Priority 102g

1
Priority 102(g)

• Patent Law Prof Merges
• 9.18.08

2
Agenda 102(g)

• Overview section 102(g)
• Brown v. Barbacid
• Peeler v. Miller
• Dow v. Astro-Valcour

3
35 USC 102(g)(1) and (2)

• (g)(1) Inventor establishes prior invention and
  not abandoned, suppressed or concealed . . .
• (g)(2) Invention was made in this country by
  another inventor who had not abandoned,
  suppressed or concealed it.

4
35 USC 102(g)(1) and (2)

• Interferences (g)(1)
• Anticipation (g)(2)
• Common priority rule stated in (g)(2)

5
35 USC 102(g)(1)

• during the course of an interference conducted
  under section 135 or section 291, another
  inventor involved therein establishes, to the
  extent permitted in section 104, that before such
  person's invention thereof the invention was made
  by such other inventor and not abandoned,
  suppressed, or concealed,

6
102(g)(2)

• (2) before such person's invention thereof, the
  invention was made in this country by another
  inventor who had not abandoned, suppressed, or
  concealed it. In determining priority of
  invention under this subsection, there shall be
  considered not only the respective dates of
  conception and reduction to practice of the
  invention, but also the reasonable diligence of
  one who was first to conceive and last to reduce
  to practice, from a time prior to conception by
  the other.

7
102(g)(2) Common Priority Rule for 102(g)

• (2) before such person's invention thereof, the
  invention was made in this country by another
  inventor who had not abandoned, suppressed, or
  concealed it. In determining priority of
  invention under this subsection, there shall be
  considered not only the respective dates of
  conception and reduction to practice of the
  invention, but also the reasonable diligence of
  one who was first to conceive and last to reduce
  to practice, from a time prior to conception by
  the other.

8
Brown v. Barbacid

• Interference Priority Contest
• This case issued patent (Barbacid) v. pending
  application (Brown et al.)

9
35 USC 135

• (a) Whenever an application is made for a patent
  which, in the opinion of the Director, would
  interfere with any pending application, or with
  any unexpired patent, an interference may be
  declared The Board of Patent Appeals and
  Interferences shall determine questions of
  priority of the inventions and may determine
  questions of patentability. . . .

10
Section 135(b) Time Limits

• (1) A claim which is the same as, or for the same
  or substantially the same subject matter as, a
  claim of an issued patent may not be made in any
  application unless such a claim is made prior to
  one year from the date on which the patent was
  granted.
• (2) Published apps claim may be made in an
  application filed after the application is
  published only if the claim is made before 1 year
  after the date on which the application is
  published.

11
35 U.S.C. 291 Interfering patents.

• The owner of an interfering patent may have
  relief against the owner of another by civil
  action, and the court may adjudge the question of
  validity of any of the interfering patents, in
  whole or in part. The provisions of the second
  paragraph of section 146 of this title shall
  apply to actions brought under this section.

12
35 USC 102(g)(1) and (2)

• Interferences (g)(1)
• Anticipation (g)(2)
• Common priority rule stated in (g)(2)

13
35 USC 102(g)(1)

• during the course of an interference conducted
  under section 135 or section 291, another
  inventor involved therein establishes, to the
  extent permitted in section 104, that before such
  person's invention thereof the invention was made
  by such other inventor and not abandoned,
  suppressed, or concealed,

14
35 USC 102(g)(1)

• during the course of an interference conducted
  under section 135 or section 291, another
  inventor involved therein establishes, to the
  extent permitted in section 104, that before such
  person's invention thereof the invention was made
  by such other inventor and not abandoned,
  suppressed, or concealed,

15
R to P
Issuance
Filing
Conception
16
Some basic nomenclature

• Senior party first to file
• Count (roughly) claim
• Board of appeals and interferences PTO
  administrative court (see chap. 1)

17
What happened at the Board in Brown v Barbacid?
18
What happened at the Board in Brown v Barbacid?

• Brown was the senior party priority awarded to
  Barbacid
• Barbacid reduced to practice on March 6, 1990
• PREDATED Browns filing date of April 18, 1990

19
Brown Board Decision
Filing 4/18/1990
R to P 3/6/1990
Filing 5/8/1990
Issued 2/9/1993
Barbacid
20
Brown argument on appeal
R to P 9/1989 - ?
Filing 4/18/1990
R to P 3/6/1990
Filing 5/8/1990
Barbacid
21
(No Transcript)
22
Authentication and corroboration issue Dr Reiss

• Sept 20 v Sept 25 data
• Corroboration rule why?
• Standard for corroboration rule of reason/all
  evidence p. 445

23
Conception of the count

• Definition of conception p. 445
• All limitations (elements) of count?
• Sept 25 v Sept 20 . . .

24

• ARE THE U.S. PATENT PRIORITY RULES REALLY
  NECESSARY?
• Mark A. Lemley
• Colleen V. Chien
• Hastings Law Journal
• July, 2003
• 54 Hastings L.J. 1299

25

• Of the 100 cases in our population that have
  final outcomes, junior parties won 33 (or 33).
  More significantly, in the 76 cases that are
  actually resolved on priority grounds, junior
  parties won 33 times (or 43). Thus, it seems
  that when priority is actually adjudicated, the
  first to invent is quite frequently not the first
  to file.

26
Markman v. Lehman, 987 F.Supp. 25 (DDC 1997)

• -- affirmed 178 F.3d 1306 (Fed. Cir. 1998)
• To establish an actual reduction to practice, an
  inventor must provide independent corroborating
  evidence in addition to his or her own statements
  and documents, such as testimony of a witness
  other than the inventor or evidence of
  surrounding facts and circumstances independent
  of information received from the inventor. The
  purpose of this rule is to prevent fraud. at
  30

27
Gordon Gould, Laser Inventor

• Gould I used a Fabry-Perot resonator and became
  familiar with the tools of optical spectroscopy.
  Years later I went to Columbia, which was big on
  microwave spectroscopy. To think of the
  Fabry-Perot as a resonator for a laser oscillator
  I had to have both those kinds of experience. It
  just clicked that one exciting night, about one
  in the morning , and I jumped up and started
  writing , and wrote that whole first notebook in
  one weekend . Then I had it notarized on Monday.

28
In re Scott E. Johnston, No. 05-1321 (Fed. Cir.
January 30, 2006)

• The Board had held that the notebooks of a junior
  scientist in the senior partys laboratory were
  insufficient to collaborate the assertion of
  continuous diligence, because they did not
  specifically explain the purpose of the
  experiments performed and how they led to the
  completion of the invention.  The Federal Circuit
  rejected this reasoning, holding that a
  laboratory notebook recording daily
  experimentation, reasonably considered from the
  viewpoint of persons experienced in the field,
  need not reproduce on each page a statement of
  the larger research purpose, and can be
  supplemented with a declaration to demonstrate
  that purpose.  Thus, the Court held that the
  Board erred in failing to consider the
  corroborating evidence, and remanded the case to
  the Board.

29
Peeler v Miller
3.14.1966 Miller Conception
Peeler et al. rely only on Filing Date 1.4.1968
March, 1966 Miller R to P
4.27.1970 Miller Filing Date
30
Peeler et al. (Chevron Researchers) Related
Patent 3,583,920 (1971)
31
102(g) Abandoned, Suppressed, or Concealed
Filing Date
R to P
32
Peeler points

• Counts are basically claims
• Special interference lingo
• Abandoned experiment argument basically,
  enablement

33
Peeler points contd

• P 458 Which of the rival inventors has the
  greater right to a patent?
• Classic Judge Rich approach to invention priority
  issue
• See also Paulik, p. 461
• In our opinion, a four year delay from R to P
  to filing is prima facie unreasonably long . .
  .

34
Compare to Diligence -- 102(g)(2)

• (2) before such person's invention thereof, the
  invention was made in this country by another
  inventor who had not abandoned, suppressed, or
  concealed it. In determining priority of
  invention under this subsection, there shall be
  considered not only the respective dates of
  conception and reduction to practice of the
  invention, but also the reasonable diligence of
  one who was first to conceive and last to reduce
  to practice, from a time prior to conception by
  the other.

35
Compare to Diligence -- 102(g)(2)
A
Reduction to practice
Conception
B
Conception
R to P
ONLY Bs diligence matters
36

• The party alleging suppression or concealment has
  the burden of proof. Young, 489 F.2d at 1279,
  180 USPQ at 390 See also 37 CFR 1.632, which
  requires a party to give notice that it intends
  to argue that its opponent suppressed or
  concealed, thereby giving the opponent an
  opportunity to present evidence to negate any
  inference of intent to suppress or conceal.

37

• A 17 month delay was found not to be unreasonable
  in Fujikawa v. Wattanasin, 93 F.3d 1559, 39
  USPQ2d 1895 (Fed Cir 1996)
• See specific facts!

38

• A 22 month delay was found to be unreasonable by
  the board in Smith v. Crivello, Smith v. Crivello
  , 215 USPQ 446

39
More Cases!

• (1) Palmer v. Dudzik , 481 F.2d 1377, 178 USPQ
  608
• (2) Young v. Dworkin , 489 F.2d 1277, 180 USPQ
  388
• (3) Peeler v. Miller , 535 F.2d 647, 190 USPQ
  117
• (4) Horwath v. Lee , 564 F.2d 948, 195 USPQ 701
• (5) Shindelar v. Holdeman , 628 F.2d 1337, 207
  USPQ 112
• (6) Smith v. Crivello , 215 USPQ 446
• (7) Correge v. Murphy , 705 F.2d 1326, 217 USPQ
  753
• (8) Paulik v. Rizkalla , 760 F.2d 1270, 226 USPQ
  224
• (9) Holmwood v. Cherpeck , 2 USPQ2d 1942
• (10) Lutzker v. Plet , 843 F.2d 1364, 6 USPQ2d
  1370
• (11) Fujikawa v. Wattanasin , 93 F.3d 1559, 39
  USPQ2d 1895

40
35 USC 104

• Proof of inventive acts
• Progression
• Originally, US-only (home court advantage in
  interferences)
• Then, NAFTA members only
• Finally, 1995, all World Trade Organization
  Members
• Truly international interferences today

41
Current 37 CFR 1.131

• Prior invention may not be established under this
  section in any country other than the United
  States, a NAFTA country, or a WTO member country.
  Prior invention may not be established under this
  section before December 8, 1993, in a NAFTA
  country other than the United States, or before
  January 1, 1996, in a WTO member country other
  than a NAFTA country.

42
EX PARTE MARTIN KELLY JONESAppeal No.
2000-0872Application No. 08/852,119September
25, 2003

• 2006 WL 2523579, 2 (Bd.Pat.App Interf. 2006)
• Statutory bars cannot be antedated

43

• Exhibit C is a record of Mr. Horstemeyer's
  billing for the work done for appellant. The
  billing record indicates that revisions were made
  May 5th, 7th, 10th, and 11th of 1993. Exhibit D,
  a letter from Mr. Horstemeyer to appellant,
  states that the final draft of the application
  was mailed to appellant for signature on May 12,
  1993. The billing records show no further
  amendments after May 12, 1993, thereby
  establishing conception prior to May 14, 1993.
  Mr. Horstemeyer indicates in the Declaration that
  May 15th and 16th were a Saturday and Sunday,
  respectively. The records show that he billed for
  reviewing the formality documents and formal
  drawings of the application on May 17, 1993, and
  then he filed the application on May 18, 1993. We
  find these records to be sufficient evidence of
  conception prior to May 14, 1993 and due
  diligence up to the filing of the application on
  May 18, 1993. Accordingly, we must reverse the
  rejections under 35 U.S.C. 102(e) and 103, as
  the Ross patents no longer qualify as prior art
  against appellant.

44
102(g)(2)

• (2) before such person's invention thereof, the
  invention was made in this country by another
  inventor who had not abandoned, suppressed, or
  concealed it. In determining priority of
  invention under this subsection, there shall be
  considered not only the respective dates of
  conception and reduction to practice of the
  invention, but also the reasonable diligence of
  one who was first to conceive and last to reduce
  to practice, from a time prior to conception by
  the other.

45
102(g)(2) Common Priority Rule for 102(g)

• (2) before such person's invention thereof, the
  invention was made in this country by another
  inventor who had not abandoned, suppressed, or
  concealed it. In determining priority of
  invention under this subsection, there shall be
  considered not only the respective dates of
  conception and reduction to practice of the
  invention, but also the reasonable diligence of
  one who was first to conceive and last to reduce
  to practice, from a time prior to conception by
  the other.

46
Interferences some fine points

• Administrative 135 USPTO Bd Pat Int App.
  appeal to Fed Cir under 134, 141
• OR district court, District of Columbia appeal
  under 145/146

47

• The party alleging suppression or concealment has
  the burden of proof. Young, 489 F.2d at 1279,
  180 USPQ at 390 See also 37 CFR 1.632, which
  requires a party to give notice that it intends
  to argue that its opponent suppressed or
  concealed, thereby giving the opponent an
  opportunity to present evidence to negate any
  inference of intent to suppress or conceal.

48

• A 17 month delay was found not to be unreasonable
  in Fujikawa v. Wattanasin, 93 F.3d 1559, 39
  USPQ2d 1895 (Fed Cir 1996)
• See specific facts!

49

• A 22 month delay was found to be unreasonable by
  the board in Smith v. Crivello, Smith v. Crivello
  , 215 USPQ 446

50
35 USC 102(g)(1)

• during the course of an interference conducted
  under section 135 or section 291, another
  inventor involved therein establishes, to the
  extent permitted in section 104, that before such
  person's invention thereof the invention was made
  by such other inventor and not abandoned,
  suppressed, or concealed,

51
102(g)(2)

• (2) before such person's invention thereof, the
  invention was made in this country by another
  inventor who had not abandoned, suppressed, or
  concealed it.

52

• In determining priority of invention under this
  subsection, there shall be considered not only
  the respective dates of conception and reduction
  to practice of the invention, but also the
  reasonable diligence of one who was first to
  conceive and last to reduce to practice, from a
  time prior to conception by the other.

53
Dow v Astro-Valcour

• Dow Chemical Co. v. Astro-Valcour, Inc., 267 F.3d
  1334 (Fed. Cir. 2001)
• Good example of prior art use of section 102(g)

54
Dow Key Facts

• Why no interference?
• Dows inventive milestones
• AVIs evidence of its employees activities

55

• Why no interference?
• It never occurred to us . . . to file our own
  patent application Astro-Valcour
• Miyamoto patent license

56
(No Transcript)
57
Why not a 102(a) case?

• Miyamoto 300 (1968) patent broad genus
  Non-CFC blowing agents
• Dow patents
• Species claims
• Isobutane
• NB Miyamoto patent cited in 933 patent reexam

58
Park - Dow
C late August, 1984
R to P 9/13/1984
March 3, 1984 R to P (C?)
AVI Employees
59
Doctrinal Wrinkles

• Third party versus second party issues
• Corroboration
• Appreciation issues

60
Abandonment?

• Interference vs. 102(g)(2) prior art situations
• Commercialization vs. filing application
• Compare Peeler convinced?

61

• Thomson S.A. v. Quixote Corp., 166 F.3d 1172, 49
  U.S.P.Q.2d (BNA) 1530 (Fed. Cir. 1999), cert.
  denied, 119 S. Ct. 2395 (1999) uncorroborated
  oral testimony by non- interested individuals
  may be sufficient to satisfy the clear and
  convincing standard of proof for invalidity
  based on anticipation under 102(g).