In Re Peter Joseph Giacomini

• Decision Date: 07 July 2010
• Docket Number: No. 2009-1400.,2009-1400.
• Citation: 612 F.3d 1380
• Parties: In re Peter Joseph GIACOMINI, Walter Michael Pitio, Hector Francisco Rodriguez, and Donald David Schugard.
• Court: U.S. Court of Appeals — Federal Circuit

612 F.3d 1380

In re Peter Joseph GIACOMINI, Walter Michael Pitio, Hector Francisco Rodriguez, and Donald David Schugard.

No. 2009-1400.

United States Court of Appeals Federal Circuit.

July 7, 2010.

Jason Paul Demont, DeMont & Breyer, LLC, of Holmdel, NJ, argued for appellants. With him on the brief was Robert L. Greenberg. Of counsel was Josephine A. Paltin.

Thomas L. Stoll, Associate Solicitor, Office of the Solicitor, United States Patent and Trademark Office, of Arlington, VA, argued for the Director of the United States Patent and Trademark Office. With him on the brief were Raymond T. Chen, Solicitor, and Thomas W. Krause, Associate Solicitor.

Before RADER ^*, Chief Judge, GAJARSA and DYK, Circuit Judges.

RADER, Chief Judge.

Peter Joseph Giacomini, Walter Michael Pitio, Hector Francisco Rodriguez, and Donald David Shugard (collectively, “Giacomini”) appeal from a decision of the Board of Patent Appeals and Interferences (“Board”) rejecting certain claims of U.S. Patent Application No. 09/725,737 as anticipated under 35 U.S.C. § 102. Ex parte Giacomini, No. 2009-0139, 2009 WL 1031659 (B.P.A.I. Apr. 15, 2009). Giacomini argues that the anticipatory reference, U.S. Patent No. 7,039,683 (“the Tran patent”), does not qualify as prior art because Giacomini's filing date antedates the Tran patent's filing date. Because the Tran patent has a patent-defeating effect as of the filing date of the provisional application to which it claims priority and which was filed before Giacomini's application, this court affirms.

I.

Giacomini's application-“Method and Apparatus for Economical Cache Population”-was filed on November 29, 2000. The application claims a technique for selectively storing electronic data in a readily accessible memory called a “cache.” When a system retrieves requested data from a source, it stores the data in its cache so that it can retrieve the data more quickly next time. Because the cache has a limited space, the system must selectively store data. Giacomini's technique populates the cache with data only when the system receives a certain number of requests for that data. Claim 1 is representative:

A method comprising:

populating a cache with a resource only when at least i requests for said resource have been received;

wherein i is an integer and is at least occasionally greater than one.

This cache does not normally include infrequently requested data because it “at least occasionally” stores data for which multiple requests have been made. Claims 1, 2, 8, 11, 12, 15, 22-24, 27, 28, 31, and 32 of Giacomini's application are at issue on appeal.

II.

The Board rejected certain claims of Giacomini's application as anticipated under 35 U.S.C. § 102 by the Tran patent, and, in the alternative, by U.S. Patent No. 6,463,509 (“the Teoman patent”).

The Tran patent-“Electronic Information Caching”-describes a caching technique based on an anticipated demand for data. Its “anticipating module” considers “past requests for access to the same or related electronic information by access requesters.” Tran patent col.1 ll.49-52. Such “past requests for information may be measured by the frequency or volume of access requests.” Id. col.3 ll.25-28. The Board found, and Giacomini does not dispute, that the Tran patent teaches all of the claimed features in Giacomini's application.

The central issue at the Board was the eligibility of the Tran patent to serve as prior art under 35 U.S.C. § 102(e). The Tran patent's filing date is December 29, 2000, exactly a month after Giacomini filed his application. However, the Tran patent claims priority to a provisional application (“the Tran provisional”) filed on September 25, 2000, which antedates Giacomini's filing date. Therefore, the Board held that the Tran patent has a patent-defeating effect as of the filing date of the Tran provisional.

Giacomini appeals the Board's decision that the Tran patent and the Teoman patent each anticipates his application. This court has jurisdiction under 28 U.S.C. § 1295(a)(4).

III.

This court reviews the Board's legal conclusions, including statutory interpretation, without deference. In re Swanson, 540 F.3d 1368, 1374-75 (Fed.Cir.2008). Anticipation is a question of fact. In re Gleave, 560 F.3d 1331, 1334-35 (Fed.Cir.2009). This court reviews the Board's factual determinations for substantial evidence. Id.

IV.

Section 102 governs the conditions of patentability. The statute, in pertinent part, states:

[A] person shall be entitled to a patent unless ... the invention was described in ... (2) a patent granted on an application for patent by another filed in the United States before the invention by the applicant for patent....

35 U.S.C. § 102(e)(2) (emphasis added). An application that a patent was “granted on” is the first U.S. application to disclose the invention claimed in the patent. In re Klesper, 55 C.C.P.A. 1264, 397 F.2d 882, 885-86 (1968). Title 35 further clarifies that “[t] he provisions of this title relating to applications for patent shall apply to provisional applications for patent, except as otherwise provided, and except ... [in] sections 115, 131, 135, and 157 of this title.” 35 U.S.C. § 111(b)(8). Under this encompassing rule, “applications for patent” under section 102 includes both provisional and non-provisional patent applications. Therefore, an applicant is not entitled to a patent if another's patent discloses the same invention, which was carried forward from an earlier U.S. provisional application or U.S. non-provisional application.

As noted, Giacomini does not dispute that the Tran patent describes the invention claimed in Giacomini's application. Also, the Tran provisional, which antedates Giacomini's filing date, was the first U.S. application to describe the invention. The Board found that “[t]he Provisional Application No. 60/234,996, from which Tran claims priority under 35 U.S.C. § 119(e), discloses that ‘[a]nticipating requests for electronic information ... is generally performed based on one ore [sic] more criteria, e.g., past requests for information.’ ” Ex parte Giacomini, No. 2009-0139, at *5. Section 119(e) treats a nonprovisional application as though filed on the date of its corresponding provisional application. 35 U.S.C. § 119 (Benefit of earlier filing date; right of priority) recites:

(e)(1) An application for patent filed under section 111(a) or section 363 of this title for an invention disclosed in the manner provided by the first paragraph of section 112 of this title in a provisional application filed under section 111(b) of this title, by an inventor or inventors named in the provisional application, shall have the same effect, as to such invention, as though filed on the date of the provisional application filed under section 111(b) of this title, if the application for patent filed under section 111(a) or section 363 of this title is filed not later than 12 months after the date on which the provisional application was filed and if it contains or is amended to contain a specific reference to the provisional application....

35 U.S.C. § 119(e)(1) (emphases added).

An important limitation is that the provisional application must provide written description support for the claimed invention. Because Giacomini never argued before the Board that the Tran provisional failed to provide written description support for the claimed subject matter in accordance with section 119(e), Giacomini waived the argument by failing to raise it below. See In re Watts, 354 F.3d 1362, 1368 (Fed.Cir.2004) (declining to consider arguments that the applicant failed to contest before the Board); In re Berger, 279 F.3d 975, 984 (Fed.Cir.2002) (same). Therefore, the Tran patent “shall have the same effect,” including a patent-defeating effect, as to the claimed invention as though it was filed on the date of the Tran provisional. Accordingly, Giacomini, who filed his application after Tran filed his provisional application, cannot receive a patent covering the same subject matter under 35 U.S.C. § 102(e).

This conclusion is consistent with “[t]he fundamental rule ... that the patentee must be the first inventor.” Alexander Milburn Co. v. Davis-Bournonville Co., 270 U.S. 390, 402, 46 S.Ct. 324, 70 L.Ed. 651 (1926). In Milburn, the Supreme Court held that a patent applied for before but not granted until after a second patent is sought bars the issuance of the second patent. Id. at 400-01, 46 S.Ct. 324. The rule stems from the principle that, subject to certain exceptions, “one really must be the first inventor in order to be entitled to a patent.” Id. at 400, 46 S.Ct. 324. Although Milburn concerned a nonprovisional application, a provisional application similarly shows that someone else was the first to invent. See id. at 400, 46 S.Ct. 324 (“[O]bviously one is not the first inventor if ... somebody else has made a complete and adequate description of the thing claimed before the earliest moment to which the alleged inventor can carry his invention back.”). The Tran provisional evinces that Tran, and not Giacomini, was the first to invent the claimed subject matter. Allowing Giacomini's application would create an anomalous result where someone who was not the first to invent in the United States receives a patent.

Giacomini argues that 35 U.S.C. § 119(e) shifts a patent's priority date but not its effective reference date to the filing date of an earlier provisional application. In other words, Giacomini contends that although the Tran patent claims the benefit of priority to the Tran provisional, the Tran patent does not have a patent-defeating effect as of the Tran provisional's filing date.

Giacomini's distinction between priority date and effective reference date largely stems from In re Hilmer, 53 C.C.P.A. 1288, 359 F.2d 859 (1966). The issue in Hilmer was whether a U.S. patent, cited as a section 102(e) prior art reference, was effective as of its foreign filing date under section 119. Id. at 862. This...