Cozy sued Dorel in 2021, asserting infringement of four patents relating to child safety seats containing airbags for use in vehicles. Dorel filed a motion for summary judgment for determination of the priority date for the four asserted patents, claiming there was a break in the chain of priority for two of the patents and had claimed priority to a provisional application dated two years earlier than the priority claim proposed by Cozy.
Magistrate Judge Dein granted Dorel’s motion. With respect to the first two patents, she determined that certain patents in the chain of priority lacked sufficient written description for the claims of the two patents. One of the patents in the chain shared no common subject matter with the other patents in the chain, containing entirely different claim terms, drawings and embodiments. While it is not required that the earlier-filed application in a chain use the exact same terms, the prior application must contain an equivalent disclosure – a description rendering the later claims obvious is not enough. She further rejected Cozy’s argument that incorporation by reference to an earlier-filed application provided the necessary support – although the incorporated reference did, in fact, provide adequate written description of the asserted claims, an examiner’s amendment, authorized by the patentee, had removed such incorporation before the application issued as a patent. She further rejected any reliance on an alternative priority chain asserted by Cozy, because Cozy had not identified any alternative chain in its interrogatory responses and would not be allowed to raise such anew with trial nearing.
As to the other two patents, the inventor had initially intended to claim priority to a 1997 application, and later sought to amend the claim to a 1999 patent. The specification of these patents claimed priority to the 1997 application, while the application data sheets claimed priority instead to the 1999 application. During prosecution, the priority claim in the specification was amended, but again claimed priority to the 1997 rather than the 1999 application. He further argued against rejections over a 2000 reference and a 1998 reference and asserted the 1997 priority date. The examiner asserted that priority had been claimed to the 1999 patent, and the inventor amended the claims to overcome the rejection, and the patent was allowed. The inventor then filed a certificate of correction to amend the priority claim, but again included the 1997 application in the chain.
Dorel was motivated to file this motion for two reasons. With respect to the first set of patents, if they could not claim priority through the full chain, the accused products would effectively become prior art, such that any finding of infringement would necessarily result in a finding of invalidity. As to the latter two patents, given that they are being held to a 1997 priority date, the expiration would be advanced by two years, limiting the period of time for which damages would be available based on the six-year look-back on damages afforded for patent claims.
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