Posts Tagged “continuation”

Wilmer Hale reported today that:

Briefs for summary judgment are due on December 20, 2007, as are amicus curiae briefs. Oppositions are due on January 22, 2008, and rebuttals on February 1, 2008. A summary judgment hearing is scheduled for February 8, 2008. On October 31, 2007, Judge James Cacheris granted a preliminary injunction preventing the USPTO from implementing the changes in the Claims and Continuations Final Rule on November 1, 2007, until the case could be heard on its merits. Thus, the new rules will not take effect at least until mid-February 2008, and it remains to be seen if the proposed “continuation rules” will be modified further.

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Pending the implementation of the new patent office rules, some companies employ a patent strategy of creating a long chain of continuation applications (including divisional apps) as a way to extend the coverage of their initial invention while maintaining their original priority date. Sometimes, however, it appears the intent of this strategy has primarily been to fool the competition as to exactly how far back a particular claim can be traced. The recent CAFC decision in Zenon Environmental v. US Filter shows us that this chain must be forged carefully in order not to make a fool of the applicant himself.

The patent in question, owned by Zenon, was filed in May of 2001 and is the sixth in a series of applications. The application was a:

continuation of Ser. No. 09/507,438, filed Feb. 19, 2000 issued as U.S. Pat. No. 6,294,039; which is a division of Ser. No. 09/258,999, filed Feb. 26, 1999, issued as U.S. Pat. No. 6,042,677; which is a division of Ser. No. 08/896,517, filed Jun. 16, 1997, issued as U.S. Pat. No. 5,910,250 ; which is a continuation-in-part application of Ser. No. 08/690,045, filed Jul. 31, 1996, issued as U.S. Pat. No. 5,783,083 which is a non-provisional of provisional application Ser. No. 60/012,921 filed Mar. 5, 1996 and a continuation-in-part of Ser. No. 08/514,119, filed Aug. 11, 1995, issued as U.S. Pat. No. 5,639,373.

Zenon sued US Filter for infringing this patent and lost not only the infringement case against US Filter but also lost its patent – the right to stop anyone else. US Filter’s attorneys took the effort to trace the heritage of the claims in the patent and observed that the patent was not entitled to claim priority from the original patent in the chain. In particular, US Filter asserted that the intervening patents failed to incorporate by reference a key element disclosed in the original patent and thus broke the chain of priority because the asserted claims were not supported by each patent in the family chain.Zenon argued that it had an “incorporate by reference” clause in its application, but the court ruled that the clause, as intended and as written, addressed only a subsection of the original application (for a different part of the invention) and thus did not provide the priority chain for the part of the invention covered in the disputed patent. Thus, the majority opinion ruled that Zenon’s own prior patent anticipated and thus invalidated its later patent.
In a dissenting option, Judge Newman pointed out that

“The panel majority’s holding casts doubt on the reliable use of this [incorporation by reference], lest an earlier patent become an invalidating reference against its successors in the chain of filings. The majority’s rejection of the factual foundations of incorporation by reference and creation of a new area of de novo appellate authority, raise new risks of patent drafting. The apparent requirement that all subject matter must be reproduced in all continuing applications adds nothing to the knowledge disclosed to the public, adds nothing to the information provided to the patent examiner, and adds nothing to compliance with 35 U.S.C. ‘120; it simply adds costs and pitfalls to inventors, as they attempt to walk new judicial tightropes.” [Emphasis added]

So, while I agree with Judge Newman, you had best make sure to distinctly and carefully point out what you want to reference from your prior patents.

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