Happy Father’s Day! Today is another important holiday celebrated in patents. See U.S. Patent No. 7,490,720:
In Quest Integrity USA, LLC v. Cokebusters USA Inc., [2017-2423] (May 21, 2019), the Federal Circuit affirmed the judgment of invalidity as to claims 12, 24, and 33, of U.S. Patent No. 7,542,874 under the on sale bar of 102(b), reverse the judgment of invalidity as to claims 30 and 40, and remanded for further proceedings.
Cokebusters defended on the ground that the claims were invalid under 35 U.S.C. § 102(b) because there was a commercial sale of services that used the claimed methods, computer-readable media, and system more than one year before June 1, 2004, the date the application that led to the ’874 patent was filed in the United States. The basis for the on-sale bar defense was an offer by Quest itself to provide furnace tube inspection services to a client in the petrochemical industry. The district court agreed, and granted summary judgment of invalidity of claims 12, 24, and 33, and after discounting affidavits by Quest as “sham affidavits” also granted summary judgment as to claims 30 and 40.
The Federal Circuit noted that the parties agreed that the Norco Sale was “a commercial offer for sale” under § 102(b), and said that the fact that Quest did not sell its hardware or software (i.e., its method, computer-readable medium, or system) does not take Quest’s commercial activities outside the on-sale bar rule. Rather, Quest used its method, computer-readable medium, and system commercially to perform furnace inspection services and produce the Norco Reports for its customer. Sale of a product produced by performing a claimed process implicates the on sale bar. The same approach necessarily applies where a service is performed for compensation using a claimed computer-readable medium or system that generates a “product.” After concluding that all of the limitations in the claims were in fact met by the pre-critical date commercial activity, the Federal Circuit affirmed summary judgment with respect to claims
12, 24, and 33.
However as to claims 30 and 40, there was an additional limitation that the district court relied upon the testimony of a co-inventor to find was also present in the pre-critical date commercial activities. However Quest argued that there was a genuine issue of material fact that precluded summary judgment because there was also contrary evidence in the form of declarations by the same inventor, and a co-inventor contradicting the earlier deposition testimony, and explaining why the inventor Lorenzo had made an error. The district court rejected Quest’s arguments, concluding that the declarations were “sham affidavits” because they contradicted the earlier deposition testimony.
The Federal Circuit concluded that the declarations of cannot be dismissed as sham affidavits. First, the second co-inventor’s declaration did not contradict any earlier testimony that he gave. The general rule is that the sham affidavit doctrine allows a court to disregard an offsetting affidavit that is submitted in opposition to a motion for summary judgment when the affidavit contradicts the affiant’s prior deposition testimony, not another witness’s prior deposition testimony. The Federal Circuit also determined that it was error to disregard the first co-inventor’s declaration because it offered a detailed declaration in which he provided a “plausible explanation” why his deposition testimony was incorrect. (The co-inventor was shown only a portion of the source code that did not contain dated comments from after the critical date, indicating that the version he testified about was not in use prior to the critical date, and further the displays were inconsistent with the use of the code he was shown.).
The Federal Circuit said that the detailed explanation in the declaration and corroborating evidence took the declaration out of the sham affidavit doctrine. The Federal Circuit reversed summary judgment as to claims 30 and 40, and remanded.
Our Mother’s are indeed remembered in the patent collection. See, for example, U.S. Patent No. 5,906,063 on a Novelty Greeting Card:
Also U.S. Patent No. 1,792,572:
The inventor of new technology has two choices for protection: patents or trade secrets. They are generally mutually exclusive, because the disclosure requirements to obtain a valid patent, or inconsistent with the secrecy needed to have a protectable trade secret. For most inventions, the choice is easy. Because trade secrets only last while the invention is secret, they are not good protection for inventions that are revealed to the public when the invention is commercialized. However, for inventions that are not disclosed by commercialization — typically inventions related to the manufacture of the product like recipes, manufacturing processes, and manufacturing equipment – trade secret protection may be a reasonable choice. It is hard to detect infringement of a patent these types of patents inventions, so keeping the inventions out of the hands of competitors by keeping them secret may offer the best protection.
However, trade secrets have a critical weakness – the loss of secrecy destroys them. Thus while trade secrets have a potentially infinite life, their life can also be disappointingly brief if the secrecy is lost or if the it is independently developed. But independent creation has another possible consequence – the second inventor might decide to patent the invention, and enforce it against the first inventor who decided to keep it a trade secret.
The first inventor could be vulnerable, as its activities may not constitute “prior art” that can be used to challenge the second inventor’s patent. However the AIA created a prior user defense in 35 USC 273, which was tailor-made for this circumstance. The defense applies to a patent on a process, or a machine, manufacture, or composition of matter used in manufacturing or other commercial process. The defense requires that the prior user, (1) acting in good faith, (2) commercially used in the invention, (3) in the United States, (4) either in connection with an internal commercial use or a sale or transfer, (5) at least one year before the earlier of the patent filing date or first public disclosure.
The first inventor has the burden of proof, and thus should keep records sufficient to be able to established the defense. The defense is also personal, and can only be asserted by the person who performed or directed the performance of the commercial use, or by an entity that controls, is controlled by, or is under common control with such person. The defense can be transferred, but only ancillary and subordinate part of a good-faith assignment or transfer for other reasons of the entire enterprise or line of business to which the defense relates. Moreover, when transferred, the defense is limited to the uses at sides where the invention was used before the later of the effective filing date of the claimed invention or the date of the assignment or transfer of such enterprise or line of business.
Of course asserting the prior user defense takes fortitude, be it is basically conceding infringement, and depending on the circumstances, willful infringement if the defense does not succeed. Further, there are a number of limitations that make the prior use defense unreliable:
- It only applies to patents issued on applications filed after September 16, 2011, and does not apply to patents on inventions made, owned or subject to an obligation of assignment to either an institution of higher education or a technology transfer organization (35 USC 273(e)(5)). It must be proven by clear and convincing evidence. 35 USC 273(b).
- The prior use must be continuous. 35 USC 273(e)(4).
- The case will be deemed exception for purposes of an award of attorneys’ fees if the defense is asserted without a reasonable basis. 35 USC 273(f).
- The defense is not a general license, but is limited to the prior commercial use, and improvements not covered by the claims. 35 USC 273(e)(3). The defense does not invalidate the patent. 35 USC 273(g).
- The defense does not invalidate the patent. 35 USC 273(g).
For these reasons, a prior inventor who decides to rely on trade secret protection for an invention may wish to set up a invalidity defense should a second inventor come along and get a patent. The first inventor might do so by making a public disclosure of just enough information to make the invention unpatentable without revealing the trade secret itself. This disclosure might prevent a third party patent from issuing, or if it did issue, could be used to invalidate it. Such a strategy is fraught with uncertainty in striking the balance of invalidating subsequent patents while not disclosing enough to destroy the trade secret.
Another strategy might be to leverage the Supreme Court decision in Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA Inc., and arrange for a non-disclosing sale of the invention. Since it should not make a difference who is the buyer and who is the seller, the first inventor could contract to buy the invention from a vendor bound by a confidentiality agreement. Should a patent issue to a third party, this non-disclosing sale would be prior art as long as it occurred before the third party filed its patent application. (Note that none of the exceptions in 102(b) appear to apply to a non-disclosing sale.).
It’s amusing to contemplate even more devious ways to hide prior art in plain sight, maintaining relative confidentiality while setting up a prior art road block to third party patents. Although such gamesmanship may not guarantee the desired result. For example, in In re Wyer, 655 F.2d 221 (C.C.P.A. 1981), a patent application was filed with the Australian Patent Office, resulting in the publication of a printed abstract of the application, and microfilm copies being retained by the Australian Patent Office, available for the public to view and copy. As a result, the application was found to be a prior art printed publication by the Federal Circuit’s predecessor, the CCPA.
In In re Hall, 781 F.2d 897 (Fed. Cir. 1986), a dissertation was submitted to the Department of Chemistry and Pharmacy at Freiburg University in Germany, indexed in a special dissertations catalog which was part of the general users’ catalog, and stored in the stacks in a special dissertation section. As a result, the dissertation was found to be a prior art printed publication by the Federal Circuit.
In Mazzari v. Rogan, 323 F.3d 1000 (Fed. Cir. 2003) , a report was indexed, cataloged, and available to the public at the Ontario Power Generation Resource Center. Another report was written in German, but also available at a library. The court simply held, with respect to the German reference, that a publication printed in a foreign country can act as a statutory bar. As a result, the report was found to be a prior art printed publication by the Federal Circuit.
In re Klopfenstein, 380 F.3d 1345 (Fed. Cir. 2004), a fourteen-slide presentation was printed and pasted onto poster boards and displayed continuously for two and a half days at an American Association of Cereal Chemists meeting, and then put on display for less than a day at an Agriculture Experiment Station at Kansas State University. As a result, the presentation was found to be a prior art printed publication by the Federal Circuit.
Finally, in Bruckelmyer v. Ground Heaters, Inc., 445 F.3d 1374 (Fed. Cir. 2006), a Canadian patent application included two figures that were cancelled during prosecution and not included in the patent that issued from the application. The application, including the two cancelled drawings, was found to be a prior art printed publication by the Federal Circuit.
Deciding to treat an invention, particularly one relating to the manufacture of a product, as a trade secret, rather than patenting it, is often a good decision. This is particularly true, if infringements would be hard to detect. However, the inventor should consider the ability to keep the invention secret, and the likelihood that a third party might subsequently make the same invention. The inventor should also consider the likelihood that the third party might obtain a patent, and if the prior user defense should fail, what the inventor can do to be prepared to invalidate that patent.
In Tek Global, S.R.L. v. Sealant Systems International, Inc., [2017-2507](March 29, 2019), the Federal Circuit vacated the district court’s final judgment as to validity and reversed the denial of a partial new trial on validity, finding that the district court improperly restricted SSI’s efforts to present the jury with relevant evidence of invalidity.
SSI argued that had the district court allowed it to present to the jury its obviousness theory based on Eriksen in view of Bridgestone, the jury would have found the asserted claims invalid. But the district court instructed the jury that it was not permitted to conclude that Bridgestone or Eriksen, alone or in combination with one another, discloses all the requirements of the claim at issue.
The Federal Circuit found that the district erred in interpreting its prior mandate to foreclose all obviousness theories based on Eriksen in view of Bridgestone. It was the only obviousness theory at issue in the prior appeal that was foreclosed, and the district court should not have barred SSI from presenting to the jury other preserved obviousness theories based on the combination of Eriksen and Bridgestone that were not before this court in the prior appeal.
With temperatures in parts of the U.S. lower than we have seen in decades, it seems appropriate to recognize the inventors whose work help us brave this weather weather.
First and foremost is Chester Greenwood, inventor of ear muffs, whose U.S. Patent No. 188,292, issued March 13, 1877:
Our thanks should also go to Joel Craddick, whose U.S. Patent No. 1,394,810, issued October 1921, on an “Electrothermal Garment” — among the earliest electrically heated clothing.
However, inventors’ work on protecting us from the cold continues to this day, and John Elson, Kerrie Gath, Clay Maranville, and Victoria Schein, were issued U.S. Patent No. 10,143,043 on a “Heated Seat Belt.” While when I am backing out of my driveway at 1° F I will be wearing a jacket so thick that I won’t be able to tell whether or not the seat belt is warm, I can still appreciate their thinking of us.
For fifty years between 1940 and 1990, The St. Louis Post Dispatch had a section in its comics pages titled Our Own Oddities, featuring unusual things from around the St. Louis metropolitan area. There are a number of patent “oddities,” and while they may not be as astounding as a Nixon-shaped potato they are nonetheless cataloged below.
The First Patent
The first patent, as most patent attorneys know, was issued to Samuel Hopkins on July 31, 1790, on a method of making potash and pearlash. However U.S. Patent No. 1 issued to J. Ruggles on July 13, 1836, when it finally occurred to someone in the Patent Office to start numbering these things. Approximated 10,000 unnumbered patents, often call the X-series of patents were issued prior to U.S. Patent No. 1.
First Patent to a Female Inventor
The first patent to issue to a female inventors is believed to be one of the aforementioned X-series patents, No. 1041X on Weaving Straw with Silk Thread, issued to Mary Kies on May 5, 1809.
First Patent to an African-American Inventor
The first patent to issue to an African-American is believed to be one of the aforementioned X-series patents, No. 3306X on Dry Scouring of Clothes, issued to Thomas L. Jennings on March 3, 1821.
Only Patent to a President
The only patent issued to a president is U.S. Patent No. 6,469 on a Manner of Bouying Vessels, issued to Abraham Lincoln on May 22, 1849.
Shortest Patent Claim
The scope of a patent is defined by its claims, and there are a number of two-word patent claims, including Glenn Seaborg’s U.S. Patent No. 3,156,523, issued November 10, 1964, claiming: “1. Element 95,” and his U.S. Patent No. 3,164,462, issued December 15, 1964, claiming “1. Element 96.”
However there are in fact several patents with a one-word claim, including Lloyd H. Conover’s U.S. Patent No. 2,699,054, issued January 11, 1955, whose claim 2 simply recites “Tetracycline.” For another example, check out claims 12-19 of U.S. Patent No. 3,775,489.
Longest Patent Claim
Among the longest patent claims is one found in U.S. Patent No. 6,953,802, Beta-Amino Acid Derivatives-Inhibitors of Leukocyte Adhesion Mediated by VLA-4, it contains over 17,000 words, spanning from column 59, line 27 to column 101, line 30.
Most Claims in an Application
The record for most claims in an application is US Published Application No. 20030173072 for Forming Openings in a Hydrocarbon Containing Formation Using Magnetic Tracking. As published it contained 8,958 claims, issuing as U.S. Patent No. 6,991,045 with a more modest but still impressive 90 claims.
Most Claims in a Patent
The record for most claims in a patent is U.S. Patent No. 6,684,189 Apparatus and Method Using Front-end Network Gateways and Search Criteria for Efficient Quoting at a Remote Location, with 887. Runners up are U.S. Patent No. 5,095,054 for Polymer Compositions Containing Destructurized Starch, with just 868 claims, and U.S. Patent No. 7,096,160 System and Method for Measuring and Monitoring Wireless Network Performance in Campus and Indoor Environments, with a paltry 803 claims.
Longest Patent Application
The longest patent application is U.S. Patent Application No. US20070224201A1 for Compositions and Methods for the Diagnosis and Treatment of Tumor with 7,154 pages.
The longest patent is U.S. Patent No. 6,314,440 for Pseudo Random Number Generator, with 3333 pages, 3272 of which are drawings). Slightly shorter, but much wordier is U.S. Patent No. 5,146,591 has more than one million words on 3071 pages.
U.S. Patent No. 5,081,154 for Metroprolol Succinate is one half page long (about 70 lines).
Most Drawings in an Application
U.S. Patent Application No. 20070224201A1 has 6881 sheets of drawings.
Shortest Patent Term
U.S. Patent Nos. 6,211,625; 6,211,619; 6,198,228; 6,144,445; 7,604,811 (and others) had a term of “0” — each expired before it issued!
Longest Patent Term
U.S. Patent No. 6,436,135, was filed in 1974, and issued in 2002, and thus won’t expire until this year (2019), 45 years after it was filed.
U.S. Patent Nos. 7,013,469 and 7,017,162 for Application Program Interface for Network Software Platform have 51 coinventors.
Strangest Patent Number
The U.S. has issued several “fractional” patents, including U.S. Patent No. 126 ½ on February 11, 1837, and U.S. Patent No. 3,262,124 ½ on July 19, 1966.
U.S. Patent No. 4,723,129 has been cited in 2,372 subsequent patents.
Most Prior Art
U.S. Patent No. 9.535,563 cites 7800 references; U.S. Patent No. 8,612,159 on Analyte Monitoring Device and Methods of Use cites 3,594 items of prior art on 32 pages.
Largest Patent Family
U.S. Patent No. 5,095,054 has 380 family members.
Longest Inventor Name
U.S. Patent No. 7,531,342 names Osterhaus Albertus Dominicus Marcellinus Erasmus as inventor with 44 characters in his name.
Most Enigmatic Title
U.S. Application 20020174863 is entitled “Unknown”
U.S. Patent No. 448,647 issued March 24, 1891, on a Tooth Pick.
In WesternGeco L.L.C., v. Ion Geophysical Corporation, [2013-1527, 2014-1121, 2014-1526, 2014-1528](January 11, 2019), the Federal Circuit, on remand from the Supreme Court, remanded to the district court.
The Supreme Court held that WesternGeco’s damages award for lost profits was a permissible domestic application of 35 U.S.C. § 284,” reversing the Federal Circuit.
But the Supreme Court did not decide other challenges to the lost profits award. In light of the Supreme Court’s decision and the intervening invalidation of four of the five
asserted patent claims that could support the lost profits award, the Federal Circuit remanded the case to the district court.
In Virtnex Inc. v. Apple, Inc., [2017-2490, 2017-2494] (December 10, 2018) the Federal Circuit affirmed the PTAB that claims 1–11, 14–25, and 28–30 of U.S. Patent No. 8,504,696 were unpatentable as obvious., noting that VirnetX was collaterally estopped from relitigating the threshold issue of whether prior art reference was a printed publication and because VirnetX did not preserve the only remaining issue of whether inter partes review procedures apply retroactively to patents that were filed before Congress enacted the America Invents Act.
During the pendency of VirnetX’s appeal, the Federal Circuit summarily affirmed seven final written decisions between VirnetX Inc. and Apple in which the Board found that RFC 2401 was a printed publication. The Federal Circuit said that Rule 36 summary dispositions could be the basis collateral estoppel, and that the only issue was whether the printed publication issue was necessary or essential to the judgment in the prior cases. The Federal Circuit held that it was.
VirnetX also argued that it preserved in its opening brief the issue of whether inter partes review procedures apply retroactively to patents that were filed before Congress enacted the AIA, pointing to a single paragraph in its Opening Brief, filed prior to the Supreme Court’s decision in Oil States. The Federal Circuit said that this paragraph raised the specific question later decided in Oil States, and under a very generous reading, the paragraph also arguably raises a general challenge under the Seventh Amendment, but it in no way provides any arguments specifically preserving the retroactivity issue.
The Federal Circuit concluded that VirnetX did not preserve the issue of whether inter partes review procedures apply retroactively to patents that were filed before Congress enacted the AIA and that, therefore, the conclusion that VirnetX was collaterally estopped from raising the printed
publication issue resolved all other issues in the appeal. The Federal Circuit affirmed.
The lesson, of course, is to correctly predict the future and simply preserve the issues you will need. Virtnex can hardly be faulted for not preserving the issue, when they had a more substantive issue before it, buy it always pays to have a legitimate Plan B.
In Novaritis Pharmaceuticals Corporation v. Breckenridge Pharmaceutical Inc., [2017-2173, 2017-2175, 2017-2176, 2017-2178, 2017-2179, 2017-2180, 2017-2182, 2017-2183, 2017-2184] (December 7, 2018), the Federal Circuit reversed the district court, determining that the law of obviousness-type double patenting does not require a patent owner to cut down the earlier-filed, but later expiring, patent’s statutorily-granted 17-year term so that it expires at the same time as the later-filed, but earlier expiring patent, whose patent term is governed under an intervening statutory scheme of 20 years from that patent’s earliest effective filing date.
Applying Gilead Sciences, Inc. v. Natco Pharma Ltd., which held that a later-filed but earlier-expiring patent can serve as a double patenting reference for an earlier-filed but later-expiring patent, the district court found U.S. Patent No. 6,440,990 to be a proper double patenting reference for the earlier filed U.S. Patent No. 5,665,772, which had a longer term because of a change in the statutory term.
The Federal Circuit said that Gilead addressed a question that was not applicable in the present case — in Gilead, the Federal Circuit concluded that, where both patents are post- URAA, a patent that issues after but expires before another patent can qualify as a double patenting reference
against the earlier-issuing, but later-expiring patent. In contrast, in the present case Novartis owns one pre-URAA patent (the ’772 patent) and one post-URAA patent (the ’990 patent), and the 17-year term granted to the ’772 patent does not pose the unjustified time extension problem that was the case for the invalidated patent in Gilead.
[T]he present facts do not give rise to similar patent prosecution gamesmanship because the ’772 patent expires after the ’990 patent only due to happenstance of an intervening change in patent term law. Both the ’772 and the ’990 patents share the same effective filing date of
September 24, 1993. If they had been both pre-URAA patents, the ’990 patent would have expired on the same day as the ’772 patent by operation of the terminal disclaimer Novartis filed on the ’990 patent, tying its expiration date to that of the ’772 patent. And if they had been
both post-URAA patents, then they would have also both expired on the same day. Thus, the current situation does not raise any of the problems identified in our prior obviousness-type double patenting cases. At the time the ’772 patent issued, it cannot be said that Novartis improperly
captured unjustified patent term. The ’990 patent had not yet issued, and the ’772 patent, as a pre-URAA patent, was confined to a 17-year patent term.
The Federal Circuit concluded that in this particular situation where we have an earlier filed, earlier-issued, pre-URAA patent that expires after
the later-filed, later-issued, post-URAA patent due to a change in statutory patent term law, it would not invalidate the challenged pre-URAA patent by finding the post-URAA patent to be a proper obviousness-type double