Presumption of Patent Validity Does Not Necessarily Extend to Entitlement to an Earlier Filing Date

In Poweroasis, Inc. v. T-Mobile USA, Inc. (No. 2007-1265; April 11, 2008), a Federal Circuit panel agrees with a district court's conclusion that the asserted patent claims directed to vending machines that sell telecommunications access were not entitled to the benefit of the original application's filing date because the original application did not provide a written description of the now-claimed invention. The grant of summary judgment of invalidity with respect to all the claims of the two asserted patents stemming from a chain of continuation and continuation-in-part applications based on anticipation under section 102 (b) is thus affirmed. The intervening prior art that gives rise to a public use, sale or offer for sale is the MobileStar Network, a high-speed wireless data network that connected users to the Internet that was conceded to contain all of the same features that the accused T-Mobile HotSpot Network contains.

Notwithstanding the statutory presumption that a patent is valid, the panel agrees with the lower court's conclusion that the patentee here had the burden of proving that it was entitled to the priority of the original application when the Patent and Trademark Office had not previously addressed the issue. In distinguishing its 1985 Ralston Purina decision, the panel observes that in this case there was no interference or any other determination of priority during prosecution incident to a rejection, in the absence of which the Office does not make such findings "as a matter of course in prosecution." Citing to the Manual of Patent Examining Procedures, the panel notes that the Office's own procedures indicate that examiners do not make such priority determinations except where necessary. Thus, the court concludes, "there is simply no reason to presume that claims in a CIP application are entitled to the effective date of an earlier filed application."