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Counsel’s Failure to Recognize the Correct Priority Date Does Not Lead to a Substantial Question as to Validity in the Preliminary Injunction Context When the Priority Date Is Clear from the File History

07-1568
May 14, 2008

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Last Month at the Federal Circuit - June 2008

Judges: Michel (author), Prost, Pogue (CIT Judge sitting by designation)

[Appealed from: D.N.J., Judge Cooper]

In E.I. du Pont de Nemours & Co. v. MacDermid Printing Solutions, L.L.C., No. 07-1568 (Fed. Cir. May 14, 2008), the Federal Circuit held that the district court abused its discretion in finding that a substantial question as to validity existed because of uncertainty regarding the priority date of U.S. Patent No. 6,773,859 (“the ’859 patent”), a determination that led to the district court’s denial of E.I. du Pont de Nemours & Company’s (“DuPont”) motion for a preliminary injunction. Thus, the Court vacated and remanded for the district court’s consideration of the remaining preliminary injunction factors as well as the parties’ remaining arguments as to validity and enforceability of the ’859 patent.

DuPont is the assignee of the ’859 patent. The nonprovisional application that led to the ’859 patent was filed on February 27, 2002, but a provisional application was originally filed on March 6, 2001. While the nonprovisional application was filed with an Application Data Sheet (“ADS”) that indicated it was related to the earlier provisional application filed in 2001, the ’859 patent, as issued, did not reference the provisional application due to an oversight by the PTO. After issuance, DuPont sought a certificate of correction to add a reference to the provisional application. The PTO issued a certificate of correction, adding the reference to the provisional application on the title page.

In 2006, DuPont sued MacDermid Inc. and MacDermid Printing Solutions, L.L.C. (collectively “MacDermid”) for infringement of the ’859 patent. DuPont moved for a preliminary injunction and in response, MacDermid raised a number of validity and enforceability challenges, including that the ’859 patent was invalid under 35 U.S.C. § 102(b) because the invention was on sale or in public use before the critical date. According to MacDermid, the critical date was February 27, 2001, or one year before the filing date of the nonprovisional application. DuPont did not contest this date until two days after the district court had a preliminary injunction hearing, when DuPont filed a letter that identified an earlier critical date of March 2000 based on the filing of the provisional application in 2001. After subsequent briefing on the § 102(b) issue and the critical date dispute, the district court denied DuPont’s request for a preliminary injunction. The district court held that DuPont had not shown that MacDermid’s asserted defense that the ’859 patent was invalid under § 102(b) lacked substantial merit. Without explicitly deciding whether DuPont’s argument should be allowed, the district court held that DuPont had failed to prove the earlier critical date and that DuPont’s earlier admissions as to the later critical date raised a substantial question as to validity. DuPont appealed.

On appeal, the Federal Circuit noted that the sole issue on appeal was whether the district court correctly held that MacDermid raised a substantial question of validity based on the uncertainty as to whether the nonprovisional application was entitled to claim priority to the provisional application. The Court found that this conclusion was an abuse of discretion because, based on the undisputed facts in the prosecution history, the nonprovisional application was entitled to the filing date of the provisional application priority date as a matter of law. In so finding, the Court noted that four requirements must be met for a nonprovisional application to claim priority to a provisional application under 35 U.S.C. § 119(e)(1): (1) the provisional must comply with the requirements of § 112, first paragraph, and the nonprovisional must be for the same invention; (2) the nonprovisional must be filed within twelve months of the provisional; (3) there must be an overlap of inventorship; and (4) the nonprovisional must include a specific reference to the provisional.

The Court noted that it was undisputed that the first two requirements of § 119 were met in this case. MacDermid argued, however, that the latter two requirements were not met. The Federal Circuit observed thatthe facts underlying MacDermid’s arguments were not disputed and, thus, determination of the priority date was purely a question of law. The Court added that since the facts were undisputed, DuPont’s counsel’s “conflicting characterization of those facts [was] immaterial to the legal analysis and [could not] serve to create a substantial question of validity,” and that it could resolve the issue of priority in the first instance. Slip op. at 10.

The Court then turned to MacDermid’s arguments regarding overlap of inventorship. MacDermid argued that the ’859 patent could not claim priority to the provisional application because the provisional application named only one inventor, whereas the issued patent named five inventors. Because the provisional and nonprovisional applications were identical, MacDermid argued that they should have named the same inventors, or DuPont should have at least amended the provisional application to name additional inventors. The Federal Circuit disagreed. The Court noted that for a nonprovisional application to be afforded the priority date of the provisional application, the two applications must share at least one common inventor. The Court explained that the MPEP and comments relating to the final rulemaking on regulation 37 C.F.R. § 1.48(d) (allowing correction of inventorship of a provisional application) supported the view that correction of inventorship errors in a provisional are not necessary unless needed to establish inventorship overlap with a nonprovisional application. Because there was at least one common inventor between the provisional and nonprovisional applications here, the Court held that the requirement for overlap of inventorship was met.

With respect to the specific reference requirement, MacDermid argued that the reference in the nonprovisional application was insufficient to claim priority to the provisional application. The Federal Circuit disagreed. It noted that § 119(e)(1) requires, for a claim of priority, that the nonprovisional application contain “a specific reference to the provisional application” and that under MPEP § 201.11, the specific reference can be either in the first sentence of the specification or in the ADS. The Court observed that here, it was undisputed that the ADS contained a reference to the provisional application. MacDermid nonetheless argued that the reference in the ADS was insufficient because DuPont did not use the specific language authorized by the MPEP. The Federal Circuit rejected this argument, noting that the language used by DuPont did not run afoul of the MPEP. It explained that the MPEP requires only that the application use a statement “such as” the one provided in § 201.11 and that a reasonable person reading the language in the ADS would have concluded that the applicant was claiming priority to an earlier provisional application. Thus, the Court found no defect in the language used to reference the provisional application.

Finally, the Court turned to MacDermid’s arguments regarding the certificate of correction. MacDermid argued that the certificate of correction was invalid because the error was DuPont’s, not the PTO’s, since DuPont failed to correct the filing receipt and the published application, both of which made no mention of the priority claim. The Federal Circuit disagreed. It reasoned that it is, of course, desirable to have applicants correct the PTO’s mistakes in a pending application as soon as possible so that the correct information is reflected in published applications and issued patents. The Court explained, however, that the statute did not condition eligibility for a certificate to correct a PTO error on the applicant’s diligence in correcting the mistake and did not set any time limit for seeking such corrections. MacDermid also argued that even if the certificate of correction were valid, it had no effect because it was issued after the cause of action arose, given that MacDermid was already engaged in infringing conduct when the patent issued. The Court rejected this argument as well, noting that MacDermid’s future conduct (i.e., prospective infringement occurring after the issuance of the certificate of correction) was at issue for the purposes of the preliminary injunction motion and that the certificate of correction issued prior to DuPont filing suit. In sum, the Federal Circuit concluded that the undisputed facts of this case showed that the ’859 patent was entitled to claim priority to the provisional application as a matter of law. Accordingly, it vacated and remanded for the district court to consider MacDermid’s remaining invalidity and unenforceability challenges in light of the correct priority date, as well as the remaining preliminary injunction factors.