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Claiming Priority: Encyclopaedia Britannica v. Alpine

By: Jared T. Olson

On June 18, 2010, the Court of Appeals for the Federal Circuit (CAFC) issued Encyclopaedia Britannica v. Alpine (Case No. 2009-1544). Encyclopaedia Britannica, Inc. (Britannica) had alleged patent infringement against a group of Defendants based on U.S. Patent Nos. 7,051,018 (the ‘018 patent) and 7,082,437 (the ‘437 patent). The ‘018 and ‘437 patents related to a multimedia database search system for retrieving textual and graphical information.

During trial, the Defendants moved for summary judgment, alleging that the patents were anticipated under 35 U.S.C. § 102(b) by one of Britannica’s published foreign applications, WO91/06916 (the foreign application). The district court granted the Defendants’ motion, and Britannica appealed to the CAFC. Since it was undisputed that the foreign application anticipated the ‘437 and ‘018 patents in a substantive sense, the issue on appeal hinged on whether the ‘437 and ‘018 patents were entitled to a priority date no more than one year after the foreign application’s publication date of May 16, 1991.

The chain of priority claimed by the ‘437 and ‘018 patents was as follows:

Continuation of application No. 10/103,814, filed on Mar. 25, 2002, which is a continuation of application No. 08/202,985, filed on Feb. 28, 1994, now Pat. No. 6,546,399, which is a continuation of application No. 08/113,955, filed on Aug. 31, 1993, now abandoned, which is a continuation of application No. 07/426,917, filed on Oct. 26, 1989, now Pat. No. 5,241,671.

Referring to this chain of priority, the district court noted that U.S. Patent Application No. 08/113,955 (the ‘955 application) failed to properly claim priority of U.S. Patent Application No. 07/426,917 (the ‘917 application) under 35 U.S.C. § 120. Since this was viewed as a break in the chain of priority, the ‘437 and ‘018 patents could not benefit from the ‘917 application’s filling date. Consequently, since the ‘437 and ‘018 patents could, at best, be awarded the priority date of August 31, 1993, the patents were held to be anticipated by the foreign application.

In affirming the district court’s decision, the CAFC stated that 35 U.S.C. § 120 allows an application for a patent to “have the same effect, as to such invention, as though filed on the date of the prior application” (see pages 7 and 8). However, there are several requirements a later-filed application must meet in order to be entitled to this benefit under 35 U.S.C. § 120. These requirements are as follows:

(1) The invention described in the new application must be disclosed in an application previously filed in the United States;

(2) The application must be filed by an inventor or inventors named in the previously filed application;

(3) The application must be co-pending with the earlier application, or filed before the patenting or abandonment of or termination of proceedings on the first application; and

(4) The application must contain or be amended to contain a specific reference to the earlier filed application.

In light of the foregoing, the CAFC stated that the ‘955 application failed to satisfy the requirements of 35 U.S.C. § 120 since it did not contain a specific reference to the ‘917 application. In addition, the subsequently filed applications could not correct the deficiencies of the ‘955 application and restore its entitlement to priority. Therefore, it cannot be awarded the benefit of the ‘917 application’s filing date, and, neither can the ‘437 and ‘018 patents.