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When priority not decided at PTO patentee bears burden of showing entitlement to earlier application

By McKee, Voorhees & Sease, P.L.C.

In a decision Friday, the Federal Circuit affirmed a district court's grant of summary judgment of invalidity with respect to all asserted claims of two patents.  More particularly, the court held that the claims of the patents were not entitled to the priority date of an earlier-filed application, and were therefore anticipated by intervening prior art.  The original application was filed in 1997, however the court determined that written description support was not found in the application family until a 2000 CIP application.  As a result, a prior product in public use in 1999 (which was the predecessor of the accused product) anticipated the asserted claims.

Of particular interest, however, was the Federal Circuit's treatment of the presumption of validity on appeal.  The district court held that because the issue of priority was never addressed by the USPTO, the patentee had the burden to show it was entitled to the earlier priority date.  The Federal Circuit agreed, stating:

When neither the PTO nor 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.

Of course, the logic of this holding could easily be extended to other issues not addressed by the PTO, such as whether claims of a patent are valid over a reference not considered during prosecution.  As Professor Crouch points out at Patently-O, this issue is the subject of a petition for certiorari currently before the Supreme Court in the Microsoft v. z4 Technologies case.  The response to Microsoft's petition for certiorari is due May 1.

More concerning PowerOasis, Inc. v. T-Mobile USA, Inc. after the jump.

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Full post as published by FileWrapper on April 14, 2008 (boomark / email).