Anticipation II

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Anticipation II

• Patent Law Prof Merges
• 2.12.08

2
Agenda

• Finish 102(a) Klopfenstein, Hafner
• Section 102(e)
• Inventive entities
• Section 102(f)

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In re Klopfenstein

• 380 F.3d 1345 (Fed Cir 2004)
• Printed Publications for the modern era . .
• Page 405

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• 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.

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• 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

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• 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

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• 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.

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• 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.

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• 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

10
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

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Agenda

• Finish 102(a) Klopfenstein, Hafner
• Section 102(e)
• Inventive entities
• Section 102(f)

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(No Transcript)
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Alexander Milburn
Whitford
3.4.1911 Filed
Issued 6.4.1912
Issued 2.6.1912
Filed 1.31.1911
Clifford
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Why would anyone disclose but not claim an
invention?
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Why would anyone disclose but not claim an
invention?

• Related field
• Interested only in one application
• Oversight

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Holmes reasoning

• Note emphasis on who was prior inventor
• Is that how we would view it today?

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Holmes reasoning

• Note emphasis on who was prior inventor
• Is that how we would view it today?
• NO! Two separate issues
• Is Whitfords patent anticipated by Clifford
  reference?
• VS. Who has priority

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What would make this a priority case?
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What would make this a priority case?

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

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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

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Back to Holmes . . .

• Plain meaning approach
• Good starting point
• Followed Here?

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Back to Holmes . . .

• Plain meaning approach
• Good starting point
• Followed Here?
• Why Not?

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First to Invent An Absolute Patent Law Principle?

• Completely secret descriptions
• Abandoned applications
• Foreign known or used references

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The Publication Analogy

• Shows strength of first inventor policy
• Worldwide, absolute
• Subject to exceptions, this is the top policy
  consideration

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

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• Clifford had done all he could do to make
  description public
• Mailbox rule for disclosure purposes?

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• 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

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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

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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

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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

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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.

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MPEP 706.02(f) (contd)

• 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.

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Overcoming 102(e) rejection

• Combine applications eliminate the reference
• File affadavit that claimed invention was derived
  from 102(e) prior art application

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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 . . . .

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102(e) amendments

• PCT Filings 102(e)(2) treaty filings
• Published patent applications section 122(b)
• Changed 1999
• Backdate publication to filing date

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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)

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Agenda

• Finish 102(a) Klopfenstein, Hafner
• Section 102(e)
• Inventive entities
• Section 102(f)

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102(f) The (f) is for Fraud
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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

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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)

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Typical derivation scenario

• ROBINSON LABS, INC., Plaintiff,
• v.
• WALLS INDUSTRIES, INC., Defendant.
• Sept. 30, 2003
• 2003 WL 22272122 (D.Minn.)

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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.

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• 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

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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.

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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).

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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.

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• However, "if 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.