Encyclopaedia Britannica, Inc. v. Alpine Electronics of America, Inc., and Alpine Electronics, Inc.

United States Court of Appeals
for the Federal Circuit
__________________________
ENCYCLOPAEDIA BRITANNICA, INC.,
Plaintiff-Appellant,
v.
ALPINE ELECTRONICS OF AMERICA, INC.,
AND ALPINE ELECTRONICS, INC.
Defendants-Appellees,
and
DENSO CORPORATION, TOYOTA MOTOR SALES,
U.S.A., INC.,
AND MAGELLAN NAVIGATION, INC.,
Defendants-Appellees,
and
AMERICAN HONDA MOTOR CO., INC.,
AND TOMTOM, INC.,
Defendants-Appellees,
and
GARMIN INTERNATIONAL, INC.,
Defendant-Appellee.
__________________________
2009-1544, -1545
__________________________
Appeals from the United States District Court for the
Western District of Texas in consolidated case Nos. 1:06-
CV-00578 and 1:07-CV-00787, Judge Lee Yeakel.

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ENCYCLOPAEDIA BRITANNICA v. ALPINE 2
___________________________
Decided: June 18, 2010
___________________________
JOHN C. R OZENDAAL, Kellogg, Huber, Hansen, Todd,
Evans & Figel, P.L.L.C., of Washington, DC, argued for
plaintiff-appellant. With him on the brief were
K. CHRIS T ODD , G EOFFREY M. K LINEBERG, and BRENDAN J.
CRIMMINS . Of counsel were DAVID G. WILLE, Baker Botts
LLP, of Dallas, Texas, and WILLIAM S. FOSTER , JR., of
Washington, DC.
PAUL R. STEADMAN , Kirkland & Ellis LLP, of Chicago,
Illinois, argued for defendants-appellees Alpine Electron-
ics of America, Inc., et al., DENSO Corporation, et al.,
American Honda Motor Co., Inc., and Garmin Interna-
tional, Inc. With him on the brief for DENSO Corpora-
tion, et al., was SHIRA J. K APPLIN . On the brief for Alpine
Electronics of America, Inc., et al., were GARY M. R OPSKI,
CYNTHIA A. H OMAN , LAURA BETH M ILLER , and
CHRISTOPHER A. H ARKINS , Brinks Hofer Gilson & Lione, of
Chicago, Illinois. On the brief for American Honda Motor
Co., Inc., were JOHN T. JOHNSON , Fish & Richardson P.C.,
of New York, New York, and THOMAS S. M CCLENAHAN , of
Minneapolis, Minnesota. On the brief for Garmin Interna-
tional, Inc., was RAYMOND W. M ORT, III, DiNovo, Price,
Ellwanger, & Hardy LLP, of Austin, Texas.
LAUREN A. D EGNAN , Fish & Richardson, P.C., of
Washington, DC, argued for defendant-appellee TomTom,
Inc. With her on the brief were JAMES A. FUSSELL, III,
and RUFFIN B. CORDELL.
__________________________
Before BRYSON , G AJARSA, and MOORE, Circuit Judges.

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ENCYCLOPAEDIA BRITANNICA v. ALPINE 3
M OORE, Circuit Judge.
Encyclopaedia Britannica, Inc. (Britannica) is the as-
signee of U.S. Patent Nos. 7,051,018 (the ’018 patent) and
7,082,437 (the ’437 patent). The ’018 and ’437 patents
relate to a multimedia database search system for retriev-
ing textual and graphical information. Britannica sued
Alpine Electronics of America, Inc., Alpine Electronics,
Inc., DENSO Corporation, Toyota Motor Sales, U.S.A.,
Inc., Magellan Navigation, Inc., American Honda Motor
Company, Inc., TomTom, Inc., and Garmin International,
Inc. (collectively, Defendants), alleging infringement of
the ’018 and ’437 patents. The Defendants moved for
summary judgment that the patents in suit are invalid as
anticipated by Britannica’s published foreign application.
The district court granted their motion for summary
judgment, declared the ’018 and ’437 patents invalid as
anticipated, and dismissed the cases. See Encyclopaedia
Britannica, Inc. v. Alpine Elecs. of Am., Inc., 643 F. Supp.
2d 874 (S.D. Tex. 2009). Britannica appeals. For the
reasons set forth below, we affirm.
BACKGROUND
Though both patents at issue were filed June 13,
2005, they each claim priority back to October 26, 1989
through a chain of patents and patent applications. The
decision on appeal hinges on whether these patents are
entitled to this priority date. Each of these patents con-
tains an identical priority claim under the section titled
“Related U.S. Application Data”:
Continuation of application No. 10/103,814, filed
on Mar. 25, 2002, which is a continuation of appli-
cation No. 08/202,985, filed on Feb. 28, 1994, now
Pat. No. 6,546,399, which is a continuation of ap-
plication No. 08/113,955, filed on Aug. 31, 1993,
now abandoned, which is a continuation of appli-

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ENCYCLOPAEDIA BRITANNICA v. ALPINE 4
cation No. 07/426,917, filed on Oct. 26, 1989, now
Pat. No. 5,241,671.
Britannica’s foreign patent application, WO91/06916,
published on May 16, 1991, was found to anticipate under
35 U.S.C. § 102(b). Hence if the patents in suit are enti-
tled to a priority date not later than one year after May
16, 1991, the foreign publication would not anticipate.
The district court held that the patents in suit were not
entitled to claim priority to U.S. Patent Application No.
07/426,917 (the ’917 application) because an intermediate
application in the chain of priority, U.S. Patent Applica-
tion No. 08/113,955 (the ’955 application), failed to satisfy
the requirements of 35 U.S.C. § 120. The district court
reasoned that because the ’955 application was not enti-
tled to the priority date of the ’917 application, later filed
patents could not claim priority to the ’917 application
through the ’955 application.
The ’955 application was filed on August 31, 1993, the
same day the ’917 application issued as the ’671 patent.1
The ’955 application was not submitted with a filing fee or
a declaration signed by the named inventors and was
missing its first page entirely. The ’955 application
contained no reference to the ’917 application. It made no
claim of priority to any earlier filed applications; such a
claim is generally made on the first page of the applica-
tion. On September 14, 1993, the PTO sent Britannica a
Notice of Incomplete Application and a Notice to File
Missing Parts of Application, stating that the application
was missing the first page of the specification, the oath or
declaration, and the filing fee. The PTO indicated that
1 We previously affirmed the district court’s judg-
ment holding the only independent claim of the ’671
patent, claim 1, invalid for indefiniteness. Encyclopaedia
Britannica, Inc. v. Alpine Elecs., Inc., 355 F. App’x 389
(Fed. Cir. 2009).

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ENCYCLOPAEDIA BRITANNICA v. ALPINE 5
the filing date for the ’955 application would be the date
that it received page 1 of the specification unless the
applicant established by petition that the application was
complete without page 1.
Britannica responded to the notices by filing a Peti-
tion for Granting a Filing Date, in which Britannica
argued that the missing page was not necessary to under-
stand the subject matter claimed and requested that the
application be accepted without the omitted page. Bri-
tannica did not include an oath or declaration from the
inventors to support its petition. The PTO issued a
Decision on Petition, stating that the application was
prima facie incomplete without the first page of the
specification and that Britannica’s argument that the first
page was unnecessary could not be accepted without an
oath or declaration from the inventors as required by the
Manual of Patent Examining Procedure (MPEP) § 608.01.
See Manual of Patent Examining Procedure 600-28 to -29
(5th ed. Rev. 15 Aug. 1993). The PTO dismissed Britan-
nica’s Petition for Granting a Filing Date without preju-
dice, stating that the amended application without page 1
could receive the filing date of August 31, 1993, if Britan-
nica filed a request for reconsideration along with an oath
or declaration from the inventors stating that their inven-
tion was adequately disclosed in the application without
page 1. Britannica requested a four-month extension on
February 28, 1994, but never filed a request for reconsid-
eration.2 The PTO issued a notice of abandonment for the
’955 application on March 23, 1995.
2 We are aware of no evidence that the applicant
ever paid the filing fee for the ’955 application. During
oral argument, counsel directed the court to J.A. 1117 and
claimed that Britannica had authorized the PTO to de-
duct all fees, including filing fees for the ’955 application.
Oral Argument at 22:54–23:11, Encyclopaedia Britannica,

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ENCYCLOPAEDIA BRITANNICA v. ALPINE 6
Prior to the abandonment of the ’955 application, on
February 28, 1994, Britannica filed U.S. Patent Applica-
tion No. 08/202,985 (the ’985 application), which claims
priority to the ’955 application and indicates that the ’955
application claims priority to the ’917 application. The
’985 application issued as U.S. Patent No. 6,546,399 (the
’399 patent) on April 8, 2003. Prior to issuance of the ’399
patent, Britannica filed U.S. Patent Application No.
10/103,814, which also claims priority to the ’917 applica-
tion through a priority chain including the ’985 and ’955
applications. The two patents in suit claim priority back
through this chain to the ’917 application.
The court held that the ’955 application was not enti-
tled to the priority date of the ’917 application because it
did not contain a specific reference to the earlier applica-
tion as required by 35 U.S.C. § 120. The court reasoned
that because the ’955 application was not entitled to claim
priority to the ’917 application, no later patent in the
chain could claim priority to the ’917 application through
the ’955 application.
Because the patents in suit could not claim priority
through the ’955 application to the ’917 application’s filing
date (October 26, 1989), the district court held that the
patents were invalid as anticipated by the foreign patent
application, which was published May 16, 1991. The
district court therefore granted summary judgment of
Inc. v. Alpine Elecs. of Am., Inc., No. 2009-1544 (Fed. Cir.
May 4, 2010), available at
http://oralarguments.cafc.uscourts.gov/mp3/2009-
1544.mp3. J.A. 1117, however, only authorizes the PTO
to deduct fees for a further extension of time under 37
C.F.R. § 1.136(a); it does not authorize the blanket fee
payment which would include the filing fee as counsel
claimed.

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ENCYCLOPAEDIA BRITANNICA v. ALPINE 7
invalidity in favor of Defendants. Britannica appeals. We
have jurisdiction pursuant to 35 U.S.C. § 1295(a)(1).
D ISCUSSION
We review a district court’s interpretation of a statute
de novo. Studiengesellschaft Kohle, M.B.H. v. Shell Oil
Co., 112 F.3d 1561, 1564 (Fed. Cir. 1997). We review a
district court’s grant of summary judgment de novo,
reapplying the standard applicable at the district court.
Young v. Lumenis, Inc., 492 F.3d 1336, 1344 (Fed. Cir.
2007). “While anticipation is a question of fact, it may be
decided on summary judgment if the record reveals no
genuine dispute of material fact.” Leggett & Platt, Inc. v.
VUTEk, Inc., 537 F.3d 1349, 1352 (Fed. Cir. 2008).
There is no factual dispute over whether the pub-
lished foreign patent application contains all the elements
of the claims of the patents in suit. The sole issue on
appeal, one of first impression for this court, is whether
35 U.S.C. § 120 requires an intermediate application in a
priority chain to “contain a specific reference to the earlier
filed application.”3 At the time the ’955 application was
pending before the PTO, § 120 provided as follows:
An application for patent for an invention dis-
closed in the manner provided by the first para-
graph of section 112 of this title in an application
previously filed in the United States, or as pro-
vided by section 363 of this title, which is 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
3 Our predecessor court previously established that
there is no limitation under the statute to the number of
applications through which a later application can trace
its claim to the benefit of a first application’s filing date.
See In re Henricksen, 399 F.2d 253 (CCPA 1968).

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ENCYCLOPAEDIA BRITANNICA v. ALPINE 8
prior application, if filed before the patenting or
abandonment of or termination of proceedings on
the first application or on an application similarly
entitled to the benefit of the filing date of the first
application and if it contains or is amended to con-
tain a specific reference to the earlier filed appli-
cation.
35 U.S.C. § 120 (1988). Britannica argues that the dis-
trict court erred by interpreting the language of § 120 to
require that each application in a series of continuing
applications must contain a specific reference to the
original application. Defendants argue that the district
court did not err in its interpretation of § 120 because the
plain language of the statute requires all applications in a
chain of priority to specifically reference the original
application. In the alternative, Defendants assert that we
may affirm the district court’s judgment on the basis that
the ’955 application was not co-pending with the ’917
application because the ’955 application was filed on the
same day the ’917 application issued as the ’671 patent.
Defendants also argue that the ’955 application is not
entitled to any filing date because Britannica never paid
the required filing fees or filed an oath or declaration
stating that the missing page was unnecessary to the
application.
We agree with the district court’s construction of
§ 120. Section 120 allows an application for a patent to
“have the same effect, as to such invention, as though
filed on the date of the prior application.” Id. However,
there are several requirements a later-filed application
must meet in order to be entitled to this benefit under
§ 120. First, the invention described in the new applica-
tion must be “disclosed . . . in an application previously
filed in the United States.” Id. Second, the application
must be “filed by an inventor or inventors named in the

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ENCYCLOPAEDIA BRITANNICA v. ALPINE 9
previously filed application.” Id. Third, the application
must be co-pending with the earlier application, or “filed
before the patenting or abandonment of or termination of
proceedings on the first application.” Id. Fourth, the
application must “contain[] or [be] amended to contain a
specific reference to the earlier filed application.” Id.
With respect to the third requirement, an application
can also claim the benefit of the filing date of an earlier
application through a chain of co-pending applications.
Even if a new application is not co-pending with the first
application, § 120 states that the application can meet the
co-pendency requirement if it is “filed before the patenting
or abandonment of or termination of proceedings on . . .
an application similarly entitled to the benefit of the filing
date of the first application.” Id.
The phrase “similarly entitled” is the language at is-
sue in this case. Britannica agrees that the four require-
ments listed above relate to the final application in a
priority chain, but Britannica argues that “similarly
entitled” applications are not required to contain a spe-
cific reference to an earlier filed application. Therefore,
Britannica asserts that it is immaterial whether the ’955
application includes a specific reference to the ’917 appli-
cation because it is a “similarly entitled” intermediate
application and not the final application in the priority
chain.
Britannica makes several arguments in support of its
interpretation of § 120 with respect to the requirements
for “similarly entitled” applications. First, Britannica
argues that the phrase “similarly entitled” only relates
back to what occurs prior to it in § 120, specifically the
first three requirements. Britannica suggests that be-
cause the fourth requirement occurs after the phrase, and
because it is part of an independent clause separated from

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ENCYCLOPAEDIA BRITANNICA v. ALPINE 10
the other three requirements by the conjunction “and,”
the fourth requirement is not one of the criteria for enti-
tlement to an earlier priority date for a “similarly enti-
tled” application. The plain language of § 120 contradicts
Britannica’s position. Although it is true that the phrase
“similarly entitled” relates back to the beginning of § 120,
the phrase relates back to the words “[a]n application” at
the start of the section. “An application” as described in
§ 120 is only entitled to the benefit of the filing date of an
earlier application if it meets all four requirements of the
statute, including a specific reference to the earlier appli-
cation.
Second, Britannica argues that because § 120 dis-
cusses intermediate applications that are “entitled” to the
benefit of the original application’s filing date, instead of
ones that “claim” the benefit, an intermediate application
does not need to contain a specific reference to the origi-
nal application. We do not agree. There is nothing in the
language or legislative history of § 120 to suggest that an
application is entitled to an earlier priority date even if it
fails to make a specific reference to an earlier application.
For an application to be entitled to the filing date of an
earlier application under § 120, all four requirements
must be met, including referencing the earlier application.
Even Britannica concedes that this is what “similarly
entitled to” means today under the statute as it currently
stands.
In 1999, Congress amended § 120 by adding the fol-
lowing sentences:
No application shall be entitled to the benefit of
an earlier filed application under this section
unless an amendment containing the specific ref-
erence to the earlier filed application is submitted
at such time during the pendency of the applica-

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ENCYCLOPAEDIA BRITANNICA v. ALPINE 11
tion as required 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. The Director may establish
procedures, including the payment of a surcharge,
to accept an unintentionally delayed submission of
an amendment under this section.
Pub. L. No. 106-113, § 1000(a)(9) & App. I § 4503(b)(1),
113 Stat. 1536 (1999). Britannica argues that the addi-
tion of the first sentence, which requires intermediate
applications to contain a specific reference to the earlier
application, suggests that the law prior to the amendment
did not contain such a requirement. The Defendants
respond that Congress stated that the purpose of the 1999
amendment was to “establish a time by which the priority
of an earlier filed United States application must be
claimed,” not to change the basic requirements for enti-
tlement to the benefit of a prior application’s filing date.
Appellee’s Br. 25–26 (quoting H.R. Rep. No. 106-464, at
*131–32 (1999) (Conf. Rep.)). We agree. The 1999
amendment relates to the imposition of a new time limit
for claiming priority. The portion of the amendment that
indicates that to be “entitled to the benefit of an earlier
filed application,” each application in a priority chain
must contain a specific reference to the application to
which it is claiming priority, merely explains, not
changes, what was required. The phrase “amendment
containing the specific reference to the earlier filed appli-
cation” identifies the submission date by which the time
limit is to be measured; it does not add a new reference
requirement for intermediate applications.
Britannica also argues that the district court’s inter-
pretation of § 120 serves no statutory purpose because
any notice function created by § 120 was fulfilled by the
’018 and ’437 patents, each of which claims priority to the

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ENCYCLOPAEDIA BRITANNICA v. ALPINE 12
’917 application. Britannica argues that the primary
purpose of § 120 is to provide “continuity of disclosure”
through the chain of applications on file. Britannica
explains that in the circumstances of this case, the public
is not deceived because the ’955 application was aban-
doned and not published. And when the patents in suit
issued, they indicated the claim of priority from the ’955
application to the ’917 application. Britannica explains
that under these facts nobody is harmed by the ’955
application’s failure to claim priority to the ’917 applica-
tion because nobody is aware of this infirmity until the
next patent in the chain issues, and because that next
patent makes the assertion of priority. Oral Argument at
5:16–5:54, Encyclopaedia Britannica, Inc. v. Alpine Elecs.
of Am., Inc., No. 2009-1544 (Fed. Cir. May 4, 2010), avail-
able at http://oralarguments.cafc.uscourts.gov/ mp3/2009-
1544.mp3; Appellant’s Br. 43–44 (citing 37 C.F.R.
§ 1.14(b) (1993)).
We do not agree. Later applications cannot amend
the ’955 application and restore its entitlement to priority.
The ’955 application failed to claim priority to the ’917
application. The applicants allowed the ’955 application to
go abandoned even after being informed by the PTO of its
infirmities. It makes no sense to allow the applicant to
rewrite history and resurrect the ’955 application’s prior-
ity claim. The ’955 application did not contain a specific
reference to the ’917 application. Therefore, it failed to
satisfy the requirements of § 120 and is not awarded the
benefit of the earlier filing date in the United States.
There does not actually appear to be any dispute over
this—the ’955 application failed to meet all four require-
ments of § 120 and therefore does not have the same
effect as though filed on the date of the ’917 application.
Britannica’s claim that a later application can cure this
defect and restore the priority chain cannot be correct.

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ENCYCLOPAEDIA BRITANNICA v. ALPINE 13
In light of our determination that the ’955 application
is not entitled to the priority date of the ’917 application
because it failed to specifically reference the ’917 applica-
tion as required by § 120, we need not resolve the Defen-
dants’ alternative grounds for affirming. We therefore
leave for another day whether filing a continuation on the
day the parent issues results in applications that are co-
pending as required by the statute.
We also leave for another day whether the ’955 appli-
cation is entitled to the filing date of August 31, 1993.
The district court concluded that because of infirmities in
the ’955 application, it “was not entitled to any filing
date.” Therefore the district court concluded the patents
in suit are only entitled to the February 28, 1994 filing
date. The patents in suit are anticipated by the May 16,
1991 publication regardless of whether they are entitled
to the August 31, 1993 filing date or the February 28,
1994 filing date. Therefore, we need not decide whether
the ’955 application is entitled to a filing date of August
31, 1993 pursuant to 35 U.S.C. § 111.
CONCLUSION
Summary judgment in this case hinged entirely on
the issue of statutory interpretation. We conclude that
§ 120 requires each application in the chain of priority to
refer to the prior applications. Because the ’955 applica-
tion failed to specifically reference the earlier filed ’917
application, it is not entitled to the priority date of the
’917 application under § 120. Because the ’955 applica-
tion did not claim priority to the ’917 application, the
patents in suit cannot claim priority to the ’917 applica-
tion through the ’955 application. In light of our statutory
interpretation, there remain no factual disputes regarding
anticipation. Therefore, summary judgment was properly
granted.

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ENCYCLOPAEDIA BRITANNICA v. ALPINE 14
For the above reasons, the judgment of the district
court is
AFFIRMED.

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