Subject:
Day 9 Self Study Course:
summarized by Tatsuo Yabe
Outline for Chapter 11
pages 498 to 543
Proving Invalidity
A. Overcoming the
Presumption of Validity
35 U.S.C. 282
B. Identifying Prior
Art
C. Patentable Subject
Matter and Utility under 101
35 U.S.C. 101
D. Anticipation under
102
1. 102(a) -- Known or Used by Others
2. 102(a) & (b) -- Other Patents or Printed
Publications
Bruckelmyer
v. Ground Heathers, Inc.
Fed Cir. 2006
Notes:
3. On-Sale and Public Use Statutory Bars under 102(b)
35 U.S.C. 102(b)
Pfaff
v. Wells Electronics, Inc.
Fed Cir. 1998
Invitrogen
Corp. v. Bilcrest Manufacturing, L.P.
Fed. Cir. 2005
Notes:
Patentee's Rebuttal Evidence:
Experimental Use
Electromotive
Div. of General Motors v. Transportation Sys. Div. of General Elect.
Fed Cir. 2005
Notes:
4. 102(d) -- Foreign Prior Art
5. 102(e) -- Disclosure in Earlier Filed
6. 102(f) -- Derivation (Taking the Invention from Someone
Else)
7. 102(g) Priority of Invention
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Day 9
Summary for Chapter
11
pages 498 to 543
Chapter 11
Proving Invalidity:
A common defense for an accused Def is to challenge the
validity of the patent. If the patent is found invalid, then the infringer
can practice the invention. Furthermore, the public gain benefits because
once the patent is found invalid, then it is invalid to the rest of the world
under collateral estoppel (Chap 15).
A. Overcoming the
Presumption of Validity
35 U.S.C. 282:
A patent shall be presumed valid. Each claim
of a patent shall be presumed valid independently of the validity of
other claims;.......
The burden of establishing invalidity of a patent or any
claim thereof shall rest on the party asserting such invalidity.
Accused infringers have burden of overcoming this
presumption by clear and convincing evidence.
Dependent claim can be valid even though it is dependent
on an invalid claim. Validity must be assessed on a claim-by-claim basis.
Presenting the jury with prior art that was not considered
by the PTO examiner makes it easier for the jury to conclude that the patent was
invalid and that, if the examiner had all the prior art, she would have surely
concluded that the patent shall not issue. In this way, the accused
infringer is not giving pressure to the jury to conclude that the examiner made
a mistake in issuing the patent.
There are 5 basic grounds for
challenging the validity of the patent:
1.
Eligible subject matter
under 35 U.S.C. 101;
2.
Usefulness under 35
U.S.C. 101;
3.
Novelty under 35 U.S.C.
102;
4.
Non-obvious under 35
U.S.C. 103;
5.
Formal Requirements
under 35 U.S.C. 112
5.1: Best mode Req.: (the best mode known to the inventor)
5.2: Enablement Req.; (the spec must enable a PSITA to practice the
invention)
5.3: Written Description Req.; (the spec must fully disclose every
claimed element)
B. Identifying Prior
Art
C. Patentable Subject
Matter and Utility under 101
35 U.S.C. 101
Whoever invents or discovers any new and useful process,
machine, manufacture, or composition of matter, or any new and useful
improvement thereof, may obtain a patent therefor, subject to the conditions and
requirements of this title.
Eligible Subject
Matter:
-
Diamond v. Chakrabarty (
Ø
Congress
intended statutory subject matter to include "anything under the sun that
is made by man".
Ø
The
-
State St. Bank v. Signature (Fed Cir 1998)
Ø
validity
challenge based on business method related patent is no longer available.
Ø
a
process is patentable if it produces a useful, concrete, and tangible result.
Ø
see
MPEP2106 for interim guidelines for examination of patent application for patent
subject matter eligibility
-
In re Nuijten
(Fed Cir 2007) - signal per se is not
patentable. 4 categories should not be a focal issue for eligibility
determination under 101.
-
In re Comiskey (Fed Cir 2007) - method for mandatory arbitration resolution was not
patentable subject matter.
D. Anticipation under
102
To succeed, the accused
infringer must show (1) that each and every limitation of the claim is found in
a single art reference; and (2) that the reference enables the claimed
invention.
PPG
Indust. v. Guardian
Anticipation is a Question
of Fact for the jury.
-------------------------------------------------------------------------------------------------------------------------
1. 102(a) -- Known or
Used by Others
-
102(a)
reflects that "first to invent" nature of the U.S. Patent System;
-
The
important date for determination whether the reference qualifies as a P/A
reference under 102(A) is the date of invention.
Ø
Initially
the filing date is treated as the patentee's date of invention;
Ø
Thus
an alleged infringer makes out a prima facie case of invalidity if he proves by
clear and convincing evidence that the invention was publicly known or used by
others before the filing date;
Ø
However,
the patentee can rebut this case by proving an earlier invention date;
²
by
perfecting claim of priority based on filing date of the foreign application
under 119; or
²
by
swearing back (behind) under the rule 131;
The Fed Cir has held that
claims of prior public knowledge or use under 102(a) based on oral evidence
(i.e., individual's statement) must be corroborated. Woodland
Trust v. Flowertree Nursery (Fed Cir 1998)
- Corroboration by 4 Ws
(all friends or family) is insufficient to prove public use.
--------------------------------------------------------------------------------------------------------------------------
2. 102(a) &
(b) -- Other Patents or Printed Publications
Ø
Any
patent (foreign or
Ø
A
prior art document is a printed publication when it is publicly accessible.
Bruckelmyer
v. Ground Heathers, Inc.
Fed Cir. 2006
Bruckelmyer - patentee -
patents disclosing a method of thawing (‘warming-up’) frozen ground so that
a layer of concrete can be laid on top of the ground. A heated liquid
(water or antifreeze) is circulated through the hoses placed in a concrete form.
Issue:
Figs. 3 & 4 of the
original application in the file wrapper of the prior art patent (Canadian
Patent) is a printed publication or not. In other words, whether those
Figs 3 & 4 were publicly accessible or not? Note that Figs. 3 & 4
were removed from the application during the prosecution and thus the issued
patent did not contain these figures.
Bruckelmyer stipulated
(‘agreed’) that if the Canadian Patent Application (including Figs. 3 &
4) were 'a printed publication' under 102(a), then it would render the patents
in suit invalid under 103.
Judge Linn Dissent:
Ø
Researchers
normally expect the text of printed patent to correspond to and be co-extensive
with the applications from which they have been issued.
Ø
the
fact that an additional Dwgs disclosing additional structure, is present in the
application file is a matter of shear happenstance nowhere indicated in the
issued patent.
Ø
As
in Cronyn case (Fed Cir 1989),
the anticipatory drawings at issue in this case are ‘not accessible to the
public because they have not been catalogued in a meaningful way.
Notes:
1a: a single PhD
dissertation in German library (indexed) qualifies as 102(b) reference.
1b: Alphabetically indexed
by students' names in a chemical dept library was found not sufficient to make
them reasonably accessible to public.
2. Language
irrelevant;
3. Patents in the meaning
under 102(a) & 102(b):
Be careful some countries
treat industrial design differently from utility patents.
4. Inherency
- Even if an element is
not disclosed, but is inherent from what is disclosed (i.e., it naturally always
follows from what is disclosed), then that is a 102(a), (b) anticipation, even
though one of the claimed element is not actually disclosed.
- Inherency, however, may
not be established by probabilities or possibilities.
5. A prior art species
anticipates a later claimed genus that includes the species.
--------------------------------------------------------------------------------------------------------------------------
3. On-Sale and Public
Use Statutory Bars under 102(b)
35 U.S.C. 102(b): relationship with 102(a) "first to invent
system";
Ø
as
a statutory bar, it acts as a quasi-SL on the inventor to file an application;
Ø
of
the inventor does not file an application within 1 year of various listed
occurrences, then the inventor is barred (precluded) from obtaining a patent on
the invention;
Note the date of invention
is irrelevant under 102(b)! All that matter is the critical date,
that is, one year before the actual
Pfaff
v. Wells Electronics, Inc.
Sup Court Decision 1998
ON-SALE
BAR
102(b) provides that no
person is entitled to patent on invention that has been 'on sale' more than 1
year before filing date of the patent application.
-
Patentee
filed a patent application on a computer chip socket on
-
Pfaff
commenced the work on the socket in Nov 1980.
-
Pfaff
showed a sketch of his concept to TI before
-
RTP
took place in summer of 1981.
District Court:
Fed Cir:
Fed Cir reversed. 4
claims of patent in question described the socket that Pfaff had sold to TI
before the critical date, that is
As long as the inventor
was 'substantially completed' at the time of sale' the 1 year period began to
run, even though the invention had not yet been reduced to practice.
Ø
Primary
meaning of the word "invention" in the Patent Act unquestionably
refers to the inventor's conception rather than to a physical embodiment
of that idea.
Ø
In
1888, ' Alexander Graham Bell' the court upheld a patent issued even though he
had filed his application before constructing a working telephone. (But in
his spec, he did describe accurately and with admirable clearness of his
process)
SUP COURT:
It is evident that Pfaff
could have obtained a patent on his novel socket when he accepted the
purchase order from TI for 30,100 units.
Roots of Grace Period:
(i)
The
Patent Act 1836: No grace period - on sale bar to the issuance of a
patent;
(ii)
In
1839, Congress enacted a 2-Year grace period;
(iii)
In
1939, Congress reduced the grace period from 2 year to 1 year.
Sup Court Rulings:
(Pfaff's 2 Prong Test)
On-Sale bar applies when 2
conditions are met:
(1)
the product must be the
subject of a commercial offer for sale; and
(2)
the invention must be
ready for patenting;
(2A) by proof of RTP before the critical date; or
(2B)
by proof that the inventor had prepared Dwgs/other descriptions of the invention
that were sufficiently specific to enable a person skilled in the art to
practice the invention; (Dwgs Pfaff sent to the manufacturer before the critical
date fully disclosed the invention)
Invitrogen
Corp. v. Biocrest Manufacturing, L.P.
Fed. Cir. 2005
PUBLIC
USE BAR
Whether a patent is invalid due to public use under 102(b)
is a Q of law based on underlying Qs of fact.
35 USC102(b) states that a person shall be entitled to a
patent unless “the invention was …. in public use or on sale in this country
more than one year prior to the date of the application for patent in the
In Pfaff, the court specifically considered the
‘on-sale’ portion of the 102(b) statutory bar language, but the court noted
that both the ‘on-sale’ and ‘public use’ bars were based on the same
public policy.
Notes: Omitted.
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Patentee's Rebuttal
Evidence: Experimental Use
Defense to ‘on-sale
bar’ or ‘public use bar’:
City
of
The Court held that the inventor’s use of the patented
wooden pavement for 6 years on a public road did not constitute a public use.
Ø
Nicholson
wanted to experiment on his pavement;
Ø
Durability
was one of the qualities to be attained; use for a considerable time is
necessary;
Ø
The
public had the incidental use of the pavement;
Ø
The
only way to test durability was by allowing the public to pass over the
pavement.
Electromotive
Div. of General Motors v. Transportation Sys. Div. of General Elect.
Fed Cir. 2005
EMD (GM): Patent owner – 2 U.S. Patents which relate
to planetary bearings for use in the turbocharger planetary drive trains.
Ø
reliability
growth test (in-house program)
Ø
reliability
vilification test (field program)
A.
Whether the sales were
sufficient to raise the bar under 102(b)
Pfaff’s 2 Prong Test:
Ø
subject
of a commercial sale; and
Ø
the
claimed invention must be ready for patenting;
The relevant inquiry here concerns only the 1st
Prong of Pfaff’s Test. Thus, the
question is whether the transaction constituting the sale was not incidental to
the primary purpose of experimentation;
à Whether the primary
purpose of the inventor at the time of the sale, as determined from an objective
evaluation of the facts surrounding the transaction, was to conduct
experimentation.
B.
Evidence of
Experimentation:
Objective Evidence:
13 objective factors to see if the pre-critical date sale
was primary for experimentation.
-
Fed
Cir precedent has treated
(1)
inventor’s control;
and
(2)
customer’s awareness
of the testing;
as especially important
to experimentation.
-
Fed
Cir has made said (1) and said (2) dispositive (conclusive)!!
(1)
EMD did not provide any
protocols to Union Pacific directing their use of locomotives containing the new
planetary bearings;
²
EMD
neither supervised nor restricted Union Pacific’s use of the new planetary
bearings in any way;
²
EMD
made no attempt to monitor the conditions under which Union Pacific used the
‘test locomotives’;
²
The
tear-down report by EMD (for voluntary returned turbochargers) were not
different from any other failure reports prepared by EMD.
(2)
EMD could not
objectively establish Union Pacific’s awareness of the field program
²
No
secret agreement or confidential agreement W/R/T the EMD’s planetary bearings;
²
EMD
fails to show any objective evidence supporting EMD inference that Union Pacific
was aware of the field testing. à
lack of customer awareness!
The facts do not show the existence of control or
customer’s awareness, the court do not consider the other experimentation
factors.
Notes: omitted
--------------------------------------------------------------------------------------------------------------------------
4. 102(d) -- Foreign
Prior Art
The foreign filed application is a prior art under 102(d)
if the following 2 conditions are met:
(1)
the inventor filed a
foreign patent application more than one year before the
(2)
the foreign patent
issued before the filing date of the
5. 102(e) -- Disclosure
in Earlier Filed
The Patent A is invalid, if the following conditions are
met:
(1)
the
patentee’s invention (Patent A) was disclosed in another patent application
(Patent B) that was filed prior to the patentee’s invention; and
(2)
the
application for Patent B ultimately issued or was published.
6. 102(f) -- Derivation
(Taking the Invention from Someone Else)
Derivation is a Q of fact, based on proof that:
(1) the invention was previously conceived by another; and
(2) the complete conception was communicated to the patentee.
Cure: Correction
of Inventorship à 35 USC256 provides for the correction of inventorship in
an issued patent.
7. 102(g) Priority of
Invention