Recently, the U.S. Court of Appeals for the Federal Circuit issued a precedential opinion in Speck v. Bates, No. 23-1147 (May 23, 2024), reversing the Patent Trial and Appeal Board’s holding that a party’s claims in an interference were not time-barred under pre-AIA 35 U.S.C. § 135(b)(1).
By way of background, an interference is a PTAB proceeding that involves determining which of two or more parties was the first to invent the subject matter claimed in competing pre-America Invents Act (AIA) patents or patent applications. The particular interference here concerned U.S. Patent Application No. 14/013,591, owned by Bates, and U.S. Patent No. 8,257,305, owned by Speck. In the interference proceeding, Speck filed a motion arguing that the claims of Bates’s ’591 application were time-barred under pre-AIA 35 U.S.C. § 135(b)(1), which provides that “[a] claim which is the same as, or for the same or substantially the same subject matter as, a claim of an issued patent may not be made in any application unless such a claim is made prior to one year from the date on which the patent was granted.” The PTAB denied Speck’s motion and ultimately awarded priority to Bates. Speck appealed.
The Federal Circuit reversed. The Court first found that there has been a longstanding exception to the plain language of § 135(b)(1) when the patent applicant files its claim after the one-year cutoff but had already been claiming substantially the same invention before the one-year cutoff. Thus, the issue before the Court was whether Bates’s new claims presented after the cutoff were directed to substantially the same invention as claims Bates had filed before the cutoff. The PTAB had found that Bates’s pre-cutoff and post-cutoff claims were directed to substantially the same invention (and thus the post-cutoff claims were not time-barred) based on its determination that the post-cutoff claims were not materially narrower than the pre-cutoff claims. The Court concluded that approach was insufficient for determining substantial similarity. Specifically, the Court held that the PTAB should have applied a “two-way test” to also check if the pre-cutoff claims were materially narrower than the post-cutoff claims. The Court further held that, here, Bates’s pre-cutoff claims were materially narrower than Bates’s post-cutoff claims as a matter of law. Thus, Bates’s post-cutoff claims were time-barred.
