Natural Alternatives International, Inc. v. Iancu, No. 17-1962 (Fed. Cir. 2018)Annotate this Case
In 1997-2011, NAI filed eight patent applications. In each continuing application, NAI included a statement (35 U.S.C. 120) claiming priority to the filing date of the first application, which issued in 1999, as the 596 patent. While the fourth application was pending NAI filed the 2003 provisional application and the fifth application, claiming priority to the fourth through first applications and to the 2003 provisional application. The sixth application, filed in 2008, during the fifth application’s pendency, claimed priority to the fifth application, and the fifth application claimed priority to the fourth, and so on. After filing its sixth application, NAI amended the fifth application to delete the benefit claim to the fourth through the first applications and to claim priority to only the 2003 provisional application. The sixth through the eighth applications subsequently issued as patents, but with a statement seeking the benefit of the fifth through the first applications, and the 2003 provisional application. On inter partes reexamination of the 381 patent (from the eighth application), NAI insisted that the sixth application maintained priority back to the first application because it was irrelevant what happened to the fifth application once the sixth application became entitled to the first application’s filing date. The examiner rejected the reexamined claims in view of prior art including the 596 patent, issued from the first application. The Federal Circuit affirmed. Because the eighth application claimed priority to the first application via the fifth application, the 381 patent was not entitled to the benefit of the fourth through the first applications. Under NAI’s theory it could gain patent term on its fifth application while simultaneously shielding its child applications (including the eighth application) from their former parents; NAI cannot have it both ways.