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




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




    Patentee's Rebuttal Evidence: Experimental Use


    Electromotive Div. of General Motors v. Transportation Sys. Div. of General Elect.

    Fed Cir. 2005





4. 102(d) -- Foreign Prior Art



5. 102(e) -- Disclosure in Earlier Filed U.S. Application



6. 102(f) -- Derivation (Taking the Invention from Someone Else)



7. 102(g) Priority of Invention



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 ( U.S. 1980)


Ø       Congress intended statutory subject matter to include "anything under the sun that is made by man".

Ø       The Sup Court held that patent protection was available for living organism, specifically a bacterium genetically modified to eat petroleum (1980). -- < Petroleum eating bacterium >


- 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 Indus.   (Fed Cir 1996)


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 U.S. ) is prior art at the time of issuance regardless of whether it was publicly accessible.

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 (ewarming-upf) 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.



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 (eagreedf) 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 enot accessible to the public because they have not been catalogued in a meaningful way.




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 U.S. filing date!


Pfaff v. Wells Electronics, Inc.

Sup Court Decision 1998




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 April 19, 1982 .


-          Pfaff commenced the work on the socket in Nov 1980.

-          Pfaff showed a sketch of his concept to TI before March 17, 1981 .

-          RTP took place in summer of 1981.


District Court:

Dist Ct rejected respondent's 102(a) defense because Pfaff had filed the application for the '337 patent less than 1 year after reducing the invention to practice.


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 April 19, 1981 .

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)



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




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 gthe invention was c. in public use or on sale in this country more than one year prior to the date of the application for patent in the United States .


In Pfaff, the court specifically considered the eon-salef portion of the 102(b) statutory bar language, but the court noted that both the eon-salef and epublic usef bars were based on the same public policy.


Notes:  Omitted. 


-------------------------------------------------------------------------------------------------------------- ---------

Patentee's Rebuttal Evidence: Experimental Use

Defense to eon-sale barf or epublic use barf:


City of Elizabeth v. American Nicholson Pavement ( Sup Ct. 1877)


The Court held that the inventorfs 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)


Pfafffs 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 Pfafffs 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)     inventorfs control; and

(2)     customerfs 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 Pacificfs use of the new planetary bearings in any way;

²        EMD made no attempt to monitor the conditions under which Union Pacific used the etest locomotivesf;

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 Pacificfs awareness of the field program


²        No secret agreement or confidential agreement W/R/T the EMDfs 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 customerfs 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 U.S. patent application; and

(2)     the foreign patent issued before the filing date of the U.S. patent application.







5. 102(e) -- Disclosure in Earlier Filed U.S. Application


The Patent A is invalid, if the following conditions are met:


(1)           the patenteefs invention (Patent A) was disclosed in another patent application (Patent B) that was filed prior to the patenteefs 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