BASICS: For a pre-critical-date use to invalidate a claim, (1) the invention must be “ready for patenting” (seePfaff (U.S. 11/10/1998)) and (2) the use must have been a public use. Invitrogen (Fed. Cir. 10/05/05); Barry (Fed. Cir. 01/24/19) (2-1) (aff’g jury verdict of no public use bar); Art+Com (Fed. Cir. 10/20/17) (non-precedential) (aff’g public use jury verdict, sufficient evidence of reduction to practice of invention in public use); Dey (Fed. Cir. 05/20/13) (rev’g Summ. J. of public use bar, but not entering Summ. J. of no bar, even though clinical study subjects did not sign confidentiality agreements; “we ask ‘whether the purported use: (1) was accessible to the public; or (2) was commercially exploited’”). There are two public use categories: (1) a commercial use by the applicants (even if confidential); and (2) a non-confidential use by anyone. Dey (Fed. Cir. 05/20/13) (“secret or confidential third-party uses do not invalidate later-filed patents”); Delano (Fed. Cir. 01/09/15) (aff’g no public use of patented plants where patent owner’s employee gave plants to third parties telling them to keep them private and third parties knew employee was not authorized to provide the unreleased plants). Need not be used for its intended purpose. Rather, inquiry is “whether the inventor himself has made a use of his invention which is ‘public’ because it was given to a member of the public without restriction,” but “all aspects of the claimed invention must be disclosed.” Pronova (Fed. Cir. 09/12/13) (shipping sample of pharmaceutical to a doctor with description of product, and without restriction on use, was a public use).
FITF: Changes the defense for patents subject to it. SeeHelsinn (Fed. Cir. 05/01/17) (expressly declining to address whether overrules case law on “secret” public uses), aff’d on other grounds, Helsinn II (U.S. 01/22/2019) (catchall phrase “or otherwise available to the public” did not alter well-established interpretation of “on sale” bar).
A Third Party’s Use Of Claimed Invention Must Be Publicly Accessible To Qualify As “Public Use”: Under this prong, the issue is “whether a use was successfully concealed or hidden and therefore inaccessible to the public.” BASF (Fed. Cir. 04/08/20) (rev’g Summ. J. of public use bar, for existence of genuine disputes of material fact). Does not require “that the public was made aware of every limitation of the claimed process,” if non-disclosed elements already in the public domain. Id. For this prong, consider “the nature of the activity that occurred in public; the public access to and knowledge of the public use; [and] whether there was any confidentiality obligation imposed on persons who observed the use.” Barry (Fed. Cir. 01/24/19) (2-1) (aff’g jury verdict of no public use bar; surgeries were not accessible to the public, in part due to implied obligation of confidentiality of those who could view the surgical technique); Dey (Fed. Cir. 05/20/13) (“secret or confidential third-party uses do not invalidate later-filed patents”); W.L. Gore (Fed. Cir. 11/14/83) (not public use where third party commercially uses claimed method to sell a product where no evidence “that the public could learn the claimed process by examining” the product).
Patentee’s Commercial Use Category Of “Public Use”: “[A] secret, purposely hidden use of a patented process more than one year before an applicant’s filing date precludes the issuance of the patent when it is the applicant who so used the claimed invention and did so to his commercial advantage.” Woodland (Fed. Cir. 07/10/98). In Invitrogen (Fed. Cir. 10/05/05), the Federal Circuit seemingly limited the “commercial” uses to situations where the invention is used in an actual product or in making an actual product for which compensation is received, not just using it to gain some other advantage, such as developing products for future use.
Requires Use, Not Merely Display, Of Embodiment: Providing keyboard to investors but not using it with a computer, is not a “public use.” Motionless Keyboard (Fed. Cir. 05/29/07).
The Second Public Use Prong Is Similar To Old Totality Of Circumstances Test: Unlike the on sale bar, the public use bar still uses a test similar to the old “totality of the circumstances”: “the test for the public use prong includes the consideration of evidence relevant to experimentation, as well as, inter alia, the nature of the activity that occurred in public; public access to the use; confidentiality obligations imposed on members of the public who observed the use; and commercial exploitation.” Invitrogen (Fed. Cir. 10/05/05); Dey (Fed. Cir. 05/20/13) (although “we do not ask for an ‘enablement-type inquiry’ under section 102(b), a court still must decide whether the ‘claimed features of the patents [were placed] in the public’s possession.’”). This test is in addition to the “ready for patenting” requirement. Id.
Public Use Constitutes Prior Art For Sec. 103 Purposes, And Public Use Bar Extends To Obvious Variants: Public uses are part of the prior art under Sec. 103. Netscape (Konrad) (Fed. Cir. 07/09/02) (aff’g Summ. J. invalidity for public use; “Section 102(b) may bar patentability by anticipation if the device used in public includes every limitation of the later claimed invention, or by obviousness if the differences between the claimed invention and the device used would have been obvious to one of ordinary skill in the art.”); BASF (Fed. Cir. 04/08/20) (rev’g Summ. J. of public use bar; Sec. 102(b) requires only that ‘the differences between the claimed invention and the device used or sold would have been obvious to one skilled in the art.’”); Torpharm (Fed. Cir. 07/23/03) (“If a device was in public use or on sale before the critical date, then that device becomes a reference under section 103 against the claimed invention.”); In re Kaslow (Fed. Cir. 05/17/83) (aff’g ex parte rejection of claims for obviousness over a public use combined with a publication; “a public use or placing on sale under section 102(b) is ‘prior art’ which may support an obviousness rejection under section 103.”); Some precedent exists for extending “public use” bar to “obvious variants” without full-scale obviousness analysis. Clock Spring (Fed. Cir. 03/25/09) (“We have held that the public use bar applies to obvious variants of the demonstrated public use.”).
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