Pop Top Corp. v. Nook Digital, LLC

Background

Pop Top asked the court to rule that the claims of U.S. Patent No. 10,866,713 were entitled to a priority date of June 22, 2006, based on an earlier provisional patent application. The patent concerns highlighting documents on mobile, handheld, electronic-reader, or similar devices. The only remaining claim in the action concerns alleged infringement of that patent; the court had previously dismissed Pop Top’s infringement claim concerning a different patent.

The 2006 provisional application described a web-based highlighting tool usable from a computer connected to the Internet. The later patent described software stored in a device’s built-in memory that allows a user to highlight a document on the device and retrieve stored highlights. The patent applications formed a chain of continuation-in-part applications. A continuation-in-part continues some earlier subject matter but adds subject matter not disclosed in the earlier application.

Legal Standard

The court treated Pop Top’s motion as seeking a legal determination based on agreed facts. To receive the filing date of an earlier application, a later patent’s claims must be supported by the earlier application’s written description. The written description requirement asks whether the earlier disclosure reasonably shows that the inventor possessed the claimed subject matter when the earlier application was filed.

Because the Patent and Trademark Office had not determined the priority date for the relevant claims, the court placed the burden on Pop Top to establish entitlement to the earlier date. In a chain of continuing applications, each application in the chain must satisfy the written description requirement for the claimed subject matter.

Court’s Analysis

The court identified three reasons Pop Top’s request failed. First, Pop Top did not analyze the other continuation-in-part applications in the chain leading from the 2006 provisional application to the patent at issue. The court therefore found that Pop Top had not carried its burden across the full chain.

Second, the court found that Pop Top had not presented materials suggesting that the 2006 provisional application disclosed highlighting functionality on an electronic reader. The provisional application discussed a web-based tool for highlighting web documents from an Internet-connected computer. The later patent addressed highlighting on a mobile, handheld, or electronic-reader device. The court stated that showing that a later device could have been substituted for the disclosed web-browser system would not be enough; the earlier application had to disclose the claimed subject matter.

Third, the court rejected Pop Top’s argument that it had not added new matter. The court found that the continuation-in-part chain and the later patent included devices that were not disclosed in the 2006 provisional application. It also contrasted the later patent’s built-in-device software with the earlier patent’s executable highlighting code relayed to a client web browser.

Disposition

Judge Vernon S. Broderick denied Pop Top’s motion. The court made no further determinations at that time, directed the parties to file a joint letter within 14 days concerning the next steps in the action, and directed the Clerk of Court to terminate the motion at docket entry 40.