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Specific Reference, Incorporation by Reference, and Claim Support

The Roles of Specific Reference, Incorporation by Reference, and Claim Support

The Roles of Specific Reference, Incorporation by Reference, and Claim SupportA current Federal Circuit determination demonstrates that for precedence claims and patent time period, the phrase “specific reference” is vital. For instance, amongst three associated purposes, to get the good thing about precedence of an earlier U.S. patent software 1, software three in a precedence declare has to have a “specific reference” to earlier software 1. A mere precedence declare in software three to software 2, despite the fact that software 2 particularly “incorporates by reference” software 1, isn’t enough to permit software three to depend on the submitting date of software 1. Slightly, the precedence chain is damaged between purposes 2 and 1, leaving software three, at greatest, with a precedence date of software 2 for functions of patentability.

Moreover, a current district courtroom determination highlights that there have to be nothing greater than a “specific reference” within the later patent software to the sooner patent software to start out the patent clock with the date of the sooner patent software. And, whether or not or not any declare within the later software is entitled to precedence within the earlier software for patentability functions requires “specific reference” to the sooner software.

There’s, subsequently, one date for patent time period expiration, regardless of whether or not or not claims in that patent have totally different efficient submitting dates. That, in fact, is totally different for entitlement to a declare to precedence for patentability functions, which is decided on a claim-by-claim foundation.

This text analyzes two current instances for sensible classes when (1) drafting and prosecuting patent purposes and (2) analyzing issued U.S. patents within the context of freedom to function and/or due diligence.

Current Instances

  1. Droplets, Inc. v. E*Commerce Financial institution: Incorporation by Reference Fails to Keep away from a Break within the Precedence Chain

Droplets, Inc. v. E*Commerce Financial institution, 887 F.3d 1309 (Fed. Cir. 2018), arose from an attraction of a Remaining Written Determination in an inter partes evaluation. In E*TRADE Fin. Corp. v. Droplets, Inc., IPR2015-00470 (P.T.A.B. June 23, 2016), the Patent Trial and Attraction Board (“PTAB” or “Board”), held all instituted claims of U.S. Patent No. eight,402, 155 (“the ’115 patent”) unpatentable. Particularly, the ’115 patent did not enumerate a precedence declare adequate to keep away from fully-invalidating prior artwork; the incorporation by reference of an earlier precedence doc did not fulfill the patentee’s burden of offering discover of the asserted earlier precedence date beneath 35 U.S.C. § 120.” Id. at 1311.

The chart under summarizes the challenged declare precedence language. It was undisputed that the ‘115 patent’s precedence declare to U.S. Patent No. 7,502,838 (“the ‘838 patent”) was correct, and that the ‘838 patent’s precedence declare to U.S. Provisional Software No. 60/153,917 (“the ’917 application”) precedence date was correct. Id. at 1313. The difficulty was whether or not the ‘115 patent was entitled to the ‘917 provisional application priority date, particularly when the ’115 patent didn’t include a selected reference to both an intervening U.S. Patent No. 6,687,745 (“the ‘745 patent”) or the ’917 provisional software, however solely “incorporated the ’838 Patent by reference.” Id.

For precedence functions, the statutes (35 U.S.C. §119(e)(1) and §120) and regulation (37 C.F.R. §1.78) each require co-pendency and a selected reference to the sooner filed software. The Federal Circuit affirmed that the “Board correctly applied § 120 in finding that the ’115 Patent claims priority only to the ’838 Patent.” Id. at 1316. The ’115 patent is a continuation of the ’838 patent and solely contained particular reference to the ‘838 patent.

Throughout prosecution of the ‘115 patent, the USPTO issued a filing receipt with a priority claim to the ‘745 patent. Subsequently, the USPTO issued a corrected filing receipt indicating that the priority claim was solely to the ‘838 patent, leaving out the ‘745 patent and the ‘917 provisional application. The ’115 patentee failed, throughout prosecution, to problem the corrected submitting on this problem.

Each the PTAB and the Federal Circuit indicated that the failure to make particular reference to the ‘745 patent broke the priority chain. Incorporation by reference in the ‘115 patent of the ‘838 patent, even though the ‘838 patent indisputably made specific reference of priority to the ‘745 patent, was not enough to provide specific reference to the ‘745 patent in the chain of priority for the ‘115 patent.  At best for the purposes of priority, the ’115 patent’s efficient submitting date is November 24, 2003, the submitting date of the ’838 patent. Due to the precedence date accorded the ‘115 patent, the PCT publication, with an equivalent specification, was prior artwork that rendered the claims unpatentable. With the damaged chain of precedence, the unpatentability willpower of the PTAB was affirmed.

Whereas the defendant argued that this was all based mostly on a hypertechnicality, the Federal Circuit reaffirmed a strict studying of the statutes (35 U.S.C. §119(e)(1) and §120). That strict studying acknowledged the “important public policy” of public discover. The Federal Circuit defined:

That the ’115 Patent fails to enumerate a precedence declare enough to keep away from Droplets’ personal fully-invalidating prior artwork just isn’t a “hypertechnicality” that unfairly rendered the claims unpatentable. Part 120 locations the burden on the patent proprietor to offer a transparent, unbroken chain of precedence. [Medtronic CoreValve, LLC v. Edwards Lifesciences Corp., 741 F.3d 1359, 1366 (Fed. Cir. 2014)].

Id. at 1317,

Additional rejecting Droplets’ arguments to construe the incorporation by reference as enough to keep away from a break within the precedence chain, the Federal Circuit additionally turned to 37 C.F.R. §1.57 noting that:

[N]othing in regulation 1.57 authorizes making a precedence declare beneath § 120 by way of an included reference. … The phrases of a precedence declare are  … separate from the supplies essential to fulfill § 112. Accordingly, whereas 37 C.F.R. § 1.57 authorizes an applicant to include by reference important and nonessential materials to fulfill § 112, nothing contained therein permits incorporating a precedence declare by reference.

Id. at 1319-20.

The Federal Circuit concluded that the necessities of § 120 can’t be met by incorporation by reference. Slightly, “a patent must contain a specific reference to each prior-filed application to be entitled to those applications’ earlier filing dates.” Id. at 1322. “Droplets’ proposed reading of § 120 conflicts with the statute’s purpose, which is to provide clear notice to the public of the patentee’s claimed priority date.” Id. at 1320. That’s, “[t]o require the public to search for an unstated priority claim through incorporated materials would create uncertainty and would require the type of guess-work that the statue is meant to avoid.” Id.

  1. Clinicomp Int’l, Inc. v. Cerner Corp.

Clinicomp Int’l, Inc. v. Cerner Corp., Case No. 17-cv-2479 (S.D. Cal. Might 16, 2018) highlights the difficulty of precedence within the context of the patent time period. In Clinicomp Int’l, leading to a grant of defendant’s movement to dismiss, there have been two points:

(1) whether or not the patent time period began on November 24, 1997, and

(2) whether or not the patentee can acquire the good thing about a grandparent submitting date of February 1995 to start out the patent time period, despite the fact that there was no particular reference within the patent in go well with to the grandparent software.

With respect to patent time period, which might be related to points such because the scope of alleged patent infringement and potential damages, the courtroom concluded that lack of particular reference within the patent in go well with to the grandparent software precluded the patent time period from beginning on the February 28, 1995, submitting date of the grandparent.

Particularly, Plaintiff’s patent at concern, U.S. Patent No. 6,665,647 (“the ‘647 patent”), particularly referenced the dad or mum software, U.S. Software No. 08/977,522 (“the ‘522 software, which was filed Nov. 24, 1997). The ‘647 patent was a continuation-in-part of the ‘522 software, which was a continuation software of U.S. Software No. 08/396,004 (“the ‘004 software).  The ‘647 patent did not particularly reference in its chain of precedence the ‘004 grandparent software.  By means of diagram, the chain of precedence is illustrated under:

Defendant asserted that the ‘647 patent’s submitting date is the ‘004 grandparent application’s, which means the ‘647 patent’s expiration date can be Feb. 28, 2015, i.e., twenty years from the ‘004 application’s submitting date. It was undisputed that the ‘647 patent didn’t particularly reference the ‘004 software, however solely the ‘522 software.

The ‘522 software, nevertheless, particularly referenced the ‘004 software; was that sufficient to start out the patent time period clock? No. The district courtroom held that “since the ‘647 patent does not specifically reference the grandparent ‘004 Application, and there has been no amendment or correction filed with the PTO, the ‘647 patent does not obtain the benefit of the ‘004 Application filing date.” Id. at 19. The district courtroom cited the Federal Circuit’s “strict reading of the § 120 specific reference requirement” in Droplets and the emphasis on the significance of public discover. Id. at 18.

The precedence date additionally implicated the patent time period expiration date for the ‘647 patent, notably whether or not or not any declare of the ‘647 patent needed to be supported in earlier patent software(s) for functions of beginning the patent time period clock.  The district courtroom concluded that the precedence declare itself was per se adequate to start out the patent time period clock to find out the expiration date.  No evaluation was wanted of whether or not any patent declare of the patent in go well with was the truth is demonstrated to be entitled to that precedence date.

That’s, for the patent time period clock to start out, there isn’t any requirement that any declare be demonstrated to have written description and enablement underneath § 112(a) within the “clock starting” patent software. Id. at 12. As an alternative, all that’s required is restricted reference to an earlier patent software.

Right here, the ‘647 patent contained a selected reference to the earlier-filed ‘522 software; the patent time period clock began from the submitting date of the ‘522 software. Sadly, the expiration date of Nov. 24, 2017, was two weeks previous to the submitting of the infringement grievance, so the willful infringement and induced infringement claims have been dismissed. Id. at four.

Prosecution Takeaways

From the Federal Circuit in Droplets, practitioners are reminded that each precedence claims and incorporation by reference are very particular instruments that shouldn’t be relied on throughout prosecution with out cautious consideration and deliberate use. See additionally, MPEP §211. Definitely, incorporation by reference doesn’t trump “specific reference” and might result in a break within the precedence chain for functions of patentability.

Clinicomp, a district courtroom choice, illustrates that the patent time period clock begins based mostly on nothing greater than a selected precedence reference to a precedence software, whether or not or not any declare within the patent is supported underneath § 112(a) in that precedence software.  There isn’t any have to exhibit that the claims are entitled to precedence, as can be required if there was an try to determine patentability of these claims over prior artwork arising after the precedence software date. Beginning the patent time period clock and having foundation for a precedence declare for patentability functions are solely totally different ideas, despite the fact that each ideas require particular reference to the sooner doc.

Given the precise reference requirement, each patent declare will expire on the similar time, whether or not or not supported within the “clock starting” patent doc.  In distinction, for functions of patentability, entitlement to precedence is decided on a claim-by-claim foundation, leaving open the likelihood that totally different claims may have totally different efficient submitting dates.

Clinicomp additionally reminds us to obviously assess whether or not a precedence software is value particularly referencing. If that precedence software provides nothing to patentability, why particularly reference it? Claiming precedence in such a case does nothing besides lose patent time period on the finish of the patent cycle.  Mockingly, in such a case, the patentee might need to think about breaking the chain of precedence to realize a later patent expiration.

Specific reference, incorporation by reference, and declare help are, in fact, related within the context of due diligence or freedom-to-operate analyses. When does the patent time period clock begin? Whether it is early sufficient, the patent could also be expired earlier than a go well with was filed, as in Clinicomp.  And if the precedence chain is damaged, the claims are weak to invalidity assaults, as in Droplets.


Picture Supply: Deposit Pictures.

Adriana Burgy

Adriana Burgy

is a associate at Finnegan and leads Finnegan’s patent workplace follow. Her follow focuses on opinion work, shopper counseling, patent prosecution and administration, and litigation within the chemical, pharmaceutical, and biotechnology arts. Adriana brings a singular perspective by mixing her authorized, technical, and business expertise.

For extra info or to contact Adriana, please go to her Agency Profile Web page

Adriana Burgy

Tom Irving

is a associate at Finnegan, Henderson, Farabow, Garrett & Dunner, LLP. He has greater than 40 years of expertise within the subject of mental property regulation. His apply consists of America Invents Act (AIA) post-grant proceedings, due diligence, counseling, patent prosecution, and reissue and reexamination. He counsels shoppers on a variety of primarily pharmaceutical issues, together with pre-litigation, Orange Guide listings of patents masking FDA-approved medicine, infringement points, enforceability and validity evaluation.

For extra info or to contact Tom, please go to his Agency Profile Web page

Adriana Burgy

Stacy Lewis

has been a Regulation Clerk at Finnegan for over 20 years and has co-authored dozens of articles about U.S. patent regulation. She can also be the coordinating editor of the treatises Chemical Patent Follow and International Patent Litigation: How and The place to Win.