35 U.S.C. § 120 Requires Each Application in a Priority Chain to Refer to the Prior Applications

Encyclopaedia Britannica, Inc. v. Alpine Elecs. of Am., Inc., Nos. 2009-1544, -1545 (Fed. Cir. June 18, 2010).

Holding:

35 U.S.C. § 120 requires an intermediate application in a priority chain to contain a specific reference to the earlier filed application. Slip op. at 7-8.

Relevant Facts:

The asserted patent has the priority claim as follows: “Continuation of application No. 10/103,814, filed on Mar. 25, 2002, which is a continuation of application No. 08/202,985, filed on Feb. 28, 1994, now Pat. No. 6,546,399, which is a continuation of application No. 08/113,955, filed on Aug. 31, 1993, now abandoned, which is a continuation of application No. 07/426,917, filed on Oct. 26, 1989, now Pat. No. 5,241,671.” The ’955 application did not contain a specific reference to the ’917 application. If the asserted patent is not entitled to the priority date of the ’917 application, then the ’917 application is prior art and anticipates the asserted patent. The district court held that the asserted patent is not entitled to the priority date of the ’917 application. The Federal Circuit affirmed.

Comments:

The remaining question is whether the later asserted patent is entitled to any earlier priority date (e.g., Fed. 28, 1994 or Aug. 31, 1993). The district court said no, but the Federal Circuit decides to “leave [this question] for another day.” Slip op. at 13. It is likely, however, that the later asserted patent should be allowed to claim the priority date of Aug. 31, 1993, because that part of the priority chain is not defective.