Priority – 102(g)
Patent Law – Prof Merges
9.28.2010
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)
(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,
R to P
Conception
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 – p. 445
Autoradiographs
Alexander Graham Bell – Lab Notebook
Conception of the “count”
• Definition of conception: p. 445
• All limitations (elements) of count?
• Sept 25 v Sept 20 . . .
Markman v. Lehman, 987 F.Supp. 25 (DDC
1997)
-- affirmed 178 F.3d 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 FabryPerot 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.
In re Scott E. Johnston, No. 05-1321 (Fed.
Cir. January 30, 2006)
The Board had held that the notebooks of a junior scientist in the
senior party’s laboratory were insufficient to collaborate the
assertion of continuous diligence, because they did not specifically
explain the purpose of the experiments performed and how they
led to the completion of the invention. The Federal Circuit rejected
this reasoning, holding that “a laboratory notebook recording daily
experimentation, reasonably considered from the viewpoint of
persons experienced in the field, need not reproduce on each page
a statement of the larger research purpose,” and can be
supplemented with a declaration to demonstrate that
purpose. Thus, the Court held that the Board erred in failing to
consider the corroborating evidence, and remanded the case to the
Board.
ARE THE U.S. PATENT PRIORITY RULES REALLY
NECESSARY?
Mark A. Lemley
Colleen V. Chien
Hastings Law Journal
July, 2003
54 Hastings L.J. 1299
Of the 100 cases in our population that
have final outcomes, junior parties
won 33 (or 33%). More significantly, in
the 76 cases that are actually resolved
on priority grounds, junior parties
won 33 times (or 43%). Thus, it seems
that when priority is actually
adjudicated, the first to invent is quite
frequently not the first to file.
Peeler v Miller
3.14.1966
Miller
Conception
March,
1966:
Miller R
to P
Peeler et al. rely only
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, enablement
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)
(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.
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.2d 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.3d 1559, 39
USPQ2d 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
More Cases!
•
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•
•
•
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•
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(1) Palmer v. Dudzik , 481 F.2d 1377, 178 USPQ 608
(2) Young v. Dworkin , 489 F.2d 1277, 180 USPQ 388
(3) Peeler v. Miller , 535 F.2d 647, 190 USPQ 117
(4) Horwath v. Lee , 564 F.2d 948, 195 USPQ 701
(5) Shindelar v. Holdeman , 628 F.2d 1337, 207 USPQ 112
(6) Smith v. Crivello , 215 USPQ 446
(7) Correge v. Murphy , 705 F.2d 1326, 217 USPQ 753
(8) Paulik v. Rizkalla , 760 F.2d 1270, 226 USPQ 224
(9) Holmwood v. Cherpeck , 2 USPQ2d 1942
(10) Lutzker v. Plet , 843 F.2d 1364, 6 USPQ2d 1370
(11) Fujikawa v. Wattanasin , 93 F.3d 1559, 39 USPQ2d
1895
35 USC 104
• Proof of inventive acts
• Progression:
–Originally, US-only (“home court
advantage” in interferences)
–Then, NAFTA members only
–Finally, 1995, 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.
EX PARTE MARTIN KELLY JONES
Appeal No. 2000-0872
Application No. 08/852,119
September 25, 2003
• 2006 WL 2523579, *2 (Bd.Pat.App & Interf.
2006)
• Statutory bars cannot be antedated
Exhibit C is a record of Mr. Horstemeyer's billing for the work done for appellant. The
billing record indicates that revisions were made May 5th, 7th, 10th, and 11th of
1993. Exhibit D, a letter from Mr. Horstemeyer to appellant, states that the final
draft of the application was mailed to appellant for signature on May 12, 1993.
The billing records show no further amendments after May 12, 1993, thereby
establishing conception prior to May 14, 1993. Mr. Horstemeyer indicates in the
Declaration that May 15th and 16th were a Saturday and Sunday, respectively.
The records show that he billed for reviewing the formality documents and formal
drawings of the application on May 17, 1993, and then he filed the application on
May 18, 1993. We find these records to be sufficient evidence
of conception prior to May 14, 1993 and due diligence up
to the filing of the application on May 18, 1993.
Accordingly, we must reverse the rejections under 35
U.S.C. §§ 102(e) and 103, as the Ross patents no longer
qualify as prior art against appellant.
102(g)(2)
(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) 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.
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
The party alleging suppression or concealment
has the burden of proof. Young, 489 F.2d 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.3d 1559, 39 USPQ2d 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
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)
(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.
Dow v Astro-Valcour
Dow Chemical Co. v. Astro-Valcour, Inc., 267
F.3d 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?
“It never occurred to us . . .”
to file our own patent
application – Astro-Valcour
Miyamoto 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
Doctrinal Wrinkles
• “Third party” versus “second party” issues
• Corroboration
• “Appreciation” issues
Abandonment?
• Interference vs. 102(g)(2) prior art situations
– Commercialization vs. filing application
• Compare Peeler: convinced?
Thomson S.A. v. Quixote Corp., 166 F.3d 1172,
49 U.S.P.Q.2d (BNA) 1530 (Fed. Cir. 1999),
cert. denied, 119 S. Ct. 2395 (1999):
uncorroborated oral testimony by noninterested individuals may be sufficient to
satisfy the clear and convincing standard of
proof for invalidity based on anticipation
under § 102(g).