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CAFC Precedential - 2025 - Prior Art
ams-OSRAM USA v. Rensas Electronics America: “Proper accessibility” in Texas
The Federal Circuit reversed Judge Mazzant in the Eastern District of Texas on his holding that a trade secret first became accessible when Intersil successfully reverse-engineered the trade secret from TAOS' product. The court held that:
Under Texas law, information that is generally known or readily available by independent investigation is not secret for purposes of trade secrecy. Information cannot be the subject of a trade secret if it is readily ascertainable without engaging in tortious behavior. The practical focus of the inquiry reflects the need to ensure that a tradesecret remedy is tailored to preventing or negating the unfair advantage derived from improper acquisition. A trade secret becomes “properly accessible” where the secret is embodied in a publicly available product: Under Texas trade-secret principles, information is not secret once it is readily ascertainable by proper means, including straightforward reverse engineering after public release; proper accessibility does not depend on when the misappropriator actually succeeded in reverse engineering.
In Re Riggs: The provisional application relied upon for priority must provide written description support for portions of the reference relied upon for the rejection
The Federal Circuit held that a published application's pre-AIA § 102(e) date can reach back to a provisional only for subject matter in the published application that is actually supported in the provisional, and vacated the Board's decision for lacking that analysis.
Lynk Labs v. Samsung Electronics Co.: Pre-AIA 102(e)(1) reference is prior art as of its filing date, even if published after the challenged patent's priority date
The Federal Circuit affirmed the Board's unpatentability determination in an inter-partes review applying pre-AIA §§ 102/103 prior art rules within the AIA IPR framework.
In particular, the Federal Circuit held that, in an IPR, a published U.S. application qualifies as a prior-art printed publication as of its U.S. filing date by virtue of pre-AIA § 102(e)(1), even if published after the challenged patent's priority date. Because a published patent application is a “printed publication” and pre-AIA § 102(e)(1) accords such applications prior-art effect as of their U.S. filing date, § 311(b)'s “prior art consisting of patents or printed publications” includes published applications with § 102(e)(1) filing-date priority even if publication post-dates the challenged patent’s priority date.
Merck Serono v. Hopewell Pharma Ventures: Pre-AIA § 1-2(a)/(3): “by another” includes overlapping inventors
The Federal Circuit clarified the pre-AIA meaning of “by another” or “by others” under § 102(a)/(e) when a reference and the challenged patent have overlapping inventors. Specifically, the court held that, for joint-inventor patents, a reference disclosure is excluded as not “by another” only if the relied-upon disclosure reflects the work of the same inventive entity as the challenged claims. Any mismatch in inventive entity (whether inventors are added or omitted) makes the disclosure “by another” unless the patentee proves teh disclosure was the joint invention of the later inventive entity.
In addition, the court held that the PTAB did not violate the APA by applying identity of inventive entity rule without additional opportunity for evidence or argument. Stated the court: “Land controls the legal definition of 'by others' or 'by another' in §§ 102(a), (e). Merck thus cannot claim a lack of knowledge of the rule of law based on some arguably contrary language int he MPEP.”