In
The '844 patent related to a method for reducing emissions stemming from gasoline evaporation from vehicle fuel systems, sometimes called "bleed emissions." The '844 patent disclosed controlling bleed emissions using two adsorbents. The '844 patent explained the first, a fuel-side adsorbent, was a standard high-working capacity carbon. The second, a vent-side adsorbent, showed a flat or flattened adsorbent isotherm on a volumetric basis and desirable adsorptive features over broad vapor concentrations.
Claim 1 of the '844 patent is representative. It recites:
Delphi developed its own fuel canister system to reduce evaporative emissions ("Delphi Prior Invention"). The parties agreed that the Delphi Prior Invention was reduced to practice before the '844 patent's priority date. The Delphi Prior Invention encompassed a carbon canister and an auxiliary canister holding carbon honeycombs. Delphi engineers—Thomas Meiller,
The Administrative Law Judge (ALJ) determined that the claims of the '844 patent were anticipated by the Delphi Prior Invention and/or obvious in view of the Delphi Prior Invention combined with additional prior art references. The parties did not dispute that the Delphi Prior Invention satisfied the first adsorbent step element of claim 1. With respect to the second adsorbent step limitation of claim 1, the Delphi Inventors were provided with honeycombs that the ALJ determined fulfilled the second adsorbent step element of claim 1. The ALJ also ruled that the Delphi Inventors recognized that they had created a canister system that enhanced bleed emissions with respect to standard carbon canisters and did not abandon, suppress or conceal it.
On appeal, the Federal Circuit affirmed the holding of invalidity. 35 U.S.C. §102(g)(2)2 provides the following:
...
(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.3.
The court explained that "to establish an actual reduction to practice, the prior inventor must have (1) constructed an embodiment or performed a process that met all the limitations of the claim(s) at issue and (2) determined that the invention would work for its intended purpose."4 According to this second requirement, "an alleged prior invention will not anticipate under 35 U.S.C. §102(g) unless the alleged prior inventors 'appreciated' the invention," the court said.5 "[T]he inventor must contemporaneously appreciate that the embodiment worked and that it met all the limitations of the [claims]."6.
The court explained that
The Federal Circuit agreed with
The court noted that the ALJ found it to be a reasonable inference that the honeycombs incorporated in the Delphi Prior Invention also would have included a BWC of 3.7 g/dL, which was considered to be comparable to the IAC of below 35g/L required in the second adsorbent step element of claim 1. According to the Federal Circuit:
The court therefore agreed with the ALJ that the Delphi Inventors appreciated that the honeycombs of the Delphi Prior Invention's auxiliary canister possessed the claimed adsorptive capacity.
Accordingly, the Federal Circuit affirmed the Commission's final determination that the Intervenors did not violate section 337 because the claims of the '844 patent were invalid under 35 U.S.C. §102(g)(2) and/or 35 U.S.C. §103(a) in view of the Delphi Prior Invention...
Lessons
For all those litigators and patent prosecutors hoping to file away 35 U.S.C. §102(g), unfortunately it will still be around for quite some time since only pre-AIA patent applications filed after
In addition, a limited use of a §102(g)-like inquiry will continue to apply for post-AIA patent applications. For example, determining reduction to practice still remains an issue under, for example, new §102(a)(1), which excludes a patent where "the claimed invention was . . . in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention."10 The test for the on-sale bar includes determining whether the invention was reduced to practice, which in turn may include determinations of whether the inventors appreciated that the embodiment of the invention worked and that it met all claim elements.11
In summary, cases like
Footnotes
1
2 Id., slip op. at 3, n.2 ("This appeal is governed by 35 U.S.C. §§102(g)(2) and 103(a) as they existed prior to changes made by the America Invents Act ("AIA"), Pub. L. No. 112-29, 125 Stat. 284 (2011).").
3 Id., slip op. at 9 (quoting 35 U.S.C. § 102(g)).
4 Id., slip op. at 9.
5 Id., slip op. at 10 (citing
6 Id., slip op. at 10 (quoting Cooper v. Goldfarb, 154 F.3d 1321, 1327, 47 USPQ2d 1896, 1901 (Fed. Cir. 1998)).
7 Id., slip op. at 11 (emphasis in original).
8 Id., slip op. at 12 (citation omitted).
9 Id., slip op. at 13-14 (citing Mycogen Plant Sci., Inc. v.
10 35 U.S.C. §102(a)(1). Under the Leahy-Smith America Invents Act, Pub. L. No. 112-29, §3, 125 Stat. 316 (
11 See Pfaff v. Wells Elecs., Inc.,
We conclude, therefore, that the on-sale bar applies when two conditions are satisfied before the critical date.
First, the product must be the subject of a commercial offer for sale. An inventor can both understand and control the timing of the first commercial marketing of his invention. . . .
Second, the invention must be ready for patenting. That condition may be satisfied in at least two ways: by proof of reduction to practice before the critical date; or by proof that prior to the critical date the inventor had prepared drawings or other descriptions of the invention that were sufficiently specific to enable a person skilled in the art to practice the invention.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
Mr
NY 10036
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