Gemmy Industries Corporation v.
Chrisha Creations Limited et al.
Decided June 22, 2006
Judge Newman with Judges Mayer and Schall
The “ready for patenting” standard, which covers on sale bar determinations, requires that the for-sale product meet the elements of a patent claim.
Gemmy and Chrisha sued each other in Kansas and New York over Chrisha’s exploitation of a large inflatable Santa Claus, which Gemmy had patented. After consolidation in the Southern District of New York, Judge Robert Sweet granted Chrisha summary judgment of invalidity on the basis that Gemmy had offered to sell the Santa world wide more than 12 months before filing a Santa patent application. The court also granted a preliminary injunction against Gemmy’s patent marking of Santa, prompting an interlocutory appeal to the Federal Circuit.
The Federal Circuit vacated the invalidity judgment because the patent claims recite a Santa that is inflated with a fan in the base, whereas the alleged first sale offer concerned a Santa filled with vacuum cleaner exhaust, and lacked this claim element. The early for-sale offer thus did not meet the Pfaff “ready for patenting” standard.
A patent practitioner should consider early marketing history during patent drafting but may craft claims creatively to avoid an on-sale bar from an evolving product.
Invitrogen Corporation v. Biocrest Manufacturing, L.P. et al.
Decided October 5, 2005
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Judge Rader with Judges Dyk and Prost
* To "qualify as 'public,' a use (under 35 USC 102(b)) must occur without any 'limitation or restriction, or injunction of secrecy.'"
Invitrogen sued Biocrest at the U.S. District Court for the Western District of Texas for allegedly infringing claims to methods of making improved bacteria for genetic engineering. Judge Sam Sparks found the claims invalid on prior sale grounds because "Invitrogen had used the claimed process ….to acquire a commercial advantage" more than one year before the patent priority date. Both sides appealed various issues to the Federal Circuit.
The Federal Circuit reversed the prior sale invalidity holding because Invitrogen "did not sell the claimed process or any products made with it" more than one year before the priority date. The court pointed out that "[t]he proper test for the public use prong of the 102(b) statutory bar is whether the purported use (1) was accessible to the public; or (2) was commercially exploited."
The line between commercial use and research has become more blurred as research methods are used as tools for production or for production themselves. However, such use of a research method generally is not a statutory bar unless the product of the method is sold.
Electromotive Division of General Motors Corporation v.
Transportation Systems Division of General Electric Company and Daido Industrial
Bearings, Ltd.
Decided July 28, 2005
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Judge Michel with Judges Plager and Linn
* Experimentation is not a defense against public use or sale unless the use was controlled by the inventor and the customer (if any) was aware of the experiment.
GM developed a new locomotive bearing via an in house testing program. In a second stage "field program," GM substituted the bearing in ongoing orders and examined failed units to see if the failures were caused by the bearing. More than a year later GM filed two patent applications. After patent issuance, GM sued GE for alleged infringement at the U.S. District Court for the Eastern District of Michigan. Judge John O'Meara granted GE summary judgment of invalidity under the on-sale bar of 35 USC 102(b). GM appealed to the Federal Circuit.
The Federal Circuit focused on the first prong of the two part Pfaff test for determining commencement of the one year on sale bar period, and noted that a commercial sale existed, but was not experimental. The latter conclusion was prompted by a determination of two principles to satisfy experimental use: 1. "an inventor must show control over the alleged testing;" and 2. if a sale is involved, then "at a minimum" the "customers must be made aware of the experimentation." GM's use was not experimental because GM did not control the "field program" use and did not inform its customers (who likely did not want to hear this news) that the bearing was experimental.
This decision emphasized that exhaustive analysis of 13 objective factors for determining experimental use often can be avoided by focusing on 1. control by the inventor and 2. awareness of the experimental use by the purchaser.
In Re. Carol F. Klopfenstein and John L.Brent Jr.
Decided August 18, 2004
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Judge Prost with Judges Michel and Schall
* A disclosure is a printed publication under 102(b) if it is "publically accessible" according to a 4 part test.
Carol applied for a patent to methods of making doubly extruded soybean fiber. The PTO refused claims to the process because single extrusion processes that cause the desired effect (lowering serum cholesterol) were known and Carl had presented his double process results at a conference more than one year before his filing date. Carl appealed to the Federal Circuit.
The Federal Circuit affirmed because Carl's presentation of the invention at a research conference met a four factor test for public accessibility regarding i) the length of time of the disclosure; ii) the expertise of the audience; iii) expectations of whether the displayed material would be copied; and iv) ease with which the material displayed could have been copied. Carl's display was deemed public because the display was presented 3 days to an audience with skill in the field of the invention, the viewers were not precluded from photography or from taking notes, and the relevant information was easily copied.