Written by: Justin Blaufeld

The Federal Circuit holds that in order to rely on the provisional filing date of a prior art patent under 35 U.S.C. § 102(e), one must prove that the prior art patent is actually entitled to the benefit of priority, in addition to showing that the provisional application anticipates the patent being challenged.

Category: 102  
By: Abby Lin, Contributor 
CaseTyco Healthcare Group, LP v. Ethicon Endo-Surgery, Inc., No. 2013-1324, -1381 (Fed. Cir. Dec. 4, 2014).
1) "Tyco argues on cross-appeal that because Ethicon made changes to design features of the prototype, such as replacing the single cam with a dual cam mechanism, Ethicon did not establish prior conception. Tyco further asserts that Ethicon failed to show diligence through the date of constructive reduction to practice in October 1997, arguing that there was a gap in weekly records from September 1996 to February 1997."
Tyco, at *9.
2) "Relying on Kimberly-Clark Corp. v. Johnson & Johnson, 745 F.2d 1437 (Fed. Cir. 1984), Tyco asserts that the Ethicon Prototype cannot serve as prior art under § 102(g) because there was no reduction to practice before Tyco’s priority date. Tyco contends that the absence of prior reduction to practice is dispositive of the issue, but also argues that based on In re Clemens, 622 F.2d 1029, 1039- 40 (CCPA 1980), § 102(g) prior art cannot be prior art under § 103 if it was “unknown to both the applicant and the art at the time the applicant makes his invention,” because doing so would “establish a standard for patentability in which an applicant’s contribution would be measured against secret prior art.”"
Id. at *11.
1) "Having established prior conception and diligent reduction to practice, the district court correctly found that the Ethicon Prototype anticipates those twenty-six claims under § 102(g)."
Tyco, at *10-11.
2) "The district court erred when it inconsistently applied § 102(g) to the Ethicon Prototype by not requiring prior reduction to practice for anticipation purposes but requiring it for the obviousness analysis. The clear language of § 102(g) does not require prior reduction to practice so long as the inventor can prove that he or she conceived of the invention first and was diligent in later reducing it to practice.....We therefore hold that neither § 102(g) nor § 103 make prior reduction to practice the only avenue through which § 102(g) prior art can constitute prior art under § 103. "
Id. at *11.
Category: 102 
By: Jesus Hernandez, Blog Editor/Contributor
TitleDelano Farms Co. v. The California Grape Commission, No. 2014-1030 (Fed. Cir. Jan. 9, 2015).
IssueThe question in a case such as this one is thus whether the actions taken by [a third party that stole the contents of the invention] create a reasonable belief as to the invention’s public availability.
Delano Farms Co., at *7.
HoldingThere is no public use when a third party steals secretive information without authority and endeavors to keep said information secret from the public and a sole disclosure limited to a friend/colleague is not a public use.
See, generally, id. at 11.
Category: 102  
 By: John Kirkpatrick, Contributor 
TitleSuffolk Tech., LLC v. AOL, Inc., No. 13-1392 (Fed. Cir. May 27, 2014).
[1a] Suffolk argues that the district court erred in construing the claim term “generating said supplied file” [as recited in dependent claim 6] as “creating or tailoring a file, as distinct from selecting an existing file, in dependence upon the received identification signal.” Suffolk’s position is that the generated file could depend on the content of the requesting web page and not just the received identification signal.
Suffolk Tech. at *6 (text added, internal citation and emphasis removed).
[1b] Suffolk argues that the specification implicitly defines “generating said supplied file” [as depending on the content of the requesting page] and that the district court erred in ignoring that implicit definition.
Id. at *7 (text added).
[1c] Suffolk argues that the district court’s construction effectively excludes the preferred embodiment that this claim language was intended to cover.
Id. at *8.
[2a] According to Suffolk, [a Usenet Post is not prior art because] the Post’s audience was not those of ordinary skill in the art and locating the Post would be too difficult.
Id. at *10 (text aded).
[2b] [S]erious questions undermining the reliability and accuracy of the Post should have been submitted to the jury.”
Id. at *12 (text added).
[2c] [T]he district court improperly excluded testimony from [Suffolk's] validity expert.
Id. at *13 (text added).
[2d] According to Suffolk, there are genuine factual issues concerning whether the Post disclosed every limitation in the contested claims.
Id. at *15.
[1a] [T]he undisputed construction of “identification signal”—“digital information that identifies the source, origin, or location of a file”—says nothing about the content of the requesting page.
Suffolk Tech. at *6 (text added, emphasis removed).
[1b] [T]he specification, when viewed in context, supports the district court’s construction that “generating said supplied file” depends on the received identification signal and not the content of the requesting web page.
Id. at *8 (text added).
[1c] [The preferred embodiment is not excluded] when the entire description of the preferred embodiment is considered.
Id. (text added).
[2a] [T]he record indicates that those of ordinary skill in the art actually [at the time] were using such newsgroups [and] a printed publication need not be easily searchable after publication if it was sufficiently disseminated at the time of its publication.
Id. at *10-11 (text added, internal citation removed).
[2b] [T]he asserted evidentiary weaknesses in the Post are insufficient, without more, to create a genuine issue of material fact.
Id. at *13 (text added).
[2c] [T]he district court did not abuse its discretion in [excluding testimony when the expert goes from having no opinion concerning a claim to having an opinion because the expert] did opine on the validity of dependent claim 6 in his initial report and the district court’s construction did not vary greatly from the parties’ proposals.
Id. at *14 (text added).
[2d] Google bears the burden to show that there are no genuine issues of material fact. It has met that burden. And Suffolk’s attorney arguments, with no affirmative evidence, are insufficient to undermine Google’s showing.
Id. at *15.  
Category: 102   
 By: Christian Hannon, Contributor  
TitleIn re Reijers, No. 2014-1052 (Fed. Cir. June 5, 2014) (non-precedential).
Issue[Whether] Braun [] disclose[s] a method for blowing liquid from a food product, as required by Claim 11.
In re Reijers at *5 (text added).
HoldingBecause substantial evidence supports the Board’s conclusion that Braun anticipates Claim 11 [because based on inherency, the device in Braun would necessarily blow liquid off a food product as part of its drying process].
Id. at *2 (text added).
Category: 102  
 By: Jesus Hernandez, Blog Editor/Contributor
TitleIn re Rambus, Inc., No. 2013-1192 (Fed. Cir. June 4, 2014).
Issue[Micron argues that] multiplexed lines in Fig. 25a [of prior art reference Bennet] cause a delay of known value (one clock cycle) before data transfer. Setting Parameter VI to 1 causes the lines to be multiplexed. Therefore, [according to Micron,] Parameter VI [discloses] a “value that is representative of an amount of time to transpire after which the memory device outputs the first amount of data.”
In re Rambus, Inc. at *7 (text added).
HoldingParameter VI is only “representative” of one source of delay because the actual delay can be longer due to other factors. [Since changing Parameter VI does not necessarily create a one clock cycle delay], Parameter VI is not a “value that is representative of an amount of time to transpire after which the memory device outputs the first amount of data.”
Id. at *8 (text added).
Category: 102 
 By: Samuel Dillon, Contributor 
TitleDey, L.P. v. Sunovion Pharm., Inc., No. 2012-1428 (Fed. Cir. May 20, 2013).
Issue[Whether] Sunovion was entitled to summary judgment of invalidity because Sunovion’s own clinical trial constituted clear and convincing evidence of a third-party public use of Dey’s inventions. Dey, at *8.
Holding[W]e conclude that Sunovion has not shown that it is entitled to summary judgment based on its assertion that its use of formulations meeting the limitations of Dey’s later-issued patents constituted a public use of Dey’s inventions within the meaning of section 102(b). We therefore reverse the grant of summary judgment for Sunovion. Id. at *3.
Category: 102 
By: Jesus Hernandez, Blog Editor/Contributor  
TitleSolvay S.A. v. Honeywell Int’l Inc., No. 2012-1660 (Fed. Cir. Feb. 12, 2014).
IssueThe question at the heart of this appeal is when an invention conceived by a foreign inventor and reduced to practice in the United States qualifies as prior art under § 102(g)(2) [since, under the facts at hand, Russian inventors conceived an invention outside of the US, and Honewell personnel reduced it to practice in the US.].
Solvay S.A. at *2 (text added).
Holding[T]he process invented by the Russian engineers was made in this country when Honeywell successfully performed the process because the Russians authorized Honeywell personnel to practice the invention and specifically contemplated that they would do so[, therefore, the invention qualifies as prior art].
Id. at *17 (text added).
Category: 102 
By: Jesus Hernandez, Blog Editor/Contributor    
TitleMotorola Mobility, LLC v. ITC, No. 2012-1535 (Fed. Cir. Dec. 16, 2013).
IssueMotorola asserts that the claimed synchronization component refers to software that merely facilitates communication and synchronization, as opposed to more active management [and], with this understanding of the limitation, […] that a synchronization component must necessarily be present on both the Apple Newton MessagePad [prior art reference] and the desktop in order to accomplish synchronization.
Motorola Mobility, LLC at *6-7 (text added).
HoldingBecause substantial evidence supports the Commission’s determinations that Motorola did not show that the asserted claims are invalid [because inherency requires more than the mere possibility that the Apple Newton MessagePad encompasses the claimed "synchronization component"], and that Microsoft showed that it satisfied the domestic industry requirement, this court affirms.
Id. at *2.
Category: 102
By: Jesus Hernandez, Blog Editor/Contributor   
TitleHamilton Beach Brands, Inc. v. Sunbeam Prod., Inc., No. 2012-1581 (Fed. Cir. Aug. 14, 2013).
Issue"The district court found that Hamilton Beach’s purchase order with its foreign supplier for the Stay or Go® amounted to an invalidating commercial offer for sale under the on-sale bar of 35 U.S.C. § 102(b)." Hamilton Beach, at *7.
Holding"We agree with the district court that Hamilton Beach’s transaction with its foreign supplier in early 2005 was an offer for sale of a product that anticipated the asserted claims and that the invention was ready for patenting prior to the critical date. [...] [T]herefore, we hold the asserted claims of the ’928 patent invalid under § 102(b)." Id. at *7.

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