Ariosa Diagnostics, Inc. v. Illumina, Inc.

In Alexander Milburn Co. v. Davis-Bournonville Co., 270 U.S. 390 (1926), this Court held that, regardless of whether a patent claims a particular invention, the description of that invention in the body of the patent creates prior art as soon as the application disclosing the invention is filed, meaning that the disclosure can be used to invalidate any later-filed patent seeking to claim the same invention. Congress codified and later extended this rule in 35 U.S.C. § 102(e), which provides that an invention “described” in a patent or published patent application is prior art as of its filing date. Congress further provided that where an application claims priority to an even earlier application that “disclosed” the same invention, it “shall have the same effect, as to such invention, as though filed on” the earlier date. 35 U.S.C. §§ 119(e)(1), 120. The question presented is: Do unclaimed disclosures in a published patent application and an earlier application it relies on for priority enter the public domain and thus become prior art as of the earlier application’s filing date, or, as the Federal Circuit held, does the prior art date of the disclosures depend on whether the published application also claims subject matter from the earlier application? (i)