# United States **Court of Appeals**  **for the Federal Circuit**

______________________

NATURAL ALTERNATIVES INTERNATIONAL, INC., Appellant

v.

ANDREI IANCU, UNDER SECRETARY OF COMMERCE FOR INTELLECTUAL PROPERT Y AND DIRECTOR OF THE UNITED STATES PATENT AND TRADEMARK OFFICE , Intervenor

______________________

2017

- 1962

______________________ Appeal from the United States Patent and Trademark Office, Patent Trial and Appeal Board in No. 95/002 ,001.

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Decided: October 1, 2018

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S COTT A. M. C HAMBERS , Porzio, Bromberg & Newman, PC, Washington, DC, argued for appellant. Also repr esented by R ICHARD J. O PARIL , K EVIN M. B ELL , B ILLY D ELL C HISM ; M ATTHEW Z APA DKA , Bass, Berry & Sims, PLC, Washington, DC

.

M ARY L. K ELLY , Office of the Solicitor, United States Patent and Trademark Office, Alexandria, VA, argued forN ATURAL ALTERNATIVES v. IANCU 2

intervenor. Also represented by T HOMAS W. K RAUSE , R OBERT J. M C M ANUS , A MY J. N ELSON

.

______________________

Before P ROST , Chief Judge, M OORE and R EYNA , Circuit Judges.

P ROST , Chief Judge

. Woodbolt Distributors, LLC (“Woodbolt”) requested that the United States Patent and Trademark Office (“ PTO ”) reexamine U.S. Patent No. 8,067,381 (“the ʼ 381 patent ”) owned by Natural Alternatives Inter national, Inc. (“NAI”)

. The PTO ordered inter partes reexamin ation, and t he examiner rejected the challenged claims as anticipated by or obvious over cited prior art, including a

p arent of the reexamined patent. NAI appeals the Patent Trial and Appeal Board ’s (“Board”) final determination affirming the examiner’s rejection s and its subsequent denial of NAI’s request for rehearing

. Woodbolt is not a party to this appea l. T he Director of the PTO has inte rvened to defend the Board’s decision. We have jurisdi ction pursuant to 28 U.S.C. § 1295(a)(4)(A). W e affirm.

B ACKGROUND Between 1997 and 2011, NAI filed a chain of eight U.S. patent applications generally directed to increasing athletes’ endur ance. T he eighth application matured into the ʼ 381 patent

, the subject of this appeal

. NAI filed the first application in the chain on Au gust 12, 1997

, and within five years, it had filed three more. I n each such contin uing application , NAI included a priority benefit
statement under 35 U.S.C. § 120 claiming priority back to the filing date of the first U.S. application , which event ually issued on October 12, 1999

, as U.S. Patent No.N ATURAL ALTERNATIVES v. IANCU 3

5,965,596 (“the ʼ 596 patent ”). 1 NAI also filed a provisio nal application (“ the 2003 provisional application”) o n April 10, 2003

, while the fourth application was still pending before the PTO

. Before the fourth application issued on January 20, 2004

, NAI filed the fifth application , a co ntinuation

- in

- part, on Novem ber 18, 2003

. The fifth appl ication claimed priority to the fourth through first application s and to the 2003 provisional application. Intervenor’s Br. 4

– 5. NAI filed its sixth application on August 29, 2008 , during the fifth application’s pendency

. At that time, the sixth applica tion correctly claimed priority to the fifth application, and the fifth application correctly claimed priority to the fourth application, and so

on.

I

O n September 2, 2008 , just four days after filing its sixth application, NAI amended the “ Cross Reference of Related Applications ” section of the fifth applica tion to delete the benefit claim to the fourth through the first application s and to claim priority under 35 U.S.C. § 119(e)
to only the 2003 pro visional application . J.A. 8035 ; see 35 U.S.C. § 119(e) ( governing claiming priority to an earlier

filed provisional application)

. Thus, when the fifth appl ication issued as U.S. Patent No. 7,504,376 (“ the ʼ 376 patent ”) on March 17, 2009, it claimed the benefit of only the 2003 provisional application ’s filing date . The sixth through the eighth applications subsequently issued as patents, but with a statement seeking the benefit of the

1 Each U.S. application in the chain also included a priority benefit statement under 35 U.S.C. § 119(a)

, claiming priority back to the filing date of a British patent application that NAI filed in 1996 (“the 1996 British application”)

. The validity of that priority claim is not before us today, so we do not discuss it.N ATURAL ALTERNATIVES v. IANCU 4

fifth through the first applicat ions , in addition to the 2003 provisional application. The ʼ 381 patent on appeal here issued from the eighth application on November 29, 2011.

II

D istrict c ourt litigation involving the ʼ 381 patent

commence d between NAI and Woodbolt i n December 2011

. 2 In May 2012, during that proceeding, Woodbolt sought inter partes reexamination of the asserted patent claims. 3 The request alleged that “the asserted claim to priority of the ʼ 381 Patent is defective” because the “a pplicants deliberately and expressly terminated their claim to the priority of the first four applications[,]” which thus “broke[] the chain of priority between the Fourth and F ifth Applications.” J.A. 45

– 46. During reexamination, NAI d id not dispute that it had waived priority to the fourth through the first application s in its fifth applic ation. J.A. 971. But it insisted that the sixth application maintained priority back to the first application because NAI did not amend the “ Cross Reference of Related Appl ications ” in the sixth application. According to NAI, it was irrelevant what happened to the fifth application once the sixth application became entitled to the first ap plication’s filing date. J.A. 975. Unpersuaded, the examiner finally rejected the reexamined claims in view of prior art inclu ding the ʼ 596 patent ( i.e., the patent that issued from the

2 Woodbolt and NAI ha ve since settled their lawsuit concerning the ʼ 381 patent

. See Appellant’s Br. 1.

3 Under the Leahy

- Smith America Invents Act, i nter partes review replaced inter partes reexamination as the avenue for third

- party patentability challenges in the PTO. See Pub. L. No. 112

– 29, § 6(a), 125 Stat. 284, 299

– 304 (2011).N ATURAL ALTERNATIVES v. IANCU 5

first application)

, and then closed prosecution. 4 J.A. 1210, 1226.
NAI appealed the examiner’s decision to the Board. The Board determined that when NAI filed the eighth applica tion, “[t] he fifth applica tion [was] not entitled to the benefit of the fourth application since the specific reference to the fourth application was deleted in the fifth.” J.A. 13. B ecause the eighth application claimed priority to the first application via the fifth application, the Board determined that the eighth application (and thus the ʼ 381 patent) was also not entitled to the benefit of the fourth through the first application s. See J.A. 16. The Board issued a final written determination affirming the examiner’s rejection s and denied NAI’s request for rehearing.

D ISCUSSION

NAI challenge s the Board’s priority determination. 5 According to NAI, the Board erred by denying the ʼ 381 patent priority back to the first U.S. app lication in the priority chain under § 120. Appellant ’ s Br. 2 –3.

I
Entitlement to priority under § 120 is a legal determination based on underlying fact findings. See In re Owens , 710 F.3d 1362, 136 6 (Fed. Cir. 20 13 ). When the underlying facts are undisputed, priority date determin ation is purely a legal question. Medtronic Core V alve v. Edwards Lifesciences Corp. , 741 F.3d 1359, 1363 (Fed.

4 The eighth application is a “Continuation of a Continuation of the Sixth Application/Patent[.]” See Appellant’s Br. 26

– 27; Intervenor ’ s Br. 3

– 5.

5 NAI’s challenge to the Board’s finding of anticip ation relies entirely on the priority date issue. See Appe llant’s Br. 3 n.2, 46

– 47.N ATURAL ALTERNATIVES v. IANCU 6

Cir. 2014). Because t his appeal presents no disputed factual is sues relevant to the Board’s priority determin ation, w e review the Board’s legal conclusions de novo

. S ee S tevens v. Tamai , 366 F.3d 1325, 1330 (Fed. Cir. 2004).

II
NAI argues that the Board erred by denying the ʼ 381 patent priority back to the first U.S. application in the priority chain

. See Appellant’s Br. 46

– 47. It s argument proceeds in four parts. First , NAI contends that priority to the first application “vested” with the sixt h application

once the six th application met all the crite ria of § 120

. See id. at 31 –34. Second, NAI claim s that t his is so —even though an intervening application waived priority to the first application —because a waiver of priority i s limited to the instant application and does not extend to subsequent applications

. Id. at 35

– 36. Third, i n NAI’s view, the Board reached a contrary determination because the Board erroneously viewed priority as a single growing chain rather than multiple fixed chains. Appellant’s Br. 34, 38

. Fourth, such a view

, according to NAI, “limits an applican t’s ability to seek protection” when “amending [a] priority claim to gain [patent] term.” Id. at 38. We a ddress each part of NAI’s argument in turn.

A
NAI first argues that the Board erred in its determ inatio n that “priority does not ‘vest .’ ” Id. at 33. According to NAI, “[p]riority properly vested by virtue of meeting all the requirements of § 120 .” Id . at 34. NAI asserts that Loughlin v. Ling dictates this conclusion because it state s that “[p] rovided the criteria in § 120 are met, applications ‘shall,’ without exception, receive the benefit of the earlier filing date.” 684 F.3d 1289, 1293 (Fed. Cir. 2012) ; see Appellant’s Br. 31

. The Board considered this argument and found it unpersuasive. See J.A. 12.N ATURAL ALTERNATIVES v. IANCU 7

Section 120 of title 35 sets forth requirements for a U.S. patent application to claim priority based on an earlier- filed nonprovisional applica tion. See Medtronic CoreValve , 741 F.3d at 1363

. When NAI filed the applic ation that became the ʼ 381 patent, § 120 provided the follow ing :
An application for patent for an invention [1] di sclosed in the mann er provided by section 112(a)

. . . [2] filed by an inventor or inventors named in the previously filed application shall have the same effect, as to such invention, as though filed on the date of the prior application, [3] if filed b efore the patenting or abandonment of or termin ation of proceedings on the first application or on an application similarly entitled to the ben efit of the filing date of the first application and [4] if it contains or is amended to contain a specific refe rence to the earlier filed application. No applic ation shall be entitled to the benefit of an earlier filed application under this section unle ss an amendment containing the specific reference to the earlier filed application is submitted at such time during the pendency of the application as r equired by the Director. The Director may consider the failure to submit such an amendment within that time period as a waiver of any benefit under this section

. 35 U.S.C. § 120 ( 2000 ) (empha se s and numbering added). “Specific reference,” in the context of § 120, means that the application seeking the benefit must state ( or be amended to state ) that it cla ims the benefit of the earlier

filed application’s filing date, identifying each earlier- filed application by number and explaining how the applic ations are related to one another. Droplets, Inc. v. E*TRADE Bank , 887 F.3d 1309, 1315

– 16 (Fed. Cir. 2018).N ATURAL ALTERNATIVES v. IANCU 8

NAI ’s “vesting” argument conflates properly claiming priority and demonstrating entitlement to priority. Patent claims “are not entitled to an earlier priority date merely because th e patentee claims priority .” In re NTP, Inc.

, 654 F.3d 1268, 1276 (Fed. Cir. 2011)

. Rather, “for a patent’s claims to be entitled to an earlier priority date, the patentee must demonstrate that the claims meet the requirements of 35 U.S.C. § 120.” I d. (emphasis added). Accordingly, c laims in a patent or patent application are not entitled to priority under § 120 at least until the patent owner proves entitlement to the PTO, the Board, or a federal court

. See PowerOasis, Inc. v. T

- Mobile USA, Inc. , 522 F.3d 1299, 1305

– 06 (Fed. Cir. 2008) ( explaining that “w hen neither the P TO nor the Board has previously considered priority, there is simply no reason to presume that claims in a [continuation

- in

- part] application are entitled to the effective filing date of an earlier filed application ,” so the district court may place the burden on the patent owner to “come forward with evidence to prove entitlement to claim priority to an earlier filing date ”) ; see also In re NTP, Inc. , 654 F.3d at 1277 (“[W]hen a patentee argues that its claims are entitled to the priority date of

an earlier filed application, the examiner must undertake a priority analysis to determine if the patentee mee ts the requirements of § 120.”); Manual of Patent Examining Procedure (“MPEP”) § 201.08 ( providing that “ [t] he [PTO] does not need to make a determination as to whether the [ 35 U.S.C. § 112(a) ] requirement of 35 U.S.C. [§] 120 ” is met “ unless the filing date of the earlier nonprovisional application is relied upon in a proceeding before the [ PTO ]”).
Furthermore, examiners and adjudicators can not be expected to scrutinize the prosecution history of an appl ication and each parent application to deter mine whether the application would have met § 120 ’s requirements at any point during its pendency. See

, e.g. , Droplets, 887N ATURAL ALTERNATIVES v. IANCU 9

F.3d at 131 7 ( explaining that “ it would be improper to place the burden on the public to unearth and decipher a priori ty claim when the ‘ patentee is the person best suited to understand the genealogy and relationship of her applica tions,’ and a ‘ requirement for her to clearly disclose this information should present no hardship ’” ); see also Medtronic CoreValve

, 741 F.3d at 1366 (“ Congress may well have thought that Section 120 was necessary to eliminate the burden on the public to engage in long and expensive search of previous applications in order to determine the filing date of a later patent .” (quoting Sticker Indus. Supply Corp. v. Blaw

- Knox Co. , 405 F.2d 90, 93 (7th Cir. 1968)) )

. In re Janssen Biotech, Inc. is instructive here

. 880 F.3d 1315 (Fed. Cir. 2018). In In re Janssen Biotech , the patentee attempted during reexamination to amend its patent to delete a benefit claim to a parent application, among other proposed amendments. Id. at 1320. We noted that e ven though the patentee “had never received issued claims

. . . on the subject matter originating from the [parent] application, more than thirty

- two issued patents ‘reached through the [reexamined ] patent for benefit of a prior filing date’ and ‘the paten tability of those claims .

. . cannot be determined without reopening examination of those patents in view of the deletion of the subject matter in the [ reexamined] patent.” Id. ; see id. at 1323 ; see also Searle LLC v. Lupin Pharm ., Inc. , 790 F.3d 1349, 1 355 (Fed. Cir. 2015) (observing that if a patent owner had obtained foreign patent protection based on a Patent Cooperation Treaty (“PCT”) application, altering the scope of the PCT application could call into question the proper scope of those foreign pat ents)

. In short, we have previously acknowledged that amending an earlierfiled parent application may affect the priority of its child applications.N ATURAL ALTERNATIVES v. IANCU 10

And w e do so again here. T he Board determined that when filed, the eighth application did not meet the “sp ecific reference” requirement of § 120 as to the filing date of the first application . J.A. 11

– 12 . That was so, accor ding to the Board, because the eighth application claimed the benefit of the first application’s filing date by way of the fifth appl ication , and NAI had amended the fifth application to claim priority to only the 2003 provisional application

. See id

. In other words, because the fifth application lacked priority to the first application, the eighth application’s priority claim to the first application (via the fifth application) did not satisfy all of § 120 ’s requirements

. The Board , therefore, did not err in determining that the ʼ 381 patent was not entitled to claim the benefit of the filing date of the first application under § 120 , as the priority claim in the ʼ 381 patent was defective from the start

. B
Next, NAI avers that although “a claimed benefit to an earlier filing date may later be altered in the instant application according to MPEP § 201.11,

. . . that alter ation applies only to the instant application

— not ot her,

. . . applications.” 6 Appellant’ s Reply Br. 15. According to t he MPEP , which is “commonly relied upon as a guide to patent attorneys and patent examiners on procedural matters,” Litton Sys., Inc. v. Whir lpool Corp.

, 728 F.2d 1423, 1439 (Fed. Cir. 1984), “[a] cancellation of a benefit claim to a prior application may be considered as a showing that the applicant is intentionally waiving the benefit claim to the prior application in the instant appl i-

6 Although outdated, we refer to MPEP § 201.11 to remain consistent with Appellant’s briefs. See

, e.g. , Appellant’s Reply Br. 7. The subject matter of § 201.11, h owever, now exists in MPEP § 211.N ATURAL ALTERNATIVES v. IANCU 11

cation

, ” MPEP § 201.11(III)(G) (8th ed., Rev. 1) (2003) (emphasis added) ; MPEP § 211.02 (a)(III) (9th ed., Rev. 7) (2015 ) (same)

. Although the Board did not explicitly address this a rgument , the PTO responds that NAI reads MPEP § 201.11 “too narrowly.” Intervenor ’s Br. 34

– 35. Specifically, the PTO notes that “the [MPEP] passage does not state that cancellation of a benefit claim may be consi dered a waiver in only the instant application.” I d. at 35. The PTO , a pplying this broader interpretation, asserts that “the intentional cancellation of a benefit claim pu rsuant to MPEP § 201.11 can similarly affect another application’s entitlement to a benefit claim.” Id

. We

agree with the PTO.
As an initial matter, we note that the MPEP “ does not have the force of law [,] ” Molins PLC v. Textron, Inc. , 48 F.3d 1172, 1180 n.10 (Fed. Cir. 1995) , and does not bind

us , Litton Sys. , 728 F.2d at 1439. Nonetheless, we have reviewed MPEP § 201.11 and find that n othing in it s text limits the scope of waiver to only the instant application. Indeed, § 201.11 does not contemplate all possible cons equences of waiving a benefit claim in a particular applic ation. Moreover

, at least in the context of terminal disclaimers, the MPEP has explicitly indicate d when a disclaim er applies only to the instant applicati on and not to downstream application s. See

, e.g. , Hagenbuch v. Sonrai Sys. , 2015 U.S. Dist. LEXIS 39083, *10

– 13 (N.D. Ill

. Mar. 27, 2015) ( explaining that “[ t] he MPEP in effect in 1993 descri bed the effect of a disclaimer that , by its terms, appl ied on ly to the ‘ instant application ’” ); see also MPEP § 1490(VI)(B) (9th ed., Rev. 8) (2017 ) (“ A terminal disclaimer filed to obviate a nonstatutory double paten ting rejection is effective only with r espect to the applic ation or patent identified in the disclaimer unless by its terms it extends to continuing applications

. . . .”).N ATURAL ALTERNATIVES v. IANCU 12

C
Further, NAI summarily concludes that “[r]ather than the dogmatic view of seeing additional continuation filings merely adding an additional link in a single growing chain, § 120, and the case law, must be interpreted as providing for a new priority chain being created at each new filing.” Appellant’s Br. 34

. NAI , however, neither explains why § 120 compels this interpretation of priority claims nor provides any case law to support its conclusion

. Nor does NAI provide any argument to undermine the long

- standing interpretation of priority as a single c hain, growing with each additional continuation. The Su preme Court has previously e xplained that under § 120

, parent and continuing applic ations “are to be considered as parts of the same transaction, and both as constituting one continuous application , w ithin the meaning of the law.” Godfrey v. Eames , 68 U.S. 317, 326 (1863); s ee also Sticker Indus.

, 405 F.2d at 93 (stating that “ each application in a long chain grows out of the one immediately preceding it ”). We therefore decline to adopt NAI’s interpretation of chain of priority.

D
Finally, NAI argues that the Board’s determination impermissibly “limits an applicant’s ability to seek prote ction” when “amending the priority claim to gain [patent] term.” See Appellant’s Br. 38. NAI ’s argument suggests that NAI need not trade the benefit of an earlier filing date in order to gain patent term. See id. at 36 ( argu ing that by waiving priority in the parent application, it was not waiving priority in the child application)

. Although th e Board did not explicitly address this argument , t he PTO a ssert s that because NAI “ chose to delete the benefit claim in its fifth U.S. application and thereby obtained a longer term for the patent issuing therefrom[,]” a “cons equence of this voluntary action is that [NAI’s] sixthN ATURAL ALTERNATIVES v. IANCU 13

through eighth U.S. applications would no longer be entitled to the benefit of the filing date of its fourth through first U.S. applications.” Intervenor’s Br. 14. Again, w e agree with the PTO

. Continuation

- in

- part (“CIP”) applications

, like the fifth application in this case, uniquely highlight the trade

off between priority and patent term. 7 In CIP applic ations, priority is assessed on a claim

- by

- claim basis. Transco Prods., Inc. v. Performance Contracting, Inc. , 38 F.3d 551, 557 n.6 (Fed. Cir. 1994)

. A n applicant can obtain an earlier effective filing date for claims in a CIP application only if those claims find support in an earlier

filed nonprovisional application. Id. Claims reciting new matter , however, are entit led to only the filing date of the CIP application and not to the filing date of the earlie rfiled application

. Id

. Because the standard patent term is twenty years after an application’s earliest

- claimed priority date, see 35 U.S.C. § 154(a)(2) (emphasis added)

, 8 the claims reciting new matt er are not entitled to the parent application’s earlier filing date

, and they therefore have a truncated patent term (i.e., less than twenty

7 “ A continuation

- in

- part is an application filed du ring the lifetime of an earlier nonprovisional application

. . . , repeating some substantial portion or all of the earl ier nonprovisional application and adding matter n ot disclosed in the said earlier nonprovisional application .” Univ. of W. Va. v. Van Voorhies , 278 F.3d 1288, 1297 (Fed. Cir. 2002)

. 8 As of June 8, 1995, s ee Uruguay Round Agre ements Act, Pub. L. No. 103

– 465, § 532, 108 Stat. 4809, 4984 (1994) , U.S. application s that claim priority to an earlier- filed U.S. application will have a patent term of twenty years from the filing date of the earliest U.S. application to which it claims a priority benefit. 35 U.S.C. § 154(a)(2).N ATURAL ALTERNATIVES v. IANCU 14

years)

. See 5 Donald S. Chisum, Chisum on Patents § 16.04[6][b] (2 016).
An uncommon but permissible way for patent appl icants to avoid losing term on claims that recite new matter is to disclaim the benefit o f earlier filing dates. See MPEP §§ 211.02(a)(III) . Thus, b y deleting the benefit claim in a CIP application, the twenty

- year patent term of the patent issuing from that CIP application would e xtend from the CIP application’s filing date i nstead of t he parent application’s earlier filing date

. See id . Of course,

o nce the CIP application adopts the later filing d ate, the CIP application and its children become vulnerable to rejections based on a larger pool of prior art

— including former parent applications in some cases

. See , e.g. , Sa ntarus, Inc. v. Par Pharm., Inc. , 694 F.3d 1344, 1352 (Fed. Cir. 2012 ) ( find ing that “[d]ue to breaks in the chain of priority ,” the “[parent] patent [was] prior art for some of the asserted claims ” ).
Under NAI’s theory of priority, however, NAI could gain patent term on its fifth application while simultan eously shield ing its child applications (including the eighth application) from their former parents. For the reasons discuss ed herein, NAI cannot have it both ways

. I II

W e have c onsidered NAI’s remaining arguments and find them unpersuasive. For the foregoing reasons, the Board’s final decision invalidating the challenged claims is affirmed.

AFFIRMED