Droplets, Inc. v. E*Trade Bank

Droplets’s 115 Patent, describing a system “for delivering interactive links for presenting applications and second information at a client computer from remote sources in a network-configured computer processing system,” was filed in 2009, copending with the application leading to the 838 Patent, filed in 2003. The 838 Patent was copending with the application leading to the 745 Patent, filed in 2000; the 745 Patent was copending with the 917 Provisional, filed in 1999. A Patent Cooperation Treaty application was filed in 2000, and published in 2001. The specification of the 115 Patent includes a priority claim that specifically refers to the 838 Patent and incorporates its disclosure by reference and includes a cross reference to the 917 Provisional. The 115 Patent properly claims priority from the 838 Patent and is entitled to the benefit of the 2003 filing date; the 838 patent is entitled to the benefit of the 917 Provisional's 1999 filing date. The Patent Board found the 115 Patent invalid as obvious under 35 U.S.C. 103, reasoning that it failed to enumerate a priority claim sufficient to avoid fully-invalidating prior art; incorporation by reference is insufficient to satisfy a patentee’s burden of providing notice of the asserted priority date under 35 U.S.C. 120. The Federal Circuit affirmed. Because the 115 Patent expressly claims priority only to an immediately preceding application, and not the preceding provisional application, an earlier-filed reference (international publication with the same specification) invalidated it. View "Droplets, Inc. v. E*Trade Bank" on Justia Law