Anticipation II

Patent Law – Prof Merges

2.12.08

Agenda

• Finish 102(a) – Klopfenstein, Hafner

• Section 102(e)– Inventive entities

• Section 102(f)

In re Klopfenstein

• 380 F.3d 1345 (Fed Cir 2004)

• “Printed Publications” for the modern era . .

• Page 405

In October 1998, the appellants, along with colleague M. Liu, presented a printed slide presentation entitled "Enhancement of Cholesterol-Lowering Activity of Dietary Fibers By Extrusion Processing" at a meeting of the American Association of Cereal Chemists ("AACC"). The fourteen-slide presentation was printed and pasted onto poster boards. The printed slide presentation was displayed continuously for two and a half days at the AACC meeting.

AACC 1998 Annual Meeting Poster # 127. Click title to see full text of poster.

Enhancement of cholesterol-lowering activity of dietary fibers by extrusion processing. M. LIU, C.F. Klopfenstein, and J.L. Brent. Department of Grain Science and Industry, Kansas State University, Manhattan, KS 66506

The statutory phrase "printed publication" has been interpreted to mean that before the critical date the reference must have been sufficiently accessible to the public interested in the art; dissemination and public accessibility are the keys to the legal determination whether a prior art reference was "published.“ -- p. 406

• Billboard hypothetical: p. 406

• “’public accessibility’ has been called the touchstone in determining whether a reference constitutes a ‘printed publication,’” In re Hall–NOT just indexing

• “The reference was shown with no stated expectation that the information would not be copied or reproduced by those viewing it.”

The factors relevant to the facts of this case are: the length of time the display was exhibited, the expertise of the target audience, the existence (or lack thereof) of reasonable expectations that the material displayed would not be copied, and the simplicity or ease with which the material displayed could have been copied.

Where professional and behavioral norms entitle a party to a reasonable expectation that the information displayed will not be copied, we are more reluctant to find something a "printed publication." This reluctance helps preserve the incentive for inventors to participate in academic presentations or discussions. Where parties have taken steps to prevent the public from copying temporarily posted information, the opportunity for others to appropriate that information … is reduced. -- p. 409

35 USC Sec. 120

• US Implementation of international “Paris Convention” for patent priority (1890) (www.wipo.org)

• Preserves US priority based on foreign priority filing

• “National Treatment” principle

Agenda

• Finish 102(a) – Klopfenstein, Hafner

• Section 102(e)–Inventive entities

• Section 102(f)

Alexander Milburn

Whitford3.4.1911

FiledIssued: 6.4.1912

Clifford

Filed: 1.31.1911

Issued: 2.6.1912

Why would anyone disclose but not claim an invention?

Why would anyone disclose but not claim an invention?

• Related field

• Interested only in one application

• Oversight

Holmes’ reasoning

• Note emphasis on who was “prior inventor”

• Is that how we would view it today?

Holmes’ reasoning

• Note emphasis on who was “prior inventor”

• Is that how we would view it today?

• NO! Two separate issues– Is Whitford’s patent anticipated by Clifford

reference?– VS. Who has “priority”

What would make this a priority case?

What would make this a priority case?

• Whitford and Clifford would have to CLAIM the same subject matter!

Alexander Milburn

Codified in Section 102(e):

No patent if – (e) Invention was DESCRIBED [but NOT

claimed] in . . . (2) a patent granted on an application for patent by another filed in the US before the [date of] invention

Back to Holmes . . .

• “Plain meaning” approach– Good starting point– Followed Here?

Back to Holmes . . .

• “Plain meaning” approach– Good starting point– Followed Here?

• Why Not?

First to Invent: An Absolute Patent Law Principle?

• Completely secret descriptions

• Abandoned applications

• Foreign “known or used” references

The “Publication” Analogy

• Shows strength of “first inventor” policy– Worldwide, absolute

• “Subject to exceptions,” this is the top policy consideration

“The delays of the patent office ought not to cut down the effect of what has been done.” – p. 423

• “Clifford had done all he could do to make” description public

• “Mailbox rule” for disclosure purposes?

Codified in Section 102(e):

No patent if – (e) Invention was DESCRIBED [but NOT

claimed] in . . . (2) a patent granted on an application for patent by another filed in the US before the [date of] invention

102(e) Issues

• Patent must be granted; then application is prior art as of FILING DATE: Nunc pro tunc– Provisional rejections

• Application must be “by another” – technical definition, inventive entities

• Amendments: “filed in the US” -- international priority filings; published US applications

Inventive entities

• The prior application of A can be cited against the later application of A + B under 35 USC 102(e)

• Different “inventive entities” create prior art against each other

MPEP 706.02(k) Provisional Rejection … Under 35 U.S.C. 102(e) …

Where two applications of different inventive entities are copending, not published under 35 U.S.C. 122(b), and the filing dates differ, a provisional rejection under 35 U.S.C. 102(e) … should be made in the later filed application . . .

www.uspto.gov

MPEP 706.02(f) Rejection Under 35 U.S.C. 102(e) [R-3] - 700 Examination of Applications

35 U.S.C. 102(e) is mostly utilized when the publication or issue date is too recent for the reference to be applied under 35 U.S.C. 102(a) or (b). In order to apply a reference under 35 U.S.C. 102(e), the inventive entity of the application must be different than that of the reference.

MPEP 706.02(f) (cont’d)

Note that, where there are joint inventors, only one inventor [need be] be different for the inventive entities to be different and a rejection under 35 U.S.C. 102(e) is applicable even if there are some inventors in common between the application and the reference.

• Combine applications – eliminate the reference

• File affadavit that claimed invention was derived from 102(e) prior art application

Overcoming 102(e) rejection

Overcoming 102(e) rejection

(C) Filing an affidavit or declaration under 37 CFR 1.132 showing that any unclaimed invention disclosed in the copending application was derived from the inventor of the other application and is thus not invention "by another“ . . . .

102(e) amendments

• PCT Filings: 102(e)(2) “treaty filings”

• Published patent applications – section 122(b)– Changed 1999

– “Backdate” publication to filing date

Fine Points

• Provisional rejections– Common inventors or assignee

• Foreign priority filings– Different treatment; only US Filings and their

precise equivalents under PCT trigger section 102(e) – In re Hilmer (35 USC 119)

• Provisional applications – 35 USC 111– Assumed to trigger 102(e)

Agenda

• Finish 102(a) – Klopfenstein, Hafner

• Section 102(e)– Inventive entities

• Section 102(f)

102(f): “The (f) is for Fraud”

35 USC § 102(f)

“A person shall be entitled to a patent unless –

* * *

(f) He did not himself invent the subject matter sought to be patented

Two Main 102(f) Scenarios

• “Derivation” (invention theft) a la Campbell– Requirements: (1) Conception by Person A; (2)

communication (enabling) to person B

• Inventorship rejections and disputes – PTO and litigation

• Related to 35 USC § 256– Misjoinder (adding non-inventor to patent)– Non-joinder (omitting inventor from patent)

Typical derivation scenario

ROBINSON LABS, INC., Plaintiff,v.

WALLS INDUSTRIES, INC., Defendant.Sept. 30, 2003

2003 WL 22272122 (D.Minn.)

Robinson Labs

• 1. A multi-dimensional camouflaged garment, the garment serving to camouflage a wearer thereof by presenting an external appearance to an observer that tends to be indistinguishable from the environmental feature against which the wearer is observed, comprising:

a garment external surface, being viewable by an observer and having a first portion and a second potion;

the first portion of the garment external surface being formed of a substantially three dimensional material; and

the second portion of the garment external surface being formed of a substantially two dimensional material.

the first portion of the garment external surface being formed of a substantially three dimensional material; and

the second portion of the garment external surface being formed of a substantially two dimensional material.

US Pat 5,695,835

Robinson

Here, the crux of this analysis is whether the bow hunters first conceived of the invention claimed by the '835 Patent. The bow hunters put forth the idea of cutting off the leaves so as to remove the safety hazard. This was a specific settled idea addressing a solution to the problem at hand. Anyone with a pair of shears could reduce the invention to practice. The Court concludes that there is no material question of fact as to whether the bow hunters had conceived of an invention.

Transocean Offshore Deepwater Drilling, Inc. v. GlobalSantaFe Corp.

--- F.Supp.2d ----, 2006 WL 2253130, at 21

Genuine issue of material fact existed as to whether facsimile, which included drawings of alleged infringer's offshore exploration and/or development drilling apparatus and which was sent to inventor of patented rig, was prior art for the purposes of showing derivation, precluding summary judgment in favor of patentee on alleged infringer's derivation defense. 35 U.S.C.A. § 102(f).

102(f) and “nonjoinder”

"If nonjoinder of an actual inventor is proved by clear and convincing evidence, a patent is rendered invalid."

Pannu v. Iolab Corp., 155 F.3d 1344, 1349 (Fed.Cir.1998).

-- at 1349.

However, "[i]f a patentee can demonstrate that inventorship can be corrected as provided by [35 U.S.C. § 256], a district court must order correction of the patent, thus saving it from being rendered invalid." Id. at 1350.