Prior Art

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a) third-party on sale/public use

• FITF: Changes this subject for patents subject to it.
• Factors For Evaluating Sufficiency Of Evidence Of Third-Party Prior Public Use, On Sale, Invention: “Those factors include: (1) delay between event and trial, (2) interest of witness, (3) contradiction or impeachment, (4) corroboration, (5) witnesses’ familiarity with details of alleged prior structure, (6) improbability of prior use considering state of the art, (7) impact of the invention on the industry, and (8) relationship between witness and alleged prior user.” Juicy Whip (Fed. Cir. 06/07/02); Art+Com (Fed. Cir. 10/20/17) (non-precedential) (aff’g public use jury verdict, testimony corroborated by video and documents); Transweb (Fed. Cir. 02/10/16) (aff’g jury verdict of public use invalidity: accused infringer’s testimony that he handed out samples of particular type of product at an industry expo. pre critical date, sufficiently corroborated even if not every element of that testimony was corroborated); Ohio Willow Wood (Fed. Cir. 11/15/13) (explaining “rule of reason” factors for corroborating prior art); see Philip Morris (Fed. Cir. 03/31/23) (aff’g ITC that testimony of alleged infringer’s former employee and contemporaneous documents did not sufficiently corroborate that the alleged infringer’s product in public use was the same product described in the technical documents asserted by the alleged infringer, in part because uncorroborated testimony cannot be corroborated by uncorroborated documents depending on that testimony for corroboration, i.e., a ”circular path of corroboration”); Ceats (Fed. Cir. 04/26/13) (non-precedential) (testimony corroborated by contemporaneous documents and video; aff’g jury verdict of anticipation). “Corroboration is generally a question left to the jury.” Koninklijke Philips (Fed. Cir. 07/28/16) (non-precedential) (vacating exclusion of prior art evidence).
• Corroboration Standard For Oral Testimony Of Purported Earlier Inventor Same For All Section 102 Issues: “Our cases on corroboration of an inventor’s testimony have arisen in various contexts and procedural postures. We apply the same standard to determine if inventor testimony is sufficiently corroborated for all § 102 issues.” Mosaic Brands (Fed. Cir. 12/20/22) (rev’g Summ. J. of on-sale anticipation on other grounds (genuine dispute over third-party inventor’s credibility ivo other evidence); but oral testimony, if believed, sufficiently corroborated by design plans and invoices).
• Method Claim: Third-Party Sale Of Device Merely Capable Of Performing Method Does Not Put Method On Sale: Third-party sale of device that was capable of performing claimed method, but was not designed to do so, is not “on sale” bar to the method claim. Poly-Am. (Fed. Cir. 09/14/04).
• Patent Owner’s Evidence Against Prior Use Needs No Corroboration: Evidence offered by patent owner that product on sale before critical date lacked elements of the claim, need not be corroborated. i4i (Fed. Cir. 03/10/10), affirmed on other grounds (U.S. 06/09/2011).
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b) “printed publication” (sec. 102(a), (b))

• BASICS: “Public accessibility is the ‘touchstone in determining whether a reference constitutes a ‘printed publication.’” B/E Aerospace (Fed. Cir. 10/03/17) (non-precedential) (insufficient evidence that exact version of reference in evidence had been publicly accessible before critical date). Reference must be sufficiently accessible to those skilled and interested in the art so that exercising reasonable diligence they would have been able to learn of its existence and potential relevance and access it. Suffolk Tech. (Fed. Cir. 05/27/14) (aff’g Summ. J. of anticipation over a UseNet posting); In re Lister (Fed. Cir. 09/22/09); In re Enhanced Security (Fed. Cir. 01/13/14) (2-1) (manual for product with dozen customers and available on request was sufficiently accessible). “Need not establish that specific persons actually accessed or received a work to show that the work was publicly accessible.” Samsung (Fed. Cir. 07/12/19) (vacating PTAB decision that reference was not publicly accessible, where emailed to a listserv and PTAB improperly required showing of sufficient number of persons actually accessed reference). “A printed publication need not be easily searchable after publication if it was sufficiently disseminated at the time of its publication.” Suffolk Tech. (Fed. Cir. 05/27/14) (UseNet posting was a printed publication even though not indexed or searchable, where posted within an organized hierarchy of newsgroups, “dialogue with the intended audience was the entire purpose of the newsgroup postings,” and it elicited six responses). “A work is not publicly accessible if the only people who know how to find it are the ones who created it.” Samsung (Fed. Cir. 07/12/19) (vacating PTAB decision that reference was not publicly accessible, but agreeing that knowledge of reference by members of standards committee that created it, does not make it publicly accessible). Whether qualifies as a printed publication is a legal conclusion based on factual determinations. Blue Calypso (Fed. Cir. 03/01/16).
• Presumed Publicly Accessible As Of Publication Date Of Established Publisher: “When there is an established publisher there is a presumption of public accessibility as of the publication date.” Vidstream (Fed. Cir. 11/25/20) (aff’g PTAB finding that reference is prior art).
• Public Accessibility: Online Or Computer Database Access: In re Lister (Fed. Cir. 09/22/09) (a manuscript in the Copyright Office (in 1994) whose title was searchable via key words in a Westlaw database of Copyright Office records was publicly accessible as of the date it was entered in that database, even though one had to travel to the Copyright Office to inspect the manuscript and could not copy it.); SRI (Fed. Cir. 01/08/08) (remanding on public accessibility issue; addressing case law on public accessibility in context of paper e-mailed for peer review and placed on FTP server); Acceleration Bay (Fed. Cir. 11/06/18) (aff’g PTAB that technical report uploaded to database accessed via Web site was not publicly available, as paper was indexed only by author or year and searching functionality was not reliable); In re Bayer (CCPA 02/02/78) (accessibility to student’s thesis by three members of the graduate committee insufficient to show public accessibility).
• Paper On Web May Or May Not Qualify As “Publication”: Compare Blue Calypso (Fed. Cir. 03/01/16) (aff’g PTAB decision that paper available via hyperlink on graduate student’s web page on University web site was not publicly accessible; “no evidence that the ordinarily skilled artisan would know of Dr. Ratsimor’s personal webpage or its web address,” or that search engine search would have led to this paper, and related published article did not cite to this paper), with Voter Verified (Fed. Cir. 11/05/12) (article searchable on well-known web site was publication even if not indexed by search engine) and Jazz Pharma. (Fed. Cir. 07/13/18) (aff’g PTAB that meeting materials posted on FDA web site for at least two months before critical date, which web site was listed in meeting notice in Federal Register as where materials would be posted, that notice described subject of the meeting, meeting was open to public and there was no expectation of confidentiality, and skilled artisans in this field used to looking at Federal Register, qualified as “printed publication” even though not searchable).
• Provisional Application Incorporated By Reference, Or Referenced, By Published U.S. Or PCT Application Publication, Is Publicly Available: Applicant’s provisional application was publicly available because incorporated by reference in applicant’s published PCT application, per regulation of 137 C.F.R. § 1.14(a)(1)(vi) making the original provisional application, but not a file history, available to the public for a fee. Konda (Fed. Cir. 05/06/22) (non-precedential) (aff’g PTAB IPR finding of anticipation or obviousness; PTAB found that neither provisional nor PCT application provided sec. 112(a) support for claims issued from national stage (not challenged on appeal); making PCT publication and its incorporated provisional (available to public under 37 C.F.R. § 1.14(a)(1)(vi)), prior art).
• Foreign File History May Be “Publication”: Foreign file history, with drawings cancelled from the application before it issued as a patent, qualified as a publication even though no evidence that it was copied by anyone. Bruckelmyer (Fed. Cir. 04/20/06) (as disclosure was enabling, “the only question that remains for us to answer is whether a person of ordinary skill in the art interested in the subject matter of the patents in suit and exercising reasonable diligence would have been able to locate” the application.) See In re Wyer (CCPA 07/30/81) (laid-open Australian patent application “classified, indexed, [and] abstracted” qualified as printed publication, where microfilm copy was available in seven Australian Patent offices for public viewing, despite no evidence that it was disseminated).
• A Document May Be Published By Display Even If Not Distributed: A slide presentation displayed at an industry meeting and at a University, for total of three days, without any confidentiality notice was a printed publication even though no copies were distributed or indexed. In re Klopfenstein (Fed. Cir. 08/18/04).
• A Non-Enabling Publication May Be Enabled By A Foreign Sale?: In a plant patent case, Fed. Cir. ruled: “Evidence of the foreign sale of a claimed reproducible plant variety may enable an otherwise non-enabled printed publication disclosing that plant, thereby creating a § 102(b) bar.” In re Elsner (Fed. Cir. 08/16/04) (but added dictum that ruling would be different in a utility patent case).
• Public Accessibility: Disseminated Copies: “Common considerations about materials that are distributed at meetings or conferences: … the size and nature of the meetings and whether they are open to people interested in the subject matter of the material disclosed are important considerations. Another factor is whether there is an expectation of confidentiality between the distributor and the recipients of the materials. Even if there is no formal, legal obligation of confidentiality, it still may be relevant to determine whether any policies or practices associated with a particular group meeting would give rise to an expectation that disclosures would remain confidential.” Medtronic (Fed. Cir. 06/11/18) (remanding PTAB finding video and slides not prior art; video distributed on CD at three meetings and slide printouts distributed at two meetings, each attended by between 20 and 55 surgeons and experts, one closed to members of particular group but others not, may be publications, depending on accessibility, including expectations of confidentiality; and also on expertise of recipients and thus ability to retain what they learned); M&K Holdings (Fed. Cir. 02/01/21) (aff’g PTAB finding papers presented at conference and posted on prominent conference’s Web site are printed publications despite lack of full-site search capability, collecting cases); Nobel Biocare (Fed. Cir. 09/13/18) (aff’g PTAB finding catalog was public accessible at a trade show, corroborated by testimony of three witnesses and date on the catalog); Typeright (Fed. Cir. 07/06/04) (A document handed out to a few people without restriction, e.g., at a trade show, can be a “publication”); Cordis (Fed. Cir. 03/31/09) (not prior art where patent applicant gave monograph to two companies as part of commercialization effort but with reasonable expectation that it would be kept confidential, even though one agreement disclaimed legal obligation to keep confidential); Kyocera (Fed. Cir. 10/14/08) (standard Spec. sufficiently disseminated and available to public to qualify as publication); Mass. Inst. Tech. (Fed. Cir. 10/07/85) (paper orally presented to conference attended by 50 to 500 cell culturists, copy given head of the conference in advance, and copies distributed on request, without any restrictions, to as many six persons—qualified as printed publication). The expertise of the target audience for a meeting where the document was disseminated is a factor but not dispositive. GoPro (Fed. Cir. 07/27/18) (rev’g PTAB decision that catalog made available at a trade show for dealers was not a printed publication, where hundreds of copies were distributed without restriction); modified (Fed. Cir. 11/01/18) (in addition to direct accessibility to ordinary skilled artisans, “our case law directs us to also consider the nature of the conference or meeting; whether there are restrictions on public disclosure of the information; expectations of confidentiality; and expectations of sharing the information”); Quest Diagnostics (Fed. Cir. 12/27/21) (non-precedential) (aff’g PTAB; abstract publicly accessible where distributed on CD to thousands of technical society members as part of collection of hundreds of abstracts, searchable by a limited set of keywords). See In re Elbaum (Fed. Cir. 12/20/23) (non-precedential) (per curiam) (“even if . . . the claimed method provides a practical solution to a problem faced by online sellers, the utility of an abstract idea is insufficient to confer patent eligibility”); C.R. Bard (Fed. Cir. 09/28/18) (non-precedential) (remanding to PTAB for more fact finding on actual distribution of reference manual versus availability if requested).
• Public Accessibility: Product User Manual: Weber (Fed. Cir. 02/08/24) (rev’g as unsupported by substantial evidence PTAB finding that food slicer’s operating manual was not printed publication, where at least 10 customers received it, it was available upon purchase of the high-priced commercial food slicer, was available at trade shows and on request of company employees, despite copyright notice and IP clause on manual; distinguishing Cordis as academic setting with expectation of confidentiality); In re Enhanced Security (Fed. Cir. 01/13/14) (2-1) (manual for product with dozen customers and available on request was sufficiently accessible); Centripetal (03/10/21) (non-precedential) (aff’g PTAB printed-publication finding for user manual provided on CD-ROM to 586 customers of product (advertised to those interested and of skill in the art) over 2-year period with express permission to copy and distribute for non-commercial purposes, despite customers having to pay price for product ranging from $1,385 to £25,000).
• Public Accessibility: Library Access: reference cataloged in Norwegian library under “computer networks” and “communication protocols” was publicly accessible where challenged patent was entitled “Mobile Data Network Description” and problem patent purported to solve was the transmission of data to mobile computers, even though the claims were limited to “e-mail.” In re NTP (Seven Appeals) (Fed. Cir. 08/01/11). Telefonaktiebolaget (Ericsson) (Fed. Cir. 11/07/19) (aff’g PTAB; article in “May/June” issue of journal shelved in Germany University library before critical date was printed publication where journal had been published for at least thirty years, library was accessible to the public); See In re Hall (Fed. Cir. 01/16/86) (a single cataloged thesis in one university library qualified as printed publication).
• Public Accessibility Indicated By Purpose To Publicize To Intended Audience: “Where a publication’s purpose is ‘dialogue with the intended audience,’ that purpose indicates public accessibility.” Valve (Fed. Cir. 08/17/21) (rev’g PTAB; product review article posted on Web was a printed publication, as shown in part by Web Archives and by Examiner in another patent’s prosecution finding the article on the Internet before the critical date); see SRI (Fed. Cir. 01/08/08) (an intent to publicize is a factor suggesting public accessibility).

c) sec. 102(e) prior art

• BASICS: Sec. 102(e) (pre-AIA/FITF): “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, except that an international application filed under the treaty defined in section 351(a) shall have the effects for the purposes of this subsection of an application filed in the United States only if the international application designated the United States and was published under Article 21(2) of such treaty in the English language.” In determining whether reference was “by another,” the question is “‘whether the portions of the reference relied on as prior art, and the subject matter of the claims in question, represent the work of a common inventive entity.” Emerachem (Fed. Cir. 06/15/17) (although corroboration not always required, here, uncorroborated, conclusory declaration (by an inventor of subject application and overlapping-inventors prior art application) that cited portion was commonly invented, insufficient to refute prior invention “by another”); Duncan Parking (Fed. Cir. 01/31/19) (rev’g PTAB; disclosure in earlier application was joint invention and therefore “by another” vis-à-vis claims in later-filed patent with only one of those joint inventors named as an inventor). May show that earlier application’s disclosure was derived from inventor on challenged patent even if that inventor was not named as inventor on that earlier application. In re Matthews (CCPA 04/10/69).
• Determining “By Another” Where Prior Patent Reference’s Disclosure May Have Had Joint Inventor Who Is Not Co-Inventor On Challenged Claim: Must “(1) determine what portions of the reference patent were relied on as prior art to anticipate the claim limitations at issue, (2) evaluate the degree to which those portions were conceived ‘by another,’ and (3) decide whether that other person’s contribution is significant enough, when measured against the full anticipating disclosure, to render him a joint inventor of the applied portions of the reference patent.” Duncan Parking (Fed. Cir. 01/31/19) (rev’g PTAB; anticipating disclosure, a species shown in a particular drawing in the reference, was joint invention, and therefore “by another”); LSI (Fed. Cir. 08/11/22) (aff’g PTAB finding no anticipation, challenger-asserted teachings in patent application filed by another were either not relevant to anticipation or were merely summary of teachings in publication of challenged patent’s inventors and thus not invention “by another”); Ethicon (Fed. Cir. 03/15/21) (non-precedential) (remanding to PTAB for failure to correctly identify portion of reference patent cited as prior art).
• FITF: Changes this subject for patents subject to it.
• Which Pre-AIA Version Of Sec. 102(e) Applies?: See PTO Examination Guidelines re which version of Sec. 102(e) applies (pre Nov. 29, 2000 or not).
• Under Secs. 102(e)(1) and (2), Disclosure In Reference Patent/Publication’s Application As Filed On Asserted Filing Date Is What Matters And If It Is An Ancestor Application, It Must Support Reference Patent/Publication’s Own Claim(s) Also: Effective filing date in the U.S. is the operative prior-art date of the reference regardless of any foreign priority date under Sec. 119. In re Hilmer (CCPA 04/28/66). Alleged Sec. 102(e) reference effective as prior art as of its ancestor’s filing date only if that ancestor supports the claims of that alleged reference. In re Wertheim (CCPA 04/09/81) (“determinative question here is whether the invention claimed in the Pfluger patent finds a supporting disclosure in compliance with § 112, as required by § 120, in the 1961 Pfluger I application so as to entitle that invention in the Pfluger patent, as ‘prior art,’ to the filing date of Pfluger I. Without such support, the invention, and its accompanying disclosure, cannot be regarded as prior art as of that filing date.) “A reference patent is only entitled to claim the benefit of the filing date of its provisional application if the disclosure of the provisional application provides support for the claims in the reference patent in compliance with § 112, ¶ 1.” Dynamic Drinkware (Fed. Cir. 09/04/15) (IPR petitioner compared reference’s provisional’s disclosure to challenged patent’s claims but failed to compare it to reference’s own claims so failed its burden of production to show reference entitled to provisional’s filing date). Same rule applies to published applications. Amgen (Sanofi) (Fed. Cir. 10/05/17) (aff’g JMOL of non-obviousness, for failure of challenger to show published PCT claims supported by its provisional); Merck Sharp (Fed. Cir. 06/09/20) (non-precedential) (aff’g that reference not entitled to provisional’s date because reference’s claim recited three alternative positions for an element but provisional disclosed only two). When a patent qualifies as prior art under Sec. 102(e), it’s only prior art for what was originally disclosed in its original application as filed, which may be a provisional app., In re Giacomini (Fed. Cir. 07/07/10), Apple (Fed. Cir. 08/07/13) (pat. reference’s provisional app. had sufficient disclosure for issued pat.), Dynamic Drinkware (Fed. Cir. 09/04/15) (aff’g IPR petitioner failed to satisfy its burden of production to establish reference entitled to its provisional filing date); In re Klesper (CCPA 06/27/68) (“Prior to the enactment of section 102(e) in 1952, there was a history of treating the disclosure of a U. S. patent as prior art as of the filing date of the earliest U.S. application to which the patent is entitled, provided the disclosure was contained in substance in the said earliest application.”). But see Brief of U.S. [Opposing Cert. On Dynamic Drinkware – Amgen Issue] (May 2019) (“In the view of the United States, however, Section 119(e) has no bearing on the date on which a patent application qualifies as prior art under Section 102(e). Section 119 is directed to the separate question of when patent applicants are entitled to claim priority for their own applications.”).
  • Note: Unclear Which Claim(s) In Reference Must Be Supported By Provisional: Dynamic Drinkware and Amgen refer to “claims” needing to be supported, but do not address whether (1) all claims in the reference must be supported, (2) only one claim in the reference must be supported, or (3) at least one claim directed to the subject matter on which the patent challenger relies, must be supported. USPTO position is (2), only one claim. MPEP 2136.03 III (“The critical reference date under pre-AIA 35 U.S.C. 102(e) of a U.S. patent, a U.S. patent application publication, as well as an international application publication having prior art effect under pre-AIA 35 U.S.C. 102(e), may be the filing date of a relied upon provisional application only if at least one of the claims in the reference patent, patent application publication, or international application publication is supported by the written description of the provisional application ….”).
• Sec. 102(e) Art Is Prior Art For Sec. 103 Also: Is prior art for Sec. 103 purposes too. Hazeltine (U.S. 12/08/1965). Whether reference qualifies as prior art under Sec. 103 is question of law reviewed de novo. Emerachem (Fed. Cir. 06/15/17) (aff’g PTAB determination that patent owner did not prove earlier date of invention).
  • Excluded From Sec. 103 Prior Art If Co-Owned With Challenged Patented Invention (Filed After Nov. 29, 1999) At Time Of That Invention: “Subject matter developed by another person, which qualifies as prior art only under one or more of subsections (e), (f), and (g) of section 102 of this title, shall not preclude patentability under this section where the subject matter and the claimed invention were, at the time the invention was made, owned by the same person or subject to an obligation of assignment to the same person.” § 103(c). [Note: Sec. 102(e) exclusion applies only if challenged patent filed on or after Nov. 29, 1999]. But pre-AIA, post-invention assignment cannot satisfy common ownership requirement. Indus. Tech. (Fed. Cir. 01/29/16) (non-precedential).
  • FITF: See Patently O article (12/13/17) suggesting FITF Sec. 102(a)(2) “secret” prior art might not qualify as Sec. 103 (FITF) art because not known to person of ordinary skill in the art before the effective filing date.
  • FITF: See Patently O article (12/11/17) suggesting In re Wertheim rule may not apply under FITF Sec. 102(d).
• Prior Art Patent Remains Prior Art Even If Its Claims Have Been Cancelled: 35 U.S.C. § 102(e)(2) (pre-AIA) applies even if prior art patent’s claims have been cancelled post IPR. Becton, Dickinson (Fed. Cir. 05/28/21).
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d) applicants’ “publications”/disclosures

• FITF: Changes this subject for patents subject to it.
• “Estoppel” On Reference Enabling: More difficult to argue that applicant’s own allegedly prior art reference is not enabling when it’s a version of the applicants’ disclosure in the patent application. See SRI (Fed. Cir. 01/08/08) (aff’g Summ. J. that claims anticipated by patent owner’s published paper early in project that led to patent applications, where paper had similar and partial identical disclosures: “these disclosures helped the inventors obtain issuance” of the patent. Thus, “the record meets the lower enablement standard for prior art under 35 U.S.C. § 102(b).” No mention of “estoppel.”).
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e) patent owner’s other patents

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f) prior invention (sec. 102(g)) [by one of the co-inventors]

• BASICS: Under limited circumstances, one co-inventor’s prior work (“invention”) can invalidate a claim to a joint invention. “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) (pre-AIA).
  • Excluded From Sec. 103 Prior Art If Co-Owned With Challenged Patented Invention (Filed After Nov. 29, 1999) At Time Of That Invention: “Subject matter developed by another person, which qualifies as prior art only under one or more of subsections (e), (f), and (g) of section 102 of this title, shall not preclude patentability under this section where the subject matter and the claimed invention were, at the time the invention was made, owned by the same person or subject to an obligation of assignment to the same person.” § 103(c). But pre-AIA, post-invention assignment cannot satisfy common ownership requirement. Indus. Tech. (Fed. Cir. 01/29/16) (non-precedential).
  • Joint Research Can Be Treated As Co-Ownership: “For purposes of this subsection, subject matter developed by another person and a claimed invention shall be deemed to have been owned by the same person or subject to an obligation of assignment to the same person if–(A) the claimed invention was made by or on behalf of parties to a joint research agreement that was in effect on or before the date the claimed invention was made; (B) the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement; and (C) the application for patent for the claimed invention discloses or is amended to disclose the names of the parties to the joint research agreement.” Id.  103(c).
  • FITF: Changes this subject for patents governed by it.
  • Applicable to Non-FITF Patents And Some FITF Patents: Applies to non-FITF patents and also applies to FITF patents if they also have or had a claim with, or reference an application which had, an effective filing date before March 15, 2013. See L. 112–29, § 3(n), Sept. 16, 2011, 125 Stat. 293.

g) prior invention (sec. 102(g)) [by third party]

• BASICS: Must show that a prior inventor either was first to reduce invention to practice or conceived of the invention first and was diligent in reducing it to practice, all in the U.S., and challenger must rebut any showing that prior inventor had abandoned, suppressed, or concealed the invention. Fox Grp. (Fed. Cir. 11/28/12) (aff’g Summ. J. of invalidity under Sec. 102(g); prior inventor need not prove conception if it proves prior reduction to practice) (note: opinion contains some errors describing the law). Corroborating evidence of alleged prior invention “is a flexible, rule-of-reason demand for independent evidence that, as a whole, makes credible the testimony of the purported prior inventor with regard to conception and reduction to practice of the invention as claimed.”) Fleming (Fed. Cir. 12/24/14) (aff’g jury verdict of invalidity; finding no abandonment despite 3 year 2 month delay from actual reduction to practice to filing of the application). Lack of abandonment may be shown by showing that an embodiment of the invention was marketed or sold, or that the invention was described in a publicly disseminated document. Fox Grp. (Fed. Cir. 11/28/12). Abandonment, suppression, and concealment can be inferred from unreasonable delay in making the invention publicly known. Activities abroad can avoid abandonment, suppression, concealment. Sec. 102(g) prior art qualifies as Sec. 103 prior art also, as of its date of conception. Tyco Healthcare (Fed. Cir. 12/04/14); Dow Chem. (Fed. Cir. 09/28/01) (aff’g finding that prior invention had not been suppressed post reduction to practice; “the failure to file a patent application, to describe the invention in a published document, or to use the invention publicly, within a reasonable time after first making the invention may constitute abandonment, suppression, or concealment.”). See generally Woodland Trust v. Flowertree Nursery, Inc., 148 F.3d 1368 (Fed. Cir. 1998); Sandt Tech. Ltd. v. Resco Met. & Plas. Corp., 264 F.3d 1344 (Fed. Cir. 2001).
  • Excluded From Sec. 103 Prior Art If Co-Owned With Challenged Patented Invention (Filed After Nov. 29, 1999) At Time Of That Invention: See above section.
  • FITF: Changes everything on this subject for patents subject to it.
• Even “Secret” Sec. 102(g) Prior Art Is Prior Art For Sec. 103 (When Sec. 103(c) Exception Does Not Apply): Even if not known to inventor or the art, and even if not reduced to practice before inventor’s conception, Sec. 102(g) prior art is prior art for purpose of Sec. 103, as of its invention date. Tyco Healthcare (Fed. Cir. 12/04/14) (rev’g trial court).
• Prior Copying/Use In U.S. Insufficient To Establish Prior Invention Under Sec. 102(g)(2): Sec. 102(g)(2) requires that an “inventor” make the invention in U.S., so is not satisfied by someone reproducing in the U.S. an idea she obtained from another who conceived it abroad. Solvay I (Fed. Cir. 10/13/10) (Honeywell engineers not inventors because derived invention from Russian engineers). But statute is satisfied by foreign-conceived invention that is reduced to practice in U.S. by or on behalf of the inventor. Solvay II (Fed. Cir. 02/12/14) (2-1) (Russian engineers were inventors because Honeywell engineers worked on their behalf).
• Constructive Reduction To Practice Perhaps Requires Enabling Disclosure And Written Description Of Only Single Embodiment Within The Claim: At least in interference context, to show constructive reduction to practice in an application a party “need only show that the earlier-filed application discloses a single embodiment within the scope of the interference count that complies with” Sec. 112(1/a), i.e., an anticipation standard, not a Sec. 112 (full-scope) standard. Otonomy (Fed. Cir. 08/01/18) (non-precedential) (rev’g PTAB decision that ancestor application disclosed an embodiment of interference count).
• Prior Inventor Must Have “Appreciated” Embodiment Worked And Met All Limitations Of Challenged Claim: “The date of the conception of a prior inventor’s invention is the date the inventor first appreciated the fact of what he made,” but prior inventor need not be the first to appreciate the patentability of the invention. Dow Chem. (Fed. Cir. 12/06/01) (aff’g sec. 102(g) invalidity); Ingevity (Fed. Cir. 07/21/21) (non-precedential) (aff’g ITC finding invalidity under sec. 102(g); substantial evidence that prior inventors understood embodiment had property in the later-claimed range).
• Pre-AIA Interference Proceedings Apply To AIA FITF Patents And Applications If Ever Contained A Claim With Effective Filing Date Before March 16, 2013: Snipr (Fed. Cir. 07/14/23) (pure AIA FITF claims are not subject to an interference proceeding).
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h) derivation from others; derived knowledge (sec. 102(f))

• BASICS: Sec. 102(f) serves two functions, it (1) defines a category of prior art for purposes of a section 103 obviousness analysis, OddzOn (Fed. Cir. 08/08/97), and (2) bars granting a patent to someone who merely received a communication of (derived) the invention from another. “To prove derivation under 102(f), ‘the party asserting invalidity must prove both prior conception of the invention by another and communication of that conception to the patentee’ by clear and convincing evidence. Gambro (Fed. Cir. 04/08/97). The communication must be sufficient to enable one of ordinary skill in the art to make the patented invention. Id. at 1578, 42 USPQ2d at 1382-83.” Eaton (Fed. Cir. 03/27/03). Communicating a different idea which would render the claimed invention obvious is not sufficient for anticipation. Gambro (Fed. Cir. 04/08/97); Cumberland Pharm. (Fed. Cir. 01/26/17) (aff’g no derivation where FDA merely provided a general research suggestion: “ultimate question of whether a patentee derived an invention from another is one of fact, the determination of whether there was a prior conception is a question of law, which is based upon subsidiary factual findings”); Andersen (PTAB 03/20/19) (finding no derivation in AIA “derivation proceeding,” finding petitioner did not demonstrate that alleged prior inventor “communicated to a named inventor … a conception of the complete invention” recited in any claim).
• Confidential, Non-Enabling Disclosures To Applicants (“Derived Knowledge”) Are Prior Art Under Sec. 103: Sec. 102(f) “‘does not pertain only to public knowledge, but also applies to private communications between the inventor and another which may never become public,’” and for an obviousness analysis, it “‘need not work to qualify as prior art; it qualifies as prior art, regardless, for whatever is disclosed therein.’” Endo Pharma. (Fed. Cir. 05/03/19) (2-1) (aff’g judgment of non-obviousness; confidential communication from FDA to drug manufacturers including employer of patent applicants, mandating that manufacturers reduce certain impurities below a certain level, without describing how to do this, constitutes prior art for obviousness analysis.); OddzOn (Fed. Cir. 08/08/97) (aff’g non-obviousness of design patent claims; “§ 102(f) is a prior art provision for purposes of § 103;” “subject matter derived from another not only is itself unpatentable to the party who derived it under § 102(f), but, when combined with other prior art, may make a resulting obvious invention unpatentable to that party under a combination of §§ 102(f) and 103”).
  • Derived Knowledge Excluded From Sec. 103 Prior Art If Co-Owned With Challenged Patented Invention (Filed After Nov. 29, 1999) At Time Of That Invention: “Subject matter developed by another person, which qualifies as prior art only under one or more of subsections (e), (f), and (g) of section 102 of this title, shall not preclude patentability under this section where the subject matter and the claimed invention were, at the time the invention was made, owned by the same person or subject to an obligation of assignment to the same person.” § 103(c). But pre-AIA, post-invention assignment cannot satisfy common ownership requirement. Indus. Tech. (Fed. Cir. 01/29/16) (non-precedential).
• FITF: No “Derived Knowledge” Prior Art Or Novelty Defense:
  • FITF: Eliminates this prior art category and invalidity defense for FITF patents. AIA (FITF) 102 has no counterpart to pre-AIA § 102(f). Therefore, presumably disclosures to named inventors that constituted prior art for § 103 purposes under OddzOn will not constitute prior art to FITF claims, absent satisfaction of some other prior art bucket. This leaves the patent challenger with possible inventorship challenges under § 101 (“Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title”), or an assertion of co-inventorship (and co-ownership) under § 256, or in limited circumstances a derivation proceeding under 35 U.S.C. § 135 (in the Patent Office, by a later patent applicant) or § 291 (in court).
  • FITF: Derivation Proceeding in USPTO: Patent applicant’s deadline for petitioning PTO to institute a derivation proceeding against a patent/application with an earlier effective filing date, is, as interpreted by PTO, one year from earliest issuance or publication/issuance of respondent’s application/patent with claim that is same or substantially same as petitioner’s application’s claim. (35 U.S.C. § 135 (AIA).) The petition must show “that the petitioner has at least one claim that is: (i) The same or substantially the same as the respondent’s claimed invention; and (ii) The same or substantially the same as the invention disclosed to the respondent,” and “Demonstrate that a claimed invention was derived from an inventor named in the petitioner’s application, and that the inventor from whom the invention was derived did not authorize the filing of the earliest application claiming such invention.” 37 C.F.R. § 42.405. “Same or substantially the same means patentably indistinct.” 37 C.F.R. § 42.401. See Andersen (PTAB 03/20/19) (finding no derivation in AIA “derivation proceeding,” finding petitioner did not demonstrate that alleged prior inventor “communicated to a named inventor … a conception of the complete invention” recited in any claim).
  • FITF: Derivation Proceeding in Court: “The owner of a patent may have relief by civil action against the owner of another patent that claims the same invention and has an earlier effective filing date, if the invention claimed in such other patent was derived from the inventor of the invention claimed in the patent owned by the person seeking relief under this section.” 35 U.S.C. 291 (AIA). Patent owner’s deadline for filing civil action for derivation is one year from “date of the issuance of the first patent containing a claim to the allegedly derived invention and naming an individual alleged to have derived such invention as the inventor or joint inventor.” Id.
•  TIP (FITF):
  

i) “known or used by others” in U.S. (sec. 102(a))

• BASICS: “A person shall be entitled to a patent unless — (a) the invention was known or used by others in this country, … before the invention thereof by the applicant for patent.” Sec. 102(a). “Means knowledge or use which is accessible to the public.” Carella (Fed. Cir. 12/12/86) (not shown to be “known or used by, or was otherwise accessible to, the public”). While prior knowledge or use by a single person is sufficient, it must be “accessible to the public ‘upon reasonable inquiry.’” BASF (Fed. Cir. 04/08/20) (rev’g Summ. J. invalidity under Sec. 102(a), for genuine dispute of material facts, where third party customer’s knowledge of third party manufacturer’s system was under confidentiality agreements); Gaylor (U.S. 1851) (interpreting prior statute, “by knowledge and use the legislature meant knowledge and use existing in a manner accessible to the public”). “Notwithstanding abandonment of the prior use—which may preclude a challenge under § 102(g)—prior knowledge or use by others may invalidate a patent under § 102(a) if the prior knowledge or use was accessible to the public.” Woodland Trust (Fed. Cir. 07/10/98) (reversing invalidity, for lack of sufficient corroboration of the alleged prior knowledge). “The nonsecret use of a claimed process in the usual course of producing articles for commercial purposes is a public use.” W.L. Gore (Fed. Cir. 11/14/83).
• Prior Use Or Knowledge Must Be Enabling For Anticipation, But Not For Obviousness: The disclosure need not be of an invention reduced to practice but must enable the disclosed subject matter. In re Borst (CCPA 05/25/65) (aff’g rejection of some claims as anticipated by prior knowledge imparted by a memorandum, but rev’g rejection of others for obviousness over the same prior knowledge); Minnesota Mining (Fed. Cir. 08/30/02) (rev’g jury verdict of anticipation, insufficient evidence that distributed samples enabled claimed invention). A prior art patent is presumed enabling so patent owner has burden of showing otherwise. Amgen (Fed. Cir. 01/06/03). 102(a) reference need not be enabling when part of a Sec. 103 obviousness challenge. Amgen (Fed. Cir. 01/06/03).
• Prior Knowledge And Use Prior Art Is Available For Obviousness Challenges: Ormco (Fed. Cir. 08/30/06) (rev’g Summ. J. of no obviousness; claims obvious over combination of prior knowledge (an orthodontist’s practice with patients and an instruction sheet he distributed to other orthodontists at seminars and clinics) and FDA regulations).

j) applicant admitted prior art and knowledge

• Applicant Admitted Art And Knowledge In Patent: Koninklijke Philips (Fed. Cir. 01/30/20) (aff’g PTAB obviousness; proper to base obviousness in part on Spec. admission “working with threads is a skill common for software engineers”); Qualcomm (Fed. Cir. 02/01/22) (while applicant admitted prior art may not form basis for unpatentability ground in an IPR, “a patentee’s admissions about the scope and content of the prior art provide a factual foundation as to what a skilled artisan would have known at the time of invention.”); Constant v. Advanced Micro-Devices Inc., 848 F.2d 1560, 1570 (Fed. Cir. 1988) (“A statement in a patent that something is in the prior art is binding on the applicant and patentee for determinations of anticipation and obviousness.”); Sanofi-Aventis (Fed. Cir. 11/19/19) (2-1) (non-precedential) (aff’g IPR obviousness finding; Board properly “used the Spec. for its teachings about prior-art knowledge.”); In re Cohen (Fed. Cir. 05/01/19) (non-precedential) (aff’g application rejection based on obviousness in view of patent’s statement of what was “typical” in the “Background of the Invention” section); I/P Engine (Fed. Cir. 08/15/14) (non-precedential) (2-1) (reversing $30 Million verdict; finding obviousness as matter of law based in part on patent’s admission of what was “conventional” in prior art); McCoy (Fed. Cir. 04/01/21) (non-precedential) (aff’g PTAB relying on statements in specification regarding prior art). But see Amgen (Sandoz) (Fed. Cir. 04/19/23) (aff’g trial court non-obviousness and decision to not hold patent owner to Spec. statement that certain methods were known in the prior art, where challenger’s own expert admitted this was untrue.) See “THE PAST AND FUTURE OF ADMITTED PRIOR ART,” 21 Tex. Intell. Prop. L.J. 237 (2013).
• Patent Owner’s Extrinsic Statements Regarding Prior Art May Be Infected By Hindsight From Own Invention: Neptune Generics (Fed. Cir. 04/26/19) (aff’g PTAB non-obviousness finding; approving Board not reading prior art through lens of what patent owner told FDA about prior art five months after critical date as those statements were infected by hindsight having been “made through the lens of what they had invented”).

k) overcoming putative prior art

• Showing Putative Prior Art Derived From Inventor: Without needing to show earlier date of invention (e.g., reduction to practice or diligence), patent applicant may overcome putative prior art (if not statutory bar) by showing applicant earlier conceived the invention and the reference derived the invention from the applicant. In re DeBaun (CCPA 08/27/82). “One’s own work is not prior art under § 102(a) even though it has been disclosed to the public in a manner or form which otherwise would fall under § 102(a).” In re Katz (CCPA 08/27/82). May overcome putative Sec. 102(a) prior art if show that the prior reference’s disclosure was the named inventor’s work and hers alone. Allergan (Fed. Cir. 06/10/14) (rejecting belated argument that sec. 102(a) reference was work of named inventor); Horizon (Fed. Cir. 11/16/21) (rejecting attempt to amend patent to add second inventor in order to remove reference publication authored by both of those persons, as § 102(a) prior art). Same applies to overcoming Sec. 102(e) prior art to extent applicant’s invention disclosed but not claimed in the putative Sec. 102(e) reference. In re Mathews (CCPA 04/10/69); http://patents.ame.nd.edu/mpep/21/2136.05.html. If applicant’s invention is claimed in the putative Sec. 102(e) references, then Sec. 102(g) priority of invention analysis governs.
• Antedating Putative Prior Art: May overcome (antedate) Sec. 102(a), 102(e), 102(f), or 102(g) prior art by showing earlier date of invention (see above), or entitlement to earlier domestic or foreign priority date under Sec. 119 or 120. See NFC Tech. (Fed. Cir. 09/20/17) (rev’g PTAB decision that patent owner had failed its burden to prove invention date earlier than Sec. 102(e) reference); Perfect Surgical (Fed. Cir. 11/15/16) (2-1) (vacating PTAB finding that applicant failed to antedate a foreign publication because applicant lacked reasonable diligence toward constructive reduction to practice); In re Mulder (Fed. Cir. 08/23/83) (patent applicant failed to antedate a reference published two days before the applicant’s patent application by presenting “no evidence” of diligence during those two days); In re Wertheim (CCPA 08/26/76). “For purposes of antedating a prior art reference, the evidence of prior invention may be sufficient if it demonstrates obviousness of the claimed invention.” Garmin (PTAB (IPR) 11/13/13) (patent owner failed to show corroborated evidence of diligence). Patent owner has burden of production to show invention date antedates prior art reference but patent challenger has burden of persuasion that reference qualifies as prior art. Allergan (Fed. Cir. 06/10/14) (rev’g finding that patentee had antedated sec. 102(a) publication prior art; documents did not corroborate oral testimony of conception date); Mahurkar (Fed. Cir. 03/29/96) (patent owner antedated reference); Stamps.com (Fed. Cir. 06/15/11) (non-precedential) (aff’g Summ. J., patentee failed to sufficiently corroborate alleged conception before Sec. 102(a) reference).
• Foreign Priority Filing Date Under Sec. 119(a) Does Not Affect Section 102(b) “Critical Date”: 119(a): “An application for patent for an invention filed in this country by any person who has, or whose legal representatives or assigns have, previously regularly filed an application for a patent for the same invention in a foreign country which affords similar privileges in the case of applications filed in the United States or to citizens of the United States, or in a WTO member country, shall have the same effect as the same application would have if filed in this country on the date on which the application for patent for the same invention was first filed in such foreign country, if the application in this country is filed within twelve months from the earliest date on which such foreign application was filed; but no patent shall be granted on any application for patent for an invention which had been patented or described in a printed publication in any country more than one year before the date of the actual filing of the application in this country, or which had been in public use or on sale in this country more than one year prior to such filing.” See In re Hilmer (CCPA 04/28/66) (claim “does not enjoy the foreign [filing] date with respect to any of the patent-defeating provisions” of Sec. 102(b)); Group One (Fed. Cir. 06/15/01) (critical date is one year before filing of the PCT application under Sec. 363, which constitutes the U.S. filing date).