Filewrapper®

Incorporation by reference did not incorporate necessary disclosure, priority chain broken

November 07, 2007
Post by Blog Staff

Today, the Federal Circuit held a patent was anticipated under 35 U.S.C. § 102(b) by another patent earlier in the patent-in-suit's priority chain. The court held the district court erred in finding that the patent at issue was entitled to a priority date of the earlier-filed patent, leading to the district court's improper conclusion that the patent was not anticipated by an earlier filed patent.The issue centered on the incorporation by reference clauses in the intervening patents in the priority chain. The court held, as a matter of law, that one of ordinary skill in the art would understand that they were limited incorporations by reference, and that the disclosure necessary to support the asserted claims was not incorporated. As a result, the claims were invalidated by an earlier patent in the chain. Judge Newman dissented, finding that the majority improperly made the inquiry an issue of law instead of an issue of fact. Based on the district court's findings, she would have affirmed the finding that the incorporations by reference were sufficient, and that the claims were not anticipated.More detail of Zenon Envtl., Inc. v. U.S. Filter Corp. after the jump. Zenon Environmental ("Zenon") owns the '319 patent directed to an "apparatus for drying permeate using an immersed vertical skein of hollow membranes." This patent relates to water treatment and filtration systems, specifically directed to "relatively large systems for the micro-filtration of liquids." The patent discloses integrated structural elements including vertical fibers, a means for collecting permeate from the fibers, and a means of keeping the surface of the fibers free of particulate matter. In order to keep the fibers clean, the patent uses cleansing gas to produce bubbles capable of scrubbing the filters. Claim 7 of the patent is the relevant claim for purposes of the appeal. It reads (emphasis added):

7. An apparatus for treating a multicomponent liquid substrate while leaving particulate matter therein, comprising,
(a) a non-pressurized reservoir for containing the substrate;
(b) a plurality of hollow fiber filtering membranes immersed in the substrate wherein the membranes are disposed generally vertically between upper and lower headers such that (i) outsides of ends of the membranes are sealingly secured to the headers in a closely spaced apart relationship, (ii) lumens of the membranes are in fluid communication with at least one permeate collection means, and, (iii) said membranes having a length between opposed surfaces of the headers such that the membranes may move against each other but wherein the length is less [than] 5% greater than the distance between opposed surfaces of the headers;
(c) a pump in fluid communication with said lumens of said membranes, said pump operable to apply a suction to the lumens of the membranes to draw a component of the substrate as permeate through said membranes; and,
(d) a gas distribution system having through-passages through the lower header to discharge bubbles into the substrate above the lower header.

The '319 Patent is the sixth patent in a family to issue from a series of connected applications. The series was:
  1. '319 patent (patent-in-suit)
  2. '039 patent
  3. '677 patent
  4. '250 patent
  5. '083 patent
  6. '373 patent
Numbers 5-6 on this list are the "grandparent patents," and contain the necessary disclosure to invalidate the patent-in-suit under § 102(b) if the patent-in-suit is not entitled to claim priority to the beginning of the chain. Numbers 2-4 on this list are referred to as the "intervening patents," and contain the following incorporation by reference statement:
The vertical skein is not the subject matter of this invention and any prior art vertical skein may be used. Further details relating to the construction and deployment of a most preferred skein are found in the parent U.S. Pat. No. 5,639,373, and in Ser. No. 08/690,045, the relevant disclosures of each of which are included by reference thereto as if fully set forth herein.
U.S. Filter argued that '319 patent was not entitled to any claim priority from the '373 patent, because the intervening patents failed to incorporate by reference the gas distribution system, thereby breaking the chain of priority. The district court disagreed, and held that U.S. Filter did not prove invalidity by clear and convincing evidence, finding one of ordinary skill in the art would understand the incorporation by reference language to incorporate the previous disclosures in full. As a result, the district court held that the patent-in-suit could claim priority back to the '373 patent. U.S. Filter appealed. The Federal Circuit reversed. The court first analyzed 35 U.S.C. § 120 governing continuing applications, and specifically entitlement to an earlier application's filing date within the United States. The Federal Circuit has held that "claims to subject matter in a later filed application not supported by an ancestor application in terms of § 112, ¶ 1 . . . do not receive the benefit of the earlier application's filing date." As a result,
in order for the '319 patent to be entitled to priority from the '373 patent, continuity of disclosure must have been maintained throughout a chain of patents from the '373 patent leading up to the '319 patent.
The Federal Circuit determined


Post Categories

Comments (0)
Post a Comment



Captcha Image
Return to the Filewrapper Blog

Search Posts

Purpose

The attorneys of McKee, Voorhees & Sease, P.L.C. designed this blog as an informational and educational resource about intellectual property law for our clients, other attorneys, and the public as a whole. Our goal is to provide cutting-edge information about recent developments in intellectual property law, including relevant case law updates, proposed legislation, and intellectual property law in the news.

Disclaimer

McKee, Voorhees & Sease, P.L.C. provides this blog for general informational purposes only. By using this blog, you agree that the information on this blog does not constitute legal or other professional advice and no attorney-client or other relationship is created between you and McKee, Voorhees & Sease, P.L.C. Do not consider this blog to be a substitute for obtaining legal advice from a qualified, licensed attorney. While we try to revise this blog on a regular basis, it may not reflect the most current legal developments. We consciously refrain from expressing opinions on this blog and instead, offer it as a form of information and education, however if there appears an expression of opinion, realize that those views are indicative of the individual and not of the firm as a whole.

Connect with MVS

Enter your name and email address to recieve the latest news and updates from us and our attorneys.

Subscribe to: MVS Newsletter

Subscribe to: Filewrapper® Blog Updates

  I have read and agree to the terms and conditions of McKee, Voorhees & Sease, P.L.C.

Captcha Image