In a Split-Panel Decision, Federal Circuit Upholds the Invalidity of Just One of the Four Challenged PTO Rules 08-1352 March 20, 2009 Decision Last Month at the Federal Circuit - April 2009Judges: Rader (dissenting-in-part), Bryson (concurring), Prost (author) [Appealed from: E.D. Va., Senior Judge Cacheris] In Tafas v. Doll, No. 08-1352 (Fed. Cir. Mar. 20, 2009), the Federal Circuit, in a split-panel decision, affirmed the district court’s grant of SJ that Final Rule 78 is inconsistent with 35 U.S.C. § 120, and vacated the district court’s grant of SJ with respect to Final Rules 75, 114, and 265. The PTO issued new rules in August 2007.

Ling filed the ’404 application after the ’624 application published and provoked the interference more than one year after its publication date. Ling’s ’404 application, however, claimed priority under 35 U.S.C. § 120 to U.S. Application No. 10/759,413 (“the ’413 application”), which was filed before the ’624 application. After the PTO declared an interference, Loughlin moved for judgment under § 135(b)(2).

See Samsung Elecs. Co. v. Immersion Corp., Case IPR2018-01468, slip op. at 13-19 (PTAB Feb. 20, 2019) (Paper 10) (grace period extended the one-year deadline for filing IPR petitions under 35 U.S.C. § 315(b), which fell on a weekend, to the next business day); Samsung Elecs. Co. v. ELM 3DS Innovations, LLC, Case IPR2016-00393, slip op. at 4-5 (PTAB June 30, 2016) (Paper 11) (applying grace period to IPR petition-filing deadline that occurred during USPTO system shutdown, which was considered by the USPTO to be Federal holiday).In NetApp, Inc. v. KOM Software, Inc., Case IPR2019-00605, slip op. at 11-17 (PTAB Sept. 9, 2019) (Paper 10), the PTAB found that the grace period is applicable to the deadline for filing continuing applications claiming priority benefit under 35 U.S.C. § 120. Based on this finding, the PTAB concluded that the challenged patent was entitled to its earliest U.S. filing date.

Intervening Applications Must Specifically Reference All Earlier Applications in Chain of Priority to Comply with 35 U.S.C. § 120 13-1117 January 22, 2014 Decision Last Month at the Federal Circuit - February 2014Judges: Prost (author), Plager, Taranto [Appealed from: C.D. Cal., Judge Selna] In Medtronic CoreValve, LLC v. Edwards Lifesciences Corp., No. 13-1117 (Fed. Cir. Jan. 22, 2014), the Federal Circuit affirmed the district court’s finding that U.S. Patent No. 7,892,281 (“the ’281 patent”) was not entitled to an earlier priority date because it failed to comply with the requirements of 35 U.S.C. § 120 and that the asserted claims were therefore invalid as anticipated. Medtronic CoreValve, LLC, Medtronic CV Luxembourg S.a.r.l., and Medtronic Vascular Galway Ltd. (collectively “Medtronic”) sued Edwards Lifesciences Corp., Edwards Lifesciences LLC, and Edwards Lifesciences (U.S.) Inc. (collectively “Edwards”) for infringement of claims 3, 4, 7, 12, 14, and 15 (collectively “the Asserted Claims”) of the ’281 patent.

The patents issuing from the seventh and eighth were the subject of this appeal.The first 3 continuation applications included a priority claim under 35 U.S.C. §120 to the first application. While the fourth application (3rd continuation) was still pending, NAI filed a provisional application on April 10, 2003, and a fifth application (a CIP) on Nov. 18, 2003.

In Immersion Corp. v. HTC Corp. the Court reversed a district court holding that a continuation application filed on the same day that its parent application issued is not entitled to the parent priority date. It is now without question that waiting to file a continuation, continuation-in-part, or divisional application until the day that the parent application issues as a patent will still result in the continuing application being accorded the earlier priority date under 35 U.S.C. § 120. In the instant case, Immersion Corporation (“Immersion”) filed a patent application related to touch control devices for a computer on January 19, 2000, which issued as U.S. Patent No. 6,429,846 on August 6, 2002.

Under 35 U.S.C. § 120, an application claiming benefit to the filing date of an earlier application must include a “specific reference” to the earlier filed application. In Droplets, Inc. v. E*TRADE Bank, No. 2016-2504, 2016-2602 (April 19, 2018), the Federal Circuit considered the use of incorporation by reference when asserting priority claims.

Judge Richard Andrews, District Court Judge for the District of Delaware rendered a decision on a motion for summary judgment in Immersion Corp. v. HTC Corp. that, if affirmed, could put many more patents at risk than Myriad, Mayo, and Alice combined. In his decision, Judge Andrews construed 35 U.S.C. § 120 to prohibit filing a continuation application on the day its immediate parent granted, contrary to established U.S. Patent and Trademark Office practice. The Court refused to grant the Office any deference in the matter and also seemed to strip the patentee of the presumption of validity (not surprising, insofar as that presumption is based on the concept that an administrative agency is presumed to perform its tasks properly).

While practitioners may cringe at the apparent clerical error underlying the decision, the USPTO’s new requirement that priority claims be included in an Application Data Sheet may safeguard future patents from this pitfall.The Patent at Issue The patent at issue was Medtronic CoreValve’s U.S. Patent 7,892,281, directed to prosthetic valves. Relevant to this case is its extensive priority claim: The present application claims priority under 35 U.S.C. § 120 as a continuation of U.S. application Ser. No. 12/029,031, filed Feb. 11, 2008, which is a continuation of U.S. application Ser.

This correction may clarify that the exception can apply to disclosures made by only one joint inventor. If enacted, it would apply as if it were part of the original changes to § 102 embodied in the AIA.Technical Correction to Right to Claim Priority for Applications Filed by Assignee Section 10 of S. 1720 would amend 35 USC § 119(e)(1) and 35 USC § 120 as follows:35 USC § 119(e)(1) An application for patent filed under section 111(a) or section 363 of this title for an invention disclosed in the manner provided by the first paragraph of section 112(a) (other than the requirement to disclose the best mode) of this title in a provisional application filed under section 111(b) of this title, by an inventor or inventors namedthat names the inventor or a joint inventor in the provisional application, shall have the same effect, as to such invention, as though filed on the date of the provisional application filed under section 111(b) of this title, if the application for patent filed under section 111(a) or section 363 of this title is filed not later than 12 months after the date on which the provisional application was filed and if it contains or is amended to contain a specific reference to the provisional application. ….35 USC § 120 An application for patent for an invention disclosed in the manner provided by the first paragra