Intellectual Property > IP Newsflash > Failure to Properly Execute Claim of Priority Determines Fate in IPR Proceeding
01 Jul '16

Apple successfully invalidated an e-Watch Inc. patent directed to an imaging system. In an inter partes review (IPR), the Patent Trial and Appeal Board (the “Board”) determined that claims 1-31 of U.S. Patent No. 7,643,168 (the “’168 patent”) were anticipated by an International Patent Application known as “Monroe.” e-Watch’s failure to properly execute a priority claim to an earlier patent application (the “’073 application”) ultimately doomed e-Watch’s chances of prevailing in the IPR.

Monroe was published on July 15, 1999, after the filing of the ’073 application, but before the filing of the application that led to the ’168 patent. The Board found that Monroe disclosed each claim of the ’168 patent; however, the majority of the Board’s decision focused on the priority date of the ’168 patent and whether Monroe was actually prior art. Monroe would be prior art only if the ’168 patent was not entitled to the January 12, 1998 filing date of the ’073 application. 

The Board determined that the application leading to the ’168 patent (the “’509 application”) was a continuation of an application (the “’470 application”), which was a divisional of the ’073 application. Apple contended that the claims of the ’168 patent were not entitled to the earlier filing date of the ’073 application because the ’509 application only claimed priority to the ’470 application, which had a filing date of January 3, 2003. The Board agreed. The ’509 application did not specifically indicate the relationship of all the applications in the chain; the application identified the relationship of the ’470 application to the ’509 application, but not the relationship of the ’073 application to the ’509 application. The Board explained that “[t]he burden should not be placed on the public to track down filing dates of disparate applications when ‘the inventor is the person best suited to understand the relation of his applications, and it is no hardship to require him to disclose this information.’” The Board concluded that the earliest priority date that the ’168 patent could claim was that of the ’470 patent (January 3, 2003), which makes Monroe invalidating prior art. 

Apple Inc. v. e-Watch, Inc., IPR2015-00414, Paper 34 (PTAB June 22, 2016).