• Case: Zenon Environmental v. U.S. Filter Corp, 2007 US App. LEXIS 25892
• Facts: The invention was an improvement of a water filtration system. The improvement is the addition of a part that creates bubbles in the water, which helps reduce the build up of organic and inorganic debris on the filtration system. This effect reduces the frequency where the filtration system has to be cleaned
• Procedural Posture: Zenon sued U.S. Filter for infringement on three patents. The district court held a Markman hearing to construe the claims. After the Markman hearing, the district court granted in part and denied in part US Filter’s motion for summary judgment. The motion was granted for one patent, and denied for two other patents.
The court held a bench trial on the validity of the ‘319 patent. US Filter argued that the previously filed ‘373 patent invalidated the ‘319 patent by anticipating it. The district court rejected this argument, and held that US filter did not show that the ‘319 patent was invalid. US Filter appealed to the Federal Circuit
• Arguments: US filter argued that Zenon should not get the benefit of the ‘373 patent priority date, because the ‘319 patent is not supported by prior patents. Zenon argued that US Filter did not meet its clear and convincing burden of proving invalidity, and that the ‘319 patent should get the ‘373 date because the PHOSITA would understand that the ‘373 patent was properly incorporated by reference in the intervening patents
• Holding: Agrees with US Filter that the district court erred in concluding that the ‘319 patent is entitled to the priority date of the ‘373 patent, and thus clearly erred in concluding that the ‘319 patent was not anticipated by the ‘373 patent
• Reasoning/Importance: In order to gain the benefit of the filing date of a earlier application under §120, each application in the chain must comply with the written description requirement of §120. The court did not think that the PHOSITA would think that the ‘319 patent included the same description as the previous patents.
• Dissent: The question of what the PHOSITA would think is a question of fact, and the majority should not answer that question and then say the analysis is a question of law. The majority is creating a new “judicial tightrope†by creating a new area of de novo appellate authority where the court will look at factual foundations of incorporation under §120.
• Facts: The invention was an improvement of a water filtration system. The improvement is the addition of a part that creates bubbles in the water, which helps reduce the build up of organic and inorganic debris on the filtration system. This effect reduces the frequency where the filtration system has to be cleaned
• Procedural Posture: Zenon sued U.S. Filter for infringement on three patents. The district court held a Markman hearing to construe the claims. After the Markman hearing, the district court granted in part and denied in part US Filter’s motion for summary judgment. The motion was granted for one patent, and denied for two other patents.
The court held a bench trial on the validity of the ‘319 patent. US Filter argued that the previously filed ‘373 patent invalidated the ‘319 patent by anticipating it. The district court rejected this argument, and held that US filter did not show that the ‘319 patent was invalid. US Filter appealed to the Federal Circuit
• Arguments: US filter argued that Zenon should not get the benefit of the ‘373 patent priority date, because the ‘319 patent is not supported by prior patents. Zenon argued that US Filter did not meet its clear and convincing burden of proving invalidity, and that the ‘319 patent should get the ‘373 date because the PHOSITA would understand that the ‘373 patent was properly incorporated by reference in the intervening patents
• Holding: Agrees with US Filter that the district court erred in concluding that the ‘319 patent is entitled to the priority date of the ‘373 patent, and thus clearly erred in concluding that the ‘319 patent was not anticipated by the ‘373 patent
• Reasoning/Importance: In order to gain the benefit of the filing date of a earlier application under §120, each application in the chain must comply with the written description requirement of §120. The court did not think that the PHOSITA would think that the ‘319 patent included the same description as the previous patents.
• Dissent: The question of what the PHOSITA would think is a question of fact, and the majority should not answer that question and then say the analysis is a question of law. The majority is creating a new “judicial tightrope†by creating a new area of de novo appellate authority where the court will look at factual foundations of incorporation under §120.