Inventor’s Own Provisional Application Can Be Prior Art Against Inventor’s Own US National Stage Application
| June 10, 2022
Konda v. Flex Logix Technologies, Inc.
Decided: May 6, 2022
per curiam: Taranto, Clevenger, Chen (May 6, 2020).
Summary:
In Flex Logic’s inter partes reviews (IPRs), the PTAB agreed with Flex Logic in that the ‘605 PCT and the ‘394 Provisional application did not support the challenged claims of the ‘523 patent, and therefore, the ‘523 patent could not benefit from the earlier filing dates of the ‘605 PCT and the ‘394 Provisional application and that the ‘523 patent benefited only from its filing date of November 22, 2009. The PTAB agreed that a prior art ‘756 PCT publication (another one of Konda’s earlier patent applications published on September 12, 2008) and the ‘394 provisional application (that was incorporated by reference into the ‘756 PCT) rendered all the challenged claims unpatentable. The only issue on appeal was whether the ‘394 Provisional is publicly available to qualify as prior art. The Federal Circuit held that Konda’s US ‘394 Provisional application that is incorporated by reference in a publicly available publication of a PCT application is “publicly available” as prior art under pre-AIA 35 USC §102(b).
Background:
Konda’s US Patent No. 8,269,523 issued from US patent application s/n 12/601,275 (the ‘275 application) filed November 22, 2009. The ‘275 application is the national phase entry of PCT application no. PCT/US2008/064605 (the ‘605 PCT) filed May 22, 2008. The ‘275 application also claimed priority back to Provisional application no. 60/940,394 (the ‘394 Provisional) filed May 25, 2007. Flex Logic’s IPRs relied upon WO 2008/109756 (the ‘756 PCT) and the ‘394 Provisional as prior art against the challenged claims of the ‘523 patent. The ‘756 PCT is another one of Konda’s earlier patent applications that incorporated by reference the ‘394 Provisional. The ‘756 PCT was published on September 12, 2008.
Procedural History:
Two inter partes reviews (IPRs) were filed by Flex Logic, addressing different sets of claims in Konda’s US Patent No. 8,269,523 (the ‘523 patent). The PTAB’s Final Decision in the consolidated IPRs found that the ‘605 PCT and the ‘394 Provisional applications did not have support for the claims of the ‘523 patent as required by 35 USC §112. Accordingly, the ‘523 patent only benefited from its filing date of November 22, 2009. The PTAB also found that all the challenged claims to be unpatentable as being anticipated or obvious over the ‘756 PCT published on September 12, 2008 and the ‘394 provisional application that was incorporated by reference into the ‘756 PCT. The only issue on appeal to the Federal Circuit was whether the ‘394 Provisional was publicly available to qualify as prior art under pre-AIA 35 USC §102(b).
Relevant Statute and Rules:
35 U.S.C. 122(a):
(a) CONFIDENTIALITY.— Except as provided in subsection (b), applications for patents shall be kept in confidence by the Patent and Trademark Office and no information concerning the same given without authority of the applicant or owner unless necessary to carry out the provisions of an Act of Congress or in such special circumstances as may be determined by the Director
37 CFR 1.14(a)(1)(vi):
(vi) Unpublished pending applications (including provisional applications) that are incorporated by reference or otherwise identified. A copy of the application as originally filed of an unpublished pending application may be provided to any person, upon written request and payment of the appropriate fee (§ 1.19(b)), if the application is incorporated by reference or otherwise identified in a U.S. patent, a statutory invention registration, a U.S. patent application publication, an international publication of an international application under PCT Article 21(2), or a publication of an international registration under Hague Agreement Article 10(3) of an international design application designating the United States. The Office will not provide access to the paper file of a pending application, except as provided in paragraph (c) or (i) of this section.
37 CFR 1.14(c):
(c) Power to inspect a pending or abandoned application. Access to an application may be provided to any person if the application file is available, and the application contains written authority (e.g., a power to inspect) granting access to such person. The written authority must be signed by:
(1) The applicant;
(2) A patent practitioner of record;
(3) The assignee or an assignee of an undivided part interest;
(4) The inventor or a joint inventor; or
(5) A registered attorney or agent named in the papers accompanying the application papers filed under § 1.53 or the national stage documents filed under § 1.495, if a power of attorney has not been appointed under § 1.32.
Decision:
There is no dispute that the ‘756 PCT is an international patent application that incorporated by reference the ‘394 Provisional application, thereby meeting the requirements of 37 CFR 1.14(a)(1)(vi) for public accessibility to the ‘394 Provisional application.
Konda relied on the last sentence of 37 CFR 1.14(a)(1)(vi) whereby “The Office will not provide access to the paper file of a pending application, except as provided in paragraph (c) or (i) of this section.” And, Konda did not provide any written authority pursuant to 37 CFR 1.14(c) to provide access the ‘394 Provisional application. Konda also relied on MPEP 103(VII) (8th ed., rev. July 7, 2008) stating that access to provisional applications “will only be given to parties with written authority from a named inventor, the assignee of record, or the attorney or agent of record.”
However, the Federal Circuit noted the last sentence of 37 CFR 1.14(a)(1)(vi) pertains only to access to the “paper file” of the pending application, which the Federal Circuit interprets to mean the “whole file history,” which the regulation clearly distinguishes from the “application as originally filed.” It is the “application as originally filed” to which 37 CFR 1.14(a)(1)(vi) grants public accessibility when that “application as originally filed” was incorporated by reference in a PCT application. The last sentence of 37 CFR 1.14(a)(1)(vi) and 37 CFR 1.14(c) do not apply to the “application as originally filed.” There was no need for Konda’s written authorization to access that “application as originally filed.”
As for the MPEP, the court noted that the MPEP “does not have the force of law.” The court also noted that MPEP 103 further stated that provisional applications were “also available in the same manner as any other application” “thereby permitting the access authorized under 37 CFR 1.14(a)(1)(vi).”
Takeaways:
- If, following the inventor’s incorporation by reference preferences, the ‘605 PCT in the subject ‘523 patent family incorporated by reference the ‘756 PCT, perhaps 112 support could have been argued for the ‘523 claims. Nevertheless, as can be appreciated from the result of this case (an inventor’s own provisional application was used as prior art against his own national stage application!), applicants must be careful when incorporating by reference applications from a different patent application family.
- In the PTAB’s Final Decision, the entire 112 support discussion is premised on case law regarding entitlement to the benefit of the filing date of an earlier filed application only if the disclosure of the earlier filed application provides support for the claims of the later application. And, somehow, the national stage application of an international PCT application is only accorded the benefit of its “filing date” of the national stage ‘275 application. However, the international ‘605 PCT application is not “an earlier filed application” from the national stage application thereof. As noted in MPEP 1893.03(b):
An international application designating the U.S. has two stages (international and national) with the filing date being the same in both stages. Often the date of entry into the national stage is confused with the filing date. It should be borne in mind that the filing date of the international stage application is also the filing date for the national stage application.
Pursuant to 35 USC 363:
An international application designating the United States shall have the effect, from its international filing date under Article 11 of the treaty, of a national application for patent regularly filed in the Patent and Trademark Office.
Similarly, PCT Article 11(3) provides that…
an international filing date shall have the effect of a regular national application in each designated State as of the international filing date, which date shall be considered to be the actual filing date in each designated State.
Here, the ‘275 national stage application appears to be identical to the ‘605 PCT application. Nevertheless, this issue was never challenged before the PTAB nor the Federal Circuit.
Tags: Earliest effective date > Incorporation by reference > PCT application > Publicly available as prior art
Prosecution Refreshers – Incorporating Foreign Priority Application by Reference, Translations, Means-Plus-Function
| October 7, 2021
Team Worldwide Corp. v. Intex Recreation Corp.
Decided September 9, 2021
Opinion by: Chen, Newman, and Taranto
Summary:
The claimed “pressure controlling assembly” was found to be a means-plus-function claim element. Because the specification did not disclose any corresponding structure to perform at least one of the associated functions for this pressure controlling assembly, the claim was held to be indefinite. The specification did not disclose any corresponding structure because the portions of the foreign priority application (that disclosed corresponding structure) were omitted in the US application, and there was no incorporation by reference of the foreign priority application.
Procedural History:
This is a non-precedential Federal Circuit decision for an appeal from a PTAB post-grant review (PGR) decision. Intex petitioned for a PGR on Team Worldwide’s USP 9,989,979 patent (filed Aug. 29, 2014). The ‘979 patent is a divisional application of an earlier pre-AIA application. The ‘979 patent, filed after the March 16, 2013 effective date for AIA, is subject to AIA’s PGR unless each claim is supported in its pre-AIA parent application under 35 USC §112(a) for written description support and enablement. However, the earlier pre-AIA application at least did not have written description support for the claimed “pressure controlling assembly.” Thus, the ‘979 patent was subject to AIA’s post-grant review. The PTAB held that “pressure controlling assembly” is a means-plus-function (MPF) claim element subject to interpretation under 35 USC §112(f) and the ‘979 claims are invalid as indefinite under 35 USC §112(b) because there is no corresponding structure disclosed in the specification for at least one of the claimed functions thereof. The Federal Circuit affirmed.
Background:
The ‘979 patent relates to an inflator for an air mattress. Representative claim 1:
1. An inflating module adapted to an inflatable object comprising an inflatable body, the inflating module used in conjunction with a pump that provides primary air pressure and comprising:
a pressure controlling assembly configured to monitor air pressure in the inflatable object after the inflatable body has been inflated by the pump; and
a supplemental air pressure providing device,
wherein the pressure controlling assembly is configured to automatically activate the supplemental air pressure providing device when the pressure controlling assembly detects that the air pressure inside the inflatable object decreases below a predetermined threshold after inflation by the pump, and to control the supplemental air pressure providing device to provide supplemental air pressure to the inflatable object so as to maintain the air pressure of the inflatable object within a predetermined range.
The ‘979 patent describes the pressure controlling assembly almost exclusively in functional terms, including the functions recited in claim 1. There is one sentence that states “[a]fter the supplemental air pressure providing device is in a standby mode, a pressure controlling assembly 121/122 as described starts monitoring air pressure in the inflatable object” (col. 4, lines 48-51). No explanation is provided about elements 121/122 shown in Fig. 2a:
Both the ‘979 and its parent application (having the same specification) claim foreign priority from CN 201010186302. However, neither US application incorporates the CN ‘302 application by reference.
According to a translation of CN ‘302 application, CN ‘302 does describe an “air pressure control mechanism” that includes “air valve plate 121” and “chamber 122” which move in response to changing air pressure within the attached inflatable device. CN ‘302 further describes a switch 13, see Fig. 1 (same drawings in both CN ‘302 and the ‘979 patent and its parent):
According to CN ’302, as translated, “[w]hen the air pressure value inside the inflatable product is greater than the reset mechanism’s preset value, the air pressure control mechanism shifts upward, the second switch 13 is closed by the projection pressing against it, and the automatic reinflation mechanism halts reinflation” and “[w]hen the air pressure value inside the inflatable product is less than the reset mechanism’s preset value, the air pressure control mechanism shifts downward, the projection is removed from second switch 13 causing it to disconnect, and the automatic reinflation mechanism starts reinflation.”
Neither the ‘979 patent, nor its parent application, includes the above-noted structures of an air valve plate for reference number 121 nor the chamber for reference number 122. Neither US applications mention any switch 13 nor the above-noted operations involving the switch 13 for starting or stopping reinflation. Reference number 13 is not at all described in the ‘979 specification, nor in its parent’s specification.
The court also noted that the original specification in both the ‘979 patent and its parent application did not even mention reference numbers 121 and 122. It was added to the specification during prosecution to overcome an Examiner’s drawing objection for including those reference numbers in a drawing that were not described in the specification.
MPF Primers:
- If a claim does not recite the word “means,” it creates a rebuttable presumption that §112(f) does not apply.
- A presumption against applying §112(f) is overcome “if the challenger demonstrates that the claim term fails to recite sufficiently definite structure or else recites function without reciting sufficient structure for performing that function.” Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1348 (Fed. Cir. 2015) (en banc).
Decision:
Claim construction is reviewed de novo, considering the intrinsic record, i.e., the claims, specification, and prosecution history, and any extrinsic evidence.
For the claim itself, like the word “means,” the word “assembly” is a generic nonce word. “Like the claim term ‘mechanical control assembly’ in MTD Products, ‘the claim language reciting what the [pressure] control[ing] assembly is ‘configured to” do is functional,’ and thus the claim format supports applicability of §112(f).”
As for the specification, the court agrees with the PTAB that the specification’s “mere reference to items 121 and 122, without further description, does not convey that the term ‘pressure controlling assembly’ itself connotes sufficient structure.” The court also noted that the specification does not indicate that the patentee acted as his own lexicographer to define the “pressure controlling assembly” to be a structural term.
As for the prosecution history, the fact that the examiner cited prior art pressure sensors as disclosing the claimed “pressure controlling assembly” does not establish that the term itself connotes structure. While a pressure sensor may perform some of the functions of the “pressure controlling assembly,” the examiner’s reliance on a pressure sensor says nothing about the term itself connoting structure. The court also rejected giving weight to the fact that the examiner did not apply §112(f) for interpreting the subject term.
As for extrinsic evidence, Team’s expert testimony was deemed conclusory and unsupported by evidence. Team’s expert relied on a dictionary definition of “pressure control” – any device or system able to maintain, raise, or lower pressure in a vessel or processing system. However, such a definition sheds no light on “pressure controlling assembly” being used in common parlance to connote structure. Even the purported admissions by Intex’s expert (i.e., that the term controls pressure and is an assembly, that devices exist that sense or control pressure, and that a cited prior art reference depicted “an apparatus that controls the pressure”) merely indicates that devices existed that can perform some of the functions of the “pressure controlling assembly.” However, none of the experts’ testimony establish that “pressure controlling assembly” is “used in common parlance or by [skilled artisans] to designate a particular structure or class of structures.”
As for prior art references that refer to a “pressure controlling assembly,” the court agreed with the PTAB’s assessment that such extrinsic evidence “demonstrates, at best, that the term is used as a descriptive term across a broad spectrum of industries, having a broad range of structures. The record does not include sufficient evidence to demonstrate that the term ‘pressure controlling assembly’ is used in common parlance or used to designate a particular structure by [the skilled artisan].”
As for the functions claimed for the “pressure controlling assembly,” there was no dispute:
- monitoring air pressure in the inflatable object after the inflatable body has been inflated by the pump;
- detecting that the air pressure inside the inflatable object decreases below a predetermined threshold after inflation by the pump;
- automatically activating the supplemental air pressure providing device when the pressure controlling assembly detects that the air pressure inside the inflatable object decreases below the predetermined threshold after inflation by the pump; and
- controlling the supplemental air pressure providing device to provide supplemental air pressure to the inflatable object so as to maintain the air pressure of the inflatable object within a predetermined range.
The court agrees with the PTAB that the patent fails to disclose any corresponding structure for at least #3. Team’s expert’s conclusory testimony that a skilled artisan would recognize that 121 and 122 in Fig. 2a interacts with element 13 in Fig. 1 to activate the supplemental air pressure providing device is not supported by any evidence. Nothing in the patent describes 13 to be a switch, much less how it interacts with 121 and 122, whatever those are.
As for the fact that CN ‘302 is part of the prosecution history, the court noted that the content of any document or reference submitted during prosecution by itself is not sufficient to remedy this missing disclosure of corresponding structure. In reference to B. Braun Medical, Inc. v. Abbott Lab., 124 F.3d 1419, 1424 (Fed. Cir. 1997), Braun’s reference to the “prosecution history” is in reference to affirmative statements made by the applicant during prosecution (such as in an Amendment or in a sworn declaration regarding the relationship between something in a drawing and a claimed MPF claim element) linking or associating corresponding structure with a claimed function. “[W]e decline to hold that a Chinese-language priority document, whose potentially relevant disclosure was omitted from the United States patent application family, provides a clear link or association between the claimed ‘pressure controlling assembly’ and any structure recited or disclosed in the ‘979 patent.”
Takeaways:
- This case is a good refresher for MPF interpretation.
- 37 CFR 1.57 addresses the situation where there is an inadvertent omission of a portion of the specification or drawings, by allowing a claim for foreign priority to be considered an incorporation by reference as to any inadvertently omitted portion of the specification or drawings from that foreign priority application. 37 CFR 1.57(a) (pre-AIA) would apply to the parent application of the ‘979 patent. 37 CFR 1.57(b) (AIA) would apply to the application leading to the ‘979 patent. However, any amendment made pursuant to 37 CFR 1.57 must be made before the close of prosecution. It is unclear why the applicant did not use the provisions of 37 CFR 1.57 in this case. Once the application is issued into a patent, as was the case here, the incorporation by reference provisions of 37 CFR 1.57 no longer apply. As noted in MPEP 217(II)(E), “In order for the omitted material to be included in the application, and hence considered to be part of the disclosure, the application must be amended to include the omitted portion. Therefore, applicants can still intentionally omit material contained in the prior-filed application from the application containing the priority or benefit claim without the material coming back in by virtue of the incorporation by reference of 37 CFR 1.57(b). Applicants can maintain their intent by simply not amending the application to include the intentionally omitted material.” Presumably, because the applicant for the ‘979 patent and its parent never took advantage of 37 CFR 1.57 during prosecution, the missing subject matter was treated as “intentionally omitted material” and does not come back into the patent by virtue of 37 CFR 1.57.
- The specification of the ‘979 patent and of its parent did not include any incorporation by reference of its foreign priority application. The applicant also did not take advantage of 37 CFR 1.57 during prosecution (see above). Accordingly, the foreign priority application was deemed “omitted from the United States patent application family.” And, just having it in the file wrapper at the USPTO is still not enough. The applicant, during prosecution, must correct any missing link between any MPF claim elements and its corresponding structure in the specification. Here, IF the Chinese priority application had been incorporated by reference or IF 37 CFR 1.57(a) (pre-AIA) and 37 CFR 1.57(b) (AIA) were used, an amendment to the specification to ADD inadvertently omitted English language translations of the corresponding structure from the priority application could have been submitted. Such amendments to the specification would not be deemed “new matter” because of the incorporation by reference of the foreign priority application.
- Always check the English language translation. It seems odd that no one noticed the omission of any description of the elements 121, 122, and 13 from the Chinese priority application. During the prosecution of the parent and the ‘979 patent, the Examiner identified at least a dozen different reference numbers that were not described in the specification. When preparing an application, or translating one, the specification should be checked for a description for each and every reference number used in the drawings.
Tags: Foreign Priority > Incorporation by reference > means-plus-function > translation
CAFC looks to complete disclosure of patent at issue and its related patents to counter patent owner’s arguments based on cherry-picking.
| February 8, 2018
Paice LLC v. Ford Motor Company
February 1, 2018
Before Lourie, O’Malley, and Taranto. Opinion by O’Malley
Summary
Due to error in the PTAB’s interpretation of incorporation by reference, the CAFC vacated the PTAB’s obviousness determination with respect to claims that relied on the incorporation by reference for their written description, and found substantial evidence to affirm the PTAB’s findings of obviousness of all other claims.
Tags: claim construction > Incorporation by reference > obviousness > written description
When should incorporation by reference language be taken care of?
| July 11, 2012
Hollmer v. Harari
June 7, 2012
Panel: Prost, Mayer, O’Malley. Opinion by Prost
Summary
During the interference proceedings, Harari relied on the disclosure of 07/337,579 (‘579 application) which had been originally incorporated by the earliest 3rd great grandparent application 07/337,566 (‘566 application) of the subject application 09/310,880 (‘880 application). The ‘566 application included the disputed incorporation statement and had been abandoned. Two intervening applications copied the same statement and had been patented. The subject application (‘880 application) included the copy of the statement, but Harari corrected the incorporation statement by preliminary amendment which, according to Hollmer, was new matter because it would newly introduce the disclosure of ‘579 application. CAFC decided for Harari by applying the relaxed “reasonable examiner” standard (Harari I, 602 F.3d 1348). However, Harari was not allowed to claim the benefit of the filing date of the ‘566 application because CAFC found that the intervening applications in the chain leading back to the earlier ‘566 application did not comply with the written description requirement due to the ambiguous incorporation statement by applying the strict “person of ordinary skill” standard.
本件は、米国特有の”incorporation by reference”プラクティスに関するものである。インターフェアレンス手続において、Harariは最先の出願(566出願)が”incorporation by reference”によって引用した米国出願(579出願)の開示内容に依存した。566出願は不十分な”incorporation by reference”の記述を含んでいたがそのまま放棄された。566出願の出願日の利益を主張する出願がその後5代に渡って続き、全ての出願は当該不十分な”incorporation by reference”の記述をコピーしていた。Harariは5代目の本願(880出願)を予備補正して”incorporation by reference”の記述を訂正したが、2代目と3代目の中間の出願はそのような訂正を経ずに特許になってしまっていた。本願に関する予備補正が新規事項の追加になるか否かの争いについて、CAFCは、ゆるやかな「審査官の観点」の基準を適用して予備補正が適切であると判断した。一方、本願が特許法第120条の利益を享受して最先の出願日に遡るためには全ての中間の出願が” written description requirement”の要件を満たす必要がある。この要件が不十分な”incorporation by reference”によって妨げられるか否かの争いについて、CAFCは、より厳しい「当業者の観点」の基準を適用して第120条の利益を認めなかった。
[実務上の指針] 最先の出願日に遡るためには、その間にある全ての中間の出願を補正して適切な”incorporation by reference”の記述を含むようにしておくことが必要。
