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To Overcome § 135(b)(1) Precritical Date, Claims Need to Be Compared to Postcritical Date Claims, Not Copied Patent Claims

February 07, 2012

Decision icon Decision

Last Month at the Federal Circuit - March 2012

Judges: Rader, Linn (author), Moore

[Appealed from: Board]

In Adair v. Carter, No. 11-1212 (Fed. Cir. Feb. 7, 2012), the Federal Circuit affirmed the Board’s determination that appellants’ (collectively “Adair”) single claim involved in an interference with Paul J. Carter and Leonard G. Presta (collectively “Carter”) was barred under 35 U.S.C. § 135(b)(1).

Adair filed U.S. Application No. 11/284,261 (“the ’261 application”), along with a request for interference based on Carter’s U.S. Patent No. 6,407,213 (“the ’213 patent”). Adair filed the ’261 application more than one year after issuance of the ’213 patent, but relied on earlier-filed claims from a corresponding PCT application and U.S. national stage application in an attempt to overcome the one-year bar under 35 U.S.C. § 135(b)(1), which states:

A claim which is the same as, or for the same or substantially the same subject matter as, a claim of an issued patent may not be made in any application unless such a claim is made prior to one year from the date on which the patent was granted.

Although the Board declared an interference and awarded Adair priority benefit to his PCT application and an earlier British patent application, the Board determined that Adair’s claim was barred under § 135 (b)(1) because (1) the earlier-filed PCT claims were not patentable to Adair; (2) Adair added limitations to the PCT claims during prosecution in the national stage to overcome rejections under 35 U.S.C. §§ 101, 102(b), 103, and 112; and (3) material differences presumptively existed between the precritical date claims (i.e., claims presented prior to one year from the date on which the patented claims issued) and postcritical date claim (i.e., Adair’s claim presented more than one year from the date on which Carter’s patented claims issued), and Adair failed to rebut the presumption. On rehearing, the Board rejected Adair’s assertion that materiality must be determined in view of the claims being copied and declined to compare Adair’s post- or precritical date claims with the claim copied from Carter’s ’213 patent. Adair appealed.

On appeal, Adair argued that the Board erred by failing to assess material differences “in view of the patent claim being copied” from Carter’s ’213 patent. Adair argued that the materiality test requires an assessment of material limitations based on the identity between the postcritical date claim and the copied claim (i.e., the “count”), and not just the postcritical date claim standing alone. Carter countered that the question of whether there is a sufficient degree of identity between pre- and postcritical date claims for compliance with § 135(b) is a separate and distinct inquiry from any comparison with the patent claims copied. Thus, according to Carter, the Board correctly held that establishing support for postcritical date claims does not entail looking at material limitations of the patented claims.

The Federal Circuit noted that, although a § 135(b)(1) provides a seemingly strict bar to claims more than one year from the critical date, a limited exception exists where the copier had already been claiming substantially the same invention as the patentee prior to the critical date. The Court explained this limited exception, citing Corbett v. Chisholm, 568 F.2d 759, 765 (C.C.P.A. 1977); In re Berger, 279 F.3d 975, 980 (Fed. Cir. 2002); and Regents of the University of California v. University of Iowa Research Foundation, 455 F.3d 1371, 1377 (Fed. Cir. 2006).

In Corbett, the Board rejected postcritical date claims under § 135(b)(2) where the postcritical date claims corresponded exactly with the issued patented claims. On appeal, the Federal Circuit affirmed the Board after comparing the “copied claim” with the precritical date claims and finding material differences. Although the Court identified certain limitations of Chisholm’s patent claim as “material,” the Court was simply noting that material differences existed between that claim as copied by Corbett after the critical date and those precritical date claims Corbett was relying on. The Federal Circuit explained that Corbett did not establish a threshold assessment of which limitations of the patented claims were material before determining whether or not material differences existed between the pre- and postcritical date claims. In making the comparison in that case, the Court referenced the patent claim only because that was the postcritical date claim.

Similarly, in Berger, the postcritical date claim was copied directly from and was identical to the issued patent claim. The Federal Circuit affirmed the Board’s rejection of the copied claim under § 135(b)(1) based on material differences between the pre- and postcritical date claims, and only referred to the issued patent claim because the postcritical date claim was a direct copy of it.

Finally, the Court explained that in Regents it expressly approved an analysis based solely on a comparison of pre- and postcritical date claims in order to determine if postcritical date claims could rely on the date of the earlier-filed claims to overcome a § 135(b)(1) rejection. The Federal Circuit held that “the relationship between the post- and precritical date claims . . . is . . . dispositive of the section 135(b)(1) question.” Slip op. at 9 (quoting Regents, 455 F.3d at 1374). As explained in Regents, “[t]he question of material differences between post- and pre-critical date claims for purposes of overcoming a § 135(b) bar ‘is a distinctly different question from whether claims . . . are directed to the same or substantially the same submit matter’ for purposes of provoking an interference.” Id. (quoting Berger, 279 F.3d at 982).

In this case, the Board found material differences between the pre- and postcritical date claims, noting that Adair added several limitations during prosecution to avoid rejections, and Adair failed to rebut the Board’s findings of materiality. Furthermore, the Court explained that, contrary to Adair’s assertion, in the context of § 135(b)(1), the presumption of Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U.S. 722, 734 (2002), applies such that limitations added to overcome a rejection and secure allowance are presumed material.

The Federal Circuit also rejected Adair’s argument that the Board erred by establishing an absolute requirement that precritical date claims be patentable in order for the applicant to rely on those claims to avoid the § 135(b)(1) bar. The Court stated that the Board did not establish any absolute requirement, but if it did, the error in this case would have been harmless because the Board found material differences between the pre- and postcritical date claims. And lastly, the Court agreed that the Board did not abuse its discretion by refusing to consider other precritical date claims on rehearing because Adair did not address those claims prior to the petition for rehearing.

Summary authored by Matthew R. Van Eman, M.D., Esq.