Summary
finding "certificate of corrections issued after the commencement of this litigation do not have retroactive effect"
Summary of this case from B. Braun Melsungen AG v. Becton, Dickinson & Co.Opinion
Case No. 2:98-CV-37C
April 18, 2001
ORDER
Invalidity of `665 and `948 Patents due to Corresponding Foreign Application
Hypertech has moved for summary judgment on the ground that the `665 and `948 patents are invalid under 35 U.S.C. § 102(b), which denies patent protection for an invention that was previously described in a printed publication, foreign or domestic, more than one year before the United States patent application was filed. According to Hypertech, Adrain's filing of European Patent Application EP474493A1 ("the foreign application") on March 11, 1992, preceded his filing of the applications for both the `665 and the `948 patents by more than one year, and the invention described in the foreign application anticipated the inventions covered by the `665 and `948 patents. (See European Patent Application, attached as Exh. A to Decl. of Robert D. Becker in Supp. of Def.'s Revised Mot. for Summ. J. No. 5.) While Adrain concedes that he filed the foreign application on March 11, 1992, he nevertheless contends that the effective filing dates for the applications for the `665 and `948 patents is September 6, 1990, and that therefore, the `665 and `948 patents are not barred by 35 U.S.C. § 102 (b). Adrain also argues that the invention covered by the `948 patent was not described in the foreign application.
At oral argument, Adrain's counsel agreed that the invention in the foreign application was virtually identical to that described in the `665 patent.
A brief history of the chain of patent applications which lead to the `665 and `948 patents is useful background for this analysis. Adrain filed his first application, serial number 579,072, on September 6, 1990, but abandoned this application. On January 30, 1992, Adrain filed application serial number 830,552, and this later issued as U.S. Patent No. 5,200,900 ("`900 patent"). On March 18, 1993, Adrain filed application serial number 330,040, which issued as U.S. Patent No. 5,293,317 ("`317 patent"). Next, on March 3, 1994, Adrain filed application serial number 205,686, and this issued as the `665 patent. Finally, on March 28, 1994, Adrain filed application serial number 219,121, which later issued as the `948 patent. (See Exh.s B and C, attached to Becker Decl.)
35 U.S.C. § 120 permits an inventor to claim an earlier effective filing date for a patent application if he or she makes specific references to a prior patent application:
An application for patent for an invention . . . shall have the same effect, as to such invention, as though filed on the date of the prior application, if filed before the patenting or abandonment of or termination of proceedings on the first application similarly entitled to the benefit of the filing date of the first application and if it contains or is amended to contain a specific reference to the earlier filed application.35 U.S.C. § 120.
The `665 and `948 patent applications make specific reference to Adrain's earlier patent applications. In the application for the `665 application, Adrain made specific reference to the `317 patent; Adrain was thus entitled to claim the application date of the `317 patent — March 18, 1993 — as the effective filing date for the application for the `665 patent. (See `665 Patent Application, attached as Exh. B tab 6 to Pl.'s Supp. Mem. in Opp. to Mot. for Summ. J. No. 5. ("This application is a con[tinuation] of [Ser. No.] 08/033,040 [filed] 03/18/93 pat 5,293,317."); see also `665 Patent Certificate, attached as Exh. B to Becker Decl.) The `665 patent application does not make reference to any applications before March 18, 1993.
In his application for the `948 patent, Adrain made reference to the applications for the `665, `317, and `900 patents. (See `948 Patent Application, attached as Exh. B, tab 8 to Pl.'s Supp. Mem. in Opp. to Mot. for Summ. J. No. 5 ("This application is a [continuation-in-part] of [Ser. No.] 08/205,686 [filed] 3/03/94 pat 5,446,665, which is a continuation of [Ser. No.] 08/033,040 [filed] 03/18/93 pat 5,293,317, which is a continuation of [Ser. No.] 07/830,552 [filed] 1/30/92 pat 5,200,900."); see also `948 Patent Certificate, attached as Exh. C to Becker Decl.) According to Adrain, through these references, the application for the`948 patent is entitled to an effective filing date of January 30, 1992, the application date of the `900 patent.
However, for an application to receive the benefit of an earlier effective filing date under 35 U.S.C. § 120, there must be an uninterrupted chain of references to earlier applications.
Where an application claims a benefit under 35 U.S.C. § 120 of a chain of applications, the application must make a reference to the first (earliest) application and every intermediate application. — In addition, every intermediate application must also make a reference to the first (earliest) application and every application after the first application and before such intermediate application.
See Manual of Patent Examining Procedure (hereinafter "MPEP") § 2.0106(d); accord 4 Chisum on Patents § 13.06[2], at 13-51 (XXX ed. 2000); Advance Transformer Co. v. Levinson, 231 USPQ 1, 16 (N.D. Ill. 1986), aff'd in part, vacated in part, rev'd in part, 837 F.2d 1081 (Fed. Cir. 1988); Clover Club Foods Co. v. Gottschalk, Comm'r of Patents, 1973 WL 19868, 178 U.S.P.Q. 505, 508 (C.D. Cal. 1973) ("The fourth application is not entitled to the benefit of the filing date of Popel's first application, because the second application does not contain a specific reference to the first application."); Struthers Patent Corp. v. The Nestle Co., Inc., 558 F. Supp. 747, 811 (D. N.J. 1981) (holding that third application could not claim priority date of first application because second application in chain of inventions did not make reference to first). Here, an uninterrupted chain of "specific reference[s] to the earlier filed application," as required by 35 U.S.C. § 120, was not made.
Therefore, the application for the `948 patent will receive the benefit of the effective filing date of the `900 patent application only if specific reference to the `900 patent application was made both in the `948 patent application and in the patent applications which preceded the `948 patent application. However, as described above, the `665 patent application refers only to the `317 patent application, and not to the `900 patent application. Because of this omission in the `665 patent application, the `948 patent application itself has an uninterrupted chain of reference going back only to the filing date of the application for the `317 patent — March 18, 1993 — and not to the filing date of the application for the `900 appliction. Therefore, the effective filing date for the applications for both the `665 patent and the `948 patent is March 18, 1993.
Adrain argues that even if initially the effective filing date for the applications for the `665 and `948 patents was March 18, 1993, this date was later changed through the issuance of a "certificate of correction" by the PTO.
Adrain is correct in his contention that an inventor may rectify "a mistake of a clerical or typographical nature, or of minor character" through PTO issuance of a certification of correction, and an inventor may use the certificate of correction process to correct his or her failure to make reference to prior patent applications. See MPEP § 1481; see also 37 C.F.R. § 1.78(a)(1) (2000). Adrain applied to correct the applications for the `337, `948 and `665 patents so that they make reference to an uninterrupted chain of inventions dating back to September 6, 1990. (See Certificates of Correction, attached as Exh. A to Pl.'s Mem. in Opp. to Revised Mot. for Summ. J. No. 5.) It is clear that the certificates of correction, once issued, have prospective application. See 35 U.S.C. § 255; Southwest Software, Inc. v. Harlequin, Inc., 226 F.3d 1280, 1294 (Fed. Cir. 2000). Hypertech argues, however, that the corrected effective filing date does not apply retroactively in this lawsuit, which was filed before the certificates of correction were issued.
In determining the retroactive effect of certificates of correction, a court begins with the language of the statute. See id.; see also In re Overton Park Financial Corp., 236 F.3d 1246, 1251 (10th Cir. 2001) ("In any case of statutory construction, the starting point of our analysis must begin with the language of the statute itself."). 35 U.S.C. § 255 states that once a certificate of correction has been issued, "[s]uch patent, together with the certificate [of correction], shall have the same effect and operation in law on the trial of actions for causes thereafter arising as if the same had been originally issued in such corrected form." Id. (emphasis added). The most natural reading of the statute is that the effect of issuance of a certificate of correction does not have retroactive effect, but rather, only prospective effect upon all cases "thereafter arising." The Court of Appeals for the Federal Circuit recently reached the same conclusion in Southwest Software, Inc. v. Harlequin, Inc., 226 F.3d 1280 (Fed. Cir. 2000). The first grounds for the Federal Circuit's ruling was the language of the statute:
We conclude that this [statutory] language requires that, for causes arising after the PTO issues a certificate of correction, the certificate of correction is to be treated as part of the original patent — i.e., as if the certificate had been issued along with the original patent. By necessary implication, for causes arising before its issuance, the certificate of correction is not effective.
Id. at 1294 (emphasis added). The second grounds for its holding that certificates of correction do not have retroactive effect was that a contrary interpretation of the statute would "produce an illogical and unworkable result." Id.
Until the PTO issues a certificate of correction . . ., such a claim would appear invalid to the public, and reasonable competitors would be justified in conducting their affairs accordingly. In such a case, where the claim is invalid on its face without the certificate of correction, it strikes us an illogical result to allow the patent holder, once the certificate of correction has issued, to sue an alleged infringer for activities that occurred before the issuance of the certificate of correction.
Id. at 1295.
Adrain attempts to distinguish Southwest Software on two grounds. First, Adrain suggests that Southwest Software is not dispositive because that case interpreted a different statutory provision, 35 U.S.C. § 254, which provides for a different form of certificate of correction. The statutory text relied on by the court, however — the phrase "for causes thereafter arising" — is the same in both 35 U.S.C. § 254 and in 35 U.S.C. § 255. See 35 U.S.C. § 254, 255. "[I]t cannot be presumed that the [same] term has two different meanings in these closely related statutes." See Vectra Fitness, Inc. v. TNWK Corp., 162 F.3d 1379, 1383 (Fed. Cir. 1998), citing United Sav. Ass'n v. Timbers of Inwood Forest Assocs., 484 U.S. 365, 371 (1988). Adrain nevertheless suggests that the second ground for the Federal Circuit's decision — that the public cannot possibly know about an invention's corrected priority date until a certificate of correction is actually filed — is inapplicable here because the `665 and `948 patent applications, in their original, pre-corrected form, made reference to earlier inventions. According to Adrain, because a competitor could discover that Adrain claimed an earlier priority date by researching the prosecution history of these referenced inventions, the retroactive application of the certificates of correction does not have a prejudicial effect in this case. Even assuming that this argument undermines the applicability of the second ground for the court's decision in Southwest Software, however, the first ground for the court's decision — the language of the statute — still applies. 35 U.S.C. § 255 clearly states that certificates of correction shall have effect "for causes thereafter arising," indicating that they shall have prospective effect only.
The cases on which Adrain relies are also distinguishable from the situation at hand. For instance, in Eagle Iron Works v. McLanahan Corp., 429 F.2d 1375 (3d Cir. 1970), the court did not in any way analyze the statutory language "for causes thereafter arising" or the effect this statutory language might have on the retroactive effect of certificates of correction. For this reason, the holding in Eagle Iron Works was disavowed by the Federal Circuit in Southwest Software. See Southwest Software, 226 F.3d at 1296-97. The second case relied on by Adrain, Vectra Fitness, Inc. v. TNWK Corp., 162 F.3d 1379 (Fed. Cir. 1998), commented in dicta that a certificate of correction issued under 35 U.S.C. § 255 prospectively corrects a patent application as if the application had originally been issued in the corrected form. See id. at 1384. This point, however, is not disputed by the parties to this case. The point disputed here — whether the correction also applies retroactively — was not at issue in the Vectra Fitness case, nor does the Vectra Fitness decision discuss the "for causes thereafter arising" language of the statute.
Based on the above analysis, the court concludes the certificate of corrections issued after the commencement of this litigation do not have retroactive effect, and, for purposes of this litigation, March 18, 1993, remains as the effective filing date of the applications for the `665 and the `948 patents. Hypertech has therefore demonstrated that Adrain filed the foreign application more than one year before the effective filing dates of the applications for the `665 and `948 patents.
Adrain maintains that, regardless of the effective filing date of the `948 patent, the `948 patent is not rendered invalid by the earlier foreign application because the `948 patent is a continuation-in-part of the `665 patent and the new matter, that is, the matter that was not disclosed in the `665 application, was not described in the foreign application. Adrain points out that Hypertech has failed to demonstrate which of the claims of the `948 patent disclose new matter and which do not.
The court agrees with Adrain. On the record now before it, the court cannot find, as a matter of law, that all of the claims of the `948 patent were described in the foreign application. There are factual disputes on this question which must be resolved by the trier of fact.
Accordingly, Hypertech's motion for summary judgment that the `665 patent is barred by 35 U.S.C. § 102 (b) is GRANTED; Hypertech's motion for summary judgment that the `948 patent is barred by 35 U.S.C. § 102 (b) is DENIED.