Old Fashioned Priority – 102(g)

1. Old Fashioned Priority – 102(g) Patent Law – Prof Merges 10.2.2012

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

3. 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.”

4. 35 USC § 102(g)(1) and (2) • Interferences – (g)(1) • Anticipation – (g)(2) • Common priority rule – stated in (g)(2)

5. 35 USC 102(g)(1) during the course of an interferenceconducted under section 135 or section 291, another inventor involved therein establishes, to the extent permitted in section 104, thatbefore such person's invention thereof the invention was made by such other inventor and not abandoned, suppressed, or concealed,

6. 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.

7. 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.

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

9. 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. . . .

10. 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.

11. 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.

12. 35 USC § 102(g)(1) and (2) • Interferences – (g)(1) • Anticipation – (g)(2) • Common priority rule – stated in (g)(2)

13. 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,

14. 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,

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

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

17. 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

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

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

21. Michael Brown Joseph Goldstein

22. 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

23. 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.

24. Farnesyl Transferase

25. Ras Protein

26. 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

27. Autoradiographs

28. Alexander Graham Bell - Lab notebook Alexander Graham Bell – Lab Notebook

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

30. 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

31. 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.

33. Peeler v Miller 3.14.1966 Miller Conception Peeler et al. rely only on Filing Date: 1.4.1968 March, 1966: Miller R to P 4.27.1970 Miller Filing Date

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

35. § 102(g) “Abandoned, Suppressed, or Concealed” Filing Date R to P

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

37. 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 . . .”

38. 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.

39. § 102(g) “Abandoned, Suppressed, or Concealed” Filing Date R to P

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

41. 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.

42. 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!

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

44. More Cases! • (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

45. 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

46. 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.

47. 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

48. 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?

49. 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)