Hollmer v. Harari

United States Court of Appeals

for the Federal Circuit

__________________________

(Interference No. 105,606)

SHANE C. HOLLMER AND LEE E. CLEVELAND,

Appellants,

v.

ELIYAHOU HARARI AND SANJAY MEHROTRA,

Appellees.

__________________________

2011-1276

__________________________

Appeal from the United States Patent and Trademark

Office, Board of Patent Appeals and Interferences.

__________________________

Decided: June 7, 2012

__________________________

DEANNE E. MAYNARD, Morrison & Foerster, LLP, of

Washington, DC, argued for appellants. With her on the

brief were ALEXANDER J. HADJIS and KRISTIN L.

YOHANNAN; and GREGORY W. REILLY, of San Diego, Cali-

fornia. Of counsel on the brief were MARTIN C. FLIESLER

and JOSEPH P. O’MALLEY, Fliesler Meyer LLP, of San

Francisco, California.

HOLLMER v. HARARI 2

WILLIAM A. BIRDWELL, Davis Wright Tremaine, LLP,

of Portland, Oregon, argued for appellees. With him on

the brief were TIMOTHY R. VOLPERT and SCOTT E.

WARNICK.

__________________________

Before PROST, MAYER, and O’MALLEY, Circuit Judges.

PROST, Circuit Judge.

This case is a second appeal from the United States

Patent and Trademark Office, Board of Patent Appeals

and Interferences (“Board”) involving Patent Interference

No. 105,606(JL) between Eliyahou Harari and Sanjay

Mehrotra (collectively “Harari”), named inventors on

pending U.S. Patent Application No. 09/310,880 (“’880

application”), and Shane C. Hollmer and Lee E. Cleveland

(collectively “Hollmer”), named inventors on U.S. Patent

No. 5,828,601 (“’601 patent”). The Board entered judg-

ment against Hollmer after finding that Harari’s ’880

application was entitled to the benefit of the filing date of

Harari’s U.S. Patent Application No. 07/337,566 (“’566

application”) and thus preceded the date of conception for

Hollmer’s ’601 patent. Because the Board misinterpreted

our previous decision in Harari v. Hollmer, 602 F.3d 1348

(Fed. Cir. 2010) (“Harari I”), in finding that continuity

was maintained in the chain of priority between the ’566

application and the ’880 application involved in the inter-

ference, we reverse the Board’s decision and remand.

I. BACKGROUND

Harari’s ’880 application was filed on May 14, 1999,

and is part of a chain of patent applications beginning

with the ’566 application, which was filed on April 13,

1989. The ’880 application is a continuation of U.S.

Patent Application No. 08/771,708 (“’708 application”),

3 HOLLMER v. HARARI

which is a continuation of U.S. Patent Application No.

08/174,768 (“’768 application”), which is a continuation of

U.S. Patent Application No. 07/963,838 (“’838 applica-

tion”), which is a divisional of the original ’566 applica-

tion. 1

The ’566 application was filed on the same day as Ha-

rari’s U.S. Patent Application No. 07/337,579 (“’579

application”). The following incorporation statement from

the ’566 application was copied into the subsequent

applications in the priority chain and is at the heart of

this appeal:

Optimized erase implementations have been

disclosed in two copending U.S. patent applica-

tions. They are copending U.S. patent applica-

tions, Serial No. 204,175, filed June 8, 1988, by

Dr. Eliyahou Harari and one entitled “Multi-State

EEprom Read and Write Circuits and Tech-

niques,” filed on the same day as the present appli-

cation, by Sanjay Mehrotra and Dr. Eliyahou

Harari. The disclosures of the two applications

are hereby incorporate[d] by reference.

J.A. 1204 (emphasis added). Harari’s ’579 application is

the above-referenced application titled “Multi-State

EEprom Read and Write Circuits and Techniques” that

was “filed on the same day” as the ’566 application.

The ’880 application included a photocopy of the ’566

application, a transmittal sheet identifying the filing as a

continuation application, and a preliminary amendment.

1 The ’838 and ’768 applications ultimately is-

sued as U.S. Patent Nos. 5,297,148 and 5,602,987, respec-

tively.

HOLLMER v. HARARI 4

The preliminary amendment revised the above incorpora-

tion by reference language copied from the ’566 applica-

tion to refer to the ’579 application by both serial number

and filing date and added additional material from the

’579 application.

During the interference proceedings before the Board,

Hollmer filed a motion arguing that Harari’s involved

claims were unpatentable under 35 U.S.C. § 112, first

paragraph, for lack of written description. Specifically,

Hollmer argued that the ’579 application was not properly

identified in the ’880 application’s original disclosure

because the ’579 application was not “filed on the same

day” as the ’880 application. As a result, Hollmer con-

tended, the material from the ’579 application in the

preliminary amendment was new matter under 35 U.S.C.

§ 132. The Board agreed, granting Hollmer’s motion and

entering judgment against Harari.

On appeal in Harari I, we concluded that the Board

had applied an incorrect standard for determining

whether the ’579 application was incorporated into the

’880 application’s original disclosure, and we articulated a

narrow rule for reviewing such statements when an

applicant seeks to amend an ambiguous incorporation

statement at the “initial filing stage”: “The proper stan-

dard by which to evaluate the sufficiency of incorporation

by reference language, at this stage of the proceedings, is

whether the identity of the incorporated reference is clear

to a reasonable examiner in light of the documents pre-

sented.” Harari I, 602 F.3d at 1352-53 (emphasis added).

Applying this standard, we held that the reasonable

examiner, who had the benefit of the transmittal sheet

and the preliminary amendment, would understand that

the copied language from the original ’566 application in

the ’880 application referred to the ’579 application. Id. at

5 HOLLMER v. HARARI

1353-54. As a result, the preliminary amendment was

not new matter. Id. We reversed and remanded to the

Board for further proceedings. Id. at 1354.

On remand, the Board addressed Harari’s motion

seeking the benefit of the filing date of the ’566 applica-

tion for the ’880 application. To resolve this motion, the

Board had to determine whether the intervening ’838 and

’768 applications sufficiently incorporated the ’579 appli-

cation by reference such that 35 U.S.C. § 120’s continuity

requirements were satisfied. If they did, the ’880 applica-

tion was entitled to the benefit of the April 13, 1989 filing

date of the ’566 application; if they did not, the ’880

application was only entitled to the benefit of the Decem-

ber 20, 1996 filing date of the ’708 application, which

undisputedly discloses the ’579 application.

The intervening ’838 and ’768 applications contain the

same incorporation language copied from the ’566 applica-

tion but, unlike the ’880 application, were never amended

to refer to the ’579 application by serial number and filing

date. In reviewing these intermediate applications, the

Board continued to apply the Harari I reasonable exam-

iner standard, finding that “[t]he determining attribute

[for determining the correct standard] is the status of

Harari’s involved [’880 application], which has not yet

issued as a patent.” J.A. 17. Using this standard, the

Board found that a reasonable examiner would have had

access to all of the filing papers, including the transmittal

sheets, for the ’838 and ’768 applications, and conse-

quently would have understood that the disputed incorpo-

ration by reference language in those applications

referred to the ’579 application. J.A. 16-17. Accordingly,

the Board determined that continuity between the ’566

and ’880 applications was maintained and that the ’880

application was entitled to the priority date of the ’566

HOLLMER v. HARARI 6

application. The Board entered judgment against

Hollmer, and Hollmer timely appealed. We have jurisdic-

tion under 28 U.S.C. § 1295(a)(4).

II. DISCUSSION

This court reviews the Board’s factual findings for

substantial evidence and its legal determinations de novo.

In re Constr. Equip. Co., 665 F.3d 1254, 1255 (Fed. Cir.

2011). An application in an interference is entitled to the

filing date of an earlier-filed U.S. patent application if the

earlier application “meet[s] the requirements of 35 U.S.C.

§ 120 and 35 U.S.C. § 112[, paragraph 1,] for the subject

matter of the count.” Hyatt v. Boone, 146 F.3d 1348, 1352

(Fed. Cir. 1998) (footnotes omitted); see also Falkner v.

Inglis, 448 F.3d 1357, 1362 (Fed. Cir. 2006). 2 “[T]o gain

2 Section 120 provides for claiming the benefit of a

priority date of an earlier application:

An application for patent for an invention dis-

closed in the manner provided by the first para-

graph of section 112 of this title in an application

previously filed in the United States . . . which is

filed by an inventor or inventors named in the

previously filed application shall have the same

effect, as to such invention, as though filed on the

date of the prior application . . . .

35 U.S.C. § 120 (2006). Section 112, paragraph 1, states:

The specification shall contain a written descrip-

tion of the invention, and of the manner and proc-

ess of making and using it, in such full, clear,

concise, and exact terms as to enable any person

skilled in the art to which it pertains, or with

which it is most nearly connected, to make and

use the same, and shall set forth the best mode

contemplated by the inventor of carrying out his

invention.

7 HOLLMER v. HARARI

the benefit of the filing date of an earlier application

under 35 U.S.C. § 120, each application in the chain

leading back to the earlier application must comply with

the written description requirement of 35 U.S.C. § 112.”

Zenon Envtl., Inc. v. U.S. Filter Corp., 506 F.3d 1370,

1378 (Fed. Cir. 2007) (quoting Lockwood v. Am. Airlines,

Inc., 107 F.3d 1565, 1571 (Fed. Cir. 1997)); see also In re

Hogan, 559 F.2d 595, 609 (CCPA 1977) (“[T]here has to be

a continuous chain of copending applications each of

which satisfies the requirements of § 112 with respect to

the subject matter presently claimed.” (quoting In re

Schneider, 481 F.2d 1350, 1356 (CCPA 1973))) (alteration

in original). Thus, if any application in the priority chain

fails to make the requisite disclosure of subject matter,

the later-filed application is not entitled to the benefit of

the filing date of applications preceding the break in the

priority chain. See Lockwood, 107 F.3d at 1571-72; Ho-

gan, 559 F.2d at 609 (finding that claim 15 was only

entitled to a 1967 filing date where “the disclosure to

support claim 15 appears in the 1953 and the 1967 appli-

cations, but not in the 1956 application”). Whether the

intervening patents in a chain of priority maintain the

requisite continuity of disclosure is a question of law we

review de novo. Zenon, 506 F.3d at 1379. Here, Harari

does not dispute that the intervening ’838 and ’768 appli-

cations must incorporate the ’579 application for the ’880

application to be entitled to the benefit of the filing date of

the original ’566 application. Whether and to what extent

a patent incorporates material by reference also is a legal

question we review de novo. Harari I, 602 F.3d at 1351.

In Harari I, we concluded that when an examiner is

faced with an amendment clarifying ambiguous incorpo-

ration by reference language in an application that is “at

35 U.S.C. § 112 ¶ 1 (2006).

HOLLMER v. HARARI 8

the initial filing stage,” the reasonable examiner standard

applies for determining whether a document was properly

incorporated. Id. at 1352-53. We contrasted this stan-

dard with the standard that generally applies to review-

ing such incorporation statements: “[I]f we were

determining the validity of an issued patent containing

the disputed incorporation by reference statement . . . we

would be concerned with whether one of ordinary skill in

the art could identify the information incorporated.” Id.

at 1353 n.2. Because Harari I did “not involve an issued

patent or language that is intended to appear in an issued

patent,” we held that the proper inquiry focused on the

reasonable examiner, not the person of ordinary skill. Id.

In this second appeal, we address whether this rea-

sonable examiner standard also applies for determining if

the intermediary ’838 and ’768 applications sufficiently

incorporate the ’579 application by reference such that

they satisfy § 120’s continuity requirements. Hollmer

argues that the Harari I reasonable examiner standard is

limited to situations in which an applicant seeks to clarify

an ambiguous incorporation statement through an

amendment that triggers a potential 35 U.S.C. § 132 new

matter problem. Where, as here, § 120 priority is at

issue, Hollmer contends that the incorporation by refer-

ence inquiry takes place within the § 120 context, apply-

ing the person of ordinary skill standard.

Harari, on the other hand, argues that, under Harari

I, these intervening applications necessarily incorporate

the ’579 application by reference because the disputed

incorporation language in the ’838 and ’768 applications is

identical to the language in the ’880 application deemed

sufficient in Harari I. If the issue does remain open after

Harari I, moreover, Harari maintains that the incorpora-

tion statement is sufficient under the reasonable exam-

9 HOLLMER v. HARARI

iner standard. According to Harari, Harari I set forth the

standard for identifying an incorporated document during

examination before the U.S. Patent and Trademark Office

(“PTO”)—the reasonable examiner standard—and that

standard is distinct from the one for identifying the

substantive material incorporated from that document—

the person of ordinary skill standard. Because here the

incorporation issue involves document identification,

Harari asserts that the Board correctly applied the rea-

sonable examiner standard in finding that the ’838 and

’768 applications adequately identify the ’579 applica-

tion. 3 Although we appreciate the Board’s difficulty in

determining how far to extend our holding in Harari I

given the opinion’s silence on this particular issue, we

agree with Hollmer that the Board should have applied

the person of ordinary skill standard in assessing the

disputed language in the ’838 and ’768 applications.

First, we are not persuaded by Harari’s argument

that Harari I resolved this incorporation question. Ha-

rari I dealt specifically with the language of the ’880

application viewed in light of the preliminary amendment

and accompanying transmittal sheet; it did not consider

the intervening ’838 and ’768 applications—which never

3 Alternatively, Harari argues that Hollmer

waived any arguments with respect to Harari I’s applica-

tion to this priority issue because Hollmer never pre-

sented these arguments to the Board on remand. We

disagree. The Board sua sponte applied Harari I in ruling

on Harari’s priority motion without asking for briefing or

comment on that point. Where the Board applies a legal

standard that governs its holding, the propriety of that

standard is properly before us on appeal. See Lebron v.

Nat’l R.R. Passenger Corp., 513 U.S. 374, 379 (1995) (“Our

practice ‘permit[s] review of an issue not pressed [by a

party] so long as it has been passed upon [by the court

below].’”) (citation omitted) (first alteration in original).

HOLLMER v. HARARI 10

were amended—in the context of the § 120 priority analy-

sis.

Second, with respect to the appropriate standard for

assessing the incorporation statements, we disagree with

Harari that the Harari I reasonable examiner standard

applies whenever the identity of an incorporated docu-

ment is at issue before the PTO. Questions surrounding

incorporation by reference statements do not arise in

isolation but instead generally manifest as an initial

hurdle that first must be crossed before reaching an

underlying issue. It is this underlying issue that provides

the framework for resolving the incorporation by refer-

ence question. For example, when the ultimate question

implicates the understanding of a person of ordinary skill,

such as determining whether the written description

requirement is satisfied, construing claims, or evaluating

the teachings of a prior art reference, we have reviewed

the incorporation statements from the person of ordinary

skill vantage point. See Harari v. Lee, 656 F.3d 1331,

1334 (Fed. Cir. 2011) (“[T]he standard is whether one

reasonably skilled in the art would understand the appli-

cation as describing with sufficient particularity the

material to be incorporated.”); Zenon, 506 F.3d at 1378-79

(same); Cook Biotech Inc. v. Acell, Inc., 460 F.3d 1365,

1376 (Fed. Cir. 2006) (same); Advanced Display Sys., Inc.

v. Kent State Univ., 212 F.3d 1272, 1283 (Fed. Cir. 2000)

(same). In assessing incorporation statements from this

point of view, our cases have required that “the host

document . . . identify with detailed particularity what

specific material it incorporates and clearly indicate

where that material is found in the various documents.”

Zenon, 506 F.3d at 1378 (quoting Cook Biotech, 460 F.3d

at 1376).

11 HOLLMER v. HARARI

In Harari I, we identified a narrow circumstance war-

ranting the application of the reasonable examiner stan-

dard, but we did not alter these traditional rules

governing the incorporation by reference inquiry. Specifi-

cally, Harari I’s modified standard applies when an

application is at the initial filing stage and the examiner

is evaluating an amendment that clarifies ambiguous

incorporation by reference language. Our predecessor

court applied an analogous standard under similar cir-

cumstances in In re Fouche, 439 F.2d 1237, 1239-40

(CCPA 1971).

Here, unlike Harari I or Fouche, we are not consider-

ing an amendment seeking to clarify the incorporation

statements in the ’838 and ’768 applications. Instead, the

issue before us is whether these intervening applications

maintain continuity between the ’566 and ’880 applica-

tions by disclosing the ’579 application. The continuity

inquiry provides the backdrop for the incorporation by

reference analysis. In Zenon, where incorporation also

was at issue, we explained that the continuity inquiry is

undertaken using the “reasonable person of ordinary skill

in the art standard”:

[T]he sole question before the district court was

whether the intervening patents maintained the

continuity of disclosure by incorporating by refer-

ence the gas distribution system disclosed in the

’373 patent, entitling the ’319 patent to an earlier

filing date. In this respect, the court was required

to determine that question of law, which we re-

view de novo, using the reasonable person of ordi-

nary skill in the art standard.

Zenon, 506 F.3d at 1379. Although Zenon involved dis-

trict court litigation rather than a PTO interference

HOLLMER v. HARARI 12

proceeding, we similarly have applied the person of ordi-

nary skill standard in interferences when assessing

priority under § 120, see Falkner v. Inglis, 448 F.3d 1357,

1365 (Fed. Cir. 2006), and see no reason to depart from

that standard here. Moreover, § 120 requires that the

disclosure actually appear within the specification, Lock-

wood, 107 F.3d at 1571-72 (“It is the disclosures of the

applications that count. Entitlement to a filing date does

not extend to subject matter which is not disclosed, but

would be obvious over what is expressly disclosed.”), and

amendments in later applications cannot cure an other-

wise defective application in the priority chain, see Encyc.

Britannica, Inc. v. Alpine Elecs. of Am., Inc., 609 F.3d

1345, 1351 (Fed. Cir. 2010) (holding that “[l]later applica-

tions cannot amend [an] application and restore its enti-

tlement to priority”). The incorporation by reference

analysis, therefore, is similarly constrained by the four

corners of the application.

Applying the correct standard, we conclude that the

disputed language in the ’838 and ’768 applications does

not “identify with detailed particularity what specific

material it incorporates” to a person of ordinary skill.

Zenon, 506 F.3d at 1378. Unlike the ’566 application,

neither the ’838 application nor the ’768 application was

“filed on the same day” as, or “copending” with, the ’579

application. At least two other applications by named

inventors Mehrotra and Harari, however, were “copend-

ing” with the ’838 application and had the same title as

the ’579 application: U.S. Patent Application Nos.

07/508,273 and 07/734,221. J.A. 297. Thus, on its face,

the incorporation language does not directly lead one of

ordinary skill to the ’579 application but rather presents

several potential documents for incorporation. Such

ambiguity in incorporation does not suffice. As we have

previously cautioned, “[P]atent draftsmanship is an

13 HOLLMER v. HARARI

exacting art, and no less care is required in drafting an

incorporation by reference statement than in any other

aspect of a patent application.” Zenon, 506 F.3d at 1382

n.3. Without the incorporation of the ’579 application in

the ’838 and ’768 applications, the ’880 application is not

entitled to the benefit of the priority date of the ’566

application.

III. CONCLUSION

We have considered Harari’s additional arguments

and conclude that they similarly lack merit. For the

above reasons, we reverse the Board’s decision and re-

mand for the Board to enter judgment that the effective

filing date of the ’880 application is December 20, 1996—

the filing date of the ’708 application—and for further

proceedings consistent with this opinion.

REVERSED AND REMANDED