Statutory Bars & Presumption of Validity

1. Statutory Bars & Presumption of Validity Prof Merges Patent Law – 9.29.2011

2. Agenda • Finish Dow – 102(g)(2), prior invention of another as prior art: two issues • Introduction to Statutory Bars • Compare novelty/anticipation (102(a)) to statutory bars (102(b))

3. Park - Dow C: late August, 1984 R to P: 9/13/1984 March 3, 1984: R to P (C?) AVI Employees

4. 35 USC § 102(g)(1) and (2) (g)(1) Inventor establishes [prior invention] in interference and not abandoned, suppressed or concealed . . .” (g)(2) Invention was made in this countryby another inventor who had not abandoned, suppressed or concealed it.”

5. Prior User Right • Under the new law, inventors who commercially use an invention more than a year before another inventor files have a DEFENSE to infringement • Not invalidating prior art; a “personal” defense – not transferable in and of itself

6. New 35 USC 273 ‘‘(1) such person, acting in good faith, commercially used the subject matter in the United States, either in connection with an internal commercial use or an actual arm’s length sale or other arm’s length commercial transfer of a useful end result of such commercial use; and (2) such commercial use occurred at least 1 year before the earlier of either [filing or public disclosure]

7. Statutory Bars § 102(b), (c), (d) An inventor loses the right to patent if, more than one year prior to the applicant’s filing, the invention was: • patented by another anywhere • patented by the applicant in a foreign country-- § d • described in a printed publication anywhere • in public use in the US • on sale in the US Abandonment, § c.

8. Schematic Representation of § 102 § 102 (b): Statutory Bars [1] No patent if, more than one year prior to application, invention [A] patented or [B] described in printed publication [C] anywhere, or [2] invention-- [A] in public use or [B] on sale [C] in this country.

9. Jones Patent Application Jones Jones §102(b) hurdle Dec. 20, 1995 Dec. 20, 1996 Oct. 1995 Statutory Bar Dates One Year Grace Period

10. Jones Patent Application Jones Jones Dec. 19, 1996 Dec. 19, 1995 Oct. 1995 Dec. 20, 1996 One Day Gap Section 102(b) Bar Statutory Bar Dates One Year Grace Period

11. Egbert v. Lippmann • Why not a novelty case? • What are the essential facts?

12. Corset Springs

14. Egbert (cont’d) • Conception, Jan – May 1855 • R to P: May, 1855 (?) • 1858: Second pair of springs • Patent app filed: March 1866

15. Egbert • Only 1 used – enough? • “Non-informing public use” • Why enough to constitute a bar?

16. Justice William Woods

17. Sturgis evidence – p. 524 • Why did Barnes introduce it? • How did it affect the case?

18. Conclusion • “The inventor slept on his rights for 11 years . . .” – p. 525

19. Samuel F. Miller, on Court 1860-1890: dissent in Egbert

20. Moleculon Research • When did Nichols invent his cube? • Who saw/used it? • When was a pat app filed?

25. Public Use/On Sale • What was CBS’ public use evidence? • Why not successful? • P 530 • Contra Egbert?

26. In TP Laboratories, Inc. v. Professional Positioners, Inc., 724 F.2d 965 (Fed.Cir.1984), the inventor was a dentist who installed the inventive orthodontic appliance in several of his patients. Although the inventor had not obtained any express promise of confidentiality from his patients, this court did not consider the use "public" because the dentist-patient relationship itself was tantamount to an express vow of secrecy. Id. at 972.

27. Metallizing Engineering

28. Judge Learned Hand

29. What is the critical date? • Aug. 6, 1941

30. What is the main issue? • Sale of output from a machine does not disclose the machine to the public; is it nevertheless a “public use”? • Compare: Peerless Roll, Gillman v Stern

31. Holding: YES • Extension of monopoly is the key policy; public use found here, patent invalid: p. 535

32. §§ 102 (a) and (b) Prior Art Chart 102:Was Invention:By:In:Before: If yes: a known others U.S. Date of invention N a used others U.S. Date of inventionO a patented others any country Date of invention a published others any country Date of inventionP b patented anybody any country 1 year prior to filingA b published anybody any country 1 year prior to filingT b in public use anybody U.S. 1 year prior to filing E b on sale anybody U.S. 1 year prior to filing N T

33. Presumption of Validity • Microsoft v. i4i, • Scope of the presumption of validity

34. i4i • Statute: “A patent shall be presumed valid” and “[t]he burden of establishing invalidity ... rest[s] on the party asserting such invalidity.” • 35 USC § 282

35. Microsoft argument • Defense centered on i4i’s prior sale of a software program known as S4. • The parties agreed that, more than one year prior to the filing of the i4i patent application, i4i had sold S4 in the United States

36. Point of contention • Did the S4 software sold to the public before the critical date embody the claimed invention? • Testimony of inventors key; no documentary evidence remaining

37. Key fact: on-sale evidence never presented to PTO • This is typical • Often uncovered only at trial, in litigation

38. Categories of prior art • The more obscure, the more the information about a prior art reference is difficult to find or held only by the inventor, the more expensive it is to find • Will only be found in litigation; in some cases, only in high stakes litigation

39. Interpreting the statute in i4i • Radio Corp. of America v. Radio Engineering Laboratories, Inc., 293 U.S. 1 (1934) (Cardozo, J.) • Justice Cardozo wrote for a unanimous Court that “there is a presumption of validity, a presumption not to be overthrown except by clear and cogent evidence.”

40. That old Cardozo magic . . . • “[O]ne otherwise an infringer who assails the validity of a patent fair upon its face bears a heavy burden of persuasion, and fails unless his evidence has more than a dubious preponderance.” • Book supp. at 55

41. KSR Argument [H]ad Congress intended to drop the heightened standard of proof where the evidence before the jury varied from that before the PTO—and thus to take the unusual and impractical step of enacting a variable standard of proof that must itself be adjudicated in each case… — we assume it would have said so expressly.