InDroplets, Inc. v. E*Trade Bank, the
Federal Circuit affirmed the decision of the USPTO Patent Trial and
Appeal Board (PTAB) that Droplet's patent was not entitled to
the priority date of a provisional application because of a defect
in the priority claim. In so doing, the court held that the
statutory requirement for a "specific reference" to an
earlier application cannot be satisfied by an incorporation by
reference of another application that includes the specific
reference at issue.
The Patent And Priority Claim At Issue
The patent at issue was Droplet's U.S. Patent 8,402,115,
which E*TRADE Bank challenged as obvious in an inter
partes review proceeding. The '115 patent was filed in
January 2009 and expressly claimed priority to U.S. Patent
7,502,838 and U.S. Provisional Application No. 60/153,917, filed
Sep. 14. 1999. However, the full chain of priority from the
'115 patent to the 1999 provisional application also included
intermediary U.S. Patent 6,687,745,
