Old Fashioned Priority 102g Patent Law Prof Merges

Old Fashioned Priority – 102(g) Patent Law – Prof Merges 9. 27. 2011

Agenda: § 102(g) • Overview section 102(g) • Brown v. Barbacid • Peeler v. Miller • Dow v. Astro-Valcour

35 USC § 102(g)(1) and (2) (g)(1) Inventor establishes [prior invention] and not abandoned, suppressed or concealed. . . ” (g)(2) Invention was made in this country by another inventor who had not abandoned, suppressed or concealed it. ”

35 USC § 102(g)(1) and (2) • Interferences – (g)(1) • Anticipation – (g)(2) • Common priority rule – stated in (g)(2)

35 USC 102(g)(1) during the course of an interference conducted under section 135 or section 291, another inventor involved therein establishes, to the extent permitted in section 104, that before such person's invention thereof the invention was made by such other inventor and not abandoned, suppressed, or concealed,

102(g)(2) before such person's invention thereof, the invention was made in this country by another inventor who had not abandoned, suppressed, or concealed it. In determining priority of invention under this subsection, there shall be considered not only the respective dates of conception and reduction to practice of the invention, but also the reasonable diligence of one who was first to conceive and last to reduce to practice, from a time prior to conception by the other.

102(g)(2): Common Priority Rule for 102(g) (2) In determining priority of invention under this subsection, there shall be considered not only the respective dates of conception and reduction to practice of the invention, but also the reasonable diligence of one who was first to conceive and last to reduce to practice, from a time prior to conception by the other.

Brown v. Barbacid • Interference: Priority Contest • This case: issued patent (Barbacid) v. pending application (Brown et al. )

35 USC § 135 (a) Whenever an application is made for a patent which, in the opinion of the Director, would interfere with any pending application, or with any unexpired patent, an interference may be declared …The Board of Patent Appeals and Interferences shall determine questions of priority of the inventions and may determine questions of patentability. .

Section 135(b) Time Limits (1) A claim which is the same as, or for the same or substantially the same subject matter as, a claim of an issued patent may not be made in any application unless such a claim is made prior to one year from the date on which the patent was granted. (2) [Published apps: claim] may be made in an application filed after the application is published only if the claim is made before 1 year after the date on which the application is published.

35 U. S. C. 291 Interfering patents. The owner of an interfering patent may have relief against the owner of another by civil action, and the court may adjudge the question of validity of any of the interfering patents, in whole or in part. The provisions of the second paragraph of section 146 of this title shall apply to actions brought under this section.

35 USC § 102(g)(1) and (2) • Interferences – (g)(1) • Anticipation – (g)(2) • Common priority rule – stated in (g)(2)

35 USC 102(g)(1) during the course of an interference conducted under section 135 or section 291, another inventor involved therein establishes, to the extent permitted in section 104, that before such person's invention thereof the invention was made by such other inventor and not abandoned, suppressed, or concealed,

35 USC 102(g)(1) during the course of an interference conducted under section 135 or section 291, another inventor involved therein establishes, to the extent permitted in section 104, that before such person's invention thereof the invention was made by such other inventor and not abandoned, suppressed, or concealed,

Invention: Milestone Events/Dates Conception R to P Filing Issuance

Some basic nomenclature • “Senior party” = first to file • “Count” = (roughly) claim • Board of appeals and interferences = PTO administrative court (see chap. 1)

What happened at the Board in Brown v Barbacid? • Brown was the senior party; priority awarded to Barbacid – Barbacid reduced to practice on March 6, 1990 – PREDATED Brown’s filing date of April 18, 1990

Board Decision Brown Filed: 4/18/1990 R to P: 3/6/1990 Barbacid Filed: 5/8/1990 Issued: 2/9/1993

Brown – argument on appeal R to P: 9/1989 - ? Filing: 4/18/1990 R to P: 3/6/1990 Barbacid Filing: 5/8/1990

Michael Brown Joseph Goldstein

The Barbacid patent application was filed on May 8, 1990, and issued on February 9, 1993. The Brown application was filed on December 22, 1992, but was accorded the benefit of an earlier related application filed on April 18, 1990. Thus, Brown was the senior party. Barbacid, as the junior party, had the burden to prove priority by a preponderance of the evidence. – p 442

Patent Cover Page Filed: January 1, 1998. Related U. S. Application Data: This application is a continuation of U. S. Application 96/10245 filed February 5, 1997, which is now abandoned.

Farnesyl Transferase

Ras Protein

Authentication and corroboration issue: Dr Reiss testimony for Brown • Sept 20 v Sept 25 data • Corroboration rule: why? • Standard for corroboration: “rule of reason”/all evidence

Autoradiographs

Alexander Graham Bell – Lab Notebook

Conception of the “count” • Definition of conception • All limitations (elements) of count? • Sept 25 v Sept 20. . .

Markman v. Lehman, 987 F. Supp. 25 (DDC 1997) -- affirmed 178 F. 3 d 1306 (Fed. Cir. 1998) “To establish an actual reduction to practice, an inventor must provide independent corroborating evidence in addition to his or her own statements and documents, such as testimony of a witness other than the inventor or evidence of surrounding facts and circumstances independent of information received from the inventor. The purpose of this rule is to prevent fraud. ” – at 30

Gordon Gould, Laser Inventor Gould: I used a Fabry-Perot resonator and became familiar with the tools of optical spectroscopy. Years later I went to Columbia, which was big on microwave spectroscopy. To think of the Fabry. Perot as a resonator for a laser oscillator I had to have both those kinds of experience. It just clicked that one exciting night, about one in the morning , and I jumped up and started writing , and wrote that whole first notebook in one weekend. Then I had it notarized on Monday.

3. 14. 1966 Miller Conception March, 1966: Miller R to P Peeler v Miller Peeler et al. rely on Filing Date: 1. 4. 1968 4. 27. 1970 Miller Filing Date

Peeler et al. (Chevron Researchers) Related Patent: 3, 583, 920 (1971)

§ 102(g) “Abandoned, Suppressed, or Concealed” R to P Filing Date

Peeler points • “Counts” are basically claims – Special interference lingo • “Abandoned experiment” argument – basically, an enablement issue

Peeler points cont’d • P 458: “Which of the rival inventors has the greater right to a patent? ” – Classic Judge Rich approach to invention priority issue – See also Paulik, p. 461 • “In our opinion, a four year delay from [R to P] to [filing] is prima facie unreasonably long . . . ”

Compare to Diligence -- § 102(g)(2) before such person's invention thereof, the invention was made in this country by another inventor who had not abandoned, suppressed, or concealed it. In determining priority of invention under this subsection, there shall be considered not only the respective dates of conception and reduction to practice of the invention, but also the reasonable diligence of one who was first to conceive and last to reduce to practice, from a time prior to conception by the other.

§ 102(g) “Abandoned, Suppressed, or Concealed” R to P Filing Date

Compare to Diligence -- § 102(g)(2) A Conception B Conception Reduction to practice R to P ONLY B’s diligence matters

• The party alleging suppression or concealment has the burden of proof. Young, 489 F. 2 d at 1279, 180 USPQ at 390 See also 37 CFR § 1. 632, which requires a party to give notice that it intends to argue that its opponent suppressed or concealed, thereby giving the opponent an opportunity to present evidence to negate any inference of intent to suppress or conceal.

• A 17 month delay was found not to be unreasonable in Fujikawa v. Wattanasin, 93 F. 3 d 1559, 39 USPQ 2 d 1895 (Fed Cir 1996) –See specific facts!

• A 22 month delay was found to be unreasonable by the board in Smith v. Crivello, Smith v. Crivello , 215 USPQ 446 (BPAI 1982)

More Cases! • • • (1) Palmer v. Dudzik , 481 F. 2 d 1377, 178 USPQ 608 (2) Young v. Dworkin , 489 F. 2 d 1277, 180 USPQ 388 (3) Peeler v. Miller , 535 F. 2 d 647, 190 USPQ 117 (4) Horwath v. Lee , 564 F. 2 d 948, 195 USPQ 701 (5) Shindelar v. Holdeman , 628 F. 2 d 1337, 207 USPQ 112 (6) Smith v. Crivello , 215 USPQ 446 (7) Correge v. Murphy , 705 F. 2 d 1326, 217 USPQ 753 (8) Paulik v. Rizkalla , 760 F. 2 d 1270, 226 USPQ 224 (9) Holmwood v. Cherpeck , 2 USPQ 2 d 1942 (10) Lutzker v. Plet , 843 F. 2 d 1364, 6 USPQ 2 d 1370 (11) Fujikawa v. Wattanasin , 93 F. 3 d 1559, 39 USPQ 2 d 1895

35 USC 104 • Proof of inventive acts: Domestic US Activity Originally Favored (pre-1996) – Originally, US-only (“home court advantage” in interferences) – Then, NAFTA members only – Finally, 1996, all World Trade Organization Members • Truly international interferences today

Current 37 CFR 1. 131 Prior invention may not be established under this section in any country other than the United States, a NAFTA country, or a WTO member country. Prior invention may not be established under this section before December 8, 1993, in a NAFTA country other than the United States, or before January 1, 1996, in a WTO member country other than a NAFTA country.

Interferences – some fine points • Administrative § 135 : USPTO Bd Pat Int & App. ; appeal to Fed Cir under § 134, 141 • OR district court, District of Columbia appeal under §§ 145/146

From Interferences (102(g)(1)) to novelty/prior invention of another (102(g)(2) • In Brown v. Barbacid and Peeler v. Miller, TWO INVENTORS FOUGHT FOR A PATENT – Priority Fight • What if prior invention is used ONLY as a piece of prior art AGAINST a patent?

Dow v Astro-Valcour Dow Chemical Co. v. Astro-Valcour, Inc. , 267 F. 3 d 1334 (Fed. Cir. 2001) Good example of “prior art” use of section 102(g)

Current owner of AVI

Dow: Key Facts • Why no interference? • Dow’s inventive “milestones” • AVI’s evidence of its employees’ activities

• Why no interference? à“It never occurred to us. . . ” to file our own patent application – Astro-Valcour àMiyamoto patent license

Why not a 102(a) case? • Miyamoto ‘ 300 (1968) patent: broad genus – “Non-CFC blowing agents” • Dow patents – Species claims – Isobutane – NB: Miyamoto patent cited in ‘ 933 patent reexam

Park - Dow C: late August, 1984 March 3, 1984: R to P (C? ) AVI Employees R to P: 9/13/1984

Abandonment, Suppression, Concealment • To rebut charge of abandonment, the fastest route to commercialization was not required, only reasonable efforts. • Not abandoned here, even though there was 2. 5 year delay between invention and commercialization

See also. . . • Flex-Rest, LLC v. Steelcase, Inc. , 455 F. 3 d 1351, 1359 (Fed. Cir. 2006) • 6 ½ month delay not abandonment under Dow

Doctrinal Wrinkles • “Third party” versus “second party” issues • Corroboration • “Appreciation” issues

102(g)(2) before such person's invention thereof, the invention was made in this country by another inventor who had not abandoned, suppressed, or concealed it.

Abandonment? • Interference vs. 102(g)(2) prior art situations – Commercialization vs. filing application • Compare Peeler: convinced?

Thomson S. A. v. Quixote Corp. , 166 F. 3 d 1172, 49 U. S. P. Q. 2 d (BNA) 1530 (Fed. Cir. 1999), cert. denied, 119 S. Ct. 2395 (1999): uncorroborated oral testimony by non- interested individuals may be sufficient to satisfy the clear and convincing standard of proof for invalidity based on anticipation under § 102(g).