Broadcast Innovation, L.L.C. v. Charter Comms., 05-1008.

• Citation: 420 F.3d 1364
• Decision Date: 19 August 2005
• Docket Number: No. 05-1008.,05-1008.
• Parties: BROADCAST INNOVATION, L.L.C. and IO Research Pty Ltd., Plaintiffs-Appellants, v. CHARTER COMMUNICATIONS, INC., Defendant-Appellee, and Comcast Corporation, Defendant.
• Court: United States Courts of Appeals. United States Court of Appeals for the Federal Circuit

420 F.3d 1364

BROADCAST INNOVATION, L.L.C. and IO Research Pty Ltd., Plaintiffs-Appellants, v. CHARTER COMMUNICATIONS, INC., Defendant-Appellee, and Comcast Corporation, Defendant.

No. 05-1008.

United States Court of Appeals, Federal Circuit.

August 19, 2005.

Paul M. Smith, Jenner & Block LLP, of Washington, DC, argued for plaintiffs-appellants. With him on the brief were Jonathan T. Suder and Edward R. Nelson III, Friedman, Suder & Cooke, of Fort Worth, Texas; and Edward W. Goldstein and Corby R. Vowell, Goldstein & Faucett, L.L.P., of Houston, Texas.

Beth S. Brinkmann, Morrison & Foerster LLP, of Washington, DC, argued for defendant-appellee. On the brief were Robert M. Harkins, Jr., of San Francisco, California; and David C. Doyle and Jose L. Patino, of San Diego, California.

Before MAYER, RADER, and DYK, Circuit Judges.

RADER, Circuit Judge.

On summary judgment, the United States District Court for the District of Colorado determined that U.S. Patent No. 6,076,094 (the '094 patent) is invalid under 35 U.S.C. § 102(b). Broadcast Innovation L.L.C. v. Charter Communications, Inc., 03-WY-2223-AJ (BNB) (D.Col. Aug. 4, 2004) (Summary Judgment Order). Because the district court improperly determined the '094 patent's priority date, this court reverses.

I.

IO Research Pty. Limited of Australia (IO Research) owns the '094 patent. Broadcast Innovation L.L.C. (Broadcast), by exclusive license, has the right to enforce the '094 patent in the United States. Summary Judgment Order, slip op. at 4 n. 7. Broadcast sued Comcast Corp. (Comcast) and Charter Communications, Inc. (Charter) on November 7, 2003, alleging infringement of claims 8, 15, 22 and 29 of the '094 patent. Comcast settled with the plaintiffs on June 28, 2004, and thus is not a party to the present appeal. With the court's permission, IO Research later joined the litigation. Id. at 2. Broadcast and IO Research will collectively be referred to as "IO" throughout this opinion.

Before trial, Charter filed a motion for summary judgment that "the '094 Patent is invalid as a matter of law because its earliest priority date — July [18,] 1995 — falls more than one year after the [June 9, 1994] publication of [PCT/AU93/00607] regarding the same technology." Id., slip op. at 4. The district court granted Charter's motion on August 3, 2004, and this appeal followed. Id., slip op. at 25. This court has jurisdiction pursuant to 28 U.S.C. § 1295(a)(1) (1994).

II.

The '094 patent claims a distributed database system with applicability to data broadcasting and data casting communications media. '094 patent, col. 1, ll. 11-14. This distributed database system was initially disclosed in a series of three Australian patent applications filed in the fall of 1992 and the winter of 1993, and later consolidated into a single international application PCT/AU/93/00607 (the PCT application) filed on November 26, 1993. Summary Judgment Order, slip op. at 7. The PCT application became a national stage application in the United States on July 18, 1995 as no. 08/436,336 (the '336 application). The '336 application eventually matured into U.S. Patent No. 5,737,595 (the '595 patent).

Before issuance of the '595 patent, the applicant filed a continuation application as 09/054,896 (the '896 application). The '896 application, in turn, matured into U.S. Patent No. 5,999,934 (the '934 patent). Again before issuance of the '934 patent, the applicant filed a divisional application 09/316,164 (the '164 application). This divisional matured into the '094 patent which is at issue in the present case.

The '094 patent does not include a specific reference to the initial Australian patent applications or the PCT application on its cover or in its specification. During prosecution of the '164 application (the application that became the '094 patent), the applicant filed a transmittal letter and an oath & declaration claiming priority to the Australian applications and the PCT application. The '094 patent itself merely states:

This application is a divisional of U.S. patent application Ser. No. 09/054,896, filed Apr. 3, 1998, now patented as U.S. Pat. No. 5,999,934, which is a continuation of U.S. patent application Ser. No. 08/436,336, filed Jul. 18, 1995, now patented as U.S. Pat. No. 5,737,595.

'094 patent, col. 1, ll. 4-8. The district court based its summary judgment of invalidity on the absence of any specific reference to the PCT application on the face of the '094 patent.

III.

This court reviews the district court's grant or denial of summary judgment under the law of the regional circuit. Chamberlain Group, Inc. v. Skylink Techs., Inc., 381 F.3d 1178, 1191 (Fed.Cir. 2004). Under the law of the tenth circuit, the grant or denial of a summary judgment motion is reviewed de novo. Simms v. Oklahoma ex rel. Dep't of Mental Health & Substance Abuse Servs., 165 F.3d 1321, 1326 (10th Cir.1999). A summary judgment motion requires the trial court to ascertain that the case presents no genuine issues of material fact. See Fed.R.Civ.P. 56(c); Celotex Corp. v. Catrett, 477 U.S. 317, 322, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986). Indeed this case presents no disputed issues of fact relevant to the district court's invalidity determination. The '094 patent includes a specific reference to its predecessors, the '934 patent and the '595 patent, but does not include a specific reference to the PCT application on its cover or in its specification. Thus, the issue before this court is purely a question of law — namely, what is the priority date of the '094 patent in the absence of a specific reference to the PCT application?

The district court based its priority determination on its interpretation of various statutes and regulations. This court reviews the district court's interpretation of statutory and regulatory provisions without deference. Merck & Co. v. Kessler, 80 F.3d 1543, 1549 (Fed.Cir.1996). In that review, appellate courts may address arguments beyond those originally presented by the parties to the district court, particularly where the issue presents significant questions of general impact or of great public concern as in the present case which potentially impacts a large number of patents originating from foreign applications. See L.E.A. Dynatech Inc. v. Allina, 49 F.3d 1527, 1531 (Fed.Cir.1995) (citing Dean Witter Reynolds, Inc. v. Fernandez, 741 F.2d 355, 360-61 (11th Cir.1984); Brooktree Corp. v. Advanced Micro Devices, Inc., 977 F.2d 1555, 1575 (Fed.Cir.1992)). Section 120 of title 35 sets forth requirements for a U.S. patent to claim priority based on an earlier filed application:

An application for patent for an invention disclosed ... in an application previously filed in the United States, or [in a PCT application designating the U.S.] as provided by section 363 of this title ... shall have the same effect ... 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 or on an 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 (effective to November 28, 2000) (emphasis added). 35 U.S.C. § 120 was amended in 1999 by Pub. L. No. 106-113 to add:

No application shall be entitled to the benefit of an earlier filed application under this section unless an amendment containing the specific reference to the earlier filed application is submitted at such time during the pendency of the application as required by the Director. The Director may consider the failure to submit such an amendment within that time period as a waiver of any benefit under this section. The Director may establish procedures, including the payment of a surcharge, to accept an unintentionally delayed submission of an amendment under this section.

35 U.S.C. § 120 (effective Nov. 29, 2000). Both versions of § 120 state that a patent application must contain a "specific reference" to an earlier filed application to qualify for the filing date of the prior application. This court need not address which version of the statute controls because the outcome is the same in either case.

The United States Patent & Trademark Office (USPTO) has promulgated regulations to specify the procedures for claiming priority under § 120. See 37 C.F.R. § 1.78(a)(2)(i) (1997) (requiring specific reference in the first sentence of the specification). 37 C.F.R. § 1.78(a) was amended after issuance of the '094 patent to allow applicants to file an application data sheet (ADS) including priority information for an application instead of or along with providing reference in the specification itself, the ADS causing the USPTO to print the priority information on the patent cover page. See 37 C.F.R. § 1.78(a)(2)(iii) (2000). Both versions of the statute, as well as the 1997 version and the 2000 version of § 1.78(a), require some reference to earlier filed applications (i.e., in the specification or on the cover page) to qualify for priority based on those earlier filings. Here the applicant properly referenced the national stage of a PCT application (i.e., the application that became the '595 patent). Where proper reference to a national stage application exists, no reference to the corresponding PCT application is required because...