Friday, June 18, 2010

Britannica torched at CAFC

From the beginning of the case:

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.

The issue:

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 priorthrough the ’955 application.

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.

The bottom line:

In light of our determination that the ’955 application
is not entitled to the priority date of the ’917 application
because it failed to specifically reference the ’917 applica-
tion as required by § 120, we need not resolve the Defen-
dants’ alternative grounds for affirming. We therefore
leave for another day whether filing a continuation on the
day the parent issues results in applications that are co-
pending as required by the statute.

**Please note that this case is related to a patent attorney
malpractice case.

Note Karen Sloan's article
Encyclopaedia Britannica Sues Dickstein Shapiro for $250 Million
which includes:

"The errors and omissions that led to this valuable property loss and Dickstein's response to the admittedly negligent performance at issue are quintessential examples of hornbook malpractice," the lawsuit says.

See also Britannica


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