By statute, to claim priority to an earlier filed application, one need only amend the specification to incorporate a reference to the earlier filed application. 35 U.S.C. § 120. Here, the '234 patent recites that it is a CIP of the '914 patent, which is a continuation of the '049 patent, having an effective filing date of June 3, 1992.

Each patent in the priority chain of the ‘381 and ‘422 patents satisfies the second and third prongs of § 120, and thus, each is accorded the priority benefit of NAI’s first patent application. 22 Commentary by one of the authors of 35 U.S.C. § 120 also supports NAI’s analysis. Only three conditions were necessary to obtain the priority date of a prior application: (1) the invention must be disclosed sufficiently under the 1st ¶ of § 112, (2) the second application must be at least transiently co-pending with the first application, and (3) the second application must contain specific reference to the first application.

11(1)(B) (discussing priority date under 35 U.S.C. § 120). “To gain the benefit of the filing date of an earlier application under 35 U.S.C. § 120, each application in the chain leading back to the earlier application must comply with the written description requirement of 35 U.S.C. § 112.” Lockwood, 107 F.3d 1565, 1571 (Fed. Cir.

Kunin based his opinion on his decades of experience with the provisions of the relevant statute, 35 U.S.C. § 120, the Code of Federal Regulations, and the Manual of Patent Examination Procedure (“MPEP”). He opined that the '381 patent “is compliant with 35 U.S.C. § 120, 37 C.F.R. § 1.78 and MPEP § 201.

1. Parent Patents Must Provide Support for Entire Claimed Invention “In order to gain the benefit of the filing date of an earlier application under 35 U.S.C. § 120, each application in the chain leading back to the earlier application must comply with the written description requirement of 35 U.S.C. § 112.” Zenon Envtl., Inc. v. United States Filter Corp., 506 F.3d 1370, 1378 (Fed. Cir.

1. Parent Patents Must Provide Support for Entire Claimed Invention “In order to gain the benefit of the filing date of an earlier application under 35 U.S.C. § 120, each application in the chain leading back to the earlier application must comply with the written description requirement of 35 U.S.C. § 112.” Zenon Envtl., Inc. v. United States Filter Corp., 506 F.3d 1370, 1378 (Fed. Cir.

at ¶ 5). HTC again included WO 99/26230 in its pre-trial disclosures, and the parties held a meet-and- confer in which Immersion itself discussed the implications under 35 U.S.C. § 120 of newly disclosed art. (Id.

at *6-7. The district court disagreed, finding that: [s]uch regulatory language is, in effect, more narrow than that of the relevant statutory provision, 35 U.S.C. § 120, in that it requires not only specific reference to the earlier filed application, but it also requires said reference fall within the “first sentence of the specification.” It is this Court’s opinion that such narrow language is not inconsistent with the relevant statutory provision enacted by Congress, that such narrow language is not beyond the scope of the authority delegated to the Patent and Trademark Office, and that such narrow language is not arbitrary, capricious, or manifestly contrary to the terms of the federal statute.

Woodbolt continues to rely on its faulty arguments, failing to present any additional evidence or any legal authority, that NAI’s own patent (U.S. Patent No. 5,965,596) invalidates the patents-in-suit because there was an alleged “break” in priority. As NAI explained in detail, the patents-in-suit satisfied all three prerequisites of 35 U.S.C. § 120 to receive the benefit of the priority of their earlier filed applications. (NAI Br.

NAI’s False Priority Claim NAI has cooked up a theory to justify its false claims to priority in both the ‘381 and ‘422 patents. It seeks the benefit of those false priority claims and accordingly it has the burden of proving that the claims were made in good faith and in compliance with 35 U.S.C. § 120 and according to accepted practice. NAI has failed to meet that burden.