3rd party statutory bar activity

1
3rd party statutory bar activity

• Patent Law
• 3.4.08

2
Cleanup issues

• Atlanta Attachment on-sale or public use?
• Apparently the former

3
Chisum on experimental use

• The better and prevailing view is that
  experimental use can indeed continue even after
  the invention has been completed and reduced to
  practice as that term is used in patent law.
   Unfortunately, many Federal Circuit decisions
  articulate the former, less-preferred position,
  to wit, that experimental use cannot extend
  beyond reduction to practice. This leads to
  considerable confusion.

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102. Novelty and loss of right to patent

• A person shall be entitled to a patent unless
• (a) the invention was known or used by others in
  this country, or patented or described in a
  printed publication in this or a foreign country,
  before the invention thereof by the applicant for
  patent, or
• (b) the invention was patented etc more than
  one year prior to the date of the application for
  patent in the United States, or . . . .

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102. Novelty and loss of right to patent

• A person shall be entitled to a patent unless
• (a) the invention was known or used by others
  before the invention thereof by the applicant for
  patent, or
• (b) the invention was patented or described in a
  printed publication , more than one year prior
  to the date of the application for patent . . . .

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When would a statutory bar invalidate, but not
102(a)?
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When would a statutory bar invalidate, but not
102(a)?

• When 1 a qualifying reference enters the prior
  art 2 after the applicants date of invention,
  but 3 more than 1 year prior to applicants
  filing date

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Statutory Bars and 3rd party activity

• Are the same policies implicated?
• Look again to unique situations where only a
  statutory bar will invalidate the patent

9
Practicalities

• Some 3rd party prior art may be
  difficult/expensive to find
• Rarely during prosecution
• Labor-intensive discovery
• On sale, some public use compare to known or
  used publicly under 102(a)

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Novelty and the economics of search

• Page 417
• How did defendants find out about prior art in
  Baxter and WL Gore?
• Interference, Baxter
• Public use (?) by Budd, WL Gore

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Baxter

• What category of section 102 prior art is at
  issue here?

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(No Transcript)
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Issues on appeal

• Was Suaudeau Itos use public?
• Was it experimental not yet completed?
• Different standards for 3rd party
  experimentation, vs inventors own
  experimentation?

14
Holding

• Suaudeaus use was public, and it was not
  experimental in a manner that saves Cullis
  patent. -- p. 572

15
Baxter International v. Cobe Labs, Inc.

• Q How is this case different from Rosaire?
• A They are similar in that the courts in both
  find public uses by third parties in
  circumstances where the use would be hard to
  discover by the applicant. There are two
  differences

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Distinguishing Rosaire

• (2) Rosaire used the invention in the ordinary
  course of business. Here Suaudeau used the
  invention in a lab. Its not clear that it was
  ever used in the ordinary course of a business
  (even accepting that research could be a
  business).
• (1) Baxter is a statutory bar case. Thus, the
  prior public use cannot be defeated by proof of
  earlier invention it creates problems for Itos
  patent application too.

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Hypothetical

• Q Inventor conceives of a new widget on
  1/1/2000. Thief steals the plans, builds the
  widget and, unknown to the inventor, sells a copy
  on 2/1/2000. The inventor meanwhile sells some
  prototypes to determine if the new widget works.
  She requires customers to report on the
  performance of the invention. The inventor is
  satisfied with the tests on 3/1/2001 and then
  files an application. Can she get a patent?

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Hypothetical

• A Probably not. Sales by thieves do start the
  one-year clock of 102(b) running. Evans Cooling
  Sys. v. General Motors Corp., 125 F.3d 1448 (Fed.
  Cir. 1997). Here the inventors own sales were
  probably experimental, but the thiefs was not.
  Perhaps, however, the inventor could argue that
  the invention was not yet ready for patenting
  at the time of the thiefs sale.

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Newman dissent

• Opposes secret prior art
• See Pitlick p 609
• 3rd party 102(b) art should be narrowly limited
• liberal test of publicness
• Consistent with policies?

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W. L. Gore Assoc. v. Garlock, Inc.

• 1966 John Cropper of New Zealand develops a
  machine for producing stretched and unstretched
  PTFE thread seal tape.
• 1967 Cropper sends a letter to a company in
  Massachusetts offering to sell his machine,
  describing its operation, and enclosing a photo.
  Nothing comes of that letter. There is no
  evidence and no finding that the present
  inventions thereby became known or used in this
  country.

21
Gore

• 1968 Cropper sells his machine to Budd in US but
  requires Budd to keep the operation of the
  machine a secret, which Budd does. Budd uses the
  machine to produce seal tape.
• May 21, 1970 Gore files a patent application on
  a process for stretching PTFE material that is
  similar to Croppers process.

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W. L. Gore Assoc. v. Garlock, Inc.

• Q Why doesnt Gore have a novelty problem?
• A The process wasnt publicly known, so it
  doesnt qualify under 102(a). Theres no 102(e)
  issue. Croppers process could not be considered
  under 102(g)(2) because Cropper was
  concealing/suppressing the process.

23
Gore

• Q Why isnt Croppers 1967 letter an offer to
  sell?
• A Probably because he was not offering to sell
  the process, only the machine. Moreover, as we
  know from his later activity with Budd, the sale
  of the machine would have been subject to a
  secrecy restriction.
• Q Why isnt Budds use of the machine a bar?
• A Budds use of the machine is not a public
  use of the process because he kept the process
  secret.

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• Q Could Cropper have applied for a U.S. patent
  in 1970?
• A No!!! An inventors own prior commercial
  use, albeit kept secret, may constitute a public
  use or sale under 102(b), barring him from
  obtaining a patent. Woodland Trust v. Flowertree
  Nursery, 148 F.3d 1368, 1370-71 (Fed. Cir. 1998).
  Also Pennock supports this rule.

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Exp use in 3rd party cases??

• Suaudeaus use was public, and it was not
  experimental in a manner that saves Cullis
  patent. -- p. 572