PATENT CASE OF THE WEEK 

Natural Alternatives International, Inc. v. Iancu, Appeal No. 2017-1962 (Fed. Cir. Oct. 1, 2018)

In an appeal from an inter partes reexamination, the Federal Circuit affirmed the Board’s determination that the challenged claims were anticipated by or obvious over cited prior art.  The claims were directed to increasing athletes’ endurance. 

Natural Alternatives International, Inc. (“NAI”) filed a chain of eight patent applications, the earliest of which had a 1997 priority date. Each of the continuing applications included a priority benefit statement under 35 U.S.C. § 120, claiming priority to the first application.  On November 18, 2003, NAI filed the fifth application, a continuation-in-part, that claimed priority to the first four applications and a 2003 provisional application.  While the fifth application was pending, NAI filed its sixth application on August 29, 2008, claiming priority through the fifth application back to the filing date of the 1997 parent application.  However, on September 2, 2008—just four days after filing the sixth application—NAI amended the fifth application to delete priority claims to the first four applications. Thus, while the fifth application only claimed priority to a 2003 provisional application, the sixth through eighth applications still claimed priority through the fifth application to the 1997 priority date. 

During reexamination, challenger Woodbolt Distributors, LLC alleged that the patent issued from the eighth application was defective because NAI “broke the chain of priority between the Fourth and Fifth Applications.” The Board determined that the eighth application and the resulting patent were not entitled to the benefit of the first four applications.

The Federal Circuit agreed. On appeal, the panel rejected NAI’s arguments that: (1) priority to the first application “vested” with the sixth application once the sixth application met the § 120 criteria; (2) waiver of priority is limited to the instant application and does not extend to subsequent applications; (3) the Board erroneously viewed priority as a single growing chain rather than multiple fixed chains; and (4) that view limits an applicant’s ability to seek protection when amending a priority claim to gain patent term. 

The Court noted that NAI claimed priority to the earlier applications “by way of” the fifth application, thereby breaking the chain of priority when it amended the fifth application. The Court also refused to apply a narrow reading to MPEP § 202.11, which states that “alternation applies only to the instant application.”  To gain patent term on its fifth application while simultaneously shielding its child applications from their former parents, the court noted, was to “have it both ways.”

 Opinion can be found here.