NAI torpedoes own patent with faulty §120 priority
| October 9, 2018
Natural Alternatives v. Iancu
October 1, 2018
Before Prost, Moore and Reyna. Opinion by Prost.
Summary:
Natural Alternatives International (“NAI”) asserted USP 8,067,381 (“the ‘381 patent” against Woodbolt Distributers, LLC (“Woodbolt”). The ‘381 patent asserted priority back to a parent, USP 5,965,596 (“the ‘596 patent”) filed in 1997. Woodbolt filed a request for inter partes reexamination asserting that the §120 priority chain was broken by an intermediate patents assertion of priority only to a provisional application filed in 2003. The Examiner and Patent Board agreed and rejected the claims of the ‘381 patent in view of the ‘596 patent as prior art. NAI appealed the Board’s decision. The CAFC affirmed the Examiner and Board on the basis of faulty §120 priority.
Details
a. Background
NAI had developed a patent family based on the ‘596 patent. The family is directed to increasing athletes endurance and includes a total of 8 applications ending with the ‘381 patent issuing in 2011. The timeline of the family is as follows:
- August 12, 1997: 1st application filed resulting in the ‘596 patent.
- Through 2003: 2nd to 4th applications filed and claiming §120 priority back to the ‘596 patent.
- April 10, 2003: a provisional application (“provisional”) was filed while the 4th application was still pending.
- November 18, 2003: 5th application was filed as a continuation-in-part (CIP) asserting priority to the 1st thru 4th application as well as the provisional.
- January 20, 2004 the 4th application issued.
- August 29, 2008: 6th application was filed claiming §120 priority to the 5th application (CIP).
- September 2, 2008: 5th applications priority was amended to only the provisional (i.e. removing the claim of priority to the 4th and preceding applications under §120).
- March 17, 2009: 5th application issued as USP 7,504,376 claiming benefit to only the provisional.
- Through 2011: The 6th through 8th applications were filed and issued all claiming priority back to the 1st application through the 5th The 8th application resulting in the ‘381 patent at issue.
NAI asserted the ‘381 patent against Woodbolt. Woodbolt filed a request for inter partes reexamination asserting that the §120 priority chain was broken by the 5th applications assertion of priority only to a provisional application filed in 2003. The Examiner and Patent Board agreed and rejected the claims of the ‘381 patent in view of the ‘596 patent as prior art. Specifically, the Board held that because the 8th application claimed priority to the 1st application via the 5th application, the Board determined that the 8th application (the ʼ381 patent) was also not entitled to the benefit of the 4th through the 1st applications. NAI appealed the Board’s decision.
b. Arguments
NAI asserted four arguments that the chain of §120 priority was not broken by the 5th applications amendment of priority to only the provisional.
First, priority to the first application was “vested” with the sixth application once the sixth application met all the criteria of § 120.
Second, although the 5th application waived priority to the 1st application this waiver is limited to only the 5th application and does not affect the remaining claims of priority to the subsequent 6th through 8th applications.
Third, the proper interpretation of §120 priority is as multiple fixed chains and not a single growing chain.
Fourth, the interpretation that §120 priority may be broken by an intermediate applications amendment of priority “limits an applicant’s ability to seek protection” when “amending [a] priority claim to gain [patent] term.”
c. Decision
The CAFC systematically found fault with each of NAI’s four arguments.
In response to NAI’s first argument that the §120 priority was vested, the Court instead emphasized that the burden of establishing priority is on the applicant. Citing PowerOasis, Inc. v. T-Mobile USA, Inc., 522 F.3d 1299, 1305–06 (Fed. Cir. 2008) the Court noted that the claims in a patent or patent application are not entitled to priority under § 120 at least until the patent owner proves entitlement. They also noted that it is not the responsibility of the governing authority to seek out and establish the priority claim. (“…examiners and adjudicators cannot be expected to scrutinize the prosecution history of an application and each parent application to determine whether the application would have met § 120’s requirements at any point during its pendency.”). The Court agreed with the Board that the 8th application did not meet the “specific reference” requirement of §120 as to the filing date of the 1st application because the 5th application lacked priority to the 1st application.
In the second argument NAI attempted to rely on M.P.E.P. §201.11 that a claimed benefit to an earlier filing date may later be altered in the instant application and that alteration applies only to the instant application and not any subsequent. The CAFC first noted that the M.P.E.P. does not have the force of law. Further, they determined that based on their review of M.P.E.P. §201.11 there is nothing in the text which limits the scope of waiver to only the instant application and that the procedure therein does not contemplate all possible consequences of waiving priority benefit.
The Court makes short work of NAI’s third argument, noting that they had not cited any support for the multiple linked chain interpretation of §120 priority. Instead the Court noted that it is the long-standing interpretation of priority as a single chain, per Godfrey v. Eames, 68 U.S. 317, 326 (1863); citing also Sticker Indus. Supply Corp. v. Blaw-Knox Co., 405 F.2d 90, 93 (7th Cir. 1968) (stating that “each application in a long chain grows out of the one immediately preceding it”).
The CAFC interprets the fourth argument as NAI suggesting that they need not trade the benefit of an earlier filing date in order to gain patent term. Agreeing with the PTO, the Court noted that NAI chose to change the benefit of the 5th application to that of the provisional to extend the patent term. This was NAI’s choice at the time, the consequence of which is the loss of the §120 priority. Noting the tradeoff between claiming §120 priority to avoid prior art and not limiting the patent term to 20 years from the date of the priority application, the Court concluded that NAI could not have it both ways and affirmed the Board.
Take away
- 120 priority must be clearly maintained throughout the entire chain in a family of patents. Applicants should always check their priority for each application when intending to establish an extended family.
- §120 priority cannot be established for later applications while simultaneously attempting to extend patent term for an intermediate application by abandoning its priority.
