Granting Request for Rehearing based on Board’s Sua Sponte Identification of Unargued Basis for Earlier Prior Art Date IPR2015-01189


Takeaway: A priority benefit to an earlier filed application requires both that there be continuity to the earlier application and that the salient description is present in each application establishing the continuity.

In its Decision, the Board granted Petitioner’s Request for Rehearing of the Board’s Decision Denying Institution of Inter Partes Review.  The Board had denied institution, holding that Petitioner had failed to establish a prior art date for the Kikinis CIP reference.  In granting rehearing, the Board identified an alternative route to establish an earlier prior art date for the Kikinis CIP, and indicated that another Institution Decision addressing the merits of the Petition would be forthcoming.

The Board provided the following diagram to explain the relationships of the various applications related to the Kikinis CIP reference:


The Kikinis CIP reference is a patent that issued from an application filed after the challenged patent was filed. Therefore, Petitioner must establish that the Kikinis CIP is entitled to an earlier priority date and that a continuity of applications to that earlier priority date must exist.

In the Petition, Petitioner argued that the Kikinis CIP is entitled to the benefit of the “Kikinis Application” because the Kikinis CIP “restates the salient description” of certain features of the Kikinis CIP. The Board disagreed, explaining that “‘salient description’ in another application is to no avail without a priority benefit that requires both continuity and the ‘salient description’ being present in each application establishing the continuity.”

The Board went on to explain that two “paths of continuity” existed between the Kikinis CIP and the Kikinis Application. Petitioner argued the first path, that material from the Kikinis Application was incorporated into the Kikinis CIP.  However, as the Board noted, the Kikinis Application went abandoned before the Kikinis CIP application was filed, breaking the continuity.  Therefore, the first path could not establish an earlier priority date.

The second path, indicated with the bold arrows in the above figure, was not argued by Petitioner. In particular, the Board sua sponte noted that the Kikinis CIP was a continuation of application no. 08/683,567 (“the ’567 application”), and that the ’567 application maintained continuity with the Kikinis Application.  By virtue of being described as a continuation, the Board presumed that the Kikinis CIP and the ’567 application shared an identical specification but requested that Patent Owner come forward with evidence if that was not the case.

Because Petitioner had “favorably compared the Kikinis CIP with the Kikinis application” and because of the continuation relationship between the Kikinis CIP and the ’567 application, the Board found it appropriate to analyze the merits of the Petition. The Board granted the rehearing request even though the Petition was entirely silent with respect to the disclosure of the ’567 application.

American Meatrends, Inc. v. Kinglite Holdings Inc., IPR2015-01189
Paper 18: Decision Granting Petitioner’s Request for Reconsideration
Dated: March 31, 2016
Patent: 5,836,013
Before: Phillip J. Kauffman, Glenn J. Perry, Trevor M. Jefferson, and Brian J. McNamara
Written by: Perry