265 F.3d 1249 (Fed. Cir. 2001), 00-1173, Exxon Corp. v. Phillips Petroleum Co.

Docket Nº:00-1173, 00-1174
Citation:265 F.3d 1249
Party Name:EXXON CORPORATION (NOW KNOWN AS EXXONMOBIL CORPORATION) AND EXXON CHEMICAL PATENTS, INC., PLAINTIFFS-APPELLANTS, v. PHILLIPS PETROLEUM COMPANY, DEFENDANT-CROSS APPELLANT.
Case Date:September 20, 2001
Court:United States Courts of Appeals, Court of Appeals for the Federal Circuit
 
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Page 1249

265 F.3d 1249 (Fed. Cir. 2001)

EXXON CORPORATION (NOW KNOWN AS EXXONMOBIL CORPORATION) AND EXXON CHEMICAL PATENTS, INC., PLAINTIFFS-APPELLANTS,

v.

PHILLIPS PETROLEUM COMPANY, DEFENDANT-CROSS APPELLANT.

Nos. 00-1173, 00-1174

United States Court of Appeals, Federal Circuit

September 20, 2001

Appealed from: United States District Court for the Southern District of Texas Judge Vanessa D. Gilmore

Page 1250

E. Edward Bruce, Covington & Burling, of Washington, Dc, argued for plaintiffs-appellants. With him on the brief was Christopher N. Sipes.

S. Leslie Misrock, Pennie & Edmonds Llp, of New York, New York, argued for defendant-cross appellant. Of counsel on the brief were Stanton T. Lawrence III, Paul J. Zegger, and Carl P. Bretscher, Pennie & Edmonds Llp, of Washington, Dc; and Roy W. Hardin, Locke Liddell & Sapp Llp, of Dallas, Texas. Of counsel was Wayne Fisher, Fisher, Boyd, Brown, Boudreaux & Huguenard, L.L.P., of Houston, Texas.

Before Newman, Circuit Judge, Friedman, Senior Circuit Judge, and Linn, Circuit Judge.

Newman, Circuit Judge

Exxon Mobil Corporation and Exxon Chemical Patents (together "Exxon") appeal the judgment of invalidity of United States Patent No. 5,324,800 (the '800 patent) on the ground of anticipation. 1 Phillips Petroleum Company has filed a conditional cross appeal on the issue of interference estoppel. We reverse the judgment of invalidity, affirm the ruling on the cross appeal, and remand for further proceedings.

I.

In response to Exxon's suit for infringement of the '800 patent, Phillips asserted, inter alia, the defense of patent invalidity based on anticipation by a published foreign patent having the same text as the '800 patent. This publication is an invalidating reference under 35 U.S.C. §102(b) if Exxon is not entitled to the benefit of earlier United States application filing dates because of an asserted break in the chain of copending continuing applications. The district court found that Exxon had indeed broken the chain of copendency, and entered final judgment of patent invalidity.

The chain of applications leading to the '800 patent is as follows: Exxon's initial application was filed in the United States on June 6, 1983. A continuation application

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was filed on April 29, 1985. Some of the subject matter of this application was involved in an interference proceeding, which was decided adversely to Exxon. A third application was filed on December 22, 1989. A fourth application was filed on August 30, 1991, and became the '800 patent. At issue is the continuity of pendency of this fourth application with the third application, which "went abandoned" on November 1, 1991.

The fourth application was filed in accordance with the procedures of 37 C.F.R. §1.60 as then in effect. The prosecution record contains a form entitled "37 CFR 1.60 CONTINUATION OR DIVISIONAL FILING FORM" bearing the PTO date stamp August 30, 1991. It is marked as a "continuation" of Serial No. 455,484 filed on December 22, 1989, and as "enclos[ing] a copy of the prior application . . . and the oath or declaration as originally filed." Attached was a copy of the Serial No. 455,484 specification including claims 1-11, and the declaration by the inventors.

In the section of the form marked "CLAIMS AS FILED, LESS ANY CLAIMS CANCELLED BY AMENDMENT BELOW" Exxon inserted "10" Total Claims including "3" Independent Claims. $630.00 was the fee for an application with no more than 20 total claims including no more than 3 independent claims. The form authorized charging $630.00 to Exxon's deposit account.

At the form's printed text: "Cancel in this application original claims ____ of the prior application before calculating the filing fee" Exxon had typed "1-11" in the blank space. Since at least...

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