CAFC: Patentee Has Burden To Establish Priority of CIP

PowerOasis Inc. v. T-Mobile USA, Inc., (2007-1265), April 11, 2008 (link)

A CIP patent asserted by PowerOasis was challenged in the district court over prior art that became available before the CIP, but after the filing date of the parent patent. After finding that the parent application did not provide support for the subject matter claimed in the CIP (i.e., could not be relied on for priority), the district court granted summary judgment of invalidity in favor of T-Mobile.

On appeal, PowerOasis argued that it was improper for the district court to place the burden on the patentee to show that it was entitled to the priority date of the Original Application. Additionally PowerOasis argued that the district court erred in denying priority, and, at a minimum, there was general issue of material fact that prevents summary judgment of invalidity.

The CAFC disagreed, stating that, unless priority was addressed by the PTO during examination (or, during an interference proceeding), the burden rests on the patentee to establish priority. This is primarily because such determinations are not normally made by the PTO:

Unless the filing date of the earlier nonprovisional application is actually needed, for example, in the case of an interference or to overcome a reference, there is no need for the Office to make a determination as to whether the requirement of 35 U.S.C. 120, that the earlier nonprovisional application discloses the invention of the second application in the manner provided by the first paragraph of 35 U.S.C. 112, is met and whether a substantial portion for all of the earlier nonprovisional application is repeated in the second application in a continuation-in-part (MPEP §201.08).

According to the CAFC, “[s]ince the PTO did not make a determination regarding priority, there is no finding for the district court to defer to.”

On the written description requirement, the CAFC added:

To satisfy the written description requirement the disclosure of the prior application must “convey with reasonable clarity to those skilled in the art that, as of the filing dat sought, [the inventor] was in possession of the invention.” . . . While a prior application need not contain precisely the same words as found in the asserted claims . . the prior application must indicate to a person skilled in the art that the inventor was ‘in possession’ of the invention as later claimed. . . . Entitlement to a filing date does not extend to subject matter which is not disclosed, but would be obvious over what is expressly disclosed. . . . Compliance with the written description
requirement is a question of fact but is amenable to summary judgment in cases where no reasonable fact finder could return a verdict for the non-moving party.

Since the CAFC did not find support in the original application for the disputed feature, the court affirmed the denial of priority and findings of invalidity.

Regarding expert testimony that declared that the disputed features were "well known to those of ordinary skill," the CAFC rebutted that "[a]t best, this is a statement that it would be obvious to substitute a customer laptop for the user interface disclosed on the vending machine. Obviousness simply is not enough; the subject matter must be disclosed to establish possession."

AFFIRMED

PowerOasis v. Wayport, Inc., (2007-1369), April 11, 2008 - in a related case, the CAFC vacated SJ of noninfringement, and remanded the case in light of the finding of invalidity in the T-Mobile case (link)