Intellectual Property Law

Priority claim contained in data sheet and appended via certificate of correction valid

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

In a decision yesterday, the Federal Circuit vacated a district court's denial of a preliminary injunction.  The district court denied the injunction on the basis of a substantial question of validity of the patent.  The accused infringer alleged the patent was invalid under 35 U.S.C. § 102(b) based on a prior public use by the patentee, and argued that created a substantial question regarding the validity of the patent.  The patent issued from an application that included a reference in the application data sheet to a provisional application with identical specification and claims, although the reference did not initially appear on the face of the issued patent, but was instead added via a certificate of correction.  The patentee initially did not dispute the critical date used by the accused infringer (which was based on the nonprovisional filing date), but later realized the proper critical date should be based on the provisional filing date, and pointed this out to the district court.  The earlier priority date would prevent the asserted public use from being a statutory bar.  The district court held there was a substantial issue regarding whether the patent was entitled to the priority date, in the main because the patentee had initially not contested the accused infringer's assertion regarding the applicable critical date.

The Federal Circuit vacated.  The court noted it was undisputed that the accused infringer was aware of the provisional application, and a copy of the patent (and the certificate of correction adding the reference to the provisional application) was attached to the complaint.  Counsel for the patentee conceded not raising the issue earlier was an "oversight," and the court held that in such a situation, it was improper for the district court to have found a substantial question of validity based on the patentee's failure to raise the issue earlier in the preliminary injunction proceedings.  The court then addressed the merits of the accused infringer's assertion that the patent was not entitled to the provisional application's priority date, finding them to be without merit.  As a result, the Federal Circuit held the patent was entitled to the earlier priority date, vacated the denial of the injunction, and remanded the case for the district court to consider whether a preliminary injunction is appropriate in light of the correct priority date.

More detail of E.I. du Pont de Nemours & Co. v. MacDermid Printing Solutions, L.L.C. after the jump.

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Full post as published by FileWrapper on May 15, 2008 (boomark / email).