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April 14, 2008

CIP Junk

PowerOasis had a dysfunctional family of patents, notably 6,466,658 and 6,721,400. The patents claim telecommunications access via a vending machine. PowerOasis went after T-Mobile, who successfully broke the family lineage, that these CIP children weren't entitled to their parent's birth date. On appeal, the written description requirement is recited as part and parcel of determining priority date for a CIP. There is no presumption that a CIP is entitled to an earlier filing date.

PowerOasis v. T-Mobile USA (CAFC 2007-1265)

'658 and '400 stem from earlier, unasserted, patents, being a continuation-in-part (CIP).

T-Mobile nailed the patents in summary judgment for invalidity in light of prior art, MobileStar Network. This owed to a claim construction of "customer interface," which related to new matter filed in the CIP.

Because the district court concluded that the '658 and '400 patents are not entitled to the effective filing date of the Original Application, the district court granted the motion for summary judgment of invalidity.

PowerOasis appealed.

PowerOasis argued that the burden of proof had been wrongly placed upon it to show entitlement to the original filing date, arguing that the burden always lay with the accuser of invalidity.

In short, PowerOasis argues the presumption of validity should include a presumption that claims in a CIP are all entitled to the earliest effective filing date.

PowerOasis had relied upon inappropriate case law, Ralston Purina Co. v. Far-Mar-Co, Inc., 772 F.2d 1570, 1573 (Fed. Cir. 1985), where, during an interference, the BPAI had made a priority determination.

[I]n this case, the PTO did not, at any point, make any determination with regard to the priority date of the various claims of the asserted patents.

In the absence of an interference or rejection which would require the PTO to make a determination of priority, the PTO does not make such findings as a matter of course in prosecution.4 The PTO's own procedures indicate that examiners do not make priority determinations except where necessary:

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.

M.P.E.P., Seventh Ed. (July 1998), at § 201.08. When neither the PTO nor the Board has previously considered priority, there is simply no reason to presume that claims in a CIP application are entitled to the effective filing date of an earlier filed application. Since the PTO did not make a determination regarding priority, there is no finding for the district court to defer to.

4 Determining the effective filing date each claim in a CIP application is entitled to can be quite complex. Since CIPs generally add new matter, the claims may be fully supported by the parent application or they may rely on the new matter for support. See Michael J. Meurer & Craig Allen Nard, Invention, Refinement and Patent Claim Scope: A New Perspective on the Doctrine of Equivalents, 93 Geo. L.J. 1947, 2012 n.24 (2005) (noting "[u]nder the new matter doctrine, revisions to the written description that occur after an application is filed may jeopardize the priority date derived from that application"). In fact, a CIP could contain different claims entitled to receive different effective filing dates in the same patent. There would be no reason for the PTO to undertake what could be a very time consuming written description analysis simply to pronounce the effective filing date of each claim, absent some dispute over it during prosecution.

T-Mobile had met its initial burden. PowerOasis must then respond.

T-Mobile established its prima facie case of invalidity with respect to the asserted claims. It is undisputed that the MobileStar Network was in public use more than one year prior to the June 15, 2000 filing date of the CIP Application. PowerOasis conceded that the MobileStar Network would infringe the claims of the '658 and '400 patents if it were in operation today. "[T]hat which would literally infringe if later in time anticipates if earlier." Schering Corp. v. Geneva Pharms., Inc., 339 F.3d 1373, 1379 (Fed. Cir. 2003) (internal citation omitted). Accordingly, PowerOasis has conceded that unless the asserted claims are accorded an earlier filing date than the 2000 CIP Application, the MobileStar Network is § 102(b) prior art. Once T-Mobile established by clear and convincing evidence that the MobileStar Network was § 102(b) prior art to the asserted claims of the '658 and '400 patents, the burden was on PowerOasis to come forward with evidence to the contrary. The district court therefore correctly placed the burden on PowerOasis to come forward with evidence to prove entitlement to claim priority to an earlier filing date.

Then PowerOasis argued that there was adequate description in the parent application to support the asserted '658 and '400 claims. The CAFC laid out the written description requirement of § 112 ¶ 1.

Application of the written description requirement is central to the resolution of this appeal. "It is elementary patent law that a patent application is entitled to the benefit of the filing date of an earlier filed application only if the disclosure of the earlier application provides support for the claims of the later application, as required by 35 U.S.C. § 112." In re Chu, 66 F.3d 292, 297 (Fed. Cir. 1995); see also Augustine Med., Inc. v. Gaymar Indus., Inc., 181 F.3d 1291, 1302-03 (Fed. Cir. 1999) ("Different claims of [a CIP] application may therefore receive different effective filing dates. . . . Subject matter that arises for the first time in [a] CIP application does not receive the benefit of the filing date of the parent application.").

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 date sought, [the inventor] was in possession of the invention." Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563-64 (Fed. Cir. 1991) (emphasis in original). While a prior application need not contain precisely the same words as are found in the asserted claims, see Eiselstein v. Frank, 52 F.3d 1035, 1038 (Fed. Cir. 1995); Purdue Pharma LP v. Faulding Inc., 230 F.3d 1320, 1323 (Fed. Cir. 2000) (holding that the disclosure does not have to provide in haec verba support in order to satisfy the written description requirement), the prior application must indicate to a person skilled in the art that the inventor was "in possession" of the invention as later claimed. Ralston, 772 F.2d at 1575; see also Janice M. Mueller, Patent Misuse Through the Capture of Industry Standards, 17 Berkeley Tech. L.J. 623, 638 (2002) ("The [written description] requirement operates as a timing mechanism to ensure fair play in the presentation of claims after the original filing date and to guard against manipulation of that process by the patent applicant."). "Entitlement to a filing date does not extend to subject matter which is not disclosed, but would be obvious over what is expressly disclosed." In re Huston, 308 F.3d 1267, 1277 (Fed. Cir. 2002) (quoting Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1571-72 (Fed. Cir. 1997)). In Lockwood, we held:

While the meaning of terms, phrases, or diagrams in a disclosure is to be explained or interpreted from the vantage point of one skilled in the art, all the limitations must appear in the specification. The question is not whether a claimed invention is an obvious variant of that which is disclosed in the specification. Rather, a prior application itself must describe an invention, and do so in sufficient detail that one skilled in the art can clearly conclude that the inventor invented the claimed invention as of the filing date sought.

107 F.3d at 1572. We have explained that to satisfy the written description requirement, "the missing descriptive matter must necessarily be present in the [original] application's specification such that one skilled in the art would recognize such a disclosure." Tronzo v. Biomet, Inc., 156 F.3d 1154, 1159 (Fed. Cir. 1998); see also Martin v. Mayer, 823 F.2d 500, 505 (Fed. Cir. 1987) (holding that the written description requirement is "not a question of whether one skilled in the art might be able to construct the patentee's device from the teachings of the disclosure. . . . Rather, it is a question whether the application necessarily discloses that particular device") (emphasis in original). This requires that the written description actually or inherently disclose the claim element. See Turbo Care Div. of Demag Delaval Turbomachinery Corp. v. Gen. Elec. Co., 264 F.3d 1111, 1118-20 (Fed. Cir. 2001) (holding that to comply with the written description requirement the location of the spring must be actually or inherently disclosed; that the location may be obvious from the disclosure is not enough); Tronzo, 156 F.3d at 1159 (holding a claim invalid for failure to satisfy the written description requirement when the specification did not disclose all cup shapes literally or "inherently"). 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. See Invitrogen Corp. v. Clontech Labs., Inc., 429 F.3d 1052, 1072-73 (Fed. Cir. 2005).

PowerOasis played weak cards.

Entitlement to the filing date of the Original Application would allow PowerOasis to antedate MobileStar Network, thereby removing it as a reference against the claims. The only evidence PowerOasis came forward with to antedate the MobileStar Network was the Original Application and the declaration of its expert witness.

The CAFC concurred with the district court, that the CIP had put coin in the vending machine user interface, adding new matter substantive to claim construction. The appeals court pays scant credence to expert witnesses who lack substance and wander into the weeds, as in this case.


One cannot consider this ruling anything that PowerOasis counsel could not have foreseen, both lack of parentage and invalidating prior art. These were junk patents from the get-go that a respectable firm exercising due diligence would have caught.

Posted by Patent Hawk at April 14, 2008 1:10 AM | Claim Construction


One of the [few] beneficial effects the new rules would have had was to force CIP applicants to designate what claims get the parent application's priority date. That rule would benefit everybody. When a CIP enters international prosecution, they must drive the examiners nuts sorting this out.

What's the point of a CIP anyway? You save a few hundred bucks in filing fees, maybe. Your new matter doesn't get the benefit of the early priority date, and the patent still expires 20 years from the priority date that you don't get the benefit of. So you are blowing off years of patent life for the new matter in exchange for a few hundred bucks. Sounds like a bad deal.

Posted by: Babel Boy at April 14, 2008 8:34 AM

Greetings Babel Boy, and may I ask, which Examiners are going nuts? Paris Convention (which the USA signed by the way) usually despatches the CIP family to oblivion. The default would be that the parent wipes out patentability of all matter in the CIP. Burden is on Applicant, to explain what in the CIP is the right stuff to survive. Instructing US atty going nuts, I fear, but nobody in Europe.

Posted by: MaxDrei at April 14, 2008 11:27 AM

If we keep chipping away at 'em, Max, we should be able to bring these USPTO-dogs around. (OTOH, Heinlein warned never try and teach a pig to sing. It wastes your time and pisses the pig off.)

Check me on this: If one files first in the US, the PCT or EPO application must be filed in one year, long before the CIP is normally filed. Then once the CIP is filed, a new PCT or EPO on just the new matter is filed within 1 year of the CIP. So there normally shouldn't be much of a problem going CIP -> PCT.

But here is what I've been hearing: Say I file in US. 6 months later my client has a bunch of new stuff, doesn't need most of the original stuff, and I need to file a preliminary amend anyway because I cocked-up the claim numbers. So instead of filing a CIP, I file a PCT with the amendments, new matter/claims included using the US priority date and nominating the US. Then I abandon the application in the US before it's published.

Now when I enter the US national phase, my priority date still goes back through the PCT to the original US filing date (for the original matter only). No?

I think what you're saying is that in the PCT or EPO I will have to make a record of what matter gets the original US filing date, and what matter only gets the PCT filing date. Of course, I have to file a certified copy of the US application in the PCT, so it's pretty obvious. And that's OK, and it's fair, so long as adding new matter when going from US -> PCT doesn't invalidate the whole PCT. Clearly adding the new matter after you hit the PCT is verbotten.

If you're starting in the US and your client knows he's going international, this seems a better approach than filing a CIP in the US and then one or two PCTs based on both the original and the CIP. Use the PCT as the CIP, in essence.

Posted by: Babel Boy at April 14, 2008 2:11 PM

Use the PCT as the CIP? Seems OK to me Babel Boy (at least while the PCT requires no fees to be paid for more than 10 or 15 or 50 claims). The certified copy thing just happens automatically these days, doesn't it? Applicant pays a fee and the links between Patent Office computers do the rest. Which International Search Authority are you going to choose, when filing your PCT at the USPTO. No, don't answer that. Dumb question.

Posted by: MaxDrei at April 14, 2008 9:45 PM