IN RE PETER JOSEPH GIACOMINI, WALTER MICHAEL PITIO, HECTOR FRANCISCO RODRIGUEZ, AND DONALD DAVID SCHUGARD
2009-1400
United States Court of Appeals for the Federal Circuit
July 7, 2010
(Serial No. 09/725,737)
Decided: July 7, 2010
JASON PAUL DEMONT, DeMont & Breyer, LLC, of Holmdel, New Jersey, argued for appellants. With him on the brief was ROBERT L. GREENBERG. Of counsel was JOSEPHINE A. PALTIN.
THOMAS L. STOLL, Associate Solicitor, Office of the Solicitоr, United States Patent and Trademark Office, of Arlington, Virginia, argued for the Director of the United States Patent and Trademark Office. With him on the brief were RAYMOND T. CHEN, Solicitor, and THOMAS W. KRAUSE, Associate Solicitor.
RADER, Chief Judge.
Peter Joseph Giacomini, Walter Michael Pitio, Hector Francisco Rodriguez, and Donald David Shugard (collectively, “Giacomini“) appeal from a decision of the Board of Patent Appeals and Interferences (“Board“) rejecting certain claims of U.S. Patent Application No. 09/725,737 as anticipated under
I.
Giacomini‘s application—“Method and Apparatus for Econоmical Cache Population“—was filed on November 29, 2000. The application claims a technique for selectively storing electronic data in a readily accessible memory called a “cache.” When a system retrieves requested data from a source, it stores the data in its cache so that it can retrieve the data more quickly next time. Because the cache has a limited space, the system must selectively store data. Giacomini‘s technique populates the сache with data only when the system receives a certain number of requests for that data. Claim 1 is representative:
A method comprising:
populating a cache with a resource only when at least i requests for said resource have been received;
wherеin i is an integer and is at least occasionally greater than one.
This cache does not normally include infrequently requested data because it “at least occasionally” stores data for which multiple requests have been made. Claims 1, 2, 8, 11, 12, 15, 22-24, 27, 28, 31, and 32 of Giacomini‘s application are at issue on appeal.
II.
The Board rejected certain claims of Giacomini‘s application as anticipated under
The Tran patent—“Electronic Information Caching“—describes a caching technique based on an anticipated demand for data. Its “anticipating module” considers “past requests for access to the same or related electronic information by access requesters.” Tran patent col.1 ll.49-52. Such “past requests for information may be measured by the frequency or volume of access requests.” Id. col.3 ll.25-28. The Board found, and Giacomini does not dispute, that the Tran patent teaches all of the claimed features in Giacomini‘s application.
The central issue at the Board was the eligibility of the Tran patent to serve as prior art under
Giacomini appeals the Board‘s decision that the Tran patent and the Teoman patent each anticipates his application. This court has jurisdiction under
III.
This court reviews the Board‘s legal conclusions, including statutory interpretation, without deference. In re Swanson, 540 F.3d 1368, 1374-75 (Fed. Cir. 2008). Anticipation is a question of fact. In re Gleave, 560 F.3d 1331, 1334-35 (Fed. Cir. 2009). This court reviews the Board‘s factual determinations for substantial evidence. Id.
IV.
Section 102 governs the conditions of patentability. The statute, in pertinent part, states:
[A] person shall be entitled to a patent unless . . . the invention was described in . . . (2) a patent granted on an application for patent by another filed in the United States before the invention by the applicant for patent . . . .
As noted, Giacomini does not dispute that the Tran patent describes the invention claimed in Giacomini‘s application. Also, the Tran provisional, which antedates Giacomini‘s filing date, was the first U.S. application to describe the invention. The Bоard found that “[t]he Provisional Application No. 60/234,996, from which Tran claims priority under
(e)(1) An application for patent filed under section 111(a) or section 363 of this title for an invention disclosed in the manner provided by the first paragraph of section 112 of this title in a provisional application filed under section 111(b) of this title, by an inventor or inventors named in the provisional application, shall have the same effect, as to such invention, as though filed on the date of the provisional application filed under section 111(b) of this title, if the application for patent filed under section 111(a) or section 363 of this title is filed not later than 12 months after the date on which the provisional application was filed and if it contains or is amended to contain a specific reference to the provisional application . . . .
An important limitation is that the provisional application must provide written description support for the claimed invention. Because Giacomini never argued before the Board that the Tran provisional failed to provide written description support for the claimed subject matter in accordance with section 119(e), Giacomini waived the argument by failing to raise it below. See In re Watts, 354 F.3d 1362, 1368 (Fed. Cir. 2004) (declining to consider arguments that the applicant failed to contest before the Board); In re Berger, 279 F.3d 975, 984 (Fed. Cir. 2002) (same). Therefore, the Tran patent “shall have the same effect,” including a patent-defeating effect, as to the claimed invention as though it was filed on the date of the Tran provisional. Accordingly, Giacomini, who filed his application after Tran filed his provisional application, cannot receive a patent covering the same subject matter under
This conclusion is consistent with “[t]he fundamental rule . . . that the patentee must be the first inventor.” Alexander Milburn Co. v. Davis-Bournonville Co., 270 U.S. 390, 402 (1926). In Milburn, the Supreme Court held that a patent applied for before but not granted until after a second patent is sought bars the issuance of the second patent. Id. at 400-01. The rule stems from the principle that, subject to certain exceptions, “one really must be the first inventor in order to be entitled to a patent.” Id. at 400. Although Milburn concerned a non-рrovisional application, a provisional application similarly shows that someone else was the first to invent. See id. at 400 (“[O]bviously one is not the first inventor if . . . somebody else has made a complete and adequate description of the thing claimed before the earliest moment to which the alleged inventor can carry his invention back.“). The Tran provisional evinces that Tran, and not Giacomini,
Giacomini argues that
Giacomini‘s distinction betwеen priority date and effective reference date largely stems from In re Hilmer, 359 F.2d 859 (CCPA 1966). The issue in Hilmer was whether a U.S. patent, cited as a section 102(e) prior art reference, was effective as of its foreign filing date under section 119. Id. at 862. This court‘s predecessor rejected the Board‘s conclusion that “the foreign priority date of a U.S. patent is its effective date as a reference.” Id. at 870. The court instead held that “Section 119 only deals with ‘right of priority.’ The section does not provide for the use of a U.S. patent as an anticipatory reference as of its foreign filing date.” Id. at 862. Thus, Hilmer distinguished a patent‘s priority date under section 119 and effective reference date under section 102(e) in cases involving an earlier foreign application. Giacomini equаtes a U.S. provisional application to a foreign patent application to argue that the Tran provisional‘s filing date is not the Tran patent‘s effective date as a prior art reference.
But at the time this court‘s predecessor decided Hilmer, section 119 only governed the benеfit of claiming priority to an earlier filing date in foreign countries. Id. at 862. Congress added section 119(e) along with the
Section 102(e) codified the “history of treating the disclosure of a U.S. patent as prior art as of the filing date of the earliest U.S. application to which the patent is entitled, provided the disclosure was contained in substance in the said earliest application.” Id. (emphasis added). According to Hilmer, an earlier foreign application does not shift a corresponding patent‘s effective reference date because section 102(e) explicitly requires the earlier application to be “filed in the United States.” Hilmer, 359 F.2d at 862 (quoting
Accordingly, the Tran patent has a patent-defeating effect as of the filing date of the Tran provisional, or September 25, 2000. Giacomini did not file his application until months after Tran filed his provisional application. Giacomini is not the first to invent in the United
V.
Because the Board correctly rejected Giacomini‘s application under
AFFIRMED