ENCYCLOPAEDIA BRITANNICA INC. v. ALPINE Elec.S of Am. INC.
| Decision Date | 18 June 2010 |
| Docket Number | No. 2009-1544, -1545,2009-1544, -1545 |
| Parties | ENCYCLOPAEDIA BRITANNICA, INC., Plaintiff-Appellant,v.ALPINE ELECTRONICS OF AMERICA, INC., AND andDENSO CORPORATION, TOYOTA MOTOR SALES, U.S.A., INC., AND andAMERICAN HONDA MOTOR CO., INC., AND andGARMIN INTERNATIONAL, INC., Defendant-Appellee. |
| Court | U.S. Court of Appeals — Federal Circuit |
John C. Rozendaal, Kellogg, Huber, Hansen, Todd, Evans & Figel, P.L.L.C., of Washington, DC, argued for plaintiff-appellant. With him on the brief were K. Chris Todd, Geoffrey M. Klineberg, and Brendan J. CRIMMINS.
PAUL
LAUREN
Appeals from the United States District Court for the Western District of Texas in consolidated case Nos. 1:06-CV-00578 and 1:07-CV-00787, Judge Lee Yeakel.
Of counsel were DAVID G. WlLLE, Baker Botts LLP, of Dallas, Texas, and WILLIAM S. FOSTER, Jr., of Washington, DC.
R. STEADMAN, Kirkland & Ellis LLP, of Chicago, Illinois, argued for defendants-appellees Alpine Electron-ics of America, Inc., et al., DENSO Corporation, et al., American Honda Motor Co., Inc., and Garmin Interna-tional, Inc. With him on the brief for DENSO Corpora-tion, et al., was SHIRA J. KAPPLIN. On the brief for Alpine Electronics of America, Inc., et al., were GARY M. ROPSKI, CYNTHIA A. HOMAN, LAURA BETH MILLER, and Christopher A. Harkins, Brinks Hofer Gilson & Lione, of Chicago, Illinois. On the brief for American Honda Motor Co., Inc., were John T. Johnson, Fish & Richardson P.C., of New York, New York, and THOMAS S. MCCLENAHAN, of Minneapolis, Minnesota. On the brief for Garmin Interna-tional, Inc., was RAYMOND W. Mort, III, DiNovo, Price, Ellwanger, & Hardy LLP, of Austin, Texas.
A. DEGNAN, Fish & Richardson, P.C., of Washington, DC, argued for defendant-appellee TomTom, Inc. With her on the brief were JAMES A. FUSSELL, III, and Ruffin B. Cordell.
Before Bryson, Gajarsa, and Moore, Circuit Judges.
Encyclopaedia Britannica, Inc. (Britannica) is the as-signee of U.S. Patent Nos. 7, 051, 018 (the '018 patent) and 7, 082, 437 (the '437 patent). The '018 and '437 patents relate to a multimedia database search system for retriev-ing textual and graphical information. Britannica sued Alpine Electronics of America, Inc., Alpine Electronics, Inc., DENSO Corporation, Toyota Motor Sales, U.S.A., Inc., Magellan Navigation, Inc., American Honda Motor Company, Inc., TomTom, Inc., and Garmin International, Inc. (collectively, Defendants), alleging infringement of the '018 and '437 patents. The Defendants moved for summary judgment that the patents in suit are invalid as anticipated by Britannica's published foreign application. The district court granted their motion for summary judgment, declared the '018 and '437 patents invalid as anticipated, and dismissed the cases. See Encyclopaedia Britannica, Inc. v. Alpine Elecs. of Am., Inc., 643 F. Supp. 2d 874 (S.D. Tex. 2009). Britannica appeals. For the reasons set forth below, we affirm.
Though both patents at issue were filed June 13, 2005, they each claim priority back to October 26, 1989 through a chain of patents and patent applications. The decision on appeal hinges on whether these patents are entitled to this priority date. Each of these patents con-tains an identical priority claim under the section titled "Related U.S. Application Data":
Continuation of application No. 10/103, 814, filed on Mar. 25, 2002, which is a continuation of appli-cation No. 08/202, 985, filed on Feb. 28, 1994, now Pat. No. 6, 546, 399, which is a continuation of ap-plication No. 08/113, 955, filed on Aug. 31, 1993, now abandoned, which is a continuation of appli-cation No. 07/426, 917, filed on Oct. 26, 1989, now Pat. No. 5, 241, 671.
Britannica's foreign patent application, WO91/06916, published on May 16, 1991, was found to anticipate under 35 U.S.C. § 102(b). Hence if the patents in suit are enti-tled to a priority date not later than one year after May 16, 1991, the foreign publication would not anticipate. The district court held that the patents in suit were not entitled to claim priority to U.S. Patent Application No. 07/426, 917 (the '917 application) because an intermediate application in the chain of priority, U.S. Patent Applica-tion No. 08/113, 955 (the '955 application), failed to satisfy the requirements of 35 U.S.C. § 120. The district court reasoned that because the '955 application was not enti-tled to the priority date of the '917 application, later filed patents could not claim priority to the '917 application through the '955 application.
The '955 application was filed on August 31, 1993, the same day the '917 application issued as the '671 patent.1 The '955 application was not submitted with a filing fee or a declaration signed by the named inventors and was missing its first page entirely. The '955 application contained no reference to the '917 application. It made no claim of priority to any earlier filed applications; such a claim is generally made on the first page of the applica-tion. On September 14, 1993, the PTO sent Britannica a Notice of Incomplete Application and a Notice to File Missing Parts of Application, stating that the application was missing the first page of the specification, the oath or declaration, and the filing fee. The PTO indicated thatthe filing date for the '955 application would be the date that it received page 1 of the specification unless the applicant established by petition that the application was complete without page 1.
Britannica responded to the notices by filing a Peti-tion for Granting a Filing Date, in which Britannica argued that the missing page was not necessary to under-stand the subject matter claimed and requested that the application be accepted without the omitted page. Bri-tannica did not include an oath or declaration from the inventors to support its petition. The PTO issued a Decision on Petition, stating that the application was prima facie incomplete without the first page of the specification and that Britannica's argument that the first page was unnecessary could not be accepted without an oath or declaration from the inventors as required by the Manual of Patent Examining Procedure (MPEP) § 608.01. See Manual of Patent Examining Procedure 600-28 to-29 (5th ed. Rev. 15 Aug. 1993). The PTO dismissed Britan-nica's Petition for Granting a Filing Date without preju-dice, stating that the amended application without page 1 could receive the filing date of August 31, 1993, if Britan-nica filed a request for reconsideration along with an oath or declaration from the inventors stating that their inven-tion was adequately disclosed in the application without page 1. Britannica requested a four-month extension on February 28, 1994, but never filed a request for reconsid-eration.2 The PTO issued a notice of abandonment for the '955 application on March 23, 1995.
Prior to the abandonment of the '955 application, on February 28, 1994, Britannica filed U.S. Patent Applica-tion No. 08/202, 985 (the '985 application), which claims priority to the '955 application and indicates that the '955 application claims priority to the '917 application. The '985 application issued as U.S. Patent No. 6, 546, 399 (the '399 patent) on April 8, 2003. Prior to issuance of the '399 patent, Britannica filed U.S. Patent Application No. 10/103, 814, which also claims priority to the '917 applica-tion through a priority chain including the '985 and '955 applications. The two patents in suit claim priority back through this chain to the '917 application.
The court held that the '955 application was not enti-tled to the priority date of the '917 application because it did not contain a specific reference to the earlier applica-tion as required by 35 U.S.C. § 120. The court reasoned that because the '955 application was not entitled to claim priority to the '917 application, no later patent in the chain could claim priority to the '917 application through the '955 application.
Because the patents in suit could not claim priority through the '955 application to the '917 application's filing date (October 26, 1989), the district court held that the patents were invalid as anticipated by the foreign patent application, which was published May 16, 1991. The district court therefore granted summary judgment ofinvalidity in favor of Defendants. Britannica appeals. We have jurisdiction pursuant to 35 U.S.C. § 1295(a)(1).
We review a district court's interpretation of a statute de novo. Studiengesellschaft Kohle, M.B.H. v. Shell Oil Co., 112 F.3d 1561, 1564 (Fed. Cir. 1997). We review a district court's grant of summary judgment de novo, reapplying the standard applicable at the district court. Young v. Lumenis, Inc., 492 F.3d 1336, 1344 (Fed. Cir. 2007). "While anticipation is a question of fact, it may be decided on summary judgment if the record reveals no genuine dispute of material fact." Leggett & Platt, Inc. v. VUTEk, Inc., 537 F.3d 1349, 1352 (Fed. Cir. 2008).
There is no factual dispute over whether the pub-lished foreign patent application contains all the elements of the claims of the patents in suit. The sole issue on appeal, one of first impression for this court, is whether 35 U.S.C. § 120 requires an intermediate application in a priority chain to "contain a specific reference to the earlier filed application."3 At the time the '955 application was pending before the PTO, § 120 provided as follows:
An application for patent for an invention dis-closed in the manner provided by the first para-graph of section 112 of this title in an application previously filed in the United States, or as pro-vided by section 363 of this title, which is filed by an inventor or inventors named in the previously filed application shall have the same effect, as to such invention, as though filed on the date of theprior application, if filed before...
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