Encyclopaedia Britannica v. Alpine Electronics: Failure to Reference Earlier Applications

In Encyclopaedia Britannica, Inc. v. Alpine Electronics of America, Inc., et al., Case Nos. 2009-1544, -1545 (Fed. Cir. 2010) the Federal Circuit concluded that 35 U.S.C. § 120 requires each intermediate application within a chain of priority to “contain a specific reference to the earlier filed application.” 

As a consequence, the Court affirmed the district court’s summary judgment of invalidity, finding that Britannica’s two asserted patents – both filed in 2005 – were anticipated under § 102(b) by its own foreign application published in 1991. Although the asserted patents attempted to claim a 1989 priority date through a chain of intermediate applications, Britannica was not entitled to that earlier date because one of its intermediate applications omitted the priority claim required by § 120. 

In view of the Court’s holding, each application in a chain of priority must satisfy the following requirements:

(1) the invention it describes is disclosed in the earlier application(s);

(2) it is filed by the same inventor(s);

(3) it is co-pending with an earlier application; and,

(4) it contains a specific reference to an earlier application.