count as prior art under 35 U.S.C. 102(b). See Paperless Accounting v. Bay Area Rapid Transit System, 804 F.2d 659, 665 (Fed. Cir. 1986).
At this point in the analysis, there is a major point of contention between the judges on one particular alleged prior art reference – whether the original patent filing counts as prior art against the child. The parent patent (really, the great grandparent patent) was filed in 1996 and issued as a patent in 1998. The descendent patent in being litigated in this case was not filed until 2003 but claims priority back to the original 1996 filing through a series of continuations and CIPs. Under normal circumstances, a 1998 patent would clearly serve as prior art against a 2003 filing under Section 102(b) as discussed above. However the system of priority claiming to parent applications is designed to overcome that problem by treating the child applications as if they had been filed on the same day as the original ancestor – so long as the procedures of 35 U.S.C. § 120 are followed. Interesting for the purposes of this discussion, Section 120 discusses priority at the patent level rather than claim-by-claim and asks whether the "application for patent" satisfies the written description and enablement requirements.
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 . . . shall have the same effect, as to such invention, as though filed on the date of the prior application. . .
In Santarus, the invention of only some of the claims were sufficiently disclosed in the original specification. For those claims that lack priority, the big question is whether and to what extent the original patent can be used as 102(b)/103(a) prior art as part of an obviousness rejection.
In a per curium opinion, the majority (Chief Judge Rader and Judge Moore) held that – since priority is determined on a claim-by-claim basis – that the original patent was prior art against the claims that lacked priority. Writing in dissent, Judge Newman argued that the priority should be given with regard to material disclosed in the priority document. Judge Newman's approach also breaks the patent apart but divides priority more precisely according to which material was found in the original disclosure. Under Judge Newman's approach, the original filing cannot be used as a priority document.
The panel majority forgets that "matter disclosed in the parent application is entitled to the benefit of the filing date of the parent application." Waldemar Link, GmbH & Co. v. Osteonics Corp., 32 F.3d 556 (Fed. Cir. 1994); see Litton Sys., Inc. v. Whirlpool Corp., 728 F.2d 1423 (Fed. Cir. 1984) ("The earlier filing date of the parent application pertains to material in the C-I-P application also disclosed in the prior application. 35 U.S.C. §120."). Instead, the panel majority relies upon the common subject matter from the '737 [original] patent disclosure to invalidate the '885 claims supported by that subject matter. This is incorrect, for the common subject matter in the '885 patent is entitled to the '737 filing date. That entitlement is not lost by issuance of the '737 patent.
Of course, majority did not "forget" as Judge Newman suggested. Rather, the majority found that the patentee had "waived any argument that the '737 patent is not prior art to the other claims" by failing to appeal that point.
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Although distinguishable, the most on-point decision relating to this issue may well be In re Chu, 66 F.3d 292 (Fed. Cir. 1995). In that case (and with Judge Newman on the panel), the Federal Circuit ruled that the asserted priority document could be used as prior art because all of the claims included added limitations not found in the priority document. The court wrote:
Chu is entitled to the benefit of the Doyle patent filing date only if the Doyle patent discloses the subject matter now claimed by Chu. This, however, is admitted by Chu not to be the case. In fact, Chu states that "the invention as now claimed[ ] was not described in the [Doyle] patent." Specifically, Chu concedes that "nothing in Doyle suggests that SCR catalyst be placed inside the bag filter." Therefore, independent claim 1, which includes this limitation, and dependent claims 2, 4, and 14, are not supported by the Doyle patent disclosure. Accordingly, Chu cannot obtain the benefit of the Doyle patent filing date for these claims and the Doyle patent was properly relied on as prior art.
The obvious difference between the present case and Chu is that some of the claims are supported by the priority document.