Validity and Enforceability of Patents

Fed Cir. refines double patenting rules (posted 12/17/18)

In Novartis AG v. Ezra Ventures LLC, an earlier-filed Novartis patent was subject to a patent term extension that extended its term beyond the term of a similar patent that was later filed by Novartis. The Federal Circuit held that the later-expiring patent could not be invalidated for double-patenting based on the earlier-expired patent to prevent the judge-made doctrine from cutting off a statutorily authorized time extension.

In Novartis AG. v. Breckenridge Pharmaceutical Inc., the earlier-filed patent expired after the later-filed patent due to an act of congress enacted in 1995. In this case, the Court held that the earlier-filed patent could not be invalidated for obviousness-type double patenting based on the later-filed (but earlier-expiring) patent because “a change in patent term law should not truncate the term statutorily assigned” to a patent.

The Fed Cir’s “flexible” standard on printed pubs. (Posted 08/25/18)

The Fed Cir has been active in construing the rules for when a printed publucation can or cannot be used as prior art. Law360 has a nice summary of recent decisions.

Ariosa challenges Fed. Cir.'s ruling on 102(e) (pre-AIA) prior art (posted 07/24/18)

In an unpublished opinion construing pre-AIA 102(e) and that implicate post-AIA 102(a)(2), the Federal Circuit ruled that subject matter disclosed in a provisional patent application, but not claimed in the eventual patent that granted on that provisional application, does not count as prior art, despite clear Supreme Court precedent and the clear language of the statute. Now Ariosa petitions SCOTUS for certiorari to answer the following question:

Do unclaimed disclosures in a published patent application and an earlier application it relies on for priority enter the public domain and thus become prior art as of the earlier application’s filing date, or, as the Federal Circuit held, does the prior art date of the disclosures depend on whether the published application also claims subject matter from the earlier application?

In their petition, Ariosa documents the Federal Circuit's inconsistent rulings departing from Supreme Court precedent and Congressional intent embodied in the plain language of the Patent Act.

Fed. Cir. decides AIA on-sale bar (posted 05/01/17)

:!: The Supreme Court unanimously. affirmed.

35 U.S.C. § 102(a) NOVELTY; PRIOR ART. —A person shall be entitled to a patent unless—

(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention

In Helsinn Healthcare v. Teva Pharmaceuticals USA the Fed. Cir. construed a vexing phrase in the AIA's on-sale bar provision. Patentee Helsinn asserted four patents against Teva, one of which, U.S. Patent 8,598,219, was subject to the AIA's novelty provision. Nearly 2 years before applying for the patent, Helsinn and MGI Pharma, Inc. entered into a “Supply and Purchase Agreement” for the medication covered by the patent which was announced in a joint press release by the two corporations and in MGI's 8-K filing with the SEC, which included partially redacted copies of the agreement. The transaction details were publicly disclosed except the price terms and specific dosage formulations.


The Federal Circuit reversed the lower court decision upholding patentability, stating:

  • “We decline the invitation by the parties to decide this case more broadly than necessary. [. . .] Even if the [Congressional] floor statements were intended to overrule those secret or confidential sale cases . . , that would have no effect here since those cases were concerned entirely with whether the existance of a sale or offer was public. Here, the existence of the sale . . . was publicly announced. . . .”
  • We conclude that, after the AIA, if the existence of the sale is public, the details of the invention need not be publicly disclosed in the terms of the sale. . . . the Supply and Purchase Agreement . . . constituted a sale of the claimed invention . . . before the critical date, and therefore both the pre-AIA and AIA on-sale bars apply.

PTAB analyzes pre-AIA 102(e) claim-by-claim (posted 03/29/17)

35 U.S.C. §102 (pre-AIA) A person shall be entitled to a patent unless — (e) the invention was described in —

(1) an application for patent, published under section 122(b), by another filed in the United States before the invention by the applicant for patent or

(2) a patent granted on an application for patent by another filed in the United States before the invention by the applicant for patent . . .

In Duncan Parking Technologies v. IPS Group, the PTAB upheld some claims and determined other claims were anticipated under 35 U.S.C. § 102(e) (pre AIA) despite the fact that it was undisputed that the prior reference, King '054, described all the features of the patent at issue, King '310. The determination of anticipation turned instead on whether the '054 patent was “by another.”

The prior art reference, King '054, had one inventor, David King, in common with the patent, King '310. With respect to the upheld claims, the Board agreed with IPS that the upheld claims reflected the sole invention of King, and the portions of King '054 on which Petitioner DPT relies was King's own work, and hence not “by another.”

Fed. Cir. en banc reverses panel on on-sale bar (posted 07/11/16)

Pfaff’s two-step framework for determining whether a sale triggers an on-sale bar requires

  1. that the claimed invention was the subject of a commercial offer for sale; and
  2. that the claimed invention was ready for patenting (can be met by (1) proof of a reduction to practice or (2) drawings or other descriptions sufficiently specific to enable a person of ordinary skill to practice the invention).

The Federal Circuit, in an en banc decision in The Medicines Company v. Hospira, Inc. reversed the prior panel decision holding that the sale by a manufacturor to the patentee did not meet the requirements of the second step outlined by Pfaff v. Wells 1) on what constitutes an on-sale bar. This decision reverses the “no supplier exception” rule under Special Devices, Inc., v. OEA, Inc., 2).

Stated the court:

  • . . . the mere sale of manufacturing services by a contract manufacturer to an inventor to create embodiments of a patented product for the inventor does not constitute a “commercial sale” of the invention.
  • . . . commercial benefit – even to both parties in a transaction – is not enough to trigger the on-sale bar of § 102(b); the transaction must be one in which the product is “on sale” in the sense that it is “commercially marketed.”

The court found three reasons in the present case that the sale did not meet the first test in Pfaff:

  1. only manufacturing services were sold to the inventor – the invention was not;
  2. the inventor maintained control of the invention, as shown by the retention of title to the embodiments and the absence of any authorization to Ben Venue to sell the product to others; and
  3. “stockpiling,” standing alone, does not trigger the on-sale bar.

Fed. Cir.: You can't rely on prov. as prior art unless patent relies on same for priority (posted 08/28/20)

In Dynamic Drinkware, LLC. v. National Graphics, Inc., 800 F.3d 1375, 116 USPQ2d 1045, (2015) (WestLaw - private), the Federal Circuit agreed with the USPTO's finding that, since the petitioner failed to prove that the Raymond patent was entitled to the benefit of its earlier Feb. 2000 provisional filing date, it (the published patent) was not a 102(e) reference as of its provisional date. The court held:

  • The Board properly placed the burden of proof on inter partes review (IPR) petitioner Dynamic to support its contention that the Raymond provisional patent application provided written description support for claims of the Raymond patent.
    • As petitioner, Dynamic had burden of persuasion to prove unpatentability by a preponderance of the evidence, and this burden never shifts.
    • When Dynamic asserted Raymond as an anticipatory reference, the burden of production shifted to National Graphics to argue or produce evidence that Raymond is not prior art.
  • Since the PTO does not examine priority claims unless necessary, there is no presumption that a reference patent is necessarily entitled to the filing date of its provisional application.
  • Because the IPR petitioner, Dynamic, failed to compare the claims of the Raymond patent to the disclosure in the Raymond provisional application, the PTO's finding that the Raymond patent was not entitled the benefit of the provisional filing date and was therefore not prior art to the challenged patent.

One's own disclosure cannot be prior art absent a patent bar (04/10/12)

This is an old case, but apparently still good law: In April 10, 1969, the applicant-appellee held that, that where a relevant disclosure in a prior art reference is his own “contribution,” absent a statutory bar, the disclosure should not be available as a reference. The court held that, “certainly one's own invention, whatever the form of disclosure to the public, may not be prior art against oneself, absent a statutory bar” (emphasis in original). Application of Thomas F. Facius, Patent Appeal No. 8238, 408 F.2d 1396 1406. The court ultimately held that the applicant's evidence (affidavits and such) did not sufficiently prove that the contribution was his own invention, and not merely information of publicly known information contributed to the prior art reference.

N.D.Cal. declares product announcement not "offer for sale" (04/03/12)

In Speedtrack, Inc. v. USA, LLC (No. 4-06-ev-07336, Feb. 22, 2012), the court found that a magazine article published more than one year before the filing date of the patent, which did not discuss details of the product or indicate its availability for sale did not trigger the “on-sale bar” of 35 U.S.C. § 102. The court stated, “Reasonably construed, this fails to satisfy the 'clear and convincing' evidence that defendants would need in order to demonstrate a 'definite offer to sell the product,' as such an offer would be understood in contractual terms.”

  • Brief summary

Public demonstration ruled "not experimental" (03/26/09)

In Clock Spring v. Wrapmaster, the Fed. Cir. affirmed the district court's grant of summary judgment of invalidity of claims directed to a method for repairing high-pressure gas pipes, but on a ground not adopted by the district court. Specifically, the district court granted the summary judgment based on obviousness whereas the Fed. Cir. ruled the patent invalid for prior public use. Stated the court:

A use may be experimental only if it is designed to (1) test claimed features of the invention or (2) to determine whether an invention will work for its intended purpose – itself a requirement of patentability.

After establishing that the prior public use involved all features of asserted claim 1, the Fed. Cir. rejected Clock Spring's argument that the prior public use was designed to determine durability of the pipe-repairing method. The court noted that contemporaneous reports in the record identify the purpose as being “to demonstrate . . . the stops of application and the ability of minimally-trained crews to make Clock Spring installations” and for “acceptance by regulators and the pipeline industry.” One report stated that “recovery and analysis of installed composite after several years of exposure in pipeline settings was the only means of verifying the long-term performance . . . in moist soils.” But this was not persuasive to the Fed. Cir., which noted that the 1989 installation was not dug up and examined until almost a year after the 1992 patent application. Stated the court,

“Thus, even if durability were being tested, it was not for purposes of the patent application, and cannot bring the experimental use into play. By filing the 1992 application, the inventors represented that the invention was ready for patenting, and studies done thereafter cannot justify an earlier delay in filing the application under the rubric of experimental use.”

| “Clock Spring is a useful reality check for applicants who wish to delay filing under the guise of “experimental use”. A tour de force treatment of the limitations of this doctrine may be found at pages 12-15 of the opinion.”

Prior art presumed enabled (08/05/13)

In In re Antor Media Corporation, the Federal Circuit (Laurie, Radar, Bryson) held for the first time explicitly that non-patent prior art is is presumed enabled, and that this presumption may be rebutted by the Applicant.

Update: In a related case, Finjan, Inc. v. USPTO, the Federal Circuit upheld the Board of Appeals rejection of claims based on non-patent prior art that was argued as non-enabling by the Appellant. The Appellant has filed for writ of certiorari before the Supreme Court and the USPTO has filed a brief in opposition.

Remedy for concealing patent from standards body: unenforceable against compliant products (12/01/08)

In Qualcomm v. Broadcom, the Fed. Cir. upheld the trial court's rulings, but limited the scope of nonenforcability of Qualcomm's patents to those products that conform to the standard in question.

Background: After getting slapped down by the trial court for concealing evidence of participation in the “Joint Video Team” (JVT) standards body prior to the release of standard “H.264” for video compression, the trial court held that Qualcomm's patents are unenforceable against the world,“ awarding Broadcom attorneys' fees in the process, although the patents were also held as being not invalid and not infringed by Broadcom. (For the concealment, six Qualcomm attorneys were referred to the California State Bar for investigation and possible sanctions, ordering Qualcomm and sanctioned attorneys to participated in a Comprehenseive Review and Enforcement of Discovery Obligations (CREDO) program.)

On appeal, every one of Qualcomm's arguments that it had no duty to disclose the patents to the standards group were not found to be persuasive. The intellectual property rights (IPR) policy of the standards group reads, in Subsection 3.2:

“According to the ITU-T and ISO/IEC [parent organizations of JVT] IPR policy, members/experts are encouraged to disclose as soon as possible IPR information (of their own or anyone else's associated with any standardization proposal (of their own or anyone else's). Such information should be provided on a best effort basis.”

The Fed. Cir. agreed with Broadcom that the “encouraged” language of subsection 3.2 applies to the timing of the disclosure not the disclosure itself, and since Qualcomm did not make any effort to submit its IP, it did not meet the “best effort” standard. Furthermore, the court held that Qualcomm failed to comply with “must be done” disclosure requirements of ITU and ISO, parent organizations of JVT, of whom Qualcomm was a member. Accordingly, the court concluded that it was within the district court's authority to determine that that Qualcomm had waived its right to assert its patents because “its conduct was so inconsistent with an intent to enforce its righta s to induce a reasonable belief that such right has been relinquished.” Even if implied waiver did not apply, Qualcomm's conduct falls within the doctrine of equitable estoppel. With respect to remedy, the Fed. Cir. vacated the district court's remedy of holding the subject patents unenforceable against the world and remanded with instructions to limit the scope of unenforceability to H.264-compliant products.

Software copied abroad from exported master ruled non-infringing (05/08/07)

On April 30, the Supreme Court ruled in Microsoft Corp. v. AT&T Corp. that Microsoft is not liable under 35 U.S.C. §271(f) for computers made in another country loaded with infringing software copied abroad from a master disk or electronic transmission dispatched by Microsoft from the United States. Dissent by J. Stevens.

Defendant failed to show invention was "ready for patenting" in allegation of on-sale bar (03/14/07)

In Polypro v. Ultra Flex, the Fed. Cir. reversed a lower court's summary judgment for plaintiff Ultra Flex, who sued Polypro for patent infringement. However, the district court ruled in a summary judgment that the patented inventions were the subject of a commercial offer for sale prior to the critical date. On appeal, Ultra Flex argues that the second “ready for patenting” prong of the on-sale bar rule laid out in Pfaff v. Wells Electronics, Inc., (Pfaff_v._Wells_Electronics,_Inc.) 525 U.S. 55 (1998) was not established on the record. The Fed. Cir. agreed and remanded.

Delay per se not concealment (07/14/06)

Patent law provides that: ”[a] person shall be entitled to a patent unless . . . before such person's invention thereof, the invention was made in this country by another inventor who had not abandoned, suppressed, or concealed it.“ 35 U.S.C. § 102(g)(2) (2004); Dow Chemical, 267 F.3d at 1339. If prior invention has been established, the burden shifts to the patentee to produce sufficient evidence to create a 05-1354, -1367 8 genuine issue of material fact as to whether the prior inventor abandoned, suppressed, or concealed the invention.

In Flex-Rest v. Steelcase (Fed. Cir. 2006), Flex-Rest . . . argues that the device was intentionally suppressed or concealed. Intentional suppression occurs when an inventor “designedly, and with the view of applying it indefinitely and exclusively for his own profit, withholds his invention from the public. Paulik v. Rizkalla, 760 F.2d 1270, 1273 (Fed. Cir. 1985) (en banc) […] The only evidence Flex-Rest offers for this argument is the time taken to file the patent application for the KBS device and the fact that the device was kept secret during that time. “Intentional suppression, however, requires more than the passage of time. It requires evidence that the inventor intentionally delayed filing in order to prolong the period during which the invention is maintained in secret.” Fujikawa, 93 F.3d at 1567 (emphasis added). […] Because Flex-Rest did not offer any evidence indicating a designed intent to withhold the KBS device from the public, we conclude that there is not sufficient evidence to support a jury instruction regarding intentional suppression or concealment.

Scope of "Prior Art" expanded in ''Bruckelmyer'' (06/28/06)

In Bruckelmyer v. Ground Heaters, Inc., et al., the CAFC denied Bruckelmyer's request for a rehearing en banc after finding that the originally filed application was “publicly accessible,” and thus a prior art “printed publication” because the Canadian prosecution file was open to the public more than a year before Bruckelmyer filed his application. In her dissent on the rehearing request, Judge Newman states that “a person searching for prior art cannot be reasonably expected to look in the prosecution history of a foreign patent that does not disclose the invention, on the off chance that its inventor might have invented something relevant to the search, and then cancelled it from the application before grant.”

Fed. Cir. upholds invalidity of publicly-used invention

In Netscape Communications Corp. v. Konrad (2002) (cached slip), the Federal Circuit affirmed a district court's grant of summary judgment that claims in three patents were invalid because of pre-critical date public use. The patent owner demonstrated the claimed invention, which concerned computer user access to a remote computer, to others in a manner that placed the patented invention in public use more than a year before applying for a patent.

The inventor, who worked for a laboratory (the Lawrence Berkeley Laboratory), successfully tested a prototype of the patented system and demonstrated it to computer personnel at his laboratory and another laboratory (Stanford Linear Accelerator Center) that received funding from a common government source (the Department of Energy). The demonstration was a public use even though:

  1. the inventor had submitted an invention disclosure form to his laboratory's patent department, the inventor having failed to inform the personnel of the disclosure form or any requirement of confidentiality,
  2. the prototype lacked one limitation recited in the patents' claims, ”[t]he differences between the claimed invention and the device used” being “obvious to persons of ordinary skill in the art,”
  3. the Department of Energy provided funding for both the inventor's laboratory and the other laboratory, any obligations of confidentiality being owed to the Department and not enuring to the inventor's benefit, and
  4. the inventor did not disclose the source code for the prototype system.
525 U.S. 55 (1998)
270 F.3d 1353, 1355 (Fed. Cir. 2001)

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