Novelty: What’s New? Plenty! Patent Law Prof Merges

Agenda Basic concepts and terminology First to Invent (1952 Act) vs. First to File (AIA – patents FILED after 9/16/2012) Some details on 1952 Act caselaw

Three Main Issues Under Novelty What is the prior art: what is a “reference”? Timing Issues: What is in, and out, of the “prior art”? Identity standard: how similar does a prior art reference have to be to anticipate (destroy novelty, invalidate) a patent?

Novelty § 102 A person is not entitled to a patent if the invention was: in the prior art (as defined by § 102 (a), (e), (g)) barred under § 102 (b), (c), (d)

Key Distinction Though both covered by § 102, novelty and statutory bars are very different Novelty: is it new? Statutory bars: did you file before the cutoff date? Did you file on time?

Novelty (Anticipation) [§ 102(a)] Versus Statutory Bars [§ 102(b)] Novelty/Anticipation concerned with NEWNESS – is it original to the patent applicant/patentee? Statutory Bars concerned with TIMELINESS – did the inventor file soon enough?

§ 102. Novelty and loss of right to patent A person shall be entitled to a patent unless (a) the invention was known or used by others … before the invention thereof by the applicant for patent, or (b) the invention was patented or described in a printed publication …, more than one year prior to the date of the application for patent in the United States, or....

What is the key difference? The CRITICAL DATE is different for novelty vs. the statutory bars Novelty: date of invention Statutory bars: Filing date minus one year

Base, with passageway U-shaped bar Cutting element attached to bar Rotating handle at end of bar JONES CLAIM 1: ELEMENTS

Cheese Industry Today New Trends in Slicers by J. Smith Sample Publication (by Smith) in the PRIOR ART ________________ New innovations _______________________________ ______________various round, and____. ______________ _______ Exciting : stainless steel blades,, ___________ ________ ____________________. The wire slides into a convenient For tightened wire designs, cutting bar shapes: U-shaped, new cutting elements tightened wire attached to the bar passageway in the base. tightening can be achieved by rotating the handle.

Cheese Industry Today New Trends in Slicers by J. Smith ________________ New innovations _______________________________ ______________various round, and____. ______________ _______ Exciting : stainless steel blades,, ___________ ________ ____________________. The wire slides into a convenient For tightened wire designs, cutting bar shapes: U-shaped, new cutting elements tightened wire attached to the bar passageway in the base. tightening can be achieved by rotating the handle. Rotating handle at end of bar Cutting element attached to bar Base, with passageway U-shaped bar Rotating handle at end of bar Cutting element attached to bar Base, with passageway U-shaped bar NOVELTY REQUIREMENT NOT MET: NO PATENT GRANTED Claim ElementsClaim Elements in Publication

Cheese Industry Today New Trends in Slicers by J. Smith Sample Publication: Revised ________________ New innovations _______________________________ ______________various round, and____. ______________ _______ Exciting : stainless steel blades,, ___________ ________ ____________________. The wire slides into a convenient cutting bar shapes: U-shaped, new cutting elements tightened wire attached to the bar passageway in the base.

Invention Compared with Prior Art Rotating handle at end of bar Cutting element attached to bar Base, with passageway U-shaped bar Smith Article Jones Patent XX XX INVENTION NOT ANTICIPATED NOVELTY REQT MET: PATENT GRANTED X

§ 102. Novelty and loss of right to patent A person shall be entitled to a patent unless (a) the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for patent, or (b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States, or....

Important Concept: the “Critical Date” The Invention Date

Critical Concept: the “Critical Date” The Invention Date The Prior Art

Earlier Invention, Earlier “Critical Date,” LESS PRIOR ART The Invention Date The Prior Art

Conception: 1/1/1980 Reduction to practice: 6/1/1980 The “Stages of Invention” Filed: 9/1/1980 Unpacking the “invention date”

In re Robertson Page 365 Held: Claim 76 not anticipated

United States Patent 5,279,604 Robertson, et al. January 18, 1994 Mechanical fastening systems with disposal means for disposable absorbent articles Abstract A disposable absorbent article with a mechanical fastening system having an additional fastening element so as to provide convenient disposal of the absorbent article. The mechanical fastening system preferably comprises a tape tab having a first fastening element, a landing member comprising a second fastening element engageable with the first fastening element, and an additional fastening element for allowing the absorbent article to be secured in a configuration that provides convenient disposal of the absorbent article. The additional fastening element preferably comprises a second fastening element affixed to the backing surface of at least one of the tape tabs Inventors: Robertson; Anthony J. (Blue Ash, OH); Scripps; Charles L. (Brookfield, WI) Assignee: The Procter & Gamble Company (Cincinnati, OH) Appl. No.: Filed: July 20, 1992

Claim 76 [A] mechanical fastening system for forming side closures... comprising [1] a closure member... comprising [a] a first mechanical fastening means for forming a closure, said first mechanical fastening means comprising [i] a

first fastening element; [2] a landing member... comprising [a] a second mechanical fastening means for forming a closure with said first mechanical fastening means, [b] said second mechanical fastening means comprising a second fastening element mechanically engageable with said first element; and

[3] disposal means for allowing the absorbent article to be secured in a disposal configuration after use, said disposal means comprising [a] a third mechanical fastening means for securing the absorbent article in the disposal configuration, said third mechanical fastening means comprising [i] a third fastening element mechanically engageable with said first fastening element....

[1] a closure member [2] landing member [3] disposal means

Prior Art United States Patent 4,895,569 Wilson, et al. January 23, 1990 Fastening system for a disposable absorbent garment having a tailored seam

The Presumptive Invention Date: Robertson application filed United States Patent 4,895,569 Wilson: January 23, 1990 Filed: July 20, 1992

Wilson Patent Issued before the “Critical Date” The Robertson Invention Date The Prior Art

Wilson Patent is IN THE PRIOR ART The Robertson Invention Date The Prior Art

United States Patent 4,895,569 Wilson, et al. * January 23, 1990 Fastening system for a disposable absorbent garment having a tailored seam Abstract A disposable absorbent garment (10) of the type having opposed engageable waistband portions (14) separated by an intermediate portion (16), comprises a breathable elastomeric nonwoven fabric outer cover (12) and a superposable absorbent structure (32), Inventors: Wilson; John C. (Neenah, WI); Rajala; Gregory J. (Neenah, WI); Boland; Leona G. (Neenah, WI); Zehner; Georgia L. (Larsen, WI) Assignee: Kimberly-Clark Corporation (Neenah, WI) [*] Notice: The portion of the term of this patent subsequent to October 20, 2004 has been disclaimed.Appl. No.: Filed: August 25, 1987

Securing Tab Robertson ‘604 Patent

Alternative Embodiment: No separate securing tab

[1] a closure member [2] landing member [3] disposal means ??

Wilson specification “Disposal of the soiled garment... Is easily accomplished by folding the front panel... Inwardly and then fastening the rear pair of mating fastening members to one another, thus neatly bundling the garment...”

Robertson case, P. 364 Anticipation … requires that “each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference.” Verdegaal Bros., Inc. v. Union Oil Co., 814 F.2d 628, 631, 2 U.S.P.Q.2D (BNA) 1051, 1053 (Fed. Cir. 1987)

Inherency – p. 364 “To establish inherency, the extrinsic evidence “must make clear that the missing descriptive matter is necessarily present in the thing described in the reference, and that it would be so recognized by persons of ordinary skill.”

Wilson reference –Closure member –Landing member –Disposal means with... 3 rd fastening element? Wilson specification: “fasten rear pair of mating fastening members to one another...” p 368

Fed Cir: Robertson case “The Board made no attempt to show that the fastening mechanisms of Wilson that were used to attach the diaper to the wearer also “necessarily” disclosed the third separate fastening mechanism of claim 76 used to close the diaper for disposal, or that an artisan of ordinary skill would so recognize. It cited no extrinsic evidence so indicating.”

“[T]he Board failed to recognize that the third mechanical fastening means in claim 76, used to secure the diaper for disposal, was separate from and independent of the two other mechanical means used to attach the diaper to the person... [T]he Board’s analysis rests upon the very kind of probability or possibility — the odd use of fasteners with other than their mates — that this court has pointed out is insufficient to establish inherency.”

Bd of Appeals opinion “[A]n artisan would readily understand the disposable absorbent garment of Wilson... as being inherently capable of [making the third fastening element] mechanically engageable with [the first fastening element]” — i.e., using the secondary closure not with its mate, but with one of the primary snap fasteners.”

Robertson holding Held: The third element in the Robertson claim, the separate “disposal means” was NOT present in the Wilson prior art reference So Wilson is NOT ANTICIPATED – i.e., it is NOVEL

The AIA is now the Law! This ought to give Merges something to work on for awhile!

Conception: 1/1/1980 Reduction to practice: 6/1/ Act “Stages of Invention” Filed: 9/1/1980 Prior Art Reference, e.g., Jones Article

Conception: 1/1/1980 Reduction to practice: 6/1/1980 AIA“First Inventor to File” Filed: 9/1/1980 Prior Art Reference, e.g., Jones Article X X

Why Not Just “First to File”? Because a First Inventor ALSO has a “grace period” under the AIA So a “First Inventor” – meaning: someone who can SHOW that they invented earlier – MAY be able to preserve priority

Public Disclosure 1/1/1980 AIA Inventor’s Prior Public Disclosure Filed: 9/1/1980 Prior Art Reference, e.g., Jones Article

Priority of invention First applicant to file now wins, usually. Exceptions are (i) where second filer was first to publicly disclose the invention within the 1- year pre-filing grace period; or (ii) where first actual filer derived invention from another. Second exception determined by a “derivation proceeding” – the heir to interferences under the old law.

Grace Period The new law does permit a limited grace period that exempts from the prior art both (i) the inventor’s own “disclosures”; and (ii) other parties’ “disclosures” that occur after the inventor’s disclosure. Grace period gives 1 year from date of activity to allow time to file. But the scope of the grace period is unclear based on the wording of the Act.

In re Klopfenstein 380 F.3d 1345 (Fed Cir 2004) “Printed Publications” for the modern era.. Page 405

In October 1998, the appellants, along with colleague M. Liu, presented a printed slide presentation entitled "Enhancement of Cholesterol-Lowering Activity of Dietary Fibers By Extrusion Processing" at a meeting of the American Association of Cereal Chemists ("AACC"). The fourteen-slide presentation was printed and pasted onto poster boards. The printed slide presentation was displayed continuously for two and a half days at the AACC meeting.

AACC 1998 Annual Meeting Poster # 127. Click title to see full text of poster. Enhancement of cholesterol-lowering activity of dietary fibers by extrusion processing. M. LIU, C.F. Klopfenstein, and J.L. Brent. Department of Grain Science and Industry, Kansas State University, Manhattan, KS 66506

If this food is so safe, why do we have to wear hardhats?

Can you believe people actually eat this stuff?

The statutory phrase "printed publication" has been interpreted to mean that before the critical date the reference must have been sufficiently accessible to the public interested in the art; dissemination and public accessibility are the keys to the legal determination whether a prior art reference was "published.“ -- p. 406

Billboard hypothetical: p. 406 “’public accessibility’ has been called the touchstone in determining whether a reference constitutes a ‘printed publication,’” In re Hall –NOT just indexing “The reference was shown with no stated expectation that the information would not be copied or reproduced by those viewing it.”

The factors relevant to the facts of this case are: the length of time the display was exhibited, the expertise of the target audience, the existence (or lack thereof) of reasonable expectations that the material displayed would not be copied, and the simplicity or ease with which the material displayed could have been copied.

Where professional and behavioral norms entitle a party to a reasonable expectation that the information displayed will not be copied, we are more reluctant to find something a "printed publication." This reluctance helps preserve the incentive for inventors to participate in academic presentations or discussions. Where parties have taken steps to prevent the public from copying temporarily posted information, the opportunity for others to appropriate that information … is reduced. -- p. 409