Statutory Bars

1. Statutory Bars Prof Merges Patent Law – 10.4.2012

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. AIA 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?

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

25. 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.

26. Metallizing Engineering

27. Judge Learned Hand

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

29. 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

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

31. §§ 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

32. 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

33. 7/81 4/19/82 4/19/81 Pfaff v. Wells 4/8/81 Pfaff Files Patent Application Order Filled The “Critical Date” for the Patent Application Texas Instruments places P.O. for 30,100 new chip carriers

36. On Sale Bar – Litigation Issues • Sale can be completely confidential and still bar the patent • A truly “secret” form of prior art • Discovery is obviously crucial • Spending time with the shoeboxes . . .

37. [I]t is evident that Pfaff could have obtained a patent on his novel socket when he accepted the purchase order from Texas Instruments for 30,100 units. At that time he provided the manufacturer with a description and drawings that had "sufficient clearness and precision to enable those skilled in the matter" to produce the device. -- 525 U.S. 55, 63

38. Major Developments Post-Pfaff • What is a “sale or offer for sale”? • License vs. sale

39. Group One, Ltd. v. Hallmark Cards, Inc.254 F.3d 1041C.A.Fed.,2001. [W]e will look to the Uniform Commercial Code ("UCC") to define whether, as in this case, a communication or series of communications rises to the level of a commercial offer for sale.

40. Hallmark Cards “Because of the importance of having a uniform national rule regarding the on-sale bar, we hold that the question of whether an invention is the subject of a commercial offer for sale is a matter of Federal Circuit law, to be analyzed under the law of contracts as generally understood.”

41. Problems with Hallmark? • Lacks Industries, Inc. v. McKechnie322 F.3d 1335, 1348 (Fed. Cir. 2003)

42. Lacks Industries Lacks "(1) vigorously solicited wheel manufacturers to whom Lacks could sell overlays and on whose wheels Lacks could perform its overlay- bonding method, and (2) vigorously solicited [original equipment manufacturers] to specify and purchase wheels clad by the later-patented method."

43. “[T]he Special Master did not find this activity, nor any other of Lacks' activities, to be a commercial offer for sale as defined by contract law.” • Lacks Industries, Inc. v. McKechnie322 F.3d 1335, 1348 (Fed. Cir. 2003)

44. License vs. Sale In re Kollar, 286 F.3d 1326 (CA FC 2002) Elan Corp. PLC v. Andrx Pharmaceuticals Inc., 366 F.3d 1336 (CA FC 2004)

45. In re Kollar Although the Celanese Agreement specifically contemplates that “resultant products” manufactured using the claimed process could potentially be sold, nowhere in the Celanese Agreement is there an indication that a product of the claimed process was actually offered for sale. Rather, that agreement constitutes a license to Celanese under any future patents relating to Kollar's invention.

46. We have held that merely granting a license to an invention, without more, does not trigger the on-sale bar of §102(b). See Mas-Hamilton Group v. LaGard, Inc., 156 F.3d 1206, 1217, 48 USPQ2d 1010, 1019(Fed. Cir. 1998).