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Natural Alternatives International, Inc. v. Iancu

United States Court of Appeals, Federal Circuit

October 1, 2018

NATURAL ALTERNATIVES INTERNATIONAL, INC., Appellant
v.
ANDREI IANCU, UNDER SECRETARY OF COMMERCE FOR INTELLECTUAL PROPERTY AND DIRECTOR OF THE UNITED STATES PATENT AND TRADEMARK OFFICE, Intervenor

          Appeal from the United States Patent and Trademark Office, Patent Trial and Appeal Board in No. 95/002, 001.

          Scott A. M. Chambers, Porzio, Bromberg & Newman, PC, Washington, DC, argued for appellant. Also represented by Richard J. Oparil, Kevin M. Bell, Billy Dell Chism; Matthew Zapadka, Bass, Berry & Sims, PLC, Washington, DC.

          Mary L. Kelly, Office of the Solicitor, United States Patent and Trademark Office, Alexandria, VA, argued for intervenor. Also represented by Thomas W. Krause, Robert J. McManus, Amy J. Nelson.

          Before Prost, Chief Judge, Moore and Reyna, Circuit Judges.

          PROST, CHIEF JUDGE.

         Woodbolt Distributors, LLC ("Woodbolt") requested that the United States Patent and Trademark Office ("PTO") reexamine U.S. Patent No. 8, 067, 381 ("the ʼ381 patent") owned by Natural Alternatives International, Inc. ("NAI"). The PTO ordered inter partes reexamination, and the examiner rejected the challenged claims as anticipated by or obvious over cited prior art, including a parent of the reexamined patent. NAI appeals the Patent Trial and Appeal Board's ("Board") final determination affirming the examiner's rejections and its subsequent denial of NAI's request for rehearing. Woodbolt is not a party to this appeal. The Director of the PTO has intervened to defend the Board's decision. We have jurisdiction pursuant to 28 U.S.C. § 1295(a)(4)(A). We affirm.

         Background

         Between 1997 and 2011, NAI filed a chain of eight U.S. patent applications generally directed to increasing athletes' endurance. The eighth application matured into the ʼ381 patent, the subject of this appeal. NAI filed the first application in the chain on August 12, 1997, and within five years, it had filed three more. In each such continuing application, NAI included a priority benefit statement under 35 U.S.C. § 120 claiming priority back to the filing date of the first U.S. application, which eventually issued on October 12, 1999, as U.S. Patent No. 5, 965, 596 ("the ʼ596 patent").[1] NAI also filed a provisional application ("the 2003 provisional application") on April 10, 2003, while the fourth application was still pending before the PTO. Before the fourth application issued on January 20, 2004, NAI filed the fifth application, a continuation-in-part, on November 18, 2003. The fifth application claimed priority to the fourth through first applications and to the 2003 provisional application. Intervenor's Br. 4-5. NAI filed its sixth application on August 29, 2008, during the fifth application's pendency. At that time, the sixth application correctly claimed priority to the fifth application, and the fifth application correctly claimed priority to the fourth application, and so on.

         I

         On September 2, 2008, just four days after filing its sixth application, NAI amended the "Cross Reference of Related Applications" section of the fifth application to delete the benefit claim to the fourth through the first applications and to claim priority under 35 U.S.C. § 119(e) to only the 2003 provisional application. J.A. 8035; see 35 U.S.C. § 119(e) (governing claiming priority to an earlier-filed provisional application). Thus, when the fifth application issued as U.S. Patent No. 7, 504, 376 ("the ʼ376 patent") on March 17, 2009, it claimed the benefit of only the 2003 provisional application's filing date. The sixth through the eighth applications subsequently issued as patents, but with a statement seeking the benefit of the fifth through the first applications, in addition to the 2003 provisional application. The ʼ381 patent on appeal here issued from the eighth application on November 29, 2011.

         II

         District court litigation involving the ʼ381 patent commenced between NAI and Woodbolt in December 2011.[2] In May 2012, during that proceeding, Woodbolt sought inter partes reexamination of the asserted patent claims.[3] The request alleged that "the asserted claim to priority of the ʼ381 Patent is defective" because the "applicants deliberately and expressly terminated their claim to the priority of the first four applications[, ]" which thus "broke[] the chain of priority between the Fourth and Fifth Applications." J.A. 45-46. During reexamination, NAI did not dispute that it had waived priority to the fourth through the first applications in its fifth application. J.A. 971. But it insisted that the sixth application maintained priority back to the first application because NAI did not amend the "Cross Reference of Related Applications" in the sixth application. According to NAI, it was irrelevant what happened to the fifth application once the sixth application became entitled to the first application's filing date. J.A. 975. Unpersuaded, the examiner finally rejected the reexamined claims in view of prior art including the ʼ596 patent (i.e., the patent that issued from the first application), and then closed prosecution.[4] J.A. 1210, 1226.

         NAI appealed the examiner's decision to the Board. The Board determined that when NAI filed the eighth application, "[t]he fifth application [was] not entitled to the benefit of the fourth application since the specific reference to the fourth application was deleted in the fifth." J.A. 13. Because the eighth application claimed priority to the first application via the fifth application, the Board determined that the eighth application (and thus the ʼ381 patent) was also not entitled to the benefit of the fourth through the first applications. See J.A. 16. The Board issued a final written determination affirming the examiner's rejections and denied NAI's request for rehearing.

         Discussion

         NAI challenges the Board's priority determination.[5]According to NAI, the Board erred by denying the ΚΌ381 patent priority back to the first U.S. application in the ...


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